           RECOMMENDED FOR FULL-TEXT PUBLICATION
                Pursuant to Sixth Circuit Rule 206
        ELECTRONIC CITATION: 2000 FED App. 0123P (6th Cir.)
                    File Name: 00a0123p.06


UNITED STATES COURT OF APPEALS
                  FOR THE SIXTH CIRCUIT
                    _________________


                                 ;
                                  
 KELLOGG COMPANY,
                                  
         Plaintiff-Appellant/
                                  
            Cross-Appellee,
                                  
                                     Nos. 98-6237/6360

                                  
           v.                      >
                                  
                                  
          Defendant-Appellee/ 
 EXXON CORPORATION,

              Cross-Appellant. 
                                  
                                 1
       Appeal from the United States District Court
   for the Western District of Tennessee at Memphis.
  No. 96-03070—Julia S. Gibbons, Chief District Judge.
                  Argued: September 14, 1999
                Decided and Filed: April 6, 2000
  Before: BATCHELDER* and GILMAN, Circuit Judges;
              HOOD, District Judge.




    *
     The Honorable Denise Page Hood, United States District Judge for
the Eastern District of Michigan, sitting by designation.

                                 1
2    Kellogg Co. v. Exxon Corp.           Nos. 98-6237/6360       Nos. 98-6237/6360        Kellogg Co. v. Exxon Corp.    27

                    _________________                                                 CONCLUSION
                         COUNSEL                                    Accordingly, we REVERSE the judgment of the district
                                                                  court granting summary judgment to Exxon on Kellogg’s
ARGUED: Daniel S. Mason, San Francisco, California, for           claims of infringement, dilution, and abandonment, we
Appellant. Louis T. Pirkey, ARNOLD, WHITE & DURKEE,               VACATE the grant of summary judgment to Exxon on
Austin, Texas, for Appellee. ON BRIEF: Daniel S. Mason,           Kellogg’s claimed grounds of progressive encroachment, and
San Francisco, California, Grady M. Garrison, BAKER,              REMAND the case for further proceedings consistent with
DONELSON, BEARMAN & CALDWELL, Memphis,                            this opinion.
Tennessee, Christopher T. Micheletti, FURTH, FAHRNER
& MASON, San Francisco, California, for Appellant. Louis
T. Pirkey, Stephen P. Meleen, William G. Barber, ARNOLD,
WHITE & DURKEE, Austin, Texas, Buckner P. Wellford,
John J. Thomason, THOMASON, HENDRIX, HARVEY,
JOHNSON & MITCHELL, Memphis, Tennessee, Robert D.
Rippe, Jr., Charles A. Beach, EXXON CORPORATION,
Irving, Texas, Christopher T. Micheletti, FURTH, FAHRNER
& MASON, San Francisco, California, for Appellee.
                    _________________
                        OPINION
                    _________________
  ALICE M. BATCHELDER, Circuit Judge. Plaintiff-
Appellant Kellogg Company appeals the district court’s order
granting summary judgment to Defendant-Appellee Exxon
Corporation on Kellogg’s complaint alleging federal and state
law claims of trademark infringement, false designation of
origin, false representation, dilution, and unfair competition.
Because we conclude that the district court erred in (1)
holding that Kellogg had acquiesced in Exxon’s use of the
challenged mark, (2) dismissing Kellogg’s dilution claim, and
(3) holding that no genuine issues of fact material to
Kellogg’s claim of abandonment remain for trial, we reverse
the judgment of the district court and remand the case for
further proceedings.
26       Kellogg Co. v. Exxon Corp.              Nos. 98-6237/6360          Nos. 98-6237/6360          Kellogg Co. v. Exxon Corp.      3

amended by the Federal Trademark Dilution Act of 1995,                                           BACKGROUND
states:
                                                                               In 1952, Kellogg began using a cartoon tiger in connection
  The term “dilution” means the lessening of the capacity                   with “Kellogg’s Frosted Flakes” cereal and registered its
  of a famous mark to identify and distinguish goods and                    “Tony The Tiger” name and illustration in the United States
  services, regardless of the presence or absence of -- (1)                 Patent and Trademark Office (“PTO”). Today, Kellogg owns
  competition between the owner of the famous mark and                      a number of federal trademark registrations for the name and
  other parties, or (2) likelihood of confusion, mistake or                 appearance of its “Tony The Tiger” trademark; those
  deception.                                                                trademark registrations cover, among other things, “cereal-
                                                                            derived food product to be used as a breakfast food, snack
15 U.S.C. § 1127 (emphasis added).4                                         food or ingredient for making food.”
   The federal cause of action for dilution is found in 15                     In 1959, Exxon began using a cartoon tiger to promote
U.S.C. § 1125(c)(1). For a plaintiff to succeed on a federal                motor fuel products, and in 1965, Exxon registered federally
claim of dilution “(1) the senior mark must be famous; (2) it               its “Whimsical Tiger” for use in connection with the sale of
must be distinctive; (3) the junior use must be a commercial                petroleum products. Exxon used its cartoon tiger in its “Put
use in commerce; (4) it must begin after the senior mark has                A Tiger In Your Tank” advertising campaign, which ran
become famous; and (5) it must cause dilution of the                        between 1964 and 1968. In 1968, Kellogg acknowledged
distinctive quality of the senior mark.” Nabisco, Inc. v. PF                Exxon’s use of its cartoon tiger when it requested Exxon not
Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999); see also                    to oppose Kellogg’s application to register its “Tony The
Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d                    Tiger” trademark in Germany. Exxon’s “Whimsical Tiger”
633, No. 98-4217, 1999 WL 707786, at *5 (7th Cir. Sept. 13,                 trademark, obtained with no opposition from Kellogg, became
1999); Ringling Bros.-Barnum & Bailey Combined Shows,                       incontestable in 1970.
Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 452 (4th Cir.
1999), cert. denied, 120 S.Ct. 286 (1999); I.P. Lund Trading                   In 1972, Exxon changed its name from Standard Oil
v. Kohler Co., 163 F.3d 27, 45-50 (1st Cir.1998); Panavision                Company to Exxon Corporation and changed its primary
Int'l v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998).                      trademarks from “Esso,” “Enco”, and “Humble” to “Exxon.”
                                                                            Exxon submitted into evidence numerous newspaper and
  We hold that the district court’s dismissal of Kellogg’s                  magazine articles and other promotional materials
dilution claims was improper. Because we hold that Kellogg’s                demonstrating its extensive and costly advertising campaign
infringement claim is not in fact barred by acquiescence, we                to promote its new “Exxon” mark using the cartoon tiger and
also hold that the district court’s dismissal of Kellogg’s bad              to launch its “Energy For A Strong America” campaign,
faith infringement claim was improper.                                      which ran in the latter half of the 1970s. For example, an
                                                                            article in a 1973 issue of Advertising Age called Exxon’s
                                                                            advertising campaign “the classic ‘name change’ campaign of
                                                                            all time, with approximately $100,000,000 involved in the
                                                                            face lift!” Harry Wayne McMahan, McMahan Picks the 100
     4
      The Tennessee statute controlling Kellogg’s state dilution claim
                                                                            Best TV Commercials of the Year, ADVERTISING AGE,
applies “notwithstanding the absence of competition between the parties     Feb. 19, 1973.
or the absence of confusion as to the source of goods or services.” TENN.
CODE ANN. § 47-25-512 (1998).
4      Kellogg Co. v. Exxon Corp.          Nos. 98-6237/6360      Nos. 98-6237/6360           Kellogg Co. v. Exxon Corp.      25

