Fison Horticulture, Inc. v. Vigoro Industries, Inc. ( 1994 )


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  •                                                                                                                            Opinions of the United
    1994 Decisions                                                                                                             States Court of Appeals
    for the Third Circuit
    7-22-1994
    Fison Horticulture, Inc. v. Vigoro Industries, Inc.
    Precedential or Non-Precedential:
    Docket 93-7224
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    Recommended Citation
    "Fison Horticulture, Inc. v. Vigoro Industries, Inc." (1994). 1994 Decisions. Paper 93.
    http://digitalcommons.law.villanova.edu/thirdcircuit_1994/93
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    UNITED STATES COURT OF APPEALS
    FOR THE THIRD CIRCUIT
    ________________
    Nos. 93-7224 & 93-7287
    ________________
    FISONS HORTICULTURE, INC.,
    Appellant in No. 93-7224
    v.
    VIGORO INDUSTRIES, INC.,
    Appellant in No. 93-7287
    _______________________________________________
    On Appeal from the United States District Court
    for the District of Delaware
    (D.C. Civil Action No. 92-00066)
    ___________________
    Argued January 20, 1994
    Before:   SCIRICA, LEWIS and GARTH, Circuit Judges
    (Filed July 22, 1994)
    JACK R. PIROZZOLO, ESQUIRE (Argued)
    Willcox, Pirozzolo & McCarthy
    50 Federal Street
    Boston, Massachusetts 02110
    DONALD F. PARSONS, JR., ESQUIRE
    Morris, Nichols, Arsht & Tunnell
    1201 North Market Street
    P.O. Box 1347
    Wilmington, Delaware 19899
    Attorneys for Appellant/Cross-Appellee
    Fisons Horticulture, Inc.
    1
    BYRON L. GREGORY, ESQUIRE (Argued)
    MICHELLE C. BURKE, ESQUIRE
    McDermott, Will & Emery
    227 West Monroe Street
    Chicago, Illinois 60606
    Attorneys for Appellee/Cross-Appellant
    Vigoro Industries, Inc.
    __________________
    OPINION OF THE COURT
    __________________
    SCIRICA, Circuit Judge.
    This is a trademark infringement case concerning
    products in the home lawn and garden market.   The owner of the
    trademark "Fairway" for peat moss alleges another company
    infringed its right to the mark and competed unfairly by selling
    fertilizer under the name "Fairway Green."
    Fisons Horticulture, Inc. ("Fisons"), a Canadian
    corporation with its principal place of business in Bellvue,
    Washington, brought this suit against Vigoro Industries, Inc.,
    ("Vigoro"), a Delaware corporation with its principal place of
    business in Fairview Heights, Illinois.    Fisons, which markets
    peat moss under the registered trademark "Fairway", claims
    Vigoro's use of the brand name "Fairway Green" for fertilizer
    constitutes trademark infringement0 and unfair competition0under
    0
    Section 32 of the Lanham Act, 
    15 U.S.C. § 1114
     (1988 & Supp. IV
    1992) protects registered trademarks and provides in part:
    (1) Any person who shall, without the consent of the
    registrant --
    (a) use in commerce any reproduction, counterfeit,
    copy, or colorable imitation of a registered mark
    2
    the Lanham Act, 
    15 U.S.C. §§ 1051-1127
     (1988 and Supp. IV 1992),
    infringement of a common law trademark, common law unfair
    competition, and violates the Delaware Deceptive Trade Practices
    Act, 
    Del. Code Ann. tit. 6, §§ 2531-33
     (1993).
    After a bench trial, the district court entered
    judgment for Vigoro on Fisons' claims and for Fisons on Vigoro's
    cross-claim for attorneys' fees under 
    15 U.S.C. § 1114
    (1), as
    provided by 
    15 U.S.C. § 1117
    .   Both parties appealed.   For
    reasons that follow, we will reverse the district court's
    judgment for Vigoro on Fisons' Lanham Act claims, affirm its
    in connection with the sale, offering for sale,
    distribution, or advertising of any goods or
    services on or in connection with which such use
    is likely to cause confusion, . . .
