PUBLISHED

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

SARA LEE CORPORATION,
Plaintiff-Appellant,

v.                                                                    No. 94-2562

KAYSER-ROTH CORPORATION,
Defendant-Appellee.

Appeal from the United States District Court
for the Middle District of North Carolina, at Winston-Salem.
Frank W. Bullock Jr., Chief District Judge.
(CA-92-460-6)

Argued: May 4, 1995

Decided: April 17, 1996

Before WIDENER, HALL, and WILKINS, Circuit Judges.

_________________________________________________________________

Reversed and remanded with instructions by published opinion. Judge
Hall wrote the majority opinion, in which Judge Wilkins concurred.
Judge Widener wrote a separate dissenting opinion.

_________________________________________________________________

COUNSEL

ARGUED: George Lester Little, Jr., Rodrick John Enns, PETREE
STOCKTON, L.L.P., Winston-Salem, North Carolina, for Appellant.
Alan William Duncan, SMITH, HELMS, MULLISS & MOORE,
L.L.P., Greensboro, North Carolina, for Appellee. ON BRIEF: Dan-
iel R. Taylor, Jr., J. David Mayberry, PETREE STOCKTON, L.L.P.,
Winston-Salem, North Carolina, for Appellant. Jonathan A. Berkel-
hammer, SMITH, HELMS, MULLISS & MOORE, L.L.P., Greens-
boro, North Carolina, for Appellee.

_________________________________________________________________

OPINION

HALL, Circuit Judge:

Sara Lee Corporation appeals the district court's entry of judgment
for Kayser-Roth Corporation in Sara Lee's action for trademark
infringement. The district court found that Kayser-Roth's use of the
mark Leg LooksR on a line of its No nonsenseR hosiery products sold
in food, drug, and mass merchandising outlets did not infringe on
Sara Lee's L'eggsR trademark. Because the court's finding was
clearly erroneous, we reverse its judgment and remand the case with
directions to enter judgment for Sara Lee. We further instruct the dis-
trict court to grant Sara Lee's request that Kayser-Roth be perma-
nently enjoined from using its Leg LooksR trademark in a manner that
infringes on the L'eggsR mark.

I.

Sara Lee manufactures pantyhose and other hosiery products for
retail sale under the HanesR and L'eggsR trademarks. Until L'eggsR
penetrated the "FDM market"1 in the early 1970s, women's hosiery
was sold only in department stores. Sara Lee's most popular L'eggsR
product is its Sheer EnergyR line of light support pantyhose, made
from nylon and spandex. Sara Lee also manufactures nylon-only
products, but its nylon-and-spandex brands account for the largest
share of its profits from hosiery sales. Sara Lee dominates the nylon-
and-spandex pantyhose market; about three of every four pairs sold
are Sheer EnergyR products.

Kayser-Roth is Sara Lee's only nationwide competitor. It followed
Sara Lee into the FDM market in 1973, when it introduced its No
nonsenseR line of pantyhose. In contrast to Sara Lee's, Kayser-Roth's
_________________________________________________________________
1 The FDM market is comprised of food, drug, and mass merchandising
(Wal-Mart, K-mart, etc.) outlets.

                    2
sales of nylon-only products far exceed those of its nylon-and-
spandex lines.

Over the last twenty-odd years, Kayser-Roth and Sara Lee have
spent hundreds of millions of dollars in advertising their hosiery prod-
ucts. As a result, the companies have reaped billions in sales, and both
No nonsenseR and L'eggsR have become household names.

Sara Lee and Kayser-Roth are intense rivals and frequent court
opponents. In early 1992, Kayser-Roth learned of Sara Lee's plan to
introduce L'eggs EverydayR, a new line of nylon-only hosiery.
Kayser-Roth decided to respond by simultaneously introducing its
own new line of nylon-and-spandex hosiery, designed to be priced
lower than Sheer EnergyR.

The new line required a name. Kayser-Roth had, during the previ-
ous summer, applied to the United States Patent and Trademark
Office to register the designations "Sheer Vigor" and "Sheer Invigora-
tion." Sara Lee learned of the applications, and it filed the instant suit
for declaratory and injunctive relief on July 22, 1992, alleging that
Kayser-Roth had violated Sections 32 and 43(a) of the Lanham Act,
15 U.S.C. § 1051 et seq.2
_________________________________________________________________
2 See 15 U.S.C. §§ 1114 and 1125(a). Section 1114 provides that the
holder of a registered trademark can pursue certain civil remedies in the
district court against

          (1) Any person who shall, without the consent of the regis-
          trant--

          (a) use in commerce any reproduction, counterfeit, copy,
          or colorable imitation of a registered mark in connection
          with the sale, offering for sale, distribution, or advertising of
          any goods or services on or in connection with which such
          use is likely to cause confusion, or to cause mistake, or to
          deceive; or

          (b) reproduce, counterfeit, copy, or colorably imitate a
          registered mark and apply such . . . to labels, signs, prints,
          packages, wrappers, receptacles or advertisements intended
          to be used in commerce upon or in connection with the sale,
          offering for sale, distribution, or advertising of goods or ser-

                    3
Kayser-Roth instead marketed its new product as"Leg LooksR," a
trademark that it already owned. Undaunted, Sara Lee amended its
complaint on September 9, 1992, to assert that the name Leg LooksR
infringed on its L'eggsR mark, and that the product's packaging was
confusingly similar to the trade dress of its Sheer EnergyR line. See
note 2, supra. Sara Lee also amended its prayer for relief to request
money damages. Kayser-Roth counterclaimed, alleging that Sara Lee
had engaged in numerous antitrust violations and in false advertising.

The case was assigned to a magistrate, who recommended that
Kayser-Roth be preliminarily enjoined from continuing to sell Leg
_________________________________________________________________
         vices on or in connection with which such use is likely to
         cause confusion, or to cause mistake, or to deceive.. . .

Akin to § 1114's protection of trademarks,§ 1125(a) proscribes
encroachments on a product's "trade dress," which is, at the very least,
"the total look of a product and its packaging. .. ." 1 J. Thomas McCar-
thy, McCarthy on Trademarks and Unfair Competition,§ 8.01[2] (3d ed.
1995). The statute permits "any person who believes that he or she is
likely to be damaged" to file suit against

          (1) Any person who, on or in connection with any goods or
          services, or any container for goods, uses in commerce any
          word, term, name, symbol, or device, or any combination
          thereof, or any false designation of origin, false or misleading
          description of fact, or false or misleading representation of fact,
          which--

          (A) is likely to cause confusion, or to cause mistake, or
          to deceive as to the affiliation, connection, or association of
          such person with another person, or as to the origin, sponsor-
          ship, or approval of his or her goods, services, or commercial
          activities by another person, or

          (B) in commercial advertising or promotion, misrepre-
          sents the nature, characteristics, qualities, or geographic ori-
          gin or his or her or another person's goods, services, or
          commercial activities . . . .