   In the early 1980s, Exxon’s advertising agency, McCann-           The district court held that Kellogg had failed to produce
Erickson (“McCann”), suggested that Exxon phase out the use       evidence of nonuse—the only element of abandonment that
of its cartoon tiger and begin using a live tiger, opining that   Exxon’s motion for summary judgment addressed—and that
the cartoon tiger was too whimsical and, hence, inappropriate     Exxon was therefore entitled to summary judgment on
in light of prevalent oil shortages. In 1981, Exxon began to      Kellogg’s abandonment claim. Our review of the record,
adopt a new look for its gas stations, implementing a program     however, persuades us that there remain for trial genuine
to modernize the gas pumps and to eliminate its cartoon tiger     issues of material fact with regard to whether Exxon’s use of
on the pump panels. At that time, Exxon had between 16,000        its cartoon tiger during the 1980s was bona fide or simply a
and 18,000 gas stations in the United States. Over 11,000 of      sham to protect its rights in the mark. Because we have held
these gas stations were owned and operated by independent         as a matter of law that Kellogg did not acquiesce in Exxon’s
distributors (“distributor stations”), and the rest were owned    use of its cartoon tiger in connection with the sale of non-
and operated by Exxon (“company operated retail stores” or        petroleum products, Kellogg’s abandonment claim with
“CORS”) or owned by Exxon and operated by independent             regard to Exxon’s affirmative defense of acquiescence is
dealers (“dealer stations”). The modernization program to         moot. But because the abandonment claim may yet be
bring about this “new look” entailed removal of the cartoon       germane to the issues remaining for trial, we conclude that the
tiger head design from the lower panels or “pump skirts” on       summary judgment in favor of Exxon on this claim must be
its Exxon “Extra” gasoline dispensers. In a letter dated          reversed.
August 12, 1982, Exxon instructed its regional managers to
begin phasing out their use of the cartoon tiger:                              C. Kellogg’s Remaining Claims
    The purpose of this memo is to communicate new                  In granting Exxon’s motion for summary judgment, the
    guidelines pertaining to the application of the Exxon         district court, in a footnote, dismissed Kellogg’s remaining
    Tiger and the Exxon Emblem in all advertising, point-of-      claims as moot:
    sale material, Company publications, etc.
                                                                    The dismissal of Kellogg’s action renders moot the
    Exxon Tiger--Effective immediately, the use of the              following pending motions: Exxon’s renewed motion
    cartoon tiger is to be discontinued.                            for partial summary judgment on Kellogg’s state dilution
                                                                    claim; Exxon’s motion for partial summary judgment on
   Exxon explored possible ways to protect its cartoon tiger        Kellogg’s dilution by tarnishment claims; Exxon’s
trademark while shifting toward a live tiger. For example, a        motion for partial summary judgment on the issue of bad
1984 internal office memo suggested:                                faith; and Exxon’s motion for summary judgment on
                                                                    Kellogg’s federal dilution claim.
    Since the only way to protect the Trademark is to use it,
    it might be wise for us to explore ways that the Cartoon        The short shrift given to Kellogg’s dilution claims ignores
    Tiger can be used in marketing on a limited basis. This       the fact that dilution rests on legal grounds entirely distinct
    is not a hot item, but one that we can’t forget about and     from the law governing infringement. In granting Exxon’s
    be embarrassed later.                                         motion for summary judgment, the district court held that the
                                                                  connection between the products offered by Kellogg and
A 1985 internal office memo, which listed the subject as          those offered by Exxon and the respective marketing channels
“Trademarks,” stated:                                             for those products were too attenuated for the parties to be
                                                                  considered competitors. However, the Lanham Act, as
24    Kellogg Co. v. Exxon Corp.            Nos. 98-6237/6360        Nos. 98-6237/6360           Kellogg Co. v. Exxon Corp.         5