    . . .
    shall be liable in a civil action by the registrant for
    the remedies hereinafter provided.
    0
    Section 43(a) of the Lanham Act, 
    15 U.S.C. § 1125
     (1988 & Supp.
    IV 1992), which provides protection for both registered and
    unregistered marks, states in part:
    (a)(1) Any person who, on or in connection with any
    goods or services, or any container for goods, uses in
    commerce any word, term, name, symbol, or device, or
    any combination thereof, or any false designation of
    origin, false or misleading description of fact, or
    false or misleading representation of fact, which --
    (A) is likely to cause confusion, or to cause
    mistake, or to deceive as to the affiliation,
    connection, or association of such person with
    another person, or as to the origin, sponsorship,
    or approval of his or her goods, services, or
    commercial activities by another person, . . .
    . . .
    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.
    3
    judgment for Fisons on attorneys' fees, and remand for a new
    trial.
    I.
    A.   Fisons Horticulture, Inc. and Fairway Peat Moss
    Fisons is a subsidiary of a British-owned company,
    Fisons, PLC, which has three divisions: pharmaceuticals,
    scientific equipment, and horticultural products. Its
    horticulture division has companies in the United Kingdom,
    France, and the Benelux Countries, as well as in North America.
    Fisons markets Canadian sphagnum peat moss, a natural
    organic product used to improve soil texture and protect plants
    from temperature extremes, under the registered trademark
    "Fairway" in the United States.       Fisons acquired the Fairway
    trademark in 1980 from the original owner, Western Peat Company,
    Ltd., which first used the trade name in 1959 and registered it
    in 1960.
    Fairway is not the only name under which Fisons sells
    peat moss; it also uses the names "Sunshine" and "Parkland."
    Sunshine and Parkland together account for over 95% of its sales
    in the United States and Fairway accounts for the remainder.0
    Fisons' three brands of peat moss account for about 25% of the
    U.S. peat moss market.   From 1987 through 1991, Fisons sold over
    0
    It is not uncommon for one business to use multiple brand names
    for what is essentially the same product; the use of different
    brand names allows Fisons to sell peat moss to a lawn and garden
    store under a brand name not sold by a nearby competing discount
    outlet.
    4
    $500,000 of Fairway peat moss each year.    Fisons sells Fairway
    peat moss primarily to homeowners for lawn and garden care
    through the traditional channels -- lawn and garden stores,
    hardware stores, home improvement centers, supermarkets, drug
    stores, and discount stores.   Fisons does not advertise Fairway
    peat moss directly to consumers.    Instead, it promotes its
    product to retailers, makes advertising copy available to them,
    and reimburses them for their advertising expenses.0
    Besides selling peat moss, Fisons sells to the U.S.
    greenhouse market potting mixes; analyses of soil, water and
    tissue samples; and professional fertilizer.    It also offers an
    extensive line of lawn and garden products in Canada.     Fisons has
    been considering expanding its product line in the United States
    by acquiring regional fertilizer brands and unifying them as a
    national brand for the consumer fertilizer market.     One of the
    proposed trademarks for the national fertilizer brand is Fairway.
    Fairway peat moss is sold in a white plastic bag with
    the mark "Fairway" in large script in green letters above the
    words "peat moss" in block red letters.    The bag has a central
    design of a golf course green surrounded by roses.     A pin with a
    red triangular flag appears in the center of the green, and the
    word "sphagnum" is printed in white on the flag.     On the back of
    the package, recommended uses are listed as "preparing new
    lawns," "top dressing old lawns," and "garden soil mix or mulch."
    0
    But in 1990, a year in which Fisons had retail sales of Fairway
    peat moss in 17 states for a total of $684,316, only one retailer
    published an advertisement for Fairway; it sought reimbursement
    for $1,232.57.
    5
    The package notes that peat moss is used with fertilizer and that
    it "saves fertilizer".
    B.   Vigoro Industries, Inc. and Fairway Green Fertilizer
    Vigoro Industries has been in the fertilizer business
    in the United States since 1890, and the Vigoro name has been
    used on products since 1924.    It is a prominent name in the
    industry and it plans to compete with the market leader, O.M.
