NOTE
CREATING MEANING WITHIN A GRAY AREA:
REDEFINING LIKELIHOOD OF CONFUSION IN
LIBMAN CO. v. VINING INDUSTRIES, INC.
Lee Ann Tranford*
The trademarking of a product's color is the latest adaptation of
the ever-evolving Lanham Trade-Mark Act.1 Companies use a distinctive color or colors to set their product apart from others, for
example, coloring fiberglass pink.2 By using a distinctive color which
consumers would not normally associate with that product, companies ensure that their product will stand apart from others, thus
creating a distinctive identity for the product.3 Therefore, this product distinction allows consumers to identify the item from many
other goods available.4 However, when a competing company mar-
* B.B.A., Stetson University, 1990; M.A., University of South Florida, 1992; J.D.,
Stetson University College of Law, expected July 1997; Articles and Symposia Editor,
Stetson Law Review.
This Note is dedicated to my parents, whose encouragement, guidance, and support have sustained me in all that I do. I would like to thank Kimberly Johnson, Laura
Bowers, Judith Cordista, Craig Huffman, Beth Curnow, and Paul Tranford for their support and understanding throughout this project. I would like to thank Professor Darryl
C. Wilson for his guidance and insight. Additionally, I extend a special thanks to Jolee
Land for her invaluable assistance with this Note.
1. See 15 U.S.C. §§ 1051–1127 (1994). See generally Susan Somers Neal & Colleen
Connors Butler, It's Time to End Discrimination Against Trademarks of Color, FED. CIRCUIT B.J., Spring 1995, at 71.
2. See, e.g., In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985).
3. If the color serves a utilitarian purpose which competitors will need to use to
compete effectively, then the use of the color will be seen as a functional item unable to
be trademarked. See David M. Kelly, `Qualitex' Makes Visible the Strategic Spectrum,
NAT'L L.J., May 8, 1995, at C10.
4. For example, in Owens-Corning, the Federal Circuit held that the color pink as
an ornamental aspect of the fiberglass had no functional purpose and was a distinctive
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kets a suspiciously similar, or nearly identical, color within a trademark, confusion can result for the consumer.5 The resulting likelihood of confusion created by the similar use of color in a household
item is the basis for the case of Libman Co. v. Vining Industries,
Inc.6
I. FACTUAL AND PROCEDURAL DEVELOPMENT OF LIBMAN
CO. v. VINING INDUSTRIES, INC.
In 1990, the Libman Company7 created a broom with a contrasting-color bristle pattern and an off-centered handle called the
Libman 201 model.8 Libman used a vertical color band on bristles of
the broom; this band contrasted with different colors used for the
remaining bristles.9 Libman used the colors red, green, or black as
the band color with the rest of the bristles being dark gray (for red)
or light gray (for green or black).10
Libman filed for federal trademark registration on March 12,
1990 and first marketed this off-centered, contrasting-color broom in
April 1990.11 These brooms were marketed nationally in retail stores
such as K-mart and Wal-mart and supermarkets like Giant Foods.12
Libman originally targeted consumers through magazines such as
aspect of the trademark. See Owens-Corning, 774 F.2d at 1122–24; see also Paul R.
Morico, Protecting Color Per Se in the Wake of Qualitex v. Jacobson, 77 J. PAT. [&
TRADEMARK] OFF. SOC'Y 571, 580 (1995).
5. See also Michael J. Allen, The Role of Actual Confusion Evidence in Federal
Trademark Infringement Litigation, 16 CAMPBELL L. REV. 19, 19 n.2–3 (1994).
6. 69 F.3d 1360 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996).
7. Libman is a nation wide manufacturer of brooms, mops, and brushes. See
Libman Co. v. Vining Indus., Inc., 876 F. Supp. 185, 186 (C.D. Ill. 1995), rev'd, 69 F.3d
1360 (7th Cir. 1995).
8. See id. at 187. Libman first produced the broom with the off-centered handle,
called the 201 broom, in 1990. See id. Libman filed the trademark in March 1990 and
first used the broom in commerce on April 30, 1990. See id. at 186. The broom's handle
intersects with the block top at a 30 to 45 degree angle. The broom was created for use
on a variety of sweeping surfaces in many types of locations. See Patent Application No.
441,478 (on file with Stetson Law Review).
9. See Libman, 876 F. Supp. at 187. For the first contrasting-color brooms, the
color red was used for the vertical band. See id. The brooms with the green contrastingcolor bands were placed into commerce one year later in 1991. See id.
10. See Libman, 69 F.3d at 1361.
11. See Libman, 876 F. Supp. at 186. The Libman trademark registration did not
specify the color to be used within the patent, except that there were to be contrasting
colors. See Libman, 69 F.3d at 1361.
12. See Libman, 876 F. Supp. at 187.
1997]
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903
Family Circle, Good Housekeeping, McCall's, and Women's Day, but
the company also used television advertising to promote the Libman
201.13 Each year since the broom's inception, sales for these contrasting-color brooms escalated.14
Libman was twice denied trademark registration on its contrasting-color broom.15 However, trademark protection was finally
granted with the registration of the mark on April 6, 1993.16 Libman
has continuously protected its trademark for the off-center, contrasting-color broom and filed a trademark infringement suit against
Rubbermaid when Rubbermaid produced a color-banded broom.17
This suit was later dismissed when Rubbermaid withdrew the product from the market.18 Libman also protested when Kaminstein
Imports imported an Italian broom with color stripes on the bristles,
but it has yet to file an infringement action.19
In January 1992, Vining Industries introduced a line of
O'Cedar20 products called the O'Cedar 2000.21 These brooms have a
band of dark gray bristles on one end of the broom which is contrasted with lighter gray bristles.22 Vining introduced the 2000 line
at a time when the Libman 201's sales had risen dramatically from
182,000 to 728,000 a year.23 Libman discovered the existence of the
O'Cedar 2000 in April 1993.24 At that time, Libman's president pro-
13. See id.
14. See id. Libman sales ran from $550,797 (182,388 units sold) in 1990, to
$3,117,334 (1,060,740 units sold) by November 22, 1994. See id.
15. See Libman, 69 F.3d at 1360.
16. See Libman, 876 F. Supp. at 186. At trial, the defendant, Vining Industries,
claimed that the Libman mark was invalid because in 1989 Kaminstein Imports, Inc.
marketed an Italian yellow and black bristled broom in the United States. See id. at
187. The defendant claimed that it had a licensing agreement with Kaminstein Imports
to market the brooms. See id. However, during the trial, Vining dropped its counterclaim
based on this assertion. See id. Therefore, the defendant did not raise this issue on appeal. See Libman, 69 F.3d at 1361.
17. See id.
18. See id.
19. See id.
20. O'Cedar is a national competitor of Libman. See Libman, 876 F. Supp. at 187.
21. See id. Vining Industries actually purchased the O'Cedar line of mops and
brooms from The Drackett Company in September 1993. See id. Vining continued the
O'Cedar 2000 line and never disputed responsibility for sale of the brooms. See id.
22. See id. Vining later produced the Professional Products Extra Wide Broom,
which Libman also claimed violated its registered trademark. See id.
23. See id. at 188 n.1.
24. See Libman, 876 F. Supp. at 188.
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tested the use of the contrasting-color broom to the Chief Executive
Officer of the O'Cedar division of the Drackett Product Company.25
However, Drackett continued producing the O'Cedar 2000, and
Libman sued for trademark infringement and to enjoin production of
the line.26
Libman attempted to enforce its rights against Vining Industries through the trademark regulation power of the Lanham TradeMark Act; the case was filed in the United States District Court for
the Central District of Illinois.27 Libman needed to show that a likelihood of confusion existed in order to support the trademark infringement claim; to prove a likelihood of confusion, Libman needed
to establish that the following elements existed when comparing the
O'Cedar 2000 with the Libman 201:
(1) similarity of marks;
(2) similarity of the product;
(3) area and manner of concurrent advertising and use;
(4) degree of care likely to be exercised by consumer;
(5) strength of plaintiff's mark;
(6) actual confusion; and
(7) intent of the infringer to palm off its products as
those of another.28
At trial, Libman presented evidence that showed consumers did
recognize the Libman mark.29 However, Libman did not demonstrate
proof of actual consumer confusion among the consumers targeted in
the market.30 Libman's president justified this lack of evidence by
25. See id.; see also supra note 21.
26. See Libman, 876 F. Supp. at 188.
27. See id. at 185, 186.
28. See id. at 188 (applying the enumerated factors that prove Vining's patent infringement); see also McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1166
(7th Cir. 1986).
29. See Libman, 876 F. Supp. at 188. Consumers would occasionally call on the
telephone to find out where they could find the Libman 201 broom that they saw advertised. See id.
30. See id. Libman did not conduct a market study to show that an actual likelihood of confusion exists. See id. Actual confusion is just one of the market factors involved in determining if trademark infringement exists. The Restatement (Third) of Unfair Competition defines the market factors as
(a) the degree of similarity between the respective designations, including a
comparison of
(i) the overall impression created by the designations as they are
used in marketing the respective goods or services or in identifying
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905
arguing that consumers were not likely to complain of actual confusion since the broom is a low-cost item.31 Therefore, the court used
comparisons between the two companies' brooms to determine if the
trademark was infringed upon. The trial court used the seven-factor
test noted above to examine the existence of a likelihood of confusion
and to determine if trademark infringement occurred.32 The court
found that the two product lines had similar product design, targeted the same purchasers, and used the same sale outlets. The
products are also advertised through the same media. The court,
therefore, determined that the O'Cedar 2000 broom did create a
likelihood of confusion with the Libman 201 broom.33
However, Vining Industries argued that since the Libman mark
was dependent on color alone, it could not be recognized as a trademark.34 Despite this argument, the court held the distinctive bands
of color on the Libman 201 broom's bristles created a unique feature
that warranted trademark protection.35 Libman's mark did not de-
the respective businesses;
(ii) the pronunciation of the designations;
(iii) the translation of any foreign words contained in the designations;
(iv) the verbal translation of any pictures, illustrations, or designs
contained in the designation;
(v) the suggestions, connotations, or meanings of the designations;
(b) the degree of similarity in the marketing methods and channels of distribution used for the respective goods or services;
(c) the characteristics of the prospective purchasers of the goods or services and
the degree of care they are likely to exercise in making purchasing decisions;
(d) the degree of distinctiveness of the other's designation;
(e) when the goods, services, or business of the actor differ in kind from those
of the other, the likelihood that the actor's prospective purchasers would expect
a person in the position of the other to expand its marketing or sponsorship
into the product, service, or business market of the actor;
(f) when the actor and the other sell their goods or services or carry on their
businesses in different geographic markets, the extent to which the other's
designation is identified with the other in the geographic market of the
actor.