  including acts of omission as well as commission, causes             Advertising discontinued use of the “Cartoon Tiger” in
  the mark to become the generic name for the goods or                 all advertising, point-of-sale material and company
  services on or in connection with which it is used or                publications on August 12, 1982. Regions were advised
  otherwise to lose its significance as a mark. Purchaser              at that time to do the same (see letter attached). To my
  motivation shall not be a test for determining                       knowledge, there has been no use of the “Cartoon Tiger”
  abandonment under this paragraph.                                    by advertising or [in] the areas other than the tiger head
                                                                       which appears on the pre-RID Trimline Exxon Extra
15 U.S.C. § 1127.                                                      gasoline pumps/dispensers.
   In order for a party to succeed on a claim of abandonment,          We have asked McCann to explore ways that the
it must prove the elements of both non-use and intent, i.e.,           “Cartoon Tiger” could be used to protect the mark. In
that the other party actually abandoned its mark through non-          reviewing possible station applications, two general areas
use and that it intended to do so. See United States Jaycees           seem to afford the most opportunities . . . .
v. Philadelphia Jaycees, 639 F.2d 134, 138 (3d Cir. 1981)
(“To establish the defense of abandonment it is necessary to         This memo discussed possible strategic placement of cartoon
show not only acts indicating a practical abandonment, but an        tiger decals around the pump islands and sales rooms/kiosks.
actual intent to abandon.”) (internal quotation marks and            Other correspondence between Exxon’s attorneys, Exxon’s
citation omitted); Citibank v. Citibanc Group, Inc., 724 F.2d        marketing department, and McCann reveals Exxon’s efforts
1540, 1545 (5th Cir. 1984) (citing Jaycees and holding that          to reduce its use of the cartoon tiger while ensuring trademark
abandonment requires a showing of non-use and intent to              protection. Exxon ultimately decided to use its cartoon tiger
abandon and that the claimant bears a high burden of proof);         as a graphic display on its stations’ pump toppers.
Prudential Ins. Co., 694 F.2d at 1156 (same).
                                                                       Many Exxon stations were slow to remove the cartoon tiger
   Kellogg argues that Exxon abandoned its “bona fide” use           from their pumps. In late 1985 and early 1986, Exxon was
of the cartoon tiger during the 1970s and 1980s, and that            using its cartoon tiger on pump toppers at approximately
Exxon therefore may not rely on its use of the cartoon tiger         2,500 gas stations. In 1987, Exxon photographed every
mark prior to 1991—when Exxon reintroduced the tiger to              distributor station in the United States. Thousands of
promote convenience store food and beverage sales—to                 photographs were taken and stored at Exxon, but most of
support its affirmative defenses to Kellogg’s infringement           them were destroyed in a 1994 routine file room clean-up.
claims. Kellogg asserts that even if Exxon presented                 Based upon those photographs that remain, Exxon estimates
evidence to establish that its use of the cartoon tiger was fairly   that approximately 10% of the 11,000 distributor stations still
continuous, albeit regionally limited, throughout the 1980s,         displayed the cartoon tiger in 1987. In 1993, Exxon
Exxon’s use of its cartoon tiger in the 1980s was not “bona          contractually obligated its distributors to comply with the
fide” but, rather, “made merely to reserve a right in [the]          modernization program and to convert their stations to the
mark.” 15 U.S.C. § 1127. See Exxon Corp. v. Humble                   “new look,” threatening to remove from the Exxon chain
Exploration Co., Inc., 695 F.2d 96, 99-100 (5th Cir. 1983)           those stations that failed to comply by April 1, 1995.
(recognizing that sham use of a trademark—one instituted
solely for the purposes of maintaining trademark rights—does            Exxon submitted evidence in an effort to show that, despite
not qualify as a “bona fide” use under the statute).                 its efforts to convert the look of its gas stations and shift
                                                                     toward the use of a live tiger, its use of the cartoon tiger
                                                                     throughout the 1980s was sufficient to maintain its rights in
6     Kellogg Co. v. Exxon Corp.            Nos. 98-6237/6360       Nos. 98-6237/6360          Kellogg Co. v. Exxon Corp.       23

the mark. In November 1985, Exxon had renewed its federal           suit in the first place, and no infringing conduct in which the
trademark registration for its cartoon tiger; this renewal would    plaintiff could have acquiesced. Put another way, if there is
last an additional 20 years. From 1985 to 1990, some Exxon          sufficient similarity between the products and connection
stations used a costumed version of the cartoon tiger for           between the marketing channels to start the clock running on
appearances at grand opening events and various promotional         the defendant’s affirmative defense of acquiescence, then
activities. In late 1989 and again in 1993, Exxon ran a             there is sufficient similarity and connection to permit the
promotion called “Color to Win,” in which over one million          plaintiff to counter that defense with a showing of progressive
contestants submitted entries of a cartoon tiger to hundreds of     encroachment.
Exxon stations. In the early 1990s, Exxon used its cartoon
tiger to promote the Texas State Fair. Exxon also presented            Here, we have found as a matter of law that Kellogg did not
evidence showing that in 1973, an Exxon distributor in              acquiesce in Exxon’s use of the cartoon tiger. Because
Virginia placed a large statue of a cartoon tiger in front of its   progressive encroachment has relevance only to counter
gas station near the highway, and the statue remains there          Exxon’s claim of acquiescence, the district court erred in
today.                                                              treating progressive encroachment as a claim independent of
                                                                    Exxon’s acquiescence defense. Therefore, we will vacate the
   In the early 1990s, after the Exxon Valdez oil spill, Exxon      district court’s grant of summary judgment to Exxon with
changed the appearance of its cartoon tiger, making it “more        regard to progressive encroachment; we note that the district
endearing, warm, and friendly.” In the words of Exxon’s             court need not engage in a progressive encroachment analysis
principal artist, “Today’s tiger is now cast in a more              on remand.
humanitarian role. He is polite to the elderly, plants trees for
ecology and has an overall concern for the environment.”                                 B. Abandonment
Exxon also began to expand the use of its cartoon tiger.
Although Exxon had opened its first company-operated                   In addition to its progressive encroachment claim, Kellogg
convenience store in 1984, it was not until the early 1990s         claimed that Exxon had abandoned the cartoon tiger mark.
that Exxon began to use its cartoon tiger to promote the sale       Kellogg’s Complaint recites Exxon’s pending application to
in those stores of certain foods and beverages, such as             register a service mark depicting the cartoon tiger, called
Domino’s Pizza, Coca Cola, Pepsi Cola, Lays Potato Chips,           “Hungry Tiger & Design;” the Complaint raises as a separate
and Dunkin Donuts. Exxon also began using its cartoon tiger         claim for relief that Exxon abandoned its use of the cartoon
to promote its own private label beverage, “Wild Tiger,” and        tiger and demands a declaratory judgment to that effect.
its own private label coffee, “Bengal Traders.”
                                                                      Abandonment is defined in § 1127 of the Lanham Act:
  Exxon’s use of the cartoon tiger to promote food,
beverages, and convenience stores increased dramatically              A mark shall be deemed to be “abandoned” if either of
from 1992 to 1996. In October 1992, Exxon had about eight             the following occurs: (1) When its use has been
“Tiger Mart” stores; by October 1993, there were about 68             discontinued with intent not to resume such use. Intent
“Tiger Mart” stores; by October 1996, there were over 265             not to resume may be inferred from circumstances.
“Tiger Mart” stores.                                                  Nonuse for 3 consecutive years shall be prima facie
                                                                      evidence of abandonment. “Use” of a mark means the
  On November 3, 1992, having learned of Exxon’s                      bona fide use of such mark made in the ordinary course
reintroduction of its cartoon tiger in Canada and Argentina,          of trade, and not made merely to reserve a right in a
                                                                      mark. (2) When any course of conduct of the owner,
22    Kellogg Co. v. Exxon Corp.            Nos. 98-6237/6360       Nos. 98-6237/6360          Kellogg Co. v. Exxon Corp.       7