Sara Lee's initial complaint, as well as the amended version it later filed,
see text infra, also alleged that Kayser-Roth's actions violated state laws
regarding unfair competition, deceptive trade practices, and trademark
dilution.

                     4
LooksR as packaged. The district court adopted the magistrate's rec-
ommendation; Kayser-Roth thereafter recalled its Leg LooksR prod-
ucts and changed the packaging.3 Kayser-Roth nevertheless continued
to affix the Leg LooksR mark to its new nylon-and-spandex product.

On January 11, 1993, Sara Lee moved to supplement its amended
complaint to reassert all of its federal and state claims as to the
repackaged Leg LooksR product; in March, it once again moved for
a preliminary injunction. The magistrate conducted a ten-day hearing
on the motion in August 1993. At the conclusion of the hearing, the
parties and the district court agreed, inter alia, that (1) Sara Lee
would waive all claims for money damages, (2) Sara Lee's remaining
claims for equitable relief would be bifurcated from Kayser-Roth's
counterclaims, and (3) the just-concluded hearing would be treated as
a trial on the merits of Sara Lee's equitable claims, with the matter
referred to the magistrate for decision, subject to de novo review by
the district court.4

On November 30, 1993, the magistrate issued a report and recom-
mendation; he advised the district court to enter judgment for Sara
Lee on all claims. The magistrate recommended that Kayser-Roth be
_________________________________________________________________
3 The Leg LooksR packaging used during the latter portion of 1992
indeed bore a close resemblance to that of the Sheer EnergyR line. The
foreground and background colors and the size, slant, and font of the pri-
mary lettering were very similar. In addition, both packages were styled
with thin, slanted, widely spaced lines, giving an appearance reminiscent
of sunlight peeking through Venetian blinds that are not quite closed.

The redesigned packages, introduced in early 1993, have eliminated
the lettering and styling similarities. A white, shimmering silhouette of
a leg in the kneeling position, dissolving just above the knee, has been
emplaced against a black, rectangular field, which is itself centered on a
brightly colored background (it appears to be an industry practice that the
dominant package color varies within the line itself, depending on the
particular product). The No nonsenseR trademark and the words "invigo-
rating pantyhose" appear more prominently on the new packaging.
4 Sara Lee's initial claims regarding Kayser-Roth's attempted registra-
tion of the Sheer Vigor and Sheer Invigoration trademarks were dis-
missed without prejudice by the consent of the parties on July 14, 1993.

                    5
permanently enjoined from using its Leg LooksR trademark in the
FDM market.5

Kayser-Roth objected to the magistrate's report and recommenda-
tion. The district court examined the record anew, and, on October 13,
1994, filed an opinion that adopted many of the magistrate's underly-
ing findings, yet disagreed with his conclusions.

The court found, as an initial matter, that Sara Lee's federal trade-
mark claim was foreclosed by the doctrines of laches and acquies-
cence; it further determined that, even if Sara Lee's trademark claim
were not equitably barred, Kayser-Roth's use of the Leg LooksR mark
did not violate the Lanham Act. The court likewise saw no merit in
Sara Lee's claim that Kayser-Roth's marketing of Leg LooksR in the
redesigned package infringed on the trade dress of Sara Lee's Sheer
EnergyR products.6 Consequently, the district court entered judgment
for Kayser-Roth on all of Sara Lee's claims. Sara Lee appeals.

II.

Although trademark law is imbued with numerous idiosyncracies,
the standard governing our review of the district court's findings of
fact in a trademark case is familiar. Generally speaking, we may set
aside such findings only if they are clearly erroneous, Fed. R. Civ. P.
52(a); Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1526 (4th Cir.
1984). However, we owe no deference to the district court's findings
if they are derived as a result of the court's misapplication of the law.
Pizzeria Uno at 1526.
_________________________________________________________________

5 The magistrate recommended against enjoining Kayser-Roth from
using its Leg LooksR mark in department store outlets where it had been
used prior to June 1, 1992. See Section III-A, infra.

6 The district court concluded that its findings in favor of Kayser-Roth
on the federal trademark and trade dress claims were dispositive of Sara
Lee's unfair competition and deceptive trade practice claims under state
law. Lastly, the court held that North Carolina did not recognize the tort
of trademark dilution.

                    6
III.

We must address at the threshold the district court's findings that
Sara Lee slept on its rights or, alternatively, that it acquiesced to
Kayser-Roth's current use of the Leg LooksR mark.

A.

During the 1980s, Kayser-Roth used the Leg Looks R mark on a line
of "fashion" nylon-only hosiery products in competition with Sara
Lee's HanesR line; after peaking in 1985, sales of Leg LooksR dropped
precipitously throughout the remainder of the decade. In their original
incarnation, Leg LooksR products were available only in upscale
department stores. No L'eggsR products have ever been sold in such
outlets.

From the outset, the HanesR division kept its corporate master fully
apprised of Kayser-Roth's marketing of Leg Looks R; nonetheless,
Sara Lee has not challenged Kayser-Roth's use of the Leg LooksR
mark until now. The question before us is whether, as Kayser-Roth
asserts, "now" is too late.

In a trademark case, courts may apply the doctrine of estoppel by
laches to deny relief to a plaintiff who, though having knowledge of
an infringement, has, to the detriment of the defendant, unreasonably
delayed in seeking redress. See 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 31.02 (3d ed. 1995)
[hereinafter McCarthy] ("Estoppel by laches [is] defined as that type
of delay in filing suit which causes prejudice to defendant and when
weighed with all other relevant equitable factors, results in a bar to
relief, either injunctive or monetary, or both.") (citation and internal
quotation marks omitted).7
_________________________________________________________________
7 In determining whether laches may operate as a defense to an
infringement claim, a court should ordinarily consider (1) whether the
owner of the trademark knew of the infringing use, (2) whether the
owner's delay in challenging the infringement of the mark was inexcus-
able or unreasonable, and (3) whether the infringing user has been
unduly prejudiced by the owner's delay. Brittingham v. Jenkins, 914 F.2d
447, 456 (4th Cir. 1990).