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 (1995).
31. See Libman, 876 F. Supp. at 188.
32. See id.
33. See id. at 189.
34. See id. This decision occurred before the Qualitex Co. v. Jacobson Products Co.
decision in which the Supreme Court held that color can be independently recognized
under the Lanham Trade-Mark Act as an identifiable mark. See Qualitex Co. v. Jacobson
Prods. Co., 115 S. Ct. 1300, 1303–04 (1995).
35. See Libman, 876 F. Supp. at 189.
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pend upon only one color, but on a color combination which made it
distinctive.36
The court also held that, although the evidence was not strong
on the issue of bad faith, Vining Industries made no effort to avoid
infringing upon Libman's trademark.37 The O'Cedar division responsible for developing the O'Cedar 2000 made no effort to check for
potential trademark infringement.38 Vining's marketing division
checked only on any possible patent infringement.39 Therefore, the
court held that Vining's actions were insignificant in relation to the
significance of the infringement.40 The court also relied upon the fact
that Vining also continued to produce and market the O'Cedar 2000
even after Libman protested.41 Thus, the court found Vining acted in
bad faith when it pursued the marketing of the O'Cedar 2000.42
The trial court, therefore, concluded Vining did infringe upon
Libman's mark and granted Libman's injunction against the
O'Cedar 2000, which prohibited further sales of the broom.43 The
court also held that Libman could recover Vining's profits from the
brooms already sold.44 The court awarded Libman a total of
36. See id.
37. See id. The intent to deceive the public is not seen as an element of likelihood
of confusion. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 22 cmt. b (1995). Intent, however, is considered relevant and is used in the enumeration of the other factors.
See id. See supra text accompanying note 28 for a list of the factors used in defining
likelihood of confusion.
38. See Libman, 876 F. Supp. at 189.
39. See id.
40. See id.
41. See id.
42. See id.
43. See Libman, 876 F. Supp. at 189. The Lanham Trade-Mark Act allows the
plaintiff to seek injunctive relief against the defendant:
The several courts vested with jurisdiction of civil actions arising under this
chapter shall have power to grant injunctions, according to the principles of
equity and upon such terms as the court may deem reasonable, to prevent the
violation of any right of the registrant of a mark registered in the Patent and
Trademark Office or to prevent a violation under section 1125(a) of this title.
15 U.S.C. § 1116(a) (1994).
44. See Libman, 876 F. Supp. at 189. The Lanham Trade-Mark Act also provides
damages for the violation of rights:
When a violation of any right of the registrant of a mark registered in the
Patent and Trademark Office, or a violation under section 1125(a) of this title,
shall have been established in any civil action arising under this chapter, the
plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of
this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.
1997]
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907
$1,167,690 in damages, as well as the costs of the suit.45
Vining Industries appealed the decision to the Seventh Circuit
Court of Appeals,46 and in a two-to-one decision, the appellate court
reversed the trial court's decision.47 HELD: The evidence produced
was insufficient to find that Vining's actions created the likelihood
of consumer confusion necessary to support Libman's infringement
claims.48 The Seventh Circuit used only the lack of evidence of actual
confusion in determining Libman failed to prove that the likelihood
of confusion existed.49 The court neglected to consider other factors
which are traditionally used to determine whether a likelihood of
confusion exists.50 The Seventh Circuit engaged in a fact-finding
mission by determining for itself whether Vining's product violated
Libman's trademark rights.51 This action overruled the authority of
the district court as the finder of fact.52
This Note will first examine the progression of the Lanham
Trade-Mark Act from its inception in 1946 through the various court
decisions which have reevaluated the Act's breadth and scope.53 This
Note will then discuss the evolution of color as a valid basis for
trademark protection.54 Next, it will examine the court's decision
which focuses on actual confusion as the sole factor to consider when
evaluating the likelihood of confusion.55 Finally, the use of this
single-factor test will be critically reviewed in light of the apparent
violation of the guidelines of the Lanham Trade-Mark Act.56
The court shall assess such profits and damages or cause the same to be assessed under its direction.
15 U.S.C. § 1117(a) (1994).
45. See Libman, 876 F. Supp. at 190. Libman was awarded Vining's net profits,
which totaled $1,108,850, and prejudgment interest on Vining's profits, which totaled
$58,840. See id.
46. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996).
47. See id. at 1364.
48. See id.
49. See Libman, 69 F.3d at 1363.
50. See id. at 1363–64.
51. See id. at 1362–64.
52. For a discussion of this aspect, see infra Part III.B.2.
53. See infra Part II.A.
54. See infra Part II.B.
55. See infra Part III.A.
56. See infra Part IV.
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II. HISTORICAL OVERVIEW
A. The Lanham Trade-Mark Act
Before the Lanham Trade-Mark Act of 1946,57 trademark legislation was established through a procedural process of trademark
registration, while companies enforced the nature and scope of
trademarks through the courts and federal common law.58 As a result of the Supreme Court decision in Erie Railroad Co. v.
Tompkins,59 which nullified federal common law, Congress began to
work toward codifying a uniform federal trademark statute to clarify
the piecemeal decisions from various states.60 In 1946, Congress
passed the Lanham Trade-Mark Act which incorporated the prior
procedural statutes for trademark registration and codified much of
the trademark case law.61 The Lanham Trade-Mark Act broadened
the scope of protection for trademarks by giving the owners of registered marks greater rights and remedies.62
The Lanham Trade-Mark Act forbids the false representation of
57. Act of July 5, 1946, ch. 540, 60 Stat. 427 (codified as amended at 15 U.S.C. §§
1050–1127 (1994)).
58. See Julius R. Lunsford, Jr., Trade-Marks and Unfair Competition — The Demise of Erie v. Tompkins?, 40 TRADEMARK REP. 169, 169–71 (1950); see also DORIS E.
LONG, UNFAIR COMPETITION AND THE LANHAM ACT 2–6 (1993) (discussing the early recognition of unfair competition claims).
59. 304 U.S. 64 (1938). The Supreme Court held that the doctrine of federal common law established in Swift v. Tyson, 16 U.S. (Pet.) 1 (1842), did not exist. See id. at
74–78. The Supreme Court stated:
Except in matters governed by the Federal Constitution or by Acts of Congress,
the law to be applied in any case is the law of the State. And whether the law
of the State shall be declared by its Legislature in a statute or by its highest
court in a decision is not a matter of federal concern . . . . Congress has no
power to declare substantive rules of common law applicable in a State whether
they be local in their nature or “general,” be they commercial law or a part of
the law of torts. And no clause in the Constitution purports to confer such a
power upon the federal courts.
Id. at 78. This ruling created great problems for uniform trademark protection since the
federal rules governing trademark enforcement were common law, not statutory. See
Lunsford, supra note 58, at 170–74.
60. See LONG, supra note 58, at 6–7. The Committee on Trademarks and Patents
pushed for a uniform federal statute after the Erie decision, arguing that national legislation was needed because trade was no longer local, but national in scope. See H.R.
REP. NO. 76-944, at 4 (1939).
61. See Lunsford, supra note 58, at 177–83.
62. See id.; see also LONG, supra note 58, at 11–13 (discussing the scope of protection under § 43(a) of the Lanham Trade-Mark Act).
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909
a registered mark to the consumer population.63 To determine if
there has been a false representation of a registered mark, the court
must determine if the similar mark is “likely to cause confusion, or
to cause [a] mistake” which will deceive customers.64 A plaintiff
should demonstrate that one of four possible confusions exists to
show infringement: (1) basic product confusion; (2) confusion as to
who sponsored the product; (3) subliminal or conscious association
confusion; or (4) reverse confusion.65 Product confusion occurs when
consumers mistake one product for the other due to the similarity of
marks.66 Sponsorship confusion occurs when the similarities between two products cause the consumer to think that both products
are produced by the same manufacturer.67 Through subliminal or
conscious association, the defendant uses the mark in order to gain
some of the plaintiff's market share.68 Reverse confusion occurs
when the consumer is confused over the source of the
63. 15 U.S.C. § 1125(a) states that
[a]ny person who, 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 calls 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, sponsorship, or approval of his or
her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or her or
another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or
is likely to be damaged by such act.
15 U.S.C. § 1125(a) (1994).
64. Id.; see also LONG, supra note 58, at 35–38.
65. See Playboy Enters., Inc. v. Chuckleberry Publ'g, Inc., 486 F. Supp. 414, 428–29
(S.D.N.Y. 1980), aff'd, 687 F.2d 563 (2d Cir. 1982). In Playboy, Playboy Industries sued
Chuckleberry Publishing for trademark infringement of the name “Playboy.” See id. at
418. The district court granted Playboy's injunction, see id. at 419, and the appellate
court affirmed, see Playboy, 687 F.2d at 571.
66. See Playboy, 486 F. Supp. at 428; see also Steven Schortgen, “Dressing” Up
Software Interface Protection: The Application of Two Pesos to “Look and Feel,” 80 CORNELL L. REV. 158, 172–74 (1994) (discussing likelihood of confusion).