reverse the district court’s grant of summary judgment to           Kellogg’s trademark counsel complained about that use in a
Exxon on the infringement claim and remand this matter for          telephone conversation with an Exxon attorney and was
trial on the merits of that claim.                                  advised that Exxon had been using its cartoon tiger in the
                                                                    United States as well. Kellogg immediately requested
   We turn next to the district court’s conclusion, based           examples of such use, and on November 20, 1992, Exxon sent
largely on the Prudential decision, that “direct competition”       Kellogg a compilation of 14 examples of promotional
was dispositive of Kellogg’s progressive encroachment claim:        materials appearing in the United States featuring its cartoon
                                                                    tiger. Not one of those examples disclosed Exxon’s use of its
  Although Exxon has entered into the convenient market             cartoon tiger to promote food and beverage items or its new
  food sales arena, Exxon has not become a manufacturer             “Tiger Mart” stores.
  or distributor of food items. Exxon’s “product” is a retail
  convenience store engaged in the business of selling food            In 1993, Kellogg challenged Exxon’s use of the cartoon
  on the premises of gasoline service stations. Kellogg’s           tiger in Canada, and in 1994, filed a lawsuit against Exxon’s
  “product” for the purposes of this case is cereal.                Canadian affiliate. Kellogg was unsuccessful in its attempt to
  Although, Exxon may sell Kellogg’s cereal product in              negotiate a global settlement in 1994 and 1995. In March
  the Tiger Mart or Tiger Express stores, this fact alone           1996, Exxon published for opposition its application to the
  does not establish that the parties are competitors in the        PTO to register its cartoon tiger for use with convenience
  same or even a related market. Even if there is actual            stores, and Kellogg commenced opposition proceedings. On
  confusion between the Kellogg and Exxon cartoon tiger             October 7, 1996, Kellogg filed suit against Exxon in the
  trademarks, connection between the parties’ products and          United States District Court for the Western District of
  marketing channels for the sale of their products is too          Tennessee. Kellogg originally sought actual and punitive
  attenuated to support Kellogg’s claim of progressive              damages derived from Exxon’s use of its cartoon tiger
  encroachment.                                                     trademark in connection with the sale of food items, as well
                                                                    as a preliminary and permanent injunction to prohibit Exxon’s
Kellogg, 50 U.S.P.Q.2d at 1507. In ruling, without engaging         continued use of its cartoon tiger in connection with the sale
in any analysis of the likelihood of confusion, that progressive    of food items on the ground that it unlawfully infringed upon
encroachment requires “direct competition” of identical             and diluted Kellogg’s “Tony The Tiger” mark. Exxon moved
products, the district court erred as a matter of law. The          for summary judgment on the infringement claim based on its
district court held that (1) a plaintiff who failed to bring suit   affirmative defense of acquiescence, and for partial summary
when it first learned of the defendant’s infringing use of          judgment on Kellogg’s claims of abandonment and
plaintiff’s mark has acquiesced in the defendant’s infringing       progressive encroachment. The district court granted these
use, but (2) the plaintiff does not have a meritorious claim of     motions and, holding that its decision rendered all remaining
progressive encroachment because the parties’ products are          motions moot, dismissed Kellogg’s bad faith infringement
dissimilar and the connection between their marketing               and dilution claims. See Kellogg Co. v. Exxon Corp., 50
channels is attenuated.         These two propositions are          U.S.P.Q.2d 1499, 1507 (W.D. Tenn. 1998).
fundamentally irreconcilable. If the second were true, there
could be no likelihood of confusion; without a likelihood of          Kellogg raises the following assignments of error on
confusion, the plaintiff would not have a provable claim of         appeal: (1) the district court improperly granted summary
infringement; in the absence of a provable claim of                 judgment because Exxon presented no evidence that Kellogg
infringement, there would be no basis for the plaintiff’s filing    acquiesced in Exxon’s use of its cartoon tiger in connection
8       Kellogg Co. v. Exxon Corp.                  Nos. 98-6237/6360           Nos. 98-6237/6360           Kellogg Co. v. Exxon Corp.       21

with the sale of non-petroleum products; (2) the district court                 connection with food, beverages, and retail convenience
improperly denied Kellogg’s progressive encroachment claim                      stores.
because progressive encroachment is not limited by a
requirement of “direct competition” and the district court                        To defeat a suit for injunctive relief, a defendant must
failed to consider the likelihood of confusion between the                        also prove elements of estoppel which requires more than
marks; (3) the district court improperly denied Kellogg’s                         a showing of mere silence on the part of the plaintiff;
abandonment claim because there are genuine issues of                             defendant must show that it had been misled by plaintiff
material fact with regard to whether Exxon’s use of its                           through actual misrepresentations, affirmative acts of
cartoon tiger during the 1980s was bona fide or simply a sham                     misconduct, intentional misleading silence, or conduct
to protect its rights in the mark; and (4) the district court                     amounting to virtual abandonment of the trademark.
improperly dismissed Kellogg’s bad faith infringement and
dilution claims as moot. In this appeal, Kellogg has                            SCI, 748 F. Supp. at 1262. The record reflects a genuine
abandoned its claim1for damages and pursues only its claim                      factual dispute as to whether Kellogg was put on notice of
for injunctive relief.                                                          such use by Exxon in the mid 1980s or the early 1990s;
                                                                                indeed, the evidence suggests that in 1992, when Kellogg
                              ANALYSIS                                          requested examples of Exxon’s then-current use of its cartoon
                                                                                tiger in the United States, Exxon did not include a single
  We review de novo a district court’s order granting                           example of its cartoon tiger used in connection with the sale
summary judgment. See Avery v. King, 110 F.3d 12, 13 (6th                       of food items, leading Kellogg to believe that Exxon’s use of
Cir. 1997). Summary judgment is appropriate when there                          its cartoon tiger in the United States was limited to the
exists “no genuine issue of material fact and . . . the moving                  promotion of petroleum products. But even if we were to
                                                                                assume for the sake of argument that Kellogg should have
                                                                                known as early as 1984, when Exxon opened its first
    1
                                                                                convenience store, that Exxon was using the cartoon tiger to
       Kellogg also sought declaratory relief pursuant to 28 U.S.C.             promote the sale of food products, Kellogg’s failure to bring
§§ 2201, 2202, requesting that Exxon be required to abandon with                suit until 1996 was not “so outrageous, unreasonable and
prejudice its application for federal trademark registration of its “Hungry     inexcusable as to constitute a virtual abandonment of its
Tiger & Design” mark. Exxon filed a counterclaim pursuant to 15 U.S.C.
§ 1119 for declaratory judgment of its right to register federally its          right” to seek injunctive relief with regard to the sale of non-
“Hungry Tiger & Design” mark, as well as its “Whimsical Tiger” and              petroleum products. See University of Pittsburgh, 686 F.2d
“Tiger Express” marks, based on its intent to use those marks to promote        at 1044-45. There simply is no evidence in this record that in
retail convenience store services rendered at gasoline stations. The            waiting until 1996 to file its complaint, Kellogg actively
district court did not rule on Exxon’s counterclaim, stating only that          consented to Exxon’s use of its cartoon tiger in connection
Kellogg failed to put Exxon’s use of the “Hungry Tiger” at issue in any
of its dispositive motions before the court and that Exxon’s creation and       with the sale of non-petroleum products or that it engaged in
use of the “Hungry Tiger” is not determinative of Exxon’s claim of              some “affirmative conduct in the nature of an estoppel, or
acquiescence or Kellogg’s claims of abandonment and progressive                 conduct amounting to ‘virtual abandonment.’ ” See Tandy,
encroachment. The district court found in favor of Exxon in all respects        769 F.2d at 366 n.2 (internal citations omitted).
and never addressed Exxon’s counterclaim for declaratory judgment to
register its marks. Because Exxon filed a timely notice of cross-appeal to        We therefore hold that, as a matter of law, Kellogg did not
preserve its right to reassert its counterclaim in the event that any portion
of Kellogg’s claims is remanded for further proceedings, and because we         acquiesce in Exxon’s use of its cartoon tiger in connection
reverse the district court decision in its entirety, we note that Exxon is      with the sale of non-petroleum products. Accordingly, we
entitled to pursue its counterclaim on remand.
20    Kellogg Co. v. Exxon Corp.            Nos. 98-6237/6360       Nos. 98-6237/6360           Kellogg Co. v. Exxon Corp.           9