                     7
However, the doctrine is sparingly applied where, as here, a plain-
tiff seeks only equitable relief. See id. at§ 31.03[3][b] (reviewing
cases);8 see also Skippy, Inc. v. CPC Int'l, Inc., 674 F.2d 209, 212
(4th Cir.) ("While the availability of laches as a defense to claims for
injunctive relief may be limited . . . laches will bar a claim for dam-
ages for bad faith infringement.") (citations omitted), cert. denied,
459 U.S. 969 (1982). Moreover, in consideration of the public inter-
est, estoppel by laches may not be invoked to deny injunctive relief
if it is apparent that the infringing use is likely to cause confusion. 4
McCarthy at § 31.04[1]; see University of Pittsburgh v. Champion
Products, Inc., 686 F.2d 1040, 1044 (3d Cir.) ("Because laches is an
equitable doctrine, its application is inextricably bound up with the
nature and quality of the plaintiff's claim on the merits relevant to a
prospective injunction."), cert. denied, 459 U.S. 1087 (1982).
_________________________________________________________________

8 According to Professor McCarthy, cases involving the denial of
injunctive relief usually present one or more aggravating factors, causing
the balance of the equities (which has, at that point, favored the defen-
dant by virtue of the delay-and-prejudice analysis) to shift even further
to the defendant's advantage. These factors include (1) delay during
which the mark passed into usage as a generic name, (2) a grossly long
period of delay, (3) dubious proof of likelihood of confusion, (4) doubt
as to the plaintiff's title to the mark, (5) prior business dealings between
the parties that result in the plaintiff impliedly consenting to the defen-
dant's infringement, and (6) the defendant's good-faith development of
a specific territorial area.

We encountered the fifth of the above factors in Ambrosia Chocolate
Co. v. Ambrosia Cake Bakery, Inc., 165 F.2d 693 (4th Cir. 1947), cert.
denied, 333 U.S. 882 (1948). In Ambrosia, the chocolate company's
sales representative tried to sell the bakery certain ingredients to be used
in the manufacture of the latter's cakes. Afterward, the chocolatier's
vice-president sent a letter to the bakery, urging that the two companies
transact business and noting "that the name `Ambrosia' of your company
was the same as ours increased our interest, you may be sure." Id. at 694.
Eight years later, the chocolate company finally became interested
enough to file suit seeking to enjoin the bakery from further use of the
"Ambrosia" trademark. The district court dismissed the complaint, and
we affirmed, holding, inter alia, that the suit was barred by "laches,
acquiescence, and estoppel. . . ." Id.

                     8
In finding that Sara Lee was estopped by laches from asserting its
infringement claim, the district court failed to consider the relative
unavailability of that defense to preclude injunctive relief. In addition,
the court did not consider the public interest in avoiding confusion
between the L'eggsR and Leg Looks R trademarks, undoubtedly
because, as discussed in Section IV, infra, it miscalculated the likeli-
hood of that confusion. Because the district court either overlooked
or misapplied the law governing estoppel by laches, we are con-
strained to set aside its finding that the doctrine operates to bar the
instant suit. See Section II, supra.

We also note that the district court considered, but failed to fully
appreciate, the conundrum with which Sara Lee was presented when
Kayser-Roth expanded the use of its Leg LooksR mark to the FDM
market. Because L'eggsR hosiery was, then as now, sold exclusively
in FDM outlets, it is doubtful that Sara Lee could have proved that
its product would likely be confused with Kayser-Roth's. Of course,
the likelihood of confusion is the "keystone of infringement." 3
McCarthy § 23.01; see 15 U.S.C. §§ 1114(1), 1125(a)(1), note 2
supra. Indeed, to the extent that a plaintiff's prior knowledge may
give rise to the defense of estoppel by laches, such knowledge must
be of a pre-existing, infringing use of a mark. See note 7, supra
(Brittingham analysis assumes the existence of an infringement for an
extended period prior to the commencement of litigation).

The estoppel-by-laches defense arises only where the plaintiff has
unreasonably delayed its pursuit of a remedy. See Brittingham, 914
F.2d at 456, and note 7, supra. From the time that Kayser-Roth first
introduced its Leg LooksR products, Sara Lee has been on the horns
of a dilemma:

          If [the trademark owner] waits for substantial injury and evi-
          dence of actual confusion, it may be faced with a laches
          defense. If it rushes immediately into litigation, it may have
          little or no evidence of actual confusion and real commercial
          damage, may appear at a psychological disadvantage as
          "shooting from the hip" and may even face a counterclaim
          for overly aggressive use of litigation.

4 McCarthy § 31.06[2][c]. We agree with Professor McCarthy that
the owner "has no obligation to sue until `the likelihood of confusion

                     9
looms large.'" Id. at § 31.06[2][a] (quoting Johanna Farms, Inc. v.
Citrus Bowl, Inc., 468 F. Supp. 866, 881 (E.D.N.Y. 1978)). Sara Lee,
by waiting for Kayser-Roth to expand its use of the Leg LooksR mark
to the FDM market, chose to delay its pursuit of a remedy until its
right to protection had clearly ripened. Under the circumstances, we
adjudge its actions to have been entirely reasonable; the district court
clearly erred in finding otherwise.

B.

Likewise, the district court's finding that Sara Lee acquiesced in
Kayser-Roth's use of the Leg LooksR mark in the FDM market is
clearly erroneous. The basis for the court's decision was a written
agreement between the parties executed on April 30, 1991, in settle-
ment of a dispute over Sara Lee's application with the U.S. Patent and
Trademark Office to register "Lingerie Looks" as a trademark for
pantyhose. In the document's preface, the parties acknowledged that
Kayser-Roth already owned the registered trademarks Leg LooksR,
Career LooksR, Designer LooksR, and Silky LooksR; the substance of
the agreement addressed how Sara Lee's Lingerie Looks products
would be packaged and advertised to minimize any infringement on
Kayser-Roth's rights.

An infringement action may be barred by the doctrine of estoppel
by acquiescence where the owner of the trademark, by conveying to
the defendant through affirmative word or deed, expressly or
impliedly consents to the infringement. See 4 McCarthy § 31.14[1];
Sweetheart Plastics, Inc. v. Detroit Forming, Inc. , 743 F.2d 1039,
1046 (4th Cir. 1984). Although the doctrines of acquiescence and
laches, in the context of trademark law, both connote consent by the
owner to an infringing use of his mark, acquiescence implies active
consent, while laches implies a merely passive consent. 4 McCarthy
at § 31.14[1]; see Sweetheart Plastics at 1046.9
_________________________________________________________________

9 Thus, as we implied in Sweetheart Plastics at 1046, our decision in
Ambrosia, see note 8, supra, is most accurately classified as an illustra-
tion of the estoppel by acquiescence doctrine, even though the Ambrosia
court invoked the doctrine of estoppel by laches as an alternative ground
for its holding.

                    10
Sara Lee's entry into the 1991 settlement agreement with Kayser-
Roth was, no doubt, an affirmative act. However, just as a pre-
existing infringement is a prerequisite to the estoppel-by-laches
defense, see Section III-A, supra, estoppel by acquiescence requires
that the trademark owner knowingly consent -- albeit actively -- to
the defendant's infringing use of the mark. As we discussed in the
preceding section, it was by no means clear until 1992 that Sara Lee
could adduce persuasive evidence of a likelihood of confusion
between its L'eggsR trademark and Kayser-Roth's Leg LooksR mark.