67. See Playboy, 486 F. Supp. at 428. In Playboy, the similarities between Playboy
and Playmen would lead the consumers to believe that Playboy Enterprises had come
out with a magazine for middle-aged men. See id.
68. See id. The average consumer is more likely to read the defendant's Playmen
magazine due to the name connection with Playboy than if the magazine had a different
name, such as Adonis. See id.
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manufacturer's goods since the defendant used a similar mark.69
The likelihood of consumer confusion is a subjective test which
takes into account a variety of factors. Judge Henry J. Friendly expounded upon these factors in Polaroid Corp. v. Polarad Electronics
Corp.70 The Second Circuit Court of Appeals outlined a variety of
factors from the Restatement of Torts that courts could consider
when determining if a likelihood of consumer confusion exists.71
Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his make, the
degree of similarity between the two marks, the proximity of the
products, the likelihood that the prior owner will bridge the gap,
actual confusion, and the reciprocal of the defendant's good faith in
adopting its own mark, the quality of defendant's product, and the
sophistication of the buyers. Even this extensive catalogue does not
exhaust the possibilities — the court may have to take still other
variables into account.72
69. See LONG, supra note 58, at 246. Reverse confusion results when the second
user is more well known than the first user of the mark. See id. Courts recognize this
concept under the Lanham Trade-Mark Act because the first user suffers a loss of value
of the trademark. See id.; see, e.g., McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d
1163, 1170–71 (7th Cir. 1986) (holding that the district court erred in granting summary
judgment to Disney because Disney's extensive use of the TRON mark violated McGraw
Edison's prior trademark of the name for their fuses).
70. 287 F.2d 492 (2d Cir. 1961). Polaroid was registered as a valid trademark in
1936. See id. at 493–94. The defendant, Polarad, was organized in 1944, and the Polaroid Corporation had known of its existence since 1945 but chose not to pursue a trademark infringement lawsuit until 1956. See id. at 494. The plaintiff, Polaroid, claimed
that the defendant had infringed upon certain portions of the field of electronics which
the plaintiff had claimed with its products. See id. at 495. The court held that the plaintiff could not enforce a trademark infringement claim because 11 years had elapsed between knowledge of the trademark violation and the institution of the lawsuit. See id. at
496–98. The equitable defense of the doctrine of laches acted as a statute of limitations,
precluding the plaintiff from pursuing the claim due to a period of undue delay. See
Robert G. Sugarman, Defenses, in LITIGATING COPYRIGHT, TRADEMARK AND UNFAIR COMPETITION CASES 1983, at 67, 67–70 (PLI Litigation & Administration Practice Course
Handbook Series No. 224, 1983).
71. See Polaroid, 287 F.2d at 495. The court used section 729 of the Restatement of
Torts when enunciating the likelihood of confusion factors. See id. Since both Polaroid
and Polarad were in the field of electronics, Polaroid argued that the similarities of the
two company names caused confusion among consumers. See id. at 493. However, the
defendant argued that it did not compete within the same consumer market as the
plaintiff, since the plaintiff dealt with consumer goods while the defendant dealt with
industrial electronic equipment. See id. at 495.
72. Id. This list is enumerated in section 729 of the Restatement of Torts.
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The Polaroid elements are not exhaustive but provide a broad base
of factors to consider when addressing likelihood of confusion.73
Thus, these likelihood of confusion elements, if shown by the plaintiff, will demonstrate that the defendant has infringed upon the
plaintiff's trademark right.
In addition, the plaintiff should show that the trademark in
question distinctively identifies the business or the product.74 The
trademark must be a distinct mark which will identify the product
to the public.75 The primary method that courts have used in determining the distinctiveness of marks is through categorizing the
marks as generic, descriptive, suggestive, or arbitrary/fanciful.76 In
Abercrombie & Fitch Co. v. Hunting World, Inc.,77 the Seventh Circuit enunciated these four trademark categories and the various
degrees of protection afforded to each.78 “The lines of demarcation,
however, are not always bright . . . because a term may shift from
one category to another in light of differences in usage through
time . . . .”79
73. The First Circuit addressed an additional factor in determining likelihood of
confusion: “the relationship between the parties' channels of trade.” Boston Athletic Ass'n
v. Sullivan, 867 F.2d 22, 28 (1st Cir. 1989). The Third Circuit used three additional factors in determining whether likelihood of confusion actually exists:
[1] [T]he price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; [2] the length of time the
defendant has used the mark without evidence of actual confusion arising;
[and] . . . [3] other facts suggesting that the consuming public might expect the
prior owner to manufacture a product in the defendant's market, or that he is
likely to expand into that market.
Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983) (citing Scott Paper Co. v.
Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978)). Several circuits have
adopted the Polaroid criteria as the basis for the test of likelihood of confusion. See, e.g.,
International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1087 (7th Cir. 1988);
Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 940 (10th Cir. 1983); McGregorDoniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir. 1979).
74. See LONG, supra note 58, at 43; see, e.g., Sicilia Di R. Biebow & Co. v. Cox,
732 F.2d 417, 426 n.6–7 (5th Cir. 1984).
75. See LONG, supra note 58, at 43.
76. See id.
77. 537 F.2d 4 (2d Cir. 1976).
78. See id. at 9–13. Abercrombie & Fitch sued Hunting World for marketing sporting apparel identified with the same “Safari” trademark as Abercrombie. See id. at 7.
Abercrombie & Fitch had registered and marketed the “Safari” mark. See id. The company sought an injunction as well as an accounting for damages and profits. See id. See
infra notes 80–87 and accompanying text for a discussion of the four categories associated with the varying degrees of protection.
79. Abercrombie, 537 F.2d at 9.
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First, a generic term is defined as the “genus of which the particular product is a species.”80 A generic mark, like “Safari” hats81 or
Aspirin,82 is completely intertwined with the product it represents
and, thus, is never protected as a mark. A descriptive mark must acquire the necessary secondary meaning,83 which will identify the
characteristic or quality of the product within the market to gain
protection.84 However, a mark which is described as suggestive requires the consumer use “imagination, thought and perception to
reach a conclusion as to the nature of goods.”85 Suggestive marks,
unlike those categorized as descriptive marks, are registered without specific proof of secondary meanings.86 Arbitrary or fanciful
marks receive the broadest protection under trademark registration
and also do not require proof of secondary meaning to be registered.87 Thus, a company should make sure that its mark is either
arbitrary, fanciful, or suggestive, or that it has attained secondary
meaning.
B. Color as a Basis for Trademark Protection
80. Id. A generic term is a common name of good or service; generic terms cannot
be subject to trademark protection regardless of the marketing used to promote the product. See LONG, supra note 58, at 44–46.
81. See Abercrombie, 537 F.2d at 11–12 (holding that the word “Safari” had become
generic when associated with hats).
82. See Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (holding
that the name Aspirin had become so tied to the product that the term was now generic).
83. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 (1995). This occurs
when a trademark is not “distinctive when first adopted, but may acquire distinctiveness
over time. When such a mark has come to signify that an item is produced or sponsored
by a particular merchant it is said that the mark has secondary meaning.” BLACK'S LAW
DICTIONARY 1351 (6th ed. 1990).
84. See Abercrombie, 537 F.2d at 9–10. A merely descriptive mark is not protected
through registration. See id. at 10. The mark must have become a distinctive aspect
within the commercial market. See id. For example, Judge Friendly cites to evidence of
a mark being used exclusively for a period of five years preceding registration as showing that the mark has become distinctive. See id.
85. Abercrombie, 537 F.2d at 11 (citing Stix Prods., Inc. v. United Merchants &
Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968)); see also LONG, supra note 58, at
49–50.
86. See Abercrombie, 537 F.2d at 11.
87. See id.; see also LONG, supra note 58, at 50–51. Arbitrary or fanciful marks
“bear no relationship to the product or service with which they are associated.” Soweco,
Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir. 1980).
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Likelihood of Confusion
913
Traditionally, color has been recognized as a trademark if the
color is used in connection with another symbol.88 But the courts
have been reluctant to recognize color per se as a registerable trademark.89 Courts have used four different policy reasons to
deny trademark protection for color on a per se basis: (1) the color
depletion theory; (2) the shade confusion theory; (3) the symbol
protection theory — where existing color protection schemes can be
protected as part of symbol protection; and (4) the prejudice theory
— where by changing the law, those who acted in reliance on the old
law will be injured.90 The color depletion theory occurs when, in a
given line of commerce, only limited colors are available and all
colors will be taken if allowed to be trademarked.91 The shade confusion theory occurs when two companies seek to mark “closely similar shades.”92 Courts using the symbol protection theory state that
88. See Daniel R. Schechter, Comment, Qualitex Co. v. Jacobson Prods., Inc.: The
Supreme Court “Goes for the Gold” and Allows Trademark Protection for Color Per Se, 5
FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 481, 482 (1995). See infra text accompanying
footnotes 114–20 for an example of the use of the interconnection of a symbol and colors.
89. See LONG, supra note 58, at 104. The Lanham Trade-Mark Act, 15 U.S.C.
§ 1125 (1994), does not make specific reference to color as a protected trademark. The
statute only references the following items: “word, term, name, symbol, or device, or any
combination thereof.” Id.
90. See Richard J. Berman, Note, Color Me Bad: A New Solution to the Debate over
Color Trademark Registration, 63 GEO. WASH. L. REV. 111, 116–20 (1994); see, e.g.,
Qualitex Co. v. Jacobson Prods. Co., 115 S. Ct. 1300, 1305–08 (1995) (citing the
defendant's arguments for not allowing a color per se trademark).
91. See 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7.16(1), at 7–66 (3d ed. 1995). This theory is traditionally referred to as the color
depletion or color monopolization rule. See id. People can distinguish only a few basic
colors despite the fact that hundreds of shades exist within a specific color. See id. at
7–69.