opposition from Kellogg–and Kellogg did not file suit until         party is entitled to judgment as a matter of law.” FED R. CIV.
31 years later. See Kellogg, 50 U.S.P.Q.2d at 1505.                 P. 56(c). “[T]he mere existence of some alleged factual
                                                                    dispute between the parties will not defeat an otherwise
   We think that the district court erred in this conclusion.       properly supported motion for summary judgment; the
The failure to oppose Exxon’s registration of its tiger and the     requirement is that there be no genuine issue of material
lapse of time from that event until the filing of this action are   fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-8
not dispositive here. Although Exxon did in fact register its       (1986). The nonmoving party “must set forth specific facts
“Whimsical Tiger” trademark in 1965—with no opposition              showing that there is a genuine issue for trial” such that a jury
from Kellogg—Exxon’s trademark registration was for use in          reasonably could find for the plaintiff. Id. at 250 (citing FED.
connection with the sale of petroleum products, a product and       R. CIV. P. 56(e)). However, it is for the jury and not the judge
product market with which Kellogg had no connection.                to weigh the evidence and draw inferences from the facts. See
Exxon had used its cartoon tiger to promote petroleum sales         id. at 250. “The evidence of the nonmovant is to be believed,
and Kellogg used its trademark to promote food sales; the two       and all justifiable inferences are to be drawn in his favor.” Id.
marks peaceably co-existed, each catering to its own market.        at 255 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-
Because proof of the likelihood of confusion is necessary in        59 (1970)); see also Wathen v. General Electric Co., 115 F.3d
any trademark infringement claim, Kellogg was not obligated         400, 403 (6th Cir. 1997) (holding that when reviewing a
to bring suit at that time in order to protect its trademark. It    motion for summary judgment, the district court must resolve
is undisputed, however, that at some point after registering its    all ambiguities and draw all factual inferences in favor of the
cartoon tiger in 1965, Exxon moved into the non-petroleum           nonmoving party).
market of food, beverages, and retail convenience stores and
used its cartoon tiger in connection with those sales. The            Kellogg alleged trademark infringement against Exxon in
point at which Exxon established itself in this non-petroleum       violation of § 1114 of the Lanham Act, which states:
market was the point at which Kellogg knew or should have
known that it now had a provable claim for infringement; it           (1) Any person who shall, without the consent of the
was at this point that Kellogg’s duty to defend its trademark         registrant–(a) use in commerce any reproduction,
was triggered, and it is from this point that any delay must be       counterfeit, copy, or colorable imitation of a registered
measured for purposes of determining laches or acquiescence.          mark in connection with the sale, offering for sale,
We hold that Exxon’s 1965 registration was insufficient to            distribution, or advertising of any goods or services on or
put Kellogg on notice of Exxon’s later use of its cartoon tiger       in connection with which such use is likely to cause
in connection with the sale of non-petroleum products. The            confusion, or to cause mistake, or to deceive . . . shall be
district court’s failure to distinguish between Exxon’s sale of       liable in a civil action by the registrant for the remedies
petroleum and non-petroleum products resulted in the clearly          hereinafter provided.
erroneous conclusion that Kellogg acquiesced in Exxon’s use
of its cartoon tiger to promote any and all of its products.        15 U.S.C. § 1114(1). In Daddy’s Junky Music Stores, Inc. v.
                                                                    Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997),
  Although Kellogg originally challenged Exxon’s use of its         we set forth the elements necessary to succeed on a claim of
cartoon tiger in connection with both petroleum and non-            trademark infringement.
petroleum products, Kellogg now seeks injunctive relief only
to prohibit Exxon’s continued use of its cartoon tiger in             The touchstone of liability under § 1114 is whether the
                                                                      defendant’s use of the disputed mark is likely to cause
                                                                      confusion among consumers regarding the origin of the
10    Kellogg Co. v. Exxon Corp.           Nos. 98-6237/6360       Nos. 98-6237/6360               Kellogg Co. v. Exxon Corp.           19