    Scott & Sons Co., across the full range of Scott products. Vigoro
    sells its products to consumers through garden centers, discount
    stores, hardware stores, seed and feed stores, home improvement
    centers and supermarkets and drug stores.
    Before 1991, Vigoro offered standard quality fertilizer
    to consumers, but in 1991, it decided to offer to the upscale
    consumer market a new line of premium-quality fertilizers,
    containing the patented slow-release nitrogen ingredient it used
    in its premium golf course fertilizer.    Vigoro hired an
    advertising agency to help select a name and promotional program
    for the new product.     After a search disclosed that many proposed
    names were registered as trademarks by other companies, the
    agency recommended "Fairway Green."0
    0
    One of the names explored for Vigoro's new line of fertilizers
    was "Golf Course Green," but the advertising agency's trademark
    attorney found that a subsidiary of Sandoz Pharmaceutical
    Corporation owned the named "Golf" for fertilizers and
    herbicides. The trademark appeared to be inactive, so Vigoro
    requested a royalty-free license to use "Golf Course Green." When
    it was refused, Vigoro decided not to use the name. Vigoro made
    no similar request of Fisons or any other owners of a "Fairway"
    trademark.
    6
    The agency's trademark counsel stated in her
    recommendation that "Fairway" was registered as a trademark by
    several companies:
    As we discussed, there is a possibility
    that one or more of the owners of "fairway"
    marks might contest Vigoro's right to use
    FAIRWAY GREEN. However, since there is no
    history of any of the prior users opposing
    each other's uses of "fairway," the risk
    should be acceptabl[y] low.
    There is also a risk that the
    application will be assigned to an examiner
    who will take a strict position and site
    [sic] one or more of the prior "fairway"
    registrations as grounds for refusing to
    register your mark. Because so many
    "fairway" marks have been registered in the
    past I believe this risk is also low.
    Fisons Horticulture, Inc., v. Vigoro Indus., No. 92-66, slip op.
    at 3 (D. Del. Mar. 3, 1993).
    There were several other registrations and applications
    including the word "Fairway," but few of them were in the same
    trademark category as Fisons' Fairway, that is, U.S. class 10,
    "Fertilizers."    In that class, Western Peat, Fisons' predecessor,
    had registered "Fairway" for peat moss in 1960 and O.M. Scott had
    registered "Super Fairway" for agricultural and horticultural
    fertilizers in 1988.   O. M. Scott marketed Super Fairway for
    commercial but not consumer use.     After Vigoro applied for
    registration of "Fairway Green" for its fertilizers in May, 1991,
    Fisons contested both that application and O. M. Scott's prior
    registration and applied for its own registration of "Fairway"
    for fertilizer.
    7
    In addition to these trademark registrations and
    applications in U.S. trademark class 10, approximately six
    companies had registered or were trying to register "Fairway" for
    one or more other products and services related to lawns and
    gardens: grass seed, lawn and garden machinery and equipment, and
    lawn services; but only three such registrations were completed
    and active at the time the survey was made.    Others were pending
    or had been abandoned.    Finally, there were unregistered uses of
    the name "Fairway" for goods and services relating to lawns and
    gardens, as shown by surveys of telephone books.
    In May, 1991, Vigoro decided on the Fairway Green name.
    It filed its trademark application on May 20, 1991 and introduced
    the new product line at the National Hardware Show in August,
    1991.   The Hardware Show was the first notice Fisons had of
    Vigoro's use of the name "Fairway Green."    By June, 1992, Vigoro
    had spent over $500,000 on advertising and promotion and had sold
    approximately $1.3 million of Fairway Green products in 33
    states.   Fisons protested Vigoro's attempt to register the
    trademark on September 26, 1991 and filed a suit in Delaware
    Chancery Court on January 10, 1992; Vigoro removed it to United
    States District Court.
    Fairway Green fertilizer is sold in a heavy paper bag.