In any event, it is obvious that the 1991 agreement was intended
only to govern Sara Lee's future actions in marketing its Lingerie
Looks brand; there is nothing in the agreement that can reasonably be
construed to immunize Kayser-Roth from liability for all future uses
-- especially infringing uses -- of any of its own marks. Moreover,
even if Kayser-Roth's estoppel-by-acquiescence defense were valid,
public policy dictates that -- like the doctrine of estoppel by laches
-- it not be rigidly applied in cases like this one, where the likelihood
of confusion is apparent. See Section III-A, supra; 4 McCarthy
§ 31.14[1] ("The defense of laches is trumped by a strong showing of
likely confusion of the public. Similarly, a strong showing of a likeli-
hood of confusion can trump even a proven case of acquiescence by
the senior user to the junior user's usage. . . .").

Accordingly, we reject Kayser-Roth's equitable defenses to the
instant suit, and we move on to address the merits of Sara Lee's
claims.

IV.

We may grant injunctive relief to the owner of a registered trade-
mark whose rights to the mark have been infringed on by another's
use of a copy or colorable imitation that is "likely to cause confusion,
or to cause mistake, or to deceive." 15 U.S.C.§ 1114(1); Pizzeria
Uno, 747 F.2d at 1527; see also Perini Corp. v. Perini Constr., Inc.,
915 F.2d 121, 127 (4th Cir. 1990) ("The ultimate question, for pur-
poses of determining liability in trademark infringement actions, is
whether there exists a likelihood that an appreciable number of ordi-
narily prudent purchasers will be misled, or indeed simply confused,
as to the source of the goods in question.") (citations and internal quo-

                     11
tation marks omitted). The test is likelihood of confusion; evidence of
actual confusion is unnecessary. Pizzeria Uno at 1527.

To ascertain the likelihood of confusion between two trademarks,
we consider a number of factors. These factors include:

          (1) the distinctiveness of the senior mark;

          (2) the similarity of the two marks;

          (3) the similarity of the goods or services that the marks
          identify;

          (4) the similarity of the facilities employed by the parties
          to transact their business;

          (5) the similarity of the advertising used by the parties;

          (6) the defendant's intent in adopting the same or similar
          mark; and

          (7) actual confusion.

Pizzeria Uno at 1527. Certain factors may not be germane to every
situation; moreover, though several factors are simultaneously pres-
ent, some factors may, depending on the case, be more important than
others. Id.; see Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d
316, 320 (4th Cir.) (the Pizzeria Uno factors are not meant to be a
rigid formula for infringement; they are "only a guide -- a catalog of
various considerations that may be relevant in determining the ulti-
mate statutory question of likelihood of confusion."), cert. denied,
113 S. Ct. 206 (1992). Indeed, we have distilled other factors that may
be considered relevant to analyzing the likelihood of confusion, such
as (8) the quality of the defendant's product, Perini at 127, and (9)
the sophistication of the consuming public. Id. ; see Dayton Progress
Corp. v. Lane Punch Corp., 917 F.2d 836, 839-40 (4th Cir. 1990). We
will consider each factor in turn.

                    12
A. The Distinctiveness of the Senior Mark

1. Legal Background

The protection accorded trademarks is directly related to the
mark's distinctiveness. "Fanciful," "arbitrary," and "suggestive"
marks are inherently distinctive, and thus receive the greatest protec-
tion against infringement. 1 McCarthy § 11.01[1]. Fanciful marks are,
in essence, made-up words expressly coined for serving as a trade-
mark. Some examples of fanciful marks are Clorox R, KodakR,
PolaroidR, and ExxonR . Id. at § 11.03[4].

Arbitrary marks are comprised of words in common usage, but,
because they do not suggest or describe any quality, ingredient, or
characteristic of the goods they serve, are said to have been arbitrarily
assigned. Examples include Tea RoseR flour, CamelR cigarettes, and
AppleR computers. Id. at§ 11.04[3]. Though tea rose, camel, and
apple are -- unlike CloroxR andKodakR -- words denoting "real"
things, they are similar to fanciful marks in that they neither suggest
any mental image of the associated product nor describe it in any
way.

Suggestive marks connote, without describing, some quality, ingre-
dient, or characteristic of the product. CoppertoneR, Orange CrushR,
and PlayboyR are good examples of suggestive marks because they
conjure images of the associated products. Id. at § 11.23. These marks
are nevertheless not descriptive; although they are meant to project a
favorable or idealistic image with which a prospective user might
identify, a person without actual knowledge would have difficulty in
ascertaining the nature of the products that the marks represent.

In contrast to fanciful, arbitrary, or suggestive marks, there are
marks that are not inherently distinctive. For instance, certain marks
merely describe a function, use, characteristic, size, or intended pur-
pose of the product. Examples of such "descriptive" marks include
After Tan post-tanning lotion, 5 Minute glue, King Size men's cloth-
ing, and the Yellow Pages telephone directory. Id. at § 11.08. Marks
that are merely descriptive are accorded protection only if they have
acquired a "secondary meaning," that is, if"in the minds of the public,
the primary significance of a product feature or term is to identify the

                     13
source of the product rather than the product itself." Dayton Progress
at 839 (quoting Inwood Laboratories v. Ives Laboratories, 456 U.S.
844, 851 n.11 (1982)). Coca-ColaR is probably the paradigm of a
descriptive mark that has acquired a secondary meaning.

"Generic" terms are the common name of a product or service
itself, and can never be trademarks. Perini at 124.10 Examples of
brand names held to be generic terms are Convenient Store retail
stores, Dry Ice solid carbon dioxide, Light Beer ale-type beverages,
and, in a case where a once-fanciful mark had, over time, been assim-
ilated into the language, Thermos vacuum-insulated bottles. 2 McCar-
thy § 12.03 (citation omitted).

2. The L'eggsR mark

The L'eggsR mark was conceived in the midst of Sara Lee's
endeavor to discover new ways to manufacture, package, and market
women's hosiery. The company's efforts have paid off; by developing
a line of nylon-and-spandex hosiery, packaging its products in the
now-famous egg-shaped containers,11 and cultivating a new market in
which to sell its goods, Sara Lee has amassed handsome profits.

But what, exactly, does L'eggsR mean? The district court decided
that L'eggsR was a contraction for "leg eggs." It then focused on what
it considered to be the "weaker" element of the mark (leg), which, of
course, is also an intrinsic part of Kayser-Roth's Leg LooksR mark,
and almost certainly the source of any confusion between the two.
_________________________________________________________________
10 A mark is generic if it "denominate[s] a type, kind, genus or subcate-
gory of goods." Dayton Progress at 839 (quoting G. Heileman Brewing
Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 997 (7th Cir. 1989)). In other
words, a generic term "identifies the general nature of an article." Dayton
Progress at 839 (citation and internal quotation marks omitted).