  goods offered by the parties. When determining whether           resulting from the defendant’s moving into the same or
  a likelihood of confusion exists, a court must examine           similar market area and placing itself more squarely in
  and weigh the following eight factors:                           competition with the plaintiff. This approach is consistent
                                                                   with the principle that the touchstone of liability for
     1. strength of the senior mark;                               trademark infringement is the likelihood of confusion, not
     2. relatedness of the goods or services;                      direct competition of identical products. Although direct
     3. similarity of the marks;                                   competition of identical products certainly would make it
     4. evidence of actual confusion;                              easier for a plaintiff to show a likelihood of confusion, this
     5. marketing channels used;                                   factor alone is not dispositive of progressive encroachment.
     6. likely degree of purchaser care;                           In evaluating a plaintiff’s claim of progressive encroachment,
     7. the intent of defendant in selecting the mark; and         a court must perform a likelihood of confusion analysis,
     8. likelihood of expansion of the product lines.              informed by factors such as whether the defendant has
                                                                   brought itself more squarely into competition with the
  When applying these factors to a given case, a court must        plaintiff, whether the defendant has made changes to its mark
  remember that these factors imply no mathematical                over the years so that it more closely resembles plaintiff’s
  precision, but are simply a guide to help determine              mark, whether the parties market to the same customers or
  whether confusion is likely. They are also interrelated in       area, and whether the parties sell products interchangeable in
  effect. Each case presents its own complex set of                use.
  circumstances and not all of these factors may be
  particularly helpful in any given case. But a thorough              In the case before us here, the district court held both that
  and analytical treatment must nevertheless be attempted.         Kellogg had acquiesced in Exxon’s use of the cartoon tiger
  The ultimate question remains whether relevant                   and that Kellogg could not demonstrate progressive
  consumers are likely to believe that the products or             encroachment by Exxon on Kellogg’s mark. We will address
  services offered by the parties are affiliated in some way.      first the district court’s holding that Kellogg acquiesced in
                                                                   Exxon’s use of the cartoon tiger.
Id. at 280 (internal quotation marks, citations, and alterations
omitted). Thus, crucial to any trademark infringement claim           In granting Exxon’s motion for summary judgment based
is the plaintiff’s ability to show a likelihood of confusion on    on acquiescence, the district court held that Kellogg’s
some fundamental level.                                            remaining silent for a grossly extended period of time and
                                                                   refusing to facilitate the protection of its trademark
        A. Laches, Acquiescence and Progressive                    constituted “conduct amounting to virtual abandonment” such
                    Encroachment                                   that it acquiesced in Exxon’s infringing use of its cartoon
                                                                   tiger. See SCI, 748 F. Supp. at 1262; Tandy, 7693 F.2d at 366
   In its motion for summary judgment, Exxon asserted the          n.2. Relying on the Anheuser-Busch decision, the district
affirmative defenses of laches and acquiescence. Although          court found that Kellogg similarly was “grossly remiss” in
laches precludes a plaintiff from recovering damages, it does      that Exxon registered its “Whimsical Tiger” in 1965–with no
not bar injunctive relief. See TWM Mfg. Co., Inc. v. Dura
Corp., 592 F.2d 346, 349-50 (6th Cir. 1979) (“Laches alone
does not foreclose a plaintiff’s right in an infringement action       3
                                                                         The time period that the Anheuser-Busch Court considered so
to an injunction and damages after the filing of the suit. Only    grossly extended as to constitute acquiescence and bar injunctive relief
by proving the elements of estoppel may a defendant defeat         was 31 years (1909 to 1940). See Anheuser-Busch, 175 F.2d at 374.
18    Kellogg Co. v. Exxon Corp.            Nos. 98-6237/6360       Nos. 98-6237/6360           Kellogg Co. v. Exxon Corp.        11

Manufacturers Screw Products to Stronghold Screw Products,          such prospective relief.”); Tandy Corp. v. Malone & Hyde,
and the plaintiff filed suit in 1948. See id. The district court    Inc., 769 F.2d 362, 366 n.2 (6th Cir. 1985) (same). Because
held that the plaintiff was barred by laches because it knew of     Kellogg withdrew its claim for actual and punitive damages,
defendant’s infringing use of its trademark as early as 1940 or     seeking injunctive relief only, the district court properly
1941 and did not bring suit until 1948. See id. The Seventh         determined that laches was inapplicable and that Exxon must
Circuit reversed the district court under a theory of               prove acquiescence.
progressive encroachment, stating:
                                                                       Acquiescence, like laches, requires a “finding of conduct on
  Prior to 1946 there was no confusion among prospective            the plaintiff’s part that amounted to an assurance to the
  customers that had come to the attention of plaintiff's           defendant, express or implied, that plaintiff would not assert
  officers. It was defendant’s incorporation of the word            his trademark rights against the defendant.” Elvis Presley
  “Stronghold” into its business name that caused most of           Enter., Inc., v. Elvisly Yours, Inc., 936 F.2d 889, 894 (6th Cir.
  the confusion. Defendant’s course was “progressive * *            1991) (quoting Sweetheart Plastics, Inc. v. Detroit Forming,
  * encroachment” and “such a course does not tend to               Inc., 743 F.2d 1039, 1046 (4th Cir. 1984)). Although both
  arouse hostile action until it is fully developed.”               laches and acquiescence require proof that the party seeking
                                                                    to enforce its trademark rights has unreasonably delayed
Independent Nail & Packing, 205 F.2d at 927 (emphasis               pursuing litigation and, as a result, materially prejudiced the
added) (citing O. & W. Thum, 245 F. at 623). In determining         alleged infringer, acquiescence requires more. See Elvis, 936
whether, for purposes of the defendant’s laches defense, the        F.2d at 894 (holding that with acquiescence, “more is
plaintiff had unreasonably delayed in filing suit, the court did    necessary than the ordinary requirement of showing
not consider the period prior to the defendant’s incorporation      unreasonable delay and prejudice to the defendant”); Tandy,
of the word “Stronghold” into its business name, when there         769 F.2d at 366 n.2 (“To deny injunctive relief in trademark
was little likelihood of confusion. Rather, the court               litigation, . . . some affirmative conduct in the nature of an
determined when the likelihood of confusion began to loom           estoppel, or conduct amounting to ‘virtual abandonment,’ is
large, considering such factors as the similarity in scope of the   necessary.”) (internal citations omitted); Sara Lee Corp. v.
parties’ geographic markets, the degree to which the parties        Kayser-Roth Corp., 81 F.3d 455, 462 (4th Cir. 1996)
contacted the same prospective customers and appealed to the        (“Although the doctrines of acquiescence and laches, in the
same general users’ market, and the interchangeability of the       context of trademark law, both connote consent by the owner
products the parties sold; the court calculated the                 to an infringing use of his mark, acquiescence implies active
reasonableness of the plaintiff’s delay from that point. The        consent, while laches implies a merely passive consent.”); SCI
court’s finding of progressive encroachment was not                 Sys., Inc. v. Solidstate Controls, Inc., 748 F. Supp. 1257, 1262
dependent upon a finding of direct competition between              (S.D. Ohio 1990) (same).
identical products; rather the progressive encroachment
finding involved a recognition that the defendant’s increasing         In University of Pittsburgh v. Champion Prod., Inc., 686
use of the challenged word was not actionable until it actually     F.2d 1040, 1044-45 (3d Cir. 1982), a decision relied upon by
caused a likelihood of confusion.                                   this Court in Tandy, the Third Circuit recognized that
                                                                    although mere delay by an injured party in bringing suit
  It is clear from all of these cases that the progressive          would not bar injunctive relief, “there is that narrow class of
encroachment analysis turns not on the single question of           cases where the plaintiff's delay has been so outrageous,
direct competition, but rather, on the likelihood of confusion      unreasonable and inexcusable as to constitute a virtual
12       Kellogg Co. v. Exxon Corp.           Nos. 98-6237/6360         Nos. 98-6237/6360           Kellogg Co. v. Exxon Corp.        17