    The background color of the bag is green, red, purple or magenta,
    depending on which of four varieties of the fertilizer it
    contains.    On the front of the bag is a large yellow rectangle
    that has in white on purple the words "Vigoro" at the top and
    "Premium Lawn Fertilizer" just below the middle.    Between these
    8
    two, in larger green letters with yellow highlighting borders,
    are the words "Fairway Green."     The word "Fairway" arches over
    the word "Green," and in the arch is a golf course green
    containing a golf ball, cup, and a pin with a red triangular
    flag.     Behind the golf course green is a yellow setting sun with
    blue rays.     On the package is the statement:   "Keeps grass green
    longer with fewer clippings when compared with soluble
    fertilizers.     Contains the controlled-release nitrogen used on 70
    of America's top 100 golf courses.     Environmentally-oriented,
    formulated without nitrates."
    C.   Purchase and Use of the Products
    Fairway peat moss and Fairway Green fertilizer occupy
    the same segment of the lawn and garden products market, the
    "fertilizer/soil conditioner" segment.     They are frequently used
    together to prepare the soil for planting, but the use of peat
    moss may cut down on the use of fertilizer, as noted on the
    Fairway peat moss package.     The two products are both low-cost
    items,0 and there was testimony that consumers who use these
    products typically spend very little time deciding which product
    to buy.    Peat moss and lawn and garden fertilizers are often
    displayed in the same area of stores, and both target homeowners
    who do their own lawn and garden work.     A number of other
    companies selling lawn and garden products, including the market
    0
    A 4 cubic foot bag of Fairway peat moss has a retail price of
    approximately $8.00 - $15.00; a 20-25 pound bag of Fairway Green
    fertilizer has a retail price of approximately $8.00 - $15.00,
    with discounts and rebates.
    9
    leader, O.M. Scott, sell both peat moss and fertilizer; Vigoro
    sells bark mulch as well as fertilizer.
    II.
    "The law of trademark protects trademark owners in the
    exclusive use of their marks when use by another would be likely
    to cause confusion."   Interpace Corp. v. Lapp, Inc., 
    721 F.2d 460
    , 462 (3d Cir. 1983); see, Ford Motor Co. v. Summit Motor
    Products, Inc., 
    930 F.2d 277
    , 291-93 (3d Cir.), cert. denied, 
    112 S.Ct. 373
     (1991), and authorities cited therein; Scott Paper Co.
    v. Scott's Liquid Gold, Inc., 
    589 F.2d 1225
    , 1228-29 (3d Cir.
    1978).   To prove trademark infringement, a plaintiff must show
    that: (1) the mark is valid and legally protectable; (2) the mark
    is owned by the plaintiff; and (3) the defendant's use of the
    mark to identify goods or services is likely to create confusion
    concerning the origin of the goods or services.   Ford Motor Co.,
    930 F.2d at 291 (citing Opticians Ass'n of America v. Independent
    Opticians of America, 
    920 F.2d 187
    , 192 (3d Cir. 1990)).
    The first two requirements, validity and legal
    protectability, are proven where, as here, a mark was federally
    registered and has become "incontestible" under the Lanham Act,
    
    15 U.S.C. §§ 1058
     and 1065.0   Ford Motor Co., 930 F.2d at 291
    (citing Opticians Ass'n, 
    920 F.2d at 194
    ).   If the mark has not
    0
    A trademark becomes incontestable after the owner files
    affidavits stating that the mark has been registered, that it has
    been in continuous use for five consecutive years, and that there
    is no pending proceeding and there has been no adverse decision
    concerning the registrant's ownership or right to registration.
    10
    been federally registered or, if registered, has not achieved
    incontestability, validity depends on proof of secondary meaning,
    unless the unregistered mark is inherently distinctive.    Ford
    Motor Co., 930 F.2d at 291 (citing A.J. Canfield Co. v.
    Honickman, 
    808 F.2d 291
    , 296 (3d Cir. 1986)).   The mark in this
    case is both registered and incontestible.
    A plaintiff must also prove the third requirement, the
    likelihood of confusion, which exists "when the consumers viewing
    the mark would probably assume that the product or service it
    represents is associated with the source of a different product
    or service identified by a similar mark."    Dranoff-Perlstein
    Assoc. v. Sklar, 
    967 F.2d 852
    , 862 (3d Cir. 1992) (internal
    quotations omitted).   "Proof of actual confusion is not
    necessary; likelihood of confusion is all that need be shown."