In Life Savers Corp. v. Curtiss Candy Co., 182 F.2d 4, 9 (7th Cir. 1950), the
Seventh Circuit used the color depletion theory to prohibit the trademarking of color on
a per se basis alone. Color can only be trademarked in association with “some definite
arbitrary symbol or design.” Id. In Campbell Soup Co. v. Armour Co., 175 F.2d 795, 798
(3d Cir. 1949), the Third Circuit denied Campbell Soup Company trademark protection
for its red and white soup label since the company wanted trademark protection for
color. The court prohibited trademark protection for color alone, stating that color can
only be trademarked in connection with a distinctive design. See id. at 799.
What the plaintiffs are really asking for, then, is a right to the exclusive use of
labels which are half red and half white for food products. If they may thus
monopolize orange in all of its shades the next manufacturer may monopolize
red in all of its shades and the next yellow in the same way. Obviously, the
list of colors will soon run out.
Id. at 798.
92. 1 MCCARTHY, supra note 91, § 7.16(1), at 7–71 to 7–72. Consumers are sup-
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color does not need separate protection because it receives protection
as part of a unique symbol.93 Finally, a company using the prejudice
theory can point to older cases that it relied upon to support its position against trademarking color per se.94
The traditional approach towards color per se was used in
Inwood Laboratory, Inc. v. Ives Laboratory, Inc.95 The Supreme
Court in Ives supported the district court's finding that the blue-red
color of the capsule was a functional aspect of the product that allowed patients and doctors to easily identify the drug CYCLOSPASMOL.96 Thus, the district court allowed Inwood Laboratories to
use the same blue-red coloring in its generic equivalent to
CYCLOSPASMOL since it was declared a functional aspect of the
posed to have difficulties distinguishing between various shades of a marked color. See
id. In Youngstown Sheet & Tube Co. v. Tallman Conduit Co., 149 U.S.P.Q. (BNA) 656,
657 (Patent Office Trademark Trial & Appeal Board 1966), the trademark appeal board
held that the color orange could not be trademarked for banding pipe when another
company had already established gold as its trademark for their piping. The applicant's
orange stripe on its piping was not distinguishable from the gold stripe, and thus, the
two products were likely to be confused. See id. at 657–58. But see In re Hodes-Lange
Corp., 167 U.S.P.Q. (BNA) 255, 256 (Patent Office Trademark Trial & Appeal Board
1970) (holding that no likelihood of confusion could exist between a brilliant yellow band
and a bronzy gold band).
93. See Qualitex Co. v. Jacobson Prods. Co., 115 S. Ct. 1300, 1308 (1995). Color can
be used in conjunction with other marks or symbols in an arbitrary pattern to create a
valid trademark. See Southwestern Bell Tel. Co. v. Nationwide Indep. Directory Serv.,
Inc., 371 F. Supp. 900, 911 (W.D. Ark. 1974). See also infra notes 114–20 and accompanying text for a discussion of the use of colors and symbols in Ambrit, Inc. v. Kraft, Inc.,
812 F.2d 1531 (11th Cir. 1986).
94. For an example of a defendant arguing this theory in trademark litigation, see
Qualitex, 115 S. Ct. at 1307. It is argued that the companies violating a color trademark
are relying on older court decisions, and thus, these marks should be protected. See id.;
see also A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166,
170–71 (1906) (holding that use of a colored strand intertwined around the rope to be
too indefinite for use as a valid trademark); Coca-Cola Co. v. Koke Co. of Am., 254 U.S.
143, 147 (1920) (holding that “[t]he product including the coloring matter is free to all
who can make it if no extrinsic deceiving element is present”).
95. 456 U.S. 844 (1981). Ives Laboratory manufactures the drug CYCLOSPASMOL.
See id. at 850. Ives Laboratory sued Inwood Laboratory under 15 U.S.C. § 1125(a) and
alleged that Inwood copied the drug's capsule color to make a cheaper generic capsule of
CYCLOSPASMOL. See id. Ives argued that the color was not generic and had acquired a
secondary meaning within the consumer market. See id. at 850–51; see also Ives Lab.,
Inc. v. Darby Drug Co., 488 F. Supp. 394, 398–99 (E.D.N.Y. 1980) (discussing the functional aspects of red-blue coloring of the drug).
96. Cf. Ives, 456 U.S. at 853, 855 n.16 (stating that the district court's factual inferences were reasonable).
1997]
Likelihood of Confusion
915
product.97
In 1985, the courts began to acknowledge and allow the enforceability of a color per se trademark.98 In In re Owens-Corning
Fiberglas Corp.,99 the Federal Circuit held that the company was
entitled to a federal registration for its pink fiberglass.100 OwensCorning's extensive marketing, promotion, and sales over a period of
many years established the color pink as a valid trademark for
which it sought protection.101 This court concluded that the color in
Owens-Corning's trademark was not a functional item which would
bar it from protection.102 It also held that the color depletion argument used by the appeals board created an unreasonable restriction
to trademark registration of color per se.103 It then concluded that
under the Lanham Trade-Mark Act color per se was entitled to protection, registration, and recognition.104
Owens-Corning has been distinguished because it dealt with
fiberglass, which is not considered a common household good sold in
mass quantities within retail stores. When dealing with common
products, other courts have decided not to allow trademark protection for color per se. For example, in NutraSweet Co. v. Stadt
Corp.,105 the Seventh Circuit followed its own precedent and did not
allow trademark or trade dress protection for NutraSweet's blue
packaging.106 The court held that color can only be protected if it is
97. See id. at 853.
98. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985).
99. Id.
100. See id. at 1128. In 1980, Owens-Corning applied for a patent for the color pink
to function as a trademark for its insulation. See id. at 1118. The Patent and Trademark
Office's Trademark Trial and Appeal Board denied Owens-Corning's petition on the
grounds that it had not demonstrated the distinctiveness of pink as a trademark for its
fiberglass; Owens-Corning appealed. See id.
101. See id. at 1124. The court held that Owens-Corning's pink fiberglass had acquired secondary meaning within the marketplace. See id.
102. See id. at 1122. The color pink is seen as ornamental and not as functional.
See id.
103. See id. at 1120.
104. See Owens-Corning, 774 F.2d at 1128.
105. 917 F.2d 1024 (7th Cir. 1990).
106. See id. at 1025. NutraSweet began manufacturing “Equal,” a sugar substitute
in a blue package, in 1981. See id. at 1026. In 1988, Cumberland, the manufacturer of
“Sweet and Low,” introduced “Sweet One” in a similar blue package. See id. NutraSweet
sued Cumberland and alleged that the use of the blue packaging violated NutraSweet's
trade dress protection. See id.
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part of a symbol or a design.107 Therefore, the Lanham Trade-Mark
Act does not protect the use of color per se as a trademark.108 The
court also stated that changing the trademark law in this case could
create a barrier to lawful competition.109
The courts also recognized color as a functional aspect of the
product in order to avoid protection for color per se. For example, in
First Brands Corp. v. Fred Meyer, Inc.,110 the Ninth Circuit held that
the plaintiff's yellow-colored antifreeze containers could not be protected under the Act due to the functionality of the product.111 The
plaintiff could not prevent the defendant from selling the antifreeze
product in a similar yellow container, since yellow is seen as a functional element in the antifreeze market.112 However, the court did
acknowledge that color could be used as a trademark; but it stated
that the product's package shape must be distinctive in connection
with color before the product can be trademarked.113
Furthermore, Ambrit, Inc. v. Kraft, Inc.114 demonstrated the
way courts viewed color in relation to a product's symbol. In Ambrit,
the Eleventh Circuit allowed the colors within Islay's115 trademark
to be protected, since the colors were integrally related to symbols
used on the packaging of the chocolate-covered ice cream bar.116 The
107. See id. at 1027.
108. See id.
109. See id. at 1028. NutraSweet argued that in this market “Equal” means blue,
“Sweet and Low” means pink, and “Sugar Twin” means yellow. See id. The court was
concerned with the impact trademarking this color coding of sweeteners would have on
future entrants in the market. See id.
110. 809 F.2d 1378 (9th Cir. 1987).
111. See id. at 1381–83. Union Carbide manufactures Prestone II brand antifreeze
and filed suit for a preliminary injunction against Fred Meyer, Inc. See id. at 1380–81.
The district court denied the injunction against Fred Meyer's selling of antifreeze in
yellow-colored containers. See id. at 1381. Union Carbide appealed. See id.
112. See id. The color yellow was determined to be a functional aspect of the antifreeze packaging industry. See id. The color yellow is seen as an essential aspect of the
product and of the product's use. See id.
113. See id. at 1382 (holding that the rule stated in Owens-Corning was unusual,
and the color per se rule is limited to very specific situations).
114. 812 F.2d 1531 (11th Cir. 1986).
115. Ambrit Corporation was formerly known as the Isaly Corporation. See id. at
1531.
116. See id. at 1535–37. In 1928, Isaly began selling Klondike bars, a square
chocolate-covered ice cream bar, with the bar wrapped in foil with blue, silver, and white
colors and the figure of a polar bear on the wrapping. See id. at 1533. Kraft began selling Polar B'ars in 1979, and the bars were packaged similarly. See id. at 1534. Isaly
filed suit under the Lanham Trade-Mark Act and alleged that Kraft's packaging in-
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917
court held that the entire packaging, including the polar bear symbol and the colors white, silver, and black, constituted Isaly's protected trade dress117 for the product.118 Isaly's trade dress had become distinctive, and Kraft's similar packaging for its product created a likelihood of consumer confusion.119 Thus, the colors were
included within the trademark protection because they were an integral part of the symbol.120
Two Pesos, Inc. v. Taco Cabana, Inc.121 validated the protection
of color as it relates to other symbols within the product's trade
dress. The Supreme Court held a product's trade dress that is inherently distinctive does not need to acquire a secondary meaning to
be protected as trade dress.122 The mark or dress must inherently
identify, not merely describe, the specific source to be protected.123
The company may use color within the product's trade dress to create inherent distinctiveness which protects the mark. The court also
found that requiring a mark to attain a secondary meaning is at
odds with the other principles applicable under infringement
suits.124 Thus, the company must show only that the mark is inherently distinctive to gain legal protection.125 Product identification is
extremely difficult if the company must show both inherent distinctiveness as well as a secondary meaning; this dual requirement
fringed upon Isaly's design. See id.