abandonment of its right.” (citing Anheuser-Busch, Inc. v.                In Prudential Ins. Co. v. Gibraltar Fin. Corp., 694 F.2d
DuBois Brewing Co., 175 F.2d 370, 374 (3d Cir. 1949)                    1150, 1154 (9th Cir. 1982), a decision largely relied upon by
(“[M]ere delay by the injured party in bringing suit would not          the SCI Court, the plaintiff was a general insurance provider,
bar injunctive relief. This doctrine, however, has its limits;          and the defendant was a savings and loan association with
for example, had there been a lapse of a hundred years or               insurance sales comprising less than 0.3 % of its business.
more, we think it highly dubious that any court of equity               See id. at 1155. Relying on a number of progressive
would grant injunctive relief against even a fraudulent                 encroachment cases, the Prudential Court stated:
infringer.”)).
                                                                          These cases all rely on the principle that if the junior user
  Implicit in a finding of laches or acquiescence is the                  of a mark moves into direct competition with the senior
presumption that an underlying claim for infringement existed             user, selling the same “product” through the same
at the2 time at which we begin to measure the plaintiff’s                 channels and causing actual market confusion, laches is
delay. In Brittingham v. Jenkins, 914 F.2d 447 (4th Cir.                  no defense. Gibraltar has not moved into direct
1990), the Fourth Circuit held:                                           competition with Prudential as contemplated in these
                                                                          cases. Gibraltar and Prudential do not offer the same
  While the operation of laches depends upon the                          services to any substantial extent and there is no evidence
  particular facts and circumstances of each case, the                    that actual confusion of their services has occurred.
  following factors ordinarily should be considered: (1)
  whether the owner of the mark knew of the infringing                  Id. at 1154 (emphasis added) (citing Chandon Champagne
  use; (2) whether the owner’s delay in challenging the                 Corp. v. San Marino Wine Corp., 335 F.2d 531, 535 (2nd Cir.
  infringement of the mark was inexcusable or                           1964); Standard Oil Co. v. Standard Oil Co., 252 F.2d 65
  unreasonable; and (3) whether the infringing user was                 (10th Cir. 1958); Independent Nail & Packing Co. v.
  unduly prejudiced by the owner’s delay.                               Stronghold Screw Products, Inc., 205 F.2d 921, 927 (7th Cir.
                                                                        1953); Miss Universe, Inc. v. Patricelli, 271 F. Supp. 104,
Id. at 456. In Sara Lee, the Fourth Circuit recognized that a           110 (D. Conn. 1967)).
laches analysis “assumes the existence of an infringement for
an extended period prior to the commencement of litigation.”               Kason, SCI and Prudential, however, do not stand for the
81 F.3d at 462 (relying on Brittingham and holding that “to             proposition that direct competition of identical products in
the extent that a plaintiff’s prior knowledge may give rise to          identical markets is required for a finding of progressive
the defense of estoppel by laches, such knowledge must be of            encroachment. For example, in Independent Nail & Packing,
a pre-existing, infringing use of a mark.”). In other words,            205 F.2d at 923, the plaintiff was a manufacturer of nails, and
when a defendant charged with trademark infringement avails             registered its “Stronghold Nails” trademark in 1938. Shortly
itself of an acquiescence defense, we must presume the                  thereafter, the defendant, a manufacturer of screws, nuts, and
existence of some underlying infringement to which the                  bolts, began using the name “Stronghold” in the design of a
plaintiff acquiesced, and any delay attributable to the plaintiff       bolt and washer displayed on its business forms and catalogs;
must be measured from the time at which the plaintiff knew              also displayed on these items was the company’s name,
                                                                        Manufacturers Screw Products. See id. at 923-24. The
                                                                        plaintiff was aware of defendant’s use of the name
     2
      In this context, we use the analysis of laches and acquiescence   “Stronghold” on its business forms as early as 1941. See id.
interchangeably given that acquiescence encompasses the elements of     at 924, 927. In 1946, the defendant changed its name from
laches.
16   Kellogg Co. v. Exxon Corp.            Nos. 98-6237/6360       Nos. 98-6237/6360            Kellogg Co. v. Exxon Corp.         13