A term may also be generic if it names a "distinctive characteristic of
that genus of products." 2 McCarthy § 12.02[5]. For example, the term
"Matchbox" was held to be generic because that genus of toy vehicles
were sold in matchbox-sized boxes.
11 Since 1991, Sara Lee has curtailed its packaging of L'eggsR products
in plastic eggs in favor of more "environmentally friendly" cardboard
boxes. Nonetheless, the new packaging retains the egg silhouette.

                    14
Citing the rule that a term may be generic if it names a distinctive
characteristic of the genus to which the product belongs, see note 10,
supra, the court concluded that, because all pantyhose have legs, the
word "leg" is generic insofar as it pertains to pantyhose. The court
alternatively found that "leg" is generic because it is an abbreviation
of "legwear" or "leggings," terms that refer to the genus of apparel to
which pantyhose belong. According to the district court, because the
word "leg" is generic, it may legally be used as part of an otherwise
non-infringing pantyhose trademark.

We disagree. The district court failed to appreciate that the mark
at issue is neither "leg eggs" nor "legs," but L'eggsR, a word that rep-
resents a singular concept associated with -- but very different from
-- pantyhose. Although the mark may not be wholly fanciful
(because it is phonetically identical to a common word) or arbitrary
(because it is not actually a "real" word), it is unquestionably sugges-
tive, and therefore a strong, distinctive mark. L'eggsR conjures favor-
able images of attractive legs or legginess, and, by subtly reminding
consumers of its famous egg packaging design, reinforces the associa-
tion between the product and its source -- a sure sign of a mark enti-
tled to protection.12
_________________________________________________________________
12 See, e.g., Metro Publishing, Ltd. v. San Jose Mercury News, 987 F.2d
637, 640 (9th Cir. 1993) (a likelihood of confusion exists when consum-
ers "are likely to assume that a product or service is associated with a
source other than its actual source because of similarities between the
two sources' marks or marketing techniques.") (citations and internal
quotation marks omitted). It stands to reason that a mark which eluci-
dates, to an unusual degree, the source of a product serves the public
interest and should be preserved. That is precisely why merely descrip-
tive marks are accorded trademark protection upon acquiring a secondary
meaning. See discussion in Section IV-A(1), supra.

As for the district court's alternative finding, we note simply that L'eggsR
does not denominate a type or genus of goods, nor does it name a distinc-
tive characteristic of pantyhose in general. See note 10, supra. A differ-
ent case would be presented if the mark at issue were "Pantyhose" or
"Stockings" (type or genus), or "Nylons" (characteristic).

Our conclusion that the L'eggsR mark is distinctive is further bolstered
by the Patent and Trademark Office's registration of the L'eggsR trade-
mark without requiring any proof of the mark's having acquired a sec-
ondary meaning. See Pizzeria Uno at 1529:

                    15
B. The "Similarity" Factors

We now consider briefly the similarity of the two marks, of the
goods the marks identify, of the facilities employed to transact the
parties' business,13 and of the advertising used by the parties.

L'eggsR and Leg LooksR , although not identical, are perceived sim-
ilarly by the eye and ear. Whether being written or spoken, L'eggsR
and the first syllable of Leg LooksR are quite similar. Moreover, Leg
Looks'R first syllable stands alone, emphasizing its similarity to
L'eggsR.

There can be little argument as to the similarity of the goods that
the two marks represent (both are associated with women's hosiery),
the facilities that the parties employ to transact business (both L'eggsR
and Leg LooksR are distributed in the FDM market, often side-by-
side), or the advertising used by Sara Lee and Kayser-Roth (both
employ similar media and target the same consumers). Regarding
these three factors, there is no substantial difference between the par-
ties that would serve to ameliorate any confusion of their marks.
_________________________________________________________________

          The significance of registration without proof of secondary
          meaning . . . is that the Patent and Trademark Office has "con-
          cluded" that the mark or figure was not merely descriptive but
          suggestive[,] and this essential fact . . . must be considered prima
          facie correct by a court in considering the validity of a trade-
          mark. . .[.] [R]egistration . . . constitutes not only a determination
          . . . that the term or word is suggestive but also operates to pro-
          vide prima facie evidence of the registrant's right to use the
          mark, endowing it with a strong presumption of validity. (cita-
          tions and internal quotation marks omitted).

Of course, if L'eggsR were indeed a generic term, it could not legally
be registered as a trademark. The inescapable conclusion is that either the
Patent and Trademark Office or the district court has made a mistake; we
are convinced that it was the latter.

13 This factor has also been expressed as the "proximity" of the prod-
ucts. Perini at 127.

                    16
C. The Defendant's Intent

As we stated in Pizzeria Uno:

         The intent of the defendant is sometimes a major factor in
         infringement cases. If there is intent to confuse the buying
         public, this is strong evidence establishing likelihood of
         confusion, since one intending to profit from another's repu-
         tation generally attempts to make his signs, advertisements,
         etc., to resemble the other's so as deliberately to induce con-
         fusion.

Id. at 1535. In other words, we presume that the person who sets out
to infringe on another's trademark has more brains than scruples, and
will likely succeed. Cf. Osem Food Indus. Ltd. v. Sherwood Foods,
Inc., 917 F.2d 161, 165 (4th Cir. 1990):

         When a newcomer to the market copies a competitor's trade
         dress, its intent must be to benefit from the goodwill of the
         competitor's customers by getting them to believe that the
         new product is either the same, or originates from the same
         source as the product whose trade dress was copied. Logic
         requires . . . that from such intentional copying arises a pre-
         sumption that the newcomer is successful and that there is
         a likelihood of confusion.

In his memorandum opinion, the magistrate concluded that Kayser-
Roth intended to infringe on Sara Lee's trademark, pointing to con-
siderable circumstantial evidence in the record supporting a strong
inference that, when Kayser-Roth resuscitated its Leg LooksR line, it
expressly intended to take advantage of the mark's similarity to L'eggsR
to siphon sales of Sara Lee's products.14 The district court, however,
_________________________________________________________________
14 The magistrate cited testimony that one of Kayser-Roth's vice-
presidents directed the company's New Products Group to design pack-
aging for its new line that differed from its other No nonsenseR products.
The resultant trade dress was so close to that of Sheer EnergyR products
that the magistrate -- with the approval of the district court -- enjoined
its use. See Section I, supra. The same vice-president rejected the

                    17
found that Kayser-Roth had acted in good faith -- a finding that we
may disturb only if it is clearly erroneous. Because we would reach
the same result in this case regardless of Kayser-Roth's intent,
reviewing the district court's disposition of this complex issue would
serve no purpose; we thus decline to do so.