117. “Trade dress involves the total image of a product and may include features
such as size, shape, color or color combinations, texture, graphics, or even particular
sales techniques” for the product. Id. at 1535 (quoting John Harland Co. v. Clarke
Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)). The plaintiff must prove the trade
dress is a nonfunctional, yet distinctive item. See LONG, supra note 58, at 112–13.
118. See Ambrit, 812 F.2d at 1535–37.
119. See id. at 1535 (discussing the district court's findings).
120. See id.
121. 505 U.S. 763 (1992).
122. See id. at 774. Taco Cabana opened its first Mexican fast food restaurant in
1978 and by 1985 had a chain of Mexican restaurants in the San Antonio area. See id.
at 765. Two Pesos opened a Mexican fast food restaurant in Houston in 1985 and essentially adopted the decor and environment of Taco Cabana. See id. In 1986, Taco Cabana
expanded its restaurants throughout Texas, including Houston. See id. In 1987, Taco
Cabana filed suit for trade dress infringement. See id. The district and appellate courts
found that Two Pesos had violated Taco Cabana's trade dress. See id. at 766–67.
123. See id. at 768.
124. See id. at 775. Secondary meaning occurs when a product “become[s], as a result of its use by a specific person, uniquely associated with that person's goods, services, or business.” RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 cmt. e (1995).
125. See Two Pesos, 505 U.S. at 775–76.
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creates more confusion among consumers when trying to distinguish
among competing products.126
Thus, after Two Pesos, companies seeking protection for color
per se could attempt to show that color is an inherently distinctive
trade dress or could acquire a secondary meaning which requires
protection from infringement. For example, in Master Distributors,
Inc. v. Pako Corp.,127 the Eighth Circuit held that no per se rule prohibits the protection of color alone as a trademark.128 The Eighth
Circuit followed the Supreme Court's lead and rejected the traditional reasons which have prohibited the trademarking of color per
se.129 Once the manufacturer has met the requirements for obtaining
trademark protection, the fact that color is the subject of the trademark application should not bar a product's protection.130 But the
manufacturer's use of color did not guarantee that its property right
would be enforced; the manufacturer should attain a secondary
meaning which will allow protection for the color.131 Therefore, without secondary meaning, the court could prohibit color per se as a
trademark. This prohibition would make valid trademarks ineffectual and unenforceable.132
However, other courts did not acknowledge that color could be
protected as part of a trade dress. For example, in International
Jensen, Inc. v. Metrosound U.S.A., Inc.,133 the Ninth Circuit denied
protection for International Jensen's use of a blue-colored, surroundsound speaker cover since the color blue was not considered a dis-
126. See id.
127. 986 F.2d 219 (8th Cir. 1993).
128. See id. at 221. Master sells “Blue Max,” a blue leader splicing tape, which is
used to attach undeveloped film to leader cards. See id. at 220. Pako began manufacturing its own brand of blue leader splicing tape, and Master sued for trademark infringement. See id. The district court dismissed Master's suit. See id. at 221.
129. See id. at 222–23. The court stated the four traditional reasons for not allowing
a color per se trademark are (1) changing the law and allowing color protection would
prejudice those who acted in reliance of the old law; (2) color is already protected as
part of symbol protection; (3) there could be possible shade confusion which could only
be decided through litigation; and (4) there could be color depletion problems if color is
to be trademarked. See id. at 222.
130. See id. at 223.
131. See id. Color must provide an essential utility to the product for the color mark
per se to be recognized. See id. at 224.
132. See id.
133. 4 F.3d 819 (9th Cir. 1993).
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919
tinctive element in its trade dress.134 The Ninth Circuit determined
that for an item to be trademarked, all aspects of the product must
be taken together as a total image for the product; one cannot trademark each element separately.135 This court was concerned that the
colors within a market might be depleted.136 The International
Jensen, Inc. v. Metrosound U.S.A., Inc. court also held that no likelihood of confusion existed because the total effect of the product was
more than just the blue-colored speaker cover.137 Therefore, the
court found that no confusion exists for consumers in regards to
Metrosound's infringement claim.138 Thus, despite the infringement
on the color blue, International Jensen was not entitled to color protection under trade dress. Although denying protection in this case,
the Ninth Circuit did not expressly prohibit trademark protection
for color per se.
Finally, in Qualitex Co. v. Jacobson Products Co.,139 the Supreme Court established that color per se can be used as a symbol
for a product or company.140 In Qualitex, the Supreme Court held
that a corporation can register colors as trademarks if the colors
have attained a secondary meaning.141 Color is included within the
134. See id. at 821. International Jensen manufactures car and truck speakers with
a blue-colored cone attached to the speaker housing. See id. In 1989, Metrosound U.S.A.
introduced a new line of speakers with the same blue casing. See id. International
Jensen filed a preliminary injunction against Metrosound U.S.A. and alleged violations of
the Lanham Trade-Mark Act. See id. The district court denied the motion for the preliminary injunction and asserted that functional constraints precluded trademark infringement. See id.
135. See id. at 823. A trademark is considered functional when it is essential to the
product's use or purpose. See id. Color can be a functional item through the color depletion theory. See id.
136. See id. at 823–24.
137. See id. at 825.
138. See id.
139. 115 S. Ct. 1300 (1995).
140. See id.
141. See id. at 1303. For years, Qualitex Corporation had used a shade of green-gold
for its dry cleaning press pads. See id. at 1301. In 1989, Jacobson Products began manufacturing its own press pads in the same green-gold shade. See id. Qualitex registered
the green-gold color for the pads and then filed suit for trademark infringement. See id.
The district court found for Qualitex, but the Ninth Circuit reversed the infringement
judgment. See Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297, 1301 (9th Cir. 1994),
rev'd, 115 S. Ct. 1300 (1995). The Ninth Circuit held that the Lanham Trade-Mark Act
does not protect color per se. See id. at 1302. The Ninth Circuit relied on the color depletion and the shade confusion theories as well as the fact that color can be protected
through a distinctive logo as reasons for denying color per se protection. See id. Ade-
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spectrum of items which can qualify under trademark protection. 142
A color alone can attain a secondary meaning that sets the product
apart due solely to the color's distinctiveness.143 The Supreme Court
found that color, unlike words alone, will automatically tell a consumer the brand he or she has purchased.144 Then, the Supreme
Court examined and disregarded the four reasons that courts have
traditionally not protected color per se as a trademark.145
III. COURT'S ANALYSIS
In a split decision, the Seventh Circuit invalidated Libman's
claim against Vining Industries for trademark infringement on its
Libman 201 broom with contrasting colored bristles.146
A. The Majority Opinion
Chief Judge Richard Posner, writing for the majority, stated
that Libman did not present enough evidence to show a likelihood of
confusion existed between the Libman 201 broom and the O'Cedar
2000.147 Libman could not show likelihood of confusion without
showing that the consumers were actually confused over the similar
products on the market. 148 The court stated “a trade
quate protection for color can be assured through a trademarked pattern. See id.; see
also 1 MCCARTHY, supra note 91, § 7.16.
142. See Qualitex, 115 S. Ct. at 1302. Color trademark should not be used to extend
the life of a patent so the manufacturer can have a monopoly forever. See id. at 1304.
143. See id. Color can identify a good or product without serving any other particular function. See id.
144. See id. at 1303. The doctrine of functionality should not serve as an absolute
bar to the use of color as a trademark. See id. at 1304.
145. See id. at 1305–08. See supra notes 89–94 and accompanying text for a discussion of the four traditional reasons used for denying the trademarking of color per se.
146. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996).
147. See id. at 1361.
148. See id. The court cites to 15 U.S.C. § 1114(1)(b) for support of this assertion.
See id. Section 1114(1)(b) states:
(1) Any person who shall, without the consent of the registrant—
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark
and apply such reproduction, counterfeit, copy, or colorable imitation
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 services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
1997]
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mark is not a property right but an identifier of a product.”149 Therefore, if no actual confusion exists, there is no impairment of
Libman's interest in the product was not impaired.150 The court
noted that Vining had sold hundreds of thousands of O'Cedar 2000
brooms and yet no consumer had complained to Libman that they
were confused.151
The court found that the only two things the brooms have in
common is that they are brooms and that they have contrastingcolor bristles.152 The court stated that, since the consumer would not
encounter the two brooms together in a store,153 the consumer would
not likely experience confusion over the similar items.154 Also, the
minor differences between the products would distinguish any consumer side-by-side comparison, although there could still be a likelihood of actual confusion.155 Thus, the court rejected Libman's argument that reverse confusion156 would occur.157
The court also found Libman argued in error when it asserted
that a conceptual confusion between the products would fool consumers who shopped for Libman brooms and found only Vining
brooms.158 Libman presented no evidence which would show that
shall be liable in a civil action . . . .
15 U.S.C. § 1114(1)(b) (1994).
149. Libman, 69 F.3d at 1361.
150. See id.
151. See id. Libman failed to conduct a survey which could show that a likelihood of
confusion actually does exist. See id. The court also pointed to the fact that the packaging differs between the two products. See id. The packaging on Vining's O'Cedar 2000
covers all the bristles so the contrasting color bristles are not able to be seen by the
consumer's eye. See id.
152. See id. at 1362. Both brooms are covered with wrappers in the stores. See id.
The court found that the consumer would never have the occasion to ask the salesperson
to remove the wrapper to inspect the bristles because the consumer could just feel the
bristles through the wrapper. See id.
153. See Libman, 69 F.3d at 1362. Since brooms are bulky items, a store will typically either stock its shelves with one line or the other. See id.