  In SCI Systems, 748 F. Supp. at 1257, the district court also    or should have known that this infringement had ripened into
was faced with a progressive encroachment claim countering         a provable claim. See Kason Indus., Inc. v. Component
a laches defense. There, the plaintiff provided a variety of       Hardware Group, 120 F.3d 1199, 1206 (11th Cir. 1997)
electrical and electronic goods, including electrical power        (“[D]elay is to be measured from the time at which the
supplies and engineering services, and the defendant               plaintiff knows or should know she has a provable claim for
manufactured and sold electrical power control equipment.          infringement.”); Gasser Chair Co. v. Infanti Chair Mfg.
See id. at 1259. The plaintiff admitted that it had been aware     Corp., 60 F.3d 770, 777 (Fed. Cir. 1995) (holding that the
of defendant’s trademark and product since 1969, but claimed       trigger for delay begins when the plaintiff’s “right ripens into
that the defendant had “only recently departed from the            one entitled to protection”) (citation omitted).
business practices which had allowed the parties to co-exist
peaceably for many years, and that defendant has only                Potential plaintiffs in trademark infringement cases steer a
recently encroached on plaintiff’s rights.” Id. at 1262. The       hazardous course between the Scylla of laches and
plaintiff presented evidence showing that the defendant made       acquiescence and the Charybdis of premature litigation. The
certain changes to its mark, making it more similar in             Fourth Circuit articulated this quandary as follows:
appearance to plaintiff’s mark. See id. at 1262-63.
                                                                     From the time that [defendant] Kayser-Roth first
  [I]t was not until the 1980’s when defendant entered into          introduced its Leg Looks (R) products, [plaintiff] Sara
  the data processing market, of which plaintiff had been            Lee has been on the horns of a dilemma: If [the
  a part for many years, by offering uninterruptible power           trademark owner] waits for substantial injury and
  supplies specially designed for use with data processing           evidence of actual confusion, it may be faced with a
  equipment . . . that actual confusion between the                  laches defense. If it rushes immediately into litigation, it
  companies developed. It was not until this time, plaintiff         may have little or no evidence of actual confusion and
  contends, that the defendant changed its color scheme              real commercial damage, may appear at a psychological
  and its trademark presentation significantly which                 disadvantage as “shooting from the hip” and may even
  brought its usage of the mark “SCI” much closer to                 face a counterclaim for overly aggressive use of
  plaintiff’s use.                                                   litigation.
Id. at 1262 (emphasis added).                                      Sara Lee, 81 F.3d at 462 (internal quotation marks and
                                                                   citation omitted) (third alteration in original). This common
   The SCI Court recognized that under a progressive               predicament has given rise to the doctrine of progressive
encroachment analysis, changes to a trademark and entry into       encroachment.
the same marketing area can defeat a claim of laches. See id.
at 1262. Because the defendant in SCI had “expanded its line          Progressive encroachment is relevant in assessing whether
and entered into new marketing areas[, and] . . . changed the      laches or acquiescence may be used to bar a plaintiff’s
appearance of its mark through presentation changes in design      trademark claim; it applies in cases where the defendant has
and color,” the SCI Court, without addressing the merits of        engaged in some infringing use of its trademark—at least
the underlying dispute or whether defendant was within its         enough of an infringing use so that it may attempt to avail
rights to make such changes, reversed the district court’s grant   itself of a laches or acquiescence defense—but the plaintiff
of summary judgment in favor of the defendant on the defense       does not bring suit right away because the nature of
of laches. Id. at 1263.                                            defendant’s infringement is such that the plaintiff’s claim has
                                                                   yet to ripen into one sufficiently colorable to justify litigation.
14    Kellogg Co. v. Exxon Corp.             Nos. 98-6237/6360        Nos. 98-6237/6360          Kellogg Co. v. Exxon Corp.       15

  In Kason, the Eleventh Circuit addressed a plaintiff’s              1997)); see also O. & W. Thum Co. v. Dickinson, 245 F. 609,
progressive encroachment claim in the context of a                    623 (6th Cir. 1917) (recognizing that progressive
defendant’s laches defense, explaining the relationship               encroachment is “a course [that] does not tend to arouse
between the two doctrines as follows:                                 hostile action until it is fully developed”). Progressive
                                                                      encroachment is an offensive countermeasure to the
  Though courts typically discuss encroachment as an                  affirmative defenses of laches and acquiescence; upon a
  excuse for delay, a close examination of . . . cases reveals        finding of progressive encroachment, the delay upon which
  that the doctrine significantly overlaps the courts’ inquiry        those defenses are premised is excused. In other words,
  into when delay begins. In AmBrit, for example, this                progressive encroachment allows the plaintiff to demonstrate
  court measured delay from the point where the plaintiff             that although it might have been justified in bringing suit
  knew the defendant was manufacturing the allegedly                  earlier but did not, certain factors now exist that have
  infringing product, but we considered the plaintiff's               prompted it to do so.
  reasonable explanation for failing to sue immediately.
                                                                        The Kason Court, like many courts before it, recognized
Kason, 120 F.3d at 1206 (citing AmBrit, Inc. v. Kraft, Inc.,          that implicit in a progressive encroachment analysis is an
812 F.2d 1531, 1546 (11th Cir. 1986)). The plaintiff in               inquiry into the likelihood of confusion between the parties’
Kason was a manufacturer and distributor of commercial                marks.
refrigeration and food services hardware, and the defendant
produced and marketed nearly identical hardware. See id. at             The district court should have evaluated under the
1201. Both parties competed in two markets: the original                progressive encroachment theory the point at which
equipment manufacturer’s market (OEMs) and the                          Kason could have demonstrated likelihood of confusion
replacement parts distribution markets. See id. However,                in its primary (either OEM or replacement) market . . . .
with regard to some particular parts, the plaintiff alleged that        It is not clear when Kason determined there was a
the defendant had been competing only in one market and had             likelihood of confusion in either market to file a claim
slowly encroached upon the other market—that is, the market             for dress infringement. Thus, the district court on
in which plaintiff had been competing. See id. at 1201-2.               remand must view the merits of Kason’s claims of trade
Kason held that “where a defendant begins use of a trademark            dress infringement for each product in terms of the
or trade dress in the market, and then directs its marketing or         market involved. It must determine whether there is a
manufacturing efforts such that it is placed more squarely in           difference between the two markets material to the
competition with the plaintiff, the plaintiff's delay is                infringement claim, and whether and when any
excused.” Id. at 1205.                                                  likelihood of confusion might have ripened into a claim.
                                                                        We deem all of these facts not only relevant to the merits
   Because the doctrines of laches and acquiescence must                of Kason’s claims, but also relevant to the equitable
assume some underlying infringement, we recognize                       doctrine of laches and when, if at all, Kason legally could
progressive encroachment as simply giving the plaintiff some            have asserted a provable claim of trade dress
latitude in the timing of its bringing suit, that is, waiting until     infringement. On the record submitted, without further
the “likelihood of confusion looms large” to bring the action.          explication by the district court, we cannot say as a
Sara Lee, 81 F.3d at 462 (quoting THOMAS MCCARTHY,                      matter of law that laches bars any claim.
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,
§ 31.06[2][a] (3d ed. 1995), renumbered as § 31.19 (4th ed.           Kason, 120 F.3d at 1206-07 (emphasis added).