D. Actual Confusion

The record is replete with anecdotal evidence of consumers
throughout the nation confusing the L'eggsR and Leg LooksR marks.
Six women -- most of whom usually bought L'eggs R pantyhose --
testified that they had purchased (or, in one case, nearly purchased)
a Leg LooksR product under the mistaken impression that it was
instead a L'eggsR product. Sara Lee's service merchandisers told the
magistrate of many occasions where consumers had approached them
in stores, uncertain of the origin of Leg Looks R.

The service merchandisers also told of massive confusion by store
personnel. Included in the record are photographs of in-store adver-
tisements and circulars promoting, variously, "L'eggs Looks," "Legg
Looks," and "L'eggs Look" pantyhose.

The anecdotal evidence, standing alone, is nearly overwhelming;
indeed, we can but wonder how often the experiences related by the
trial witnesses have been repeated -- but not reported -- in stores
across the country. Nevertheless, Sara Lee produced additional evi-
dence in the form of surveys that it had conducted, indicating that
approximately thirty to forty percent of the consuming public was
confused by the similarity of the L'eggsR and Leg LooksR marks. The
_________________________________________________________________
Group's recommendation that the new line be called"Active Sensa-
tions," insisting instead on the Leg LooksR name. The magistrate also
noted that Kayser-Roth initially spent relatively little money to promote
Leg LooksR.

In addition, Kayser-Roth evidently accelerated its marketing of Leg
LooksR to coincide with Sara Lee's introduction of L'eggsR Everyday.
Perhaps most tellingly, there is evidence in the record suggesting that
certain Kayser-Roth employees may have purged computer files relating
to the development of the Leg LooksR repackaging.

                    18
district court discounted the survey evidence on the ground that its
reliability may have been in question, but even if the true figure were
only half of the survey estimate, actual confusion would, in our view,
nevertheless exist to a significant degree.15

E. The Quality of the Defendant's Product & the Sophistication of
the Consuming Public

The two remaining factors, announced in Perini , probably apply
with less frequency than the previous seven. Consideration of the
quality of the defendant's product is most appropriate in situations
involving the production of cheap copies or knockoffs of a competi-
tor's trademark-protected goods. If a defendant markets a product
under a mark similar to that affixed by a competitor to a commodity
of like nature but superior manufacture, that the defendant's product
is markedly inferior is likely to be highly probative of its reliance on
the similarity of the two marks to generate undeserved sales.

Barring an unusual case, buyer sophistication will only be a key
factor when the relevant market is not the public at-large. If the typi-
cal consumer in the relevant market is sophisticated in the use of --
or possesses an expertise regarding -- a particular product, such
sophistication or expertise may be pertinent in determining the likeli-
hood of confusion. Perini at 127-28. The relative sophistication of the
market may trump the presence or absence of any other factor. See id.
at 128:
_________________________________________________________________

15 We may infer from the case law that survey evidence clearly favors
the defendant when it demonstrates a level of confusion much below ten
percent. See Henri's Food Products Co., Inc. v. Kraft, Inc., 717 F.2d 352,
358 (7th Cir. 1983). In that case, the court of appeals cited several cases
holding that survey evidence indicating ten to twelve percent confusion
was sufficient to demonstrate actual confusion. The court, however, con-
cluded that the 7.6% confusion level before it "weighs against infringe-
ment." See also Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400
(8th Cir. 1987) (survey evidence showing confusion level of between ten
and eleven percent sufficient to demonstrate actual confusion), cert.
denied, 488 U.S. 933 (1988).

                     19
          The plaintiff claims that lack of consideration of consumer
          sophistication does not preclude a finding of infringement
          when every other factor indicates a likelihood of confusion.
          Yet, we hold that in a market with extremely sophisticated
          buyers, the likelihood of consumer confusion cannot be pre-
          sumed on the basis of the similarity in trade name alone.
          ...

We need not here concern ourselves, however, with either of the
two "Perini factors." There is no assertion in the instant proceeding
that Kayser-Roth's product is substantially inferior to Sara Lee's, or
that persons who buy pantyhose are any more sophisticated about that
product than those who comprise the market for other ordinary retail
goods.

F. "The Big Picture"

We have previously acknowledged that the distinctiveness of the
senior user's mark is "the first and paramount factor" in determining
the likelihood of confusion. Pizzeria Uno at 1527. If the strength of
the senior mark is the alpha of infringement analysis, then evidence
of actual confusion is surely the omega; where the defendant in an
infringement case has elected to use a mark similar to that of a com-
petitor's distinctive mark, and, as a result, has actually confused the
public, our inquiry ends almost as soon as it begins.

Even if most of the other factors did not indicate-- as they do in
this case -- a strong likelihood of confusion, the strength of the L'eggsR
mark in conjunction with the solid evidence of actual confusion com-
pels us to conclude that Kayser-Roth's current use of its Leg LooksR
mark is an infringing one.16 Upon reviewing the district court's find-
_________________________________________________________________
16 Sara Lee has suggested that the use of an infringing mark on product
packaging, standing alone, also constitutes a trade dress violation. We
have scrutinized Professor McCarthy's treatise as it pertains to trade
dress, see note 2, supra, and can find no support for this argument. The
magistrate cited M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421, 427
(4th Cir 1986), as holding that "the brand name is part of the trade dress,"
Magis. Op. at 119, but we read the cited portion of that case to say only
that the plaintiff alleged that the defendant's copying of the brand name
violated Section 1125(a).

                     20
ing to the contrary, we cannot help but be left with a "definite and
firm conviction that a mistake has been made." Pizzeria Uno at 1526.
The court's finding is clearly erroneous; we are thus constrained to
overturn it.

V.

The judgment of the district court is reversed, and the case is
remanded for it to enter judgment for Sara Lee. We further instruct
the district court to enter an order permanently enjoining Kayser-Roth
from affixing the Leg LooksR trademark to any of its products placed
in the same channels of distribution as those in which Sara Lee's L'eggsR
products are currently sold.

REVERSED AND REMANDED WITH INSTRUCTIONS

WIDENER, Circuit Judge, dissenting:

I respectfully dissent.

I

The district court denied Sara Lee's request to enjoin Kayser-Roth
from using the trademark LEG LOOKS pantyhose in the food, drug,
and mass merchandise market. The judgment of the district court was
supported by many findings of fact, one of which was based on a con-
tract of settlement between Sara Lee and Kayser-Roth in 1991.
Because of that finding of fact, but also otherwise supported, the dis-
trict court found that Sara Lee had acquiesced in Kayser-Roth's use
of the LEG LOOKS mark.
_________________________________________________________________

In any event, because Sara Lee's trade dress claim remains alive only
insofar as it might serve as an alternative basis for enjoining Kayser-
Roth's further infringing use of the Leg LooksR mark, our grant of
injunctive relief on the ground of trademark infringement effectively
moots the trade dress issue. Moreover, our holding in Sara Lee's favor
on its primary federal claim renders it unnecessary for us to address its
supplemental state law claims; even were Sara Lee to also prevail on its
other theories, it would not be entitled to any further relief.