154. See id.
155. See id. The court looked at the brooms in side-by-side comparison during the
oral arguments. See id.
156. See id. Reverse confusion occurs when there is consumer confusion “regarding
the source or sponsorship of the plaintiff's goods as a result of the defendant's use of a
confusingly similar mark . . . .” LONG, supra note 58, at 246. See supra note 69 for a
discussion of reverse confusion.
157. See Libman, 69 F.3d at 1363. The court rejected the argument for reverse confusion in this case. See id.
158. See id.
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consumers would suffer confusion when they encountered the
O'Cedar 2000 while looking for a Libman 201 broom.159 Although
Libman asserted that Vining exercised bad faith when it deliberately copied the Libman 201 broom, the Seventh Circuit found Vining
was not intentionally trying to confuse consumers.160 Thus, Vining's
actions were in the scope of competition, not infringement.161
The feature Vining allegedly infringed upon was not of intrinsic
value, but was only used as a product identifier.162 The court did find
that Libman's contrasting-color bristle broom was distinctive
enough to be registered.163 However, it is a confusing proposition
that Libman's trademark could be inferred as “jazzing up” a common
item, but not as a product identifier.164 The Seventh Circuit determined that this was not a case where consumers were likely to confuse the source of the product.165 Thus, the court reversed the district court's decision in Libman's favor and entered judgment for
Vining Industries.166
B. Coffey's Dissent
Coffey criticized two aspects of the majority's decision: the
changes made by the majority in the likelihood of confusion standard, and the majority's disregard of the clearly erroneous standard
of review.167
159. See id. The court found that a “pure conjecture or a fetching narrative alone”
cannot be used to meet the burden of proof. Id. Libman showed no proof that consumers
would actually be confused over the similarity between the products. See id.
160. See id. As the record appeared to the court, Vining saw that the Libman broom
was selling rapidly, “inferred that consumers like brooms with contrasting color bands,
and decided to climb on the bandwagon.” Id. The court asserted that this was the essence of competition, not a bad faith intent to infringe on Libman's trademark. See id.
161. See Libman, 69 F.3d at 1363.
162. See id. The court held that the line is fine, but Vining had not crossed it. See
id.
163. See id. Compare Libman, 69 F.3d at 1363, with Qualitex, 115 S. Ct. at 1308
(allowing colors to be registered as trademarks).
164. See Libman, 69 F.3d at 1363.
165. See id. at 1363–64. The court found that Libman's assertions that consumers
would be confused to be purely hypothetical without factual statistics of actual confusion.
See id. at 1364. Libman could have easily found consumers who could have supported
this theory. See id.
166. See id.
167. See id. at 1364 (Coffey, J., dissenting).
1997]
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1. Likelihood of Confusion
Libman based its case on the fact that consumers would confuse
its Libman 201 with the O'Cedar 2000.168 Since the brooms greatly
resemble each other, consumers would be misled by the similarity
between the two products when shopping for a replacement
broom.169 But Libman presented no evidence, no surveys, and no anecdotal data to show actual consumer confusion.170 Actual consumer
confusion is entitled to substantial weight, but it is not the only
factor weighed when measuring likelihood of confusion.171 Actual
confusion is only one of the elements in the test for likelihood of confusion.172
The majority held that the evidence of likelihood of confusion
was very slim.173 But the majority used only evidence of actual confusion in its analysis of likelihood of confusion.174 This opinion departed from precedent which used seven factors to determine likelihood of confusion.175 In Libman, Coffey enunciated the following as
being relevant factors in determining whether a likelihood of confusion exists:
(1) [S]imilarity between the marks . . . ; (2) similarity of the products; (3) area and manner of concurrent [advertising and] use; (4)
degree of care likely to be exercised by consumers; (5) strength of
complainant's mark; (6) actual confusion; and, (7) intent of defendant to “palm off [its] product as that of another.”176
The majority elevated actual confusion to the most important factor
on the list.177 The dissenting judge was concerned because the ma-
168. See id.
169. See Libman, 69 F.3d at 1364 (Coffey, J., dissenting).
170. See id.
171. See id. at 1365.
172. See id. at 1364.
173. See id. at 1361.
174. See id. at 1365.
175. See Libman, 69 F.3d at 1365 (Coffey, J., dissenting). See, e.g., Smith Fiberglass
Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); McGraw-Edison Co. v.
Walt Disney Prods., 787 F.2d 1163, 1166 (7th Cir. 1986).
176. Id. at 1364–65 (Coffey, J., dissenting) (citing Smith Fiberglass Prods., Inc. v.
Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); AHP Subsidiary Holding Co. v. Stuart
Hale Co., 1 F.3d 611, 615 (7th Cir. 1993); International Kennel Club, Inc. v. Mighty
Star, Inc., 846 F.2d 1079, 1087 (7th Cir. 1988)).
177. See Libman, 69 F.3d at 1364–65 (Coffey, J., dissenting).
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jority “swept under the rug” the remaining six factors, contradicting
precedent.178
The dissent stated that Libman's product was a low-cost, impulse item, the choice over which consumers would not debate.179
The court must, therefore, look at the totality of the circumstances
as it had done in prior trademark infringement cases.180 The two
brooms have a similar design,181 and both the Libman 201 and the
O'Cedar 2000 target the same consumers and retail outlets.182 Although there was no proof of actual confusion, the dissent found this
product was not one that the consumer would be likely to complain
about if he or she mistakenly purchased a different brand.183 Libman
did show that individual consumers actually recognized and asked
for the Libman 201 when it was advertised.184 Additionally, Libman
demonstrated that Vining did not research any possible trademark
violations with the O'Cedar 2000 and appeared not to be concerned
with avoiding the infringement.185 Coffey agreed with the district
court's finding that, since Libman proved six of the seven elements
of the prima facie case for trademark infringement, Vining had the
178. See id.
179. See id. at 1365.
180. See id. at 1365.
181. See id. at 1366 (Coffey, J., dissenting). This satisfies factor one. See id. The
plaintiff in the prima facie case must prove there is “a high degree of similarity between
the marks and, though their presentation is different, the possibility of confusion exists
based upon the marks alone.” McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163,
1168 (7th Cir. 1986).
182. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting). These encompass factors
two and three. See id. The Seventh Circuit defines factor two as “whether the products
are the kind the public attributes to a single source.” McGraw-Edison, 787 F.2d at 1169
(quoting E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525,
1530 (11th Cir. 1985)). To prove the third factor, the plaintiff must show that the defendant has utilized the same or similar outlets or marketing channels. See id. at 1169–70.
183. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting). Coffey enunciated these as
the fourth and sixth factors. See id. The plaintiff must establish the degree of care typically used by consumers when purchasing the products. See McGraw-Edison, 787 F.2d at
1170.
184. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting). To assess the fifth factor,
the plaintiff must prove that the mark is descriptive, suggestive, or arbitrary/fanciful
and, therefore, that consumers recognize it distinctly. See McGraw-Edison, 787 F.2d at
1170–71. With the seventh element, the plaintiff must show that the defendant's product
“increased the likelihood that a consumer would be confused into believing there was a
common sponsorship or authorization between the parties or their products, and increased the dilution of plaintiff's mark.” Id. at 1173.
185. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting).
1997]
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925
burden of rebutting the evidence stacked against it.186 Since Vining
never rebutted this evidence, the district court was within its power
to find for Libman.187
2. Appellate Review of Likelihood of Confusion
Whether a likelihood of confusion actually exists is a question of
fact and not a question of law.188 Thus, the appellate court must
affirm the trial court's determination unless a clear showing of error
has been shown.189 If the trial court's rulings rest on credibility determinations or on the documentary evidence, the appellate court
cannot reverse on a clearly erroneous standard.190 This aspect is
especially critical since trademark infringement is a highly factbased determination.191 The Supreme Court has stated that an appellate court must not reevaluate the factual conclusions unless
error has been committed.192
The majority in Libman reanalyzed Libman's argument concerning likelihood of consumer confusion and declared that it was a
“plausible narrative.”193 But the majority went on to contradict itself
by stating that Libman's claims amounted to nothing more than
“pure conjecture.”194 The majority “substituted its own judgment for
that of the district court.”195 The majority willingly reviewed the
factual circumstances in the case to reevaluate the likelihood of
confusion.196 In doing so, the majority determined that the Libman
mark was “merely a way . . . of jazzing up the humblest of utilitarian
products.”197 Thus, the dissent stated that the majority struck down
the district court's finding of fact where it should have only reversed
for errors of law or for lack of credibility of the issues.198
186.
187.
188.
189.
190.
191.
192.
193.
194.
195.
196.
197.
198.
See id. at 1366.
See id.
See id. (citing McGraw-Edison, 787 F.2d at 1167).
See id. at 1366.
See id. at 1367.
See Libman, 69 F.3d at 1367 (Coffey, J., dissenting).
See id. at 1366.
Id. at 1367.
See id.
Id. at 1368.
See id.
Libman, 69 F.3d at 1368 (Coffey, J., dissenting).
See id.
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IV. CRITICAL ANALYSIS
The Seventh Circuit historically used a seven-factor test to determine if a likelihood of consumer confusion exists between the
trademarked product and the allegedly infringing product.199 The
courts, following the precepts of the Lanham Trade-Mark Act, have
equally weighed these factors when determining whether a
likelihood of confusion exists.200 Traditionally, courts did not give
one or two specific elements greater deference when weighing the
factors involved.201
This seven-factor test is especially critical when the product
allegedly being infringed upon has a common, everyday usage like a
colored sugar substitute packet or a broom.202 In these situations,
actual confusion can be difficult to prove because the product is common, inexpensive, and prone to impulse buys.203 Therefore, consumers will not normally voice their criticisms over the perceived product confusion because of the item's low cost. Thus, companies like
Libman that produce low-cost items have great difficulty proving
actual confusion. These companies should not, however, experience
difficulties in showing the similarities between their trademarked
product and the other product. For these reasons, the courts must
weigh all factors equally when determining a potential violation of a
trademark.
A. The Other Factors Not Considered in Libman
199. See, e.g., International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1087
(7th Cir. 1988); McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167–68 (7th
Cir. 1986).
200. See, e.g., Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 28 (1st Cir. 1989);
McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1166 (7th Cir. 1986);
Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983). For the text of 15 U.S.C.
§ 1125(a) (1994) see supra note 63.
201. For a discussion of the court's use of the multi-factor test, see supra notes
64–65 and accompanying text. See also RESTATEMENT (THIRD) OF UNFAIR COMPETITION
§ 21 (1995).
202. See, e.g., NutraSweet Co. v. Stadt Corp., 917 F.2d 1024 (7th Cir. 1990).
203. In Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d
Cir. 1986), the Second Circuit stated “that actual confusion need not be shown to prevail
under the Lanham Act, since actual confusion is very difficult to prove and the Act requires only a likelihood of confusion as to source.”
1997]
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Libman could have demonstrated the likelihood of confusion
between the O'Cedar 2000 and the Libman 201 using the factors not
considered by the court. First, the company pursuing trademark
infringement must show a similarity between the identifying marks
of the two products; Libman used the color band on the broom to
identify its product within the marketplace.204 The O'Cedar 2000
brooms used a similar mark.205 Therefore, the companies were obviously using similar marks as product identifiers.
An analogous situation of similarity between products can be
found in Qualitex, in which Jacobson copied the green-gold pads
used by Qualitex.206 These facts resemble the Libman case because
the O'Cedar 2000 was introduced into the market after sales for the
Libman 201 broom dramatically increased.207 But, unlike the situation in Qualitex, Vining did not copy the color combination.208 The
marks used by Vining were similar, but not identical to those used
by Libman. However, similar marks can also cause consumer confusion. Consumers looking for a two-shade broom may not realize that
the Libman 201 and the Vining broom both use a shade distinction
in the bristles.
This confusion is similar to the confusion cited by the Seventh
Circuit in McGraw-Edison Co. v. Walt Disney Productions.209 Although the presentation was different, the confusion existed due to
the similar nature of the marks alone.210 Therefore, the duplication
of the two trademark identifiers created the confusion for the consumers. This logic can also be applied in the Libman case. Although
the two marks are not identical, enough similarity exists to create
confusion for the consumers in the market.211 Even though the two
204. See supra notes 8–10 and accompanying text for a discussion of the physical
description of the Libman 201.
205. See supra text accompanying notes 21–22 for a discussion of the physical characteristics of the O'Cedar 2000.
206. For a discussion of the similarities between the Qualitex and the Jacobson
products, see supra notes 139–45 and accompanying text.
207. See supra text accompanying note 23.
208. See supra text accompanying notes 10, 22.
209. 787 F.2d 1163, 1168 (7th Cir. 1986). In McGraw-Edison, the district court
pointed to the difference in the print type of the two marks and found that this mark
“differentiation” eliminated confusion with the consumers. See id. The Seventh Circuit
reversed this contention and stated that the district court incorrectly distinguished the
lettering between the two marks. See id.
210. See id. at 1168–69.
211. Libman Co. v. Vining Indus., Inc., 876 F. Supp. 185, 188 (C.D. Ill. 1995), rev'd,
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companies used different colors in the two-toned brooms, the fact
that both companies developed two-toned brooms created the similarity within the marks. Therefore, Libman could have argued that
similarity of the marks would be likely to cause consumer confusion
within the marketplace.
The second factor the Seventh Circuit ignored, which could have
strengthened a claim for likelihood of confusion, is the similarity between the products. In Libman, the products are identical. Both
companies manufacture brooms. However, the Seventh Circuit previously held that although two companies manufactured vastly different products, this factor was not dispositive in determining the
issue of similarity of products.212 The Seventh Circuit defined the
issue as “whether the products are the kind the public attributes to
a single source.”213
Thus, when viewing the product, one must analyze whether
consumers assume that one company could manufacture both products. Since the brooms were nearly identical, with the sole differentiating factor being the color combination of the bristles, consumers
could readily assume the two products were produced by the same
manufacturer.214 Therefore, Libman could have argued that the two
lines of brooms with differently shaded stripes on the bristles could
easily have been construed as coming from one company. The district court in Libman also reinforced this assertion by stating that
consumers are likely to be confused when the products are similarly
designed.215 Thus, these two products would likely be attributed to a
single source instead of different manufacturers.
Additionally, consumers can become confused if the goods are
marketed within the same area and in the same manner.216 Any
subtle differences between the products could possibly become
blended when the products are marketed within the same media.
Both Libman and Vining target the same areas and use the same
69 F.3d 1360 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996).
212. See McGraw-Edison, 787 F.2d at 1169. In McGraw-Edison, the Seventh Circuit
looked at the two different lines of products under the TRON label. See id. McGrawEdison manufactured high quality fuses where Disney manufactured and marketed
entertainment-based products. See id.
213. Id. (quoting E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756
F.2d 1525, 1530 (11th Cir. 1985)).
214. See generally RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. c (1995).
215. See Libman, 876 F. Supp. at 188.
216. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmts. g, l (1995).
1997]
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929
channels of advertising.217 This marketing use resembles the dispute
within Source Services Corp. v. Source Telecomputing Corp.218 in
which both companies advertised their service marks within the
same trade magazines.219 In that case, however, the court found no
dispute over the concurrent use of the same marketing arena.220
This factor was not conceded in the Libman case, despite the fact
that both companies mass marketed the brooms in the same discount retail chain stores and supermarkets.221 The products were
also advertised in women's magazines to the people who regularly
use brooms and cleaning products.222 Thus, both companies obviously target the same market and use similar advertising methods.
Since concurrent marketing areas are used, consumers would likely
be confused over these similarly designed products.
Fourth, a likelihood of confusion is more probable when consumers exercise a low degree of care in selecting the product.223 When
“the cost of the defendant's trademarked product is high, the courts
assume that purchasers are likely to be more discriminating than
they might otherwise be.”224 Therefore, a less expensive product will
not produce the level of consumer scrutiny necessary for the consumer to find the specific product.225 Brooms are low-cost, impulse
purchases. Libman's president testified that the brooms are not
items which would likely cause a buyer to complain to the store that
he or she had purchased the wrong broom, and this assertion was
never disputed by Vining during the trial.226 This factor supports the
217. See supra text accompanying note 33.
218. 635 F. Supp. 600 (N.D. Ill. 1986).
219. See id. at 608. However, in Source Services, both parties agreed that the marks
were advertised within the same media. See id.; see also Source Servs. Corp. v.
Chicagoland Jobsource, Inc., 643 F. Supp. 1523, 1530 (N.D. Ill. 1986) (holding that the
marketing to the audience must be similar for the court to find concurrent use of advertising).
220. See Source Servs., 635 F. Supp. at 608.
221. See Libman, 876 F. Supp. at 187.
222. See id.
223. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. g (1995). “If similar marks are used on goods sold through the same marketing channels, the probability
of confusion may be higher than if the goods are marketed through separate channels.”
Id.
224. Source Servs., 635 F. Supp. at 609 (quoting J. GILSON, TRADEMARK PROTECTION
AND PRACTICE § 5.08 (1985)). See supra notes 80–87 for definitions of the categories of
the marks.
225. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. h (1995).
226. See supra text accompanying notes 29–31.
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proposition that consumer confusion does exist among the products
because the degree of consumer care in selecting this product is low.
Fifth, Libman could have shown its mark is strong and distinctive within the market. In determining the strength of the mark, the
court must determine into what category the mark falls: either suggestive, fanciful, or arbitrary, or has attained the necessary secondary meaning to support a descriptive mark.227 The mark gains
strength when consumers “identify the goods sold under the mark as
emanating from a particular source.”228 As a common household
item — a broom — the Libman 201 must acquire distinctive meaning which allows the product to stand out in consumer's minds.229
Otherwise, the use of the two-toned bristles might be considered
fanciful or arbitrary230 since there is no practical use for multi-colored bristles on a broom. The use of the color pattern — whether
considered a distinctive or arbitrary mark — was designed to make
the Libman 201 stand out from other brooms in the retail market.231
Therefore, the Libman Company used the two-toned bristles in order
to establish a mark that would create distinctive meaning in comparison to other brooms.
Libman 201 is advertised widely through traditional women's
magazines. This product, unlike the fuses in the McGraw-Edison
case, is also marketed widely to the general public through retail
stores and supermarkets.232 Therefore, the Libman 201 has greater
visibility within its overall market than the TRON fuse had in relation to Disney's use of the TRON merchandise. However, Libman
should have demonstrated the market visibility through a study or
survey of the product's recognition in the market. This type of sur-
227. See McGraw-Edison v. Walt Disney Prods., 787 F.2d 1163, 1170–71 (7th Cir.
1986) (citing Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 n.2 (7th Cir.
1965)). For the definitions of these categories, see supra notes 80–87 and accompanying
text.
228. Sands, Taylor & Wood, Co. v. Quaker Oats Co., 978 F.2d 947, 959 (7th Cir.
1992) (citing McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir. 1979)).
229. See supra notes 83–84 and accompanying text for a discussion of secondary
meaning.
230. For a description of how the courts view arbitrary marks, see supra note 87.
231. See supra text accompanying notes 35–36. In the McGraw-Edison case,
McGraw-Edison marketed the TRON fuses in a variety of outlets which included “discount stores, hardware stores, and electrical supply and catalog houses.” 787 F.2d at
1165. Disney marketed TRON merchandise in association with its motion picture entitled
TRON. See id.
232. See Libman, 876 F. Supp. at 187.
1997]
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931
vey would have solidified the recognition factor of the mark. Although Libman did not conduct a market study of the broom's ability
to be recognized, the company did present evidence that purchasers
requested this particular broom since consumers occasionally call
Libman, asking “where they may purchase the broom they saw advertised.”233 Libman's mark, therefore, should have been considered
a strong base within the retail broom market, and Vining's nearly
identical product should have been found to be an attempt to capitalize on Libman's good will.