                     21
The majority concludes that this finding is clearly erroneous
because "the 1991 agreement was intended only to govern Sara Lee's
future actions in marketing its LINGERIE LOOKS brand." Slip op.
at 11.

The agreement in question appears at A.2871 and grew out of Sara
Lee's attempt to register the trademark LINGERIE LOOKS in Inter-
national Class 25. Kayser-Roth objected on the basis that that mark
infringed on its registered mark LEG LOOKS and other marks such
as Career Looks, Designer Looks and Silky Looks. Sara Lee agreed
to comply with specific marketing and advertising practices, in partic-
ular that its LINGERIE LOOKS mark would always be used with and
have added to it the L'EGGS trademark so that L'EGGS LINGERIE
LOOKS would be the dominant trademark usage of Sara Lee. The
agreement contained no market restrictions. The district court found
that each party remained free to use its respective mark, LEG LOOKS
by Kayser-Roth, and L'EGGS LINGERIE LOOKS, by Sara Lee. It
found that in the agreement Sara Lee expressly acknowledged
Kayser-Roth's ownership of the registration for the LEG LOOKS
mark and that such acknowledgement "supports the inference that
[Sara Lee] recognized and consented to Defendant's [Kayser-Roth's]
entitlement to the whole range of rights legally afforded by such own-
ership." The district court found that Sara Lee would not have agreed
to L'eggs LINGERIE LOOKS by Sara Lee if it thought it would be
confused with LEG LOOKS, despite the sharing of the word leg.

The district court found the relevant market to be the national retail
pantyhose market and that food, drug, and mass merchandise stores
are some of the many outlets used by both parties to distribute panty-
hose products in the national market. Sara Lee registered the L'eggs
trademark in 1973 for use on ladies' hosiery and pantyhose in Interna-
tional Class 25. Kayser-Roth registered the LEG LOOKS trademark
in 1983 for use on ladies' hosiery and pantyhose in International
Class 25. The district court reviewed Kayser-Roth's registration of
LEG LOOKS and found no limitation to a particular composition or
style. It further found that registration of a trademark bestows upon
its owner a presumption that the "goods or services will move through
all channels of trade suitable for goods or services of that type, and
that they reach all purchasers and potential purchasers of them," quot-
ing RE/MAX of America, Inc. v. Realty Mart, Inc. , 207 U.S.P.Q. 960,

                    22
965 (T.T.A.B. 1980). The district court concluded that Kayser-Roth's
registration of LEG LOOKS, which had become incontestible to the
extent provided by 15 U.S.C. § 1065, established the presumption that
it could distribute pantyhose under the LEG LOOKS mark through all
channels suitable for the registered classification. It then found that
department stores, mass merchandising stores, off-price outlets, food
stores, and drug stores were all such suitable outlets and that both par-
ties had marketed pantyhose in the national pantyhose market, includ-
ing the food, drug, and mass merchandise market, since the 1970's.

The majority, by confining its reasoning to the food, drug, and
mass merchandising market, has not taken into account many or even
most of the findings of fact I have just related. Especially, it has not
taken into account the district court's finding of fact that:

          Given the functional interchangeability of pantyhose, Plain-
          tiff's successful marketing of L'eggs pantyhose through
          FDM stores rather than department stores, and defendant's
          current success with its pricing strategy, it would be unreal-
          istic and flatly incorrect to find that low-cost pantyhose and
          high-priced pantyhose do not compete in the same market.
          Cf. Brown Shoe Co., 370 U.S. at 326 (refusal to divide the
          shoe market according to "price/quality" distinctions). The
          court, therefore, finds that the relevant market in this case
          is, and has always been, the national retail pantyhose mar-
          ket.

That error, and the incorrect finding as clearly erroneous of the dis-
trict court's finding of acquiescence, are two essential weaknesses in
the majority opinion.

I am of opinion that the district court's findings of fact are plausi-
ble and supported by the evidence. "If the district court's account of
the evidence is plausible in light of the record viewed in its entirety,
the court of appeals may not reverse it even though convinced that
had it been sitting as the trier of fact, it would have weighed the evi-
dence differently. Where there are two permissible views of the evi-
dence, the factfinder's choice between them cannot be clearly
erroneous." Anderson v. Bessemer City, 470 U.S. 564, 573-74 (1985).

                     23
I would affirm the district court's finding that Sara Lee had acqui-
esced in the defendant's use of the mark LEG LOOKS.

I would also affirm its finding of relevant market.

II

I also do not agree with the majority's view that anecdotal evidence
of confusion and likelihood of confusion in this case is "massive" and
"nearly overwhelming" and its conclusion that the district court did
not consider, or miscalculated the likelihood of, consumer confusion.
Confusion or likelihood of confusion is a question of fact not to be
disturbed unless clearly erroneous. 3 J. Thomas McCarthy,
Trademarks and Unfair Competition § 23.22 (1995). The district
court discussed the relevant evidence in detail and gave specific rea-
sons for crediting or discrediting anecdotal evidence, market studies,
and expert testimony offered by both parties. This discussion, in fact,
occupies 20 pages of the appendix (A.5331-5351).

The district court divided its discussion of the likelihood of confu-
sion into five categories and its conclusion. The categories were (1)
strength of the SHEER ENERGY trade dress; (2) similarity of the
packages; (3) defendant's intent; (4) similarity of the goods, sales
facilities, and advertising; and (5) evidence of actual confusion. The
majority opinion takes little or no issue with any of the district court's
discussion or fact finding except that with respect to actual confusion,
as is illustrated on page 18-19 of the slip opinion, in the part labeled
"D. Actual Confusion." on which its holding is based.

The district court, in its consideration of evidence of actual confu-
sion, listed as sub-categories: A. Consumers, B. Store Personnel, C.
Misshelving and Misspelling, and D. Mail Intercept Surveys. The
majority opinion discusses little or no evidence relevant to these cate-
gories and considered by the district court in detail, but bases its deci-
sion on the fact that it disagrees with the district court on the weight
to be given the survey evidence and the effect to be given the anec-
dotal evidence. Slip op. at 18-19.

For example, included in the evidence considered by the district
court, but not by the majority, is the following:

                     24
         As of the August 1993 hearing, Kayser-Roth had sold
         over 3.5 million 1993 packages, yet only four consumers
         testified at the hearing to having bought the 1993 package,
         believing it contained L'eggs pantyhose, and only one of
         those believed it contained SHEER ENERGY pantyhose.