Finally, Libman needed to show that Vining's imitation of its
mark was undertaken in bad faith. Traditionally, when reviewing
the likelihood of consumer confusion, the plaintiff needed to demonstrate the infringing company's bad faith by showing the defendant
“intended `to palm off his products as those of another' thereby profiting from the confusion.”234 Thus, the court must review the evidence to determine if the infringing party is profiting from the confusion between the marks. For example, in Sands, Taylor & Wood
Co. v. Quaker Oats Co., the Seventh Circuit held that Quaker Oats
did not use bad faith when the company failed to conduct a trademark search for Sands' “Thirst Aid” mark.235 Since Sands' mark was
being mistaken as Quaker Oats' mark, the court found that proof of
bad faith was “marginal at best.”236 In the Libman case, it was difficult for Libman to show the existence of bad faith, since its only evidence was that Vining failed to check for any trademark infringement.237 Nevertheless, the district court in Libman misinterpreted
Quaker Oats when it stated that the lack of a trademark search
constituted bad faith.238 However, the increasing market success of
the Libman 201 indicates that Vining either knew, or should have
known, of its competitor's popular two-color bristle broom when it
developed the O'Cedar 2000.239 Libman would probably need more
233. Id. at 188.
234. Quaker Oats, 978 F.2d at 961 (quoting Forum Corp. v. Forum, Ltd., 903 F.2d
434, 439 (7th Cir. 1990)).
235. See id. at 960–61.
236. Id. at 963.
237. See supra text accompanying notes 37–40.
238. See Libman, 876 F. Supp. at 189. In the Quaker Oats case, the Seventh Circuit
stated “that the evidence of bad faith here is marginal at best.” Quaker Oats, 978 F.2d
at 963. The district court in Libman found the evidence of bad faith from this case was
stronger than that presented in Quaker Oats. See Libman, 876 F. Supp. at 189.
239. See Libman, 876 F. Supp. at 189.
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concrete evidence to show that Vining engaged in bad faith or possessed actual intent to infringe upon Libman's broom.
Normally, courts have imposed liability when enforcing the
mark on low-priced goods and have utilized factors other than actual
confusion when determining the likelihood of confusion.240 Although
Libman should have conducted a consumer survey in order to determine if any consumers experienced actual confusion, Libman did
produce evidence which showed that its mark was recognized by
consumers.241 Where no proof was given to show actual confusion
existed, Libman did show that its mark — the multi-colored bristles
— was a distinctive identifier for the Libman 201.242 This, coupled
with the other factors such as a common market, common marketing strategies, common product design, and common purchasers,
should have supported Libman's prima facie case that a likelihood of
confusion actually existed between the two products.
B. The Importance of Actual Confusion
In Libman, the Seventh Circuit disregarded all factors other
than actual consumer confusion, and therefore, the mark was
deemed not worthy of protection under the Lanham TradeMark Act.243 The court dramatically changed the test from a sevenfactor test to a single-factor test. This switch runs contrary to Seventh Circuit precedent, as well as existing federal law.244
As recently as 1992, the Seventh Circuit stated “the plaintiff
need not show actual confusion in order to establish likelihood of
confusion.”245 The Seventh Circuit previously found that if the public
thinks a product could be from the same source as a similar product,
240. See generally 3 MCCARTHY, supra note 91, § 23.02(1). See the cases cited supra
note 73.
241. See supra text accompanying notes 29–31 for a discussion of the recognition of
the Libman mark.
242. See supra text accompanying notes 34–36.
243. See generally Allen, supra note 5, at 20 (stating that “most courts agree that
actual confusion is one of the most important, if not the most important factor, considered in determining the likelihood of confusion . . . ”).
244. See, e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.
1992); McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163 (7th Cir. 1986).
245. Quaker Oats, 978 F.2d at 960 (citing International Kennel Club, Inc. v. Mighty
Star, Inc., 846 F.2d 1079, 1090 (7th Cir. 1988); see also Helene Curtis Indus., Inc. v.
Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977); Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611–13 (7th Cir. 1965)).
1997]
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933
the plaintiff can show infringement through the likelihood of consumer confusion, not just through actual confusion.246 This opinion
was bolstered through the Web Printing Controls Co. v. Oxy-Dry
Corp.247 decision, in which the Seventh Circuit held that “proof of
injury caused by actual confusion is unnecessary.”248 Therefore, in
prior cases involving proof of a likelihood of confusion, the Seventh
Circuit focused upon other factors to determine whether the
infringement occurred.249 The court has also used all the factors in
determining that a given mark was not worthy of protection.250 The
Seventh Circuit, by focusing solely on the lack of actual confusion in
the Libman case, has shifted the “likelihood of confusion” test away
from precedent.
The prior Seventh Circuit decisions concur with the black letter
law of the Lanham Trade-Mark Act, which states that “[a]ny person
who shall, without the consent of the registrant (a) use in commerce
any . . . colorable imitation of a registered mark in connection with
the sale . . . [that] is likely to cause confusion . . . shall be liable in a
civil action . . . .”251 The Lanham Trade-Mark Act never states that
the plaintiff must show actual confusion in order to show a likelihood of confusion exists. “The plaintiff is not required to prove any
instances of actual confusion.”252 This stipulation exists because it is
often difficult to collect reliable evidence of actual consumer confusion.253 Thus, the Seventh Circuit (and many other appellate courts)
have held it reversible error to conclude that a plaintiff has failed to
prove a violation under the Lanham Trade-Mark Act when the
plaintiff does not show actual confusion.254 The plaintiff seeking injunctive relief to protect a registered trademark needs only to prove
a likelihood of confusion.255
246. See id. at 958–60.
247. 906 F.2d 1202 (7th Cir. 1990).
248. Id. at 1203. The Seventh Circuit reversed the district court's decision which
had failed to find trademark infringement because the plaintiff, Web Printing, did not
show proof of actual confusion. See id.
249. See, e.g., McGraw-Edison, 787 F.2d at 1168–73.
250. See, e.g., Quaker Oats, 978 F.2d at 958–61.
251. 15 U.S.C. § 1114(1)(a) (1994) (emphasis added).
252. 3 MCCARTHY, supra note 91, § 23.02(1).
253. See id. at 23–32.
254. See Web Printing, 906 F.2d at 1203; see also AMF, Inc. v. Sleekcraft Boats, 599
F.2d 341, 353 (9th Cir. 1979); W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 662 (2d
Cir. 1970); David Sherman Corp. v. Heublein, Inc., 340 F.2d 377, 380–81 (8th Cir. 1965).
255. See 3 MCCARTHY, supra note 91, § 23.02(1), at 23–32.
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Without formally changing the test through the Libman case,
the Seventh Circuit has altered the test to one of actual confusion
instead of a likelihood of confusion. The court is altering its own
viewpoint in this area, as well as revising the Lanham Trade-Mark
Act on the issue of likelihood of actual confusion for consumers.256
Despite the evidence presented of the mark's ability to be recognized, the court considered Libman's design only an attempt at
“jazzing up the product” and not a distinctive identifier of the product.257 This factual decision, contrary to the district court's findings,
was improper under the precepts of the Lanham Trade-Mark Act.
Because Libman had no actual proof of consumer confusion, the
Seventh Circuit's improper factual finding doomed Libman's case.
The Seventh Circuit did not recognize color as a valid identifier
of this consumer product. The contrasting-color bristles on the
Libman 201 broom were considered part of a “commonplace design”
of the product as opposed to the product's identifier.258 Libman designed these contrasting-color bristles as a nonfunctional, fanciful,
and distinctive trademark.259 But the Seventh Circuit, in its opinion,
refused to recognize the validity of this trademark. Because Libman
lacked proof of actual confusion, it was unable to convince the court
of trademark infringement despite the fact that Vining appeared to
have adopted its two-colored broom after Libman gained great success with the Libman 201.260
V. CONCLUSION
The Seventh Circuit has created a confusing precedent in
Libman Co. v. Vining Industries, Inc. By shifting the focus of the
test for likelihood of confusion from seven, equally-weighted factors
to one, solitary factor, the Seventh Circuit broke with the holdings of
the other circuits as well as with its own prior cases dealing with
this issue. The Seventh Circuit, by focusing its attention only on the
lack of actual consumer confusion, has apparently restructured the
256. See supra text accompanying notes 164–69.
257. Libman, 69 F.3d at 1363. The fact that the court recognized that the two-color
bristle pattern “jazzed up” the product is troubling. This statement seems to recognize
the fanciful or arbitrary nature of Libman's use of the multi-colored bristles to liven up
the broom.
258. See id.
259. See generally id. at 1361.
260. See id. at 1362–64.
1997]
Likelihood of Confusion
935
focus of the test for likelihood of confusion. This shift in focus runs
contrary to the language of the Lanham Trade-Mark Act as well as
to its own prior cases.
The Seventh Circuit should return to using a multi-factored test
to show a likelihood of confusion. This multi-factored test will allow
the district courts to examine many aspects of the mark and its allegedly infringing competitor to determine the likelihood of consumer confusion. Under the Libman precedent, producers of common household goods will experience great difficulty in attempting
to show actual confusion, especially since their products are marketed to impulse buyers. Because proof of actual confusion is difficult to gather, demonstrating the likelihood of confusion will be
extremely difficult. Thus, with only a few consumer complaints regarding confusion about non-specialty items, these producers will be
hard-pressed to show the Seventh Circuit that trademark infringement actually exists. Because little actual consumer confusion will
exist, the manufacturers will only be able to show that their product
has been seemingly copied by the competition. While this might be
enough to meet the multi-factored test for infringement of a mark, it
will not be sufficient to satisfy the incomplete test applied by the
Seventh Circuit in Libman.