         The largest proportion of anecdotal evidence of confusion
         came from plaintiffs' sales merchandisers rather than store
         personnel, and even with that, plaintiff's employees gave
         evidence of only 25 encounters with store personnel who
         asked plaintiffs' employees about the 1993 package.

         Between the introduction of the 1993 package and the
         August 1993 hearing, Sara Lee's sales merchandisers had
         made at least 800,000 store visits. Even if only 1/4 of those
         800,000 visits had coincided with a display of the 1993
         package, those 25 encounters would have occurred on
         barely more than 1/100 of 1% of the visits.

         The evidence about misshelving or misspelling came
         from Sara Lee's employees and included no explanation
         from those responsible for the errors. Since Kayser-Roth's
         pantyhose were almost always shelved near Sara Lee's, the
         district court did not consider a few clerical errors by
         unidentified store personnel or outside advertisers demon-
         strative of actual confusion.

         With respect to the survey evidence of Sara Lee, the dis-
         trict court did not "accord the proffered results much
         weight" because of "the selection of an inappropriate con-
         troller by Sara Lee." The district court also discounted Sara
         Lee's surveys because "they insufficiently emulated market
         conditions." Rather than take issue with that district court
         finding as to the weight of the evidence, the majority merely
         cut the result in half and used that arbitrary half-figure in
         coming to its conclusion.

The majority opinion does not take into account that the district
court accorded more weight to Kayser-Roth's survey evidence than

                   25
it did to Sara Lee's because it had come closer to emulating market
conditions and controlling for the effect of color on packages.

The district court in this case, for some 20 pages, analyzed in detail
the evidence of likelihood of confusion. The majority dismisses that
analysis in one page with little analysis of the same evidence. Slip op.
at 18-19. In my opinion, the majority opinion does not state a suffi-
cient basis for its conclusion that the district court's findings were
clearly erroneous. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
844, 857-58 (1982), stated that "[a]n appellate court cannot substitute
its interpretation of the evidence for that of the trial court simply
because the reviewing court might give the facts another construction,
resolve the ambiguities differently, and find a more sinister cast to
actions which the District Court apparently deemed innocent." (Inter-
nal quotation omitted.) Yet, I suggest that is just what the majority has
done in this case.

III

Whether or not the findings of fact of the district court I have
referred to above are clearly erroneous, and even if the findings of
fact of the majority are not clearly erroneous, in my opinion the
majority erred when it sequestered the use of the word "leg" in con-
nection with the sale and advertising of pantyhose in the food, drug,
and mass merchandise market and gave that exclusive use to Sara
Lee.

On page 15 of the slip opinion, the holding of the majority is dis-
closed.

          According to the district court, because the word"leg" is
          generic, it may legally be used as part of an otherwise non-
          infringing pantyhose trademark.

          We disagree. The district court failed to appreciate that the
          mark at issue is neither "leg eggs" nor "legs" but L'eggsR,
          a word that represents a singular concept associated with--
          but very different from--pantyhose. Although the mark may
          not be wholly fanciful (because it is phonetically identical

                    26
          to a common word) or arbitrary (because it is not actually
          a "real" word), it is unquestionably suggestive, and therefore
          a strong, distinctive mark. L'eggsR conjures favorable
          images of attractive legs or legginess, and, by subtly
          reminding consumers of its famous egg packaging design,
          reinforces the association between the product and its source
          --a sure sign of a mark entitled to protection. (Italics
          added.)

Thus the majority holds that the word "leg" may not legally be used
as part of an otherwise non-infringing pantyhose trademark in con-
nection with the advertising or sale of pantyhose. I suggest that it is
simply not possible to advertise or sell pantyhose without the use of
the word "leg" and that the decision of the majority, that the use of
the word "leg" in connection with the advertising and sale of panty-
hose, is the exclusive right of Sara Lee, is error.

In remarkably similar circumstances, the Third Circuit held, in A.J.
Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir. 1986), that "choco-
late fudge," as used in the name of a drink called "Diet Chocolate
Fudge Soda," was generic and was "available to all potential competi-
tors." 808 F.2d at 308. The court reasoned that ". . . if a term is neces-
sary to describe a product characteristic that a competitor has a right
to copy, a producer may not effectively preempt competition by
claiming that term as its own." 808 F.2d at 305.

Along the same line, the Seventh Circuit, in Miller Brewing Co. v.
G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977), cert. denied,
434 U.S. 1025 (1978), decided that "Light" is a generic or common
descriptive term when used with beer. 561 F.2d at 80. In that case,
Miller had the registered mark of "LITE" and had sued Heileman,
which had incorporated the word "light" in its sales and advertising.
Of course, Miller's suit failed. And the court stated that "[a] generic
or common descriptive term is one which is commonly used as the
name or description of a kind of goods. It cannot become a trademark
under any circumstances." 561 F.2d at 79. The Heileman case was
followed in Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d
5 (1st Cir. 1981), which held that Miller was estopped by Heileman
from prosecuting the same kind of a suit against Falstaff. The court
relied on the reasoning of Judge Friendly in two cases for the rule
which, in my opinion, should be followed here and is as follows:


                     27
          "No matter how much money and effort the user of a
          generic term has poured into promoting the sale of its mer-
          chandise and what success it has achieved in securing public
          identification, it cannot deprive competing manufacturers of
          the product of the right to call an article by its name."
          Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d
          4, 9 (2d Cir. 1976). "The reason is plain enough. To allow
          trademark protection for generic terms, i.e. terms which
          describe the genus of goods being sold, even when these
          have been identified with a first user, would grant the owner
          of the mark a monopoly since a competitor could not
          describe his goods as what they are." CES Publishing Corp.
          v. St. Regis Publications, Inc., 531 F.2d 11, 13 (2d Cir.
          1975).

655 F.2d at 8.

I would conclude that the word "leg" is no less generic than the
words "chocolate fudge," as used in connection with diet soda, or the
word "light," as used with beer. I suggest again that this holding of
the majority is error, regardless of whether or not the facts as found
by the district court are clearly erroneous. Advertising and selling
pantyhose without using the word "leg" just seems to me to be impos-
sible.

IV

In sum, I am of opinion that the majority erred when it decided,
either implicitly or expressly, that the holdings of the district court
were clearly erroneous with respect to acquiescence, relevant market,
and confusion. Absent the fact findings of the majority, which were
contrary to those of the district court, the decision of the majority can-
not stand.

Even considering for argument, however, that the fact findings of
the majority were correct, its holding that the word "leg" is not a
generic term is erroneous, I think, and also for that reason, the deci-
sion of the majority cannot stand.

I would affirm.


                     28