    Ford Motor Co., 930 F.2d at 292 (internal citations omitted).0
    The showing of proof plaintiff must make for this requirement
    depends on whether the goods or services offered by the trademark
    0
    Some actions brought under the Lanham Act require proof of
    actual confusion and others do not. In an action brought under
    sections 32 and 43(a) of the Lanham Act for trademark
    infringement, 
    15 U.S.C. §§ 1114
    (1) and 1125(a)(1)(A), plaintiff
    need not provide proof of actual confusion; he need only show
    likelihood of confusion. Ford Motor Co., 930 F.2d at 292. In an
    action brought under another part of section 43(a) of the Lanham
    Act for false advertising, 
    15 U.S.C. § 1125
    (a)(1)(B), plaintiff
    need not prove the challenged advertising misled the public if he
    can show it was literally false. However, if his claim is not
    that the advertising was false but that it was misleading, he
    must prove the public was actually misled or confused by it.
    Johnson & Johnson-Merck Consumer Pharmaceuticals Co. v. Rhone-
    Poulenc Rorer Pharmaceuticals, 
    19 F.3d 125
    , 129-30 (3d Cir.
    1994); Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc.,
    
    902 F.2d 222
    , 228-29 (3d Cir. 1990).
    11
    owner and the alleged infringer are in direct competition. "Where
    the trademark owner and the alleged infringer deal in competing
    goods or services, the court need rarely look beyond the mark
    itself."    Lapp, 
    721 F.2d at 462
     (citations omitted). The court
    focuses on the marks to determine whether they are "confusingly
    similar."   Country Floors, Inc. v. Gepner, 
    930 F.2d 1056
    , 1063
    (3d Cir. 1991).   Where the goods or services are not competing,
    the similarity of the marks is only one of a number of factors
    the court must examine to determine likelihood of confusion.
    To determine likelihood of confusion where
    the plaintiff and defendant deal in non-
    competing goods or services, the court must
    look beyond the trademark to the nature of
    the products themselves, and to the context
    in which they are marketed and sold. The
    closer the relationship between the products,
    and the more similar their sales contexts,
    the greater the likelihood of confusion. Once
    a trademark owner demonstrates the likelihood
    of confusion, it is entitled to injunctive
    relief.
    Lapp, 
    721 F.2d at 462
     (citations omitted).
    Likelihood of confusion is also the test for actions
    brought under section 43(a) of the Lanham Act, 
    15 U.S.C. §1125
    (a)(1)(A) for unfair competition to prevent false
    representations as to the source or origin of goods or services
    by a mark confusingly similar to one already in use.     See, e.g.,
    Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 
    656 F.2d 186
    , 192 (5th Cir. Unit A Sept. 1981) (factors relevant to
    unfair competition claim under 
    15 U.S.C. § 1125
     "essentially the
    same" as those relevant to trademark infringement claim under 
    15 U.S.C. § 1114
    ).
    12
    A.   Likelihood of Confusion Under the Lanham Act.
    We have adopted a ten-factor test to determine
    likelihood of confusion in the market place as to a product's
    source in cases of alleged trademark infringement and unfair
    competition by a producer of a non-competing product.    Dranoff-
    Perlstein, 
    967 F.2d at 862-63
     (3d Cir. 1992); Ford Motor Co., 
    930 F.2d at 293
    ;    Lapp, 
    721 F.2d at 463
    ; Scott Paper, 
    589 F.2d at 1229
    .   They are:
    (1) degree of similarity between the owner's mark and
    the alleged infringing mark;
    (2) the strength of the owner's mark;
    (3) the price of the goods and other factors indicative
    of the care and attention expected of consumers when making a
    purchase;
    (4) the length of time the defendant has used the mark
    without evidence of actual confusion arising;
    (5) the intent of the defendant in adopting the mark;
    (6) the evidence of actual confusion;
    (7) whether the goods, though not competing, are
    marketed through the same channels of trade and advertised
    through the same media;
    (8) the extent to which the targets of the parties'
    sales efforts are the same;
    (9) the relationship of the goods in the minds of
    consumers because of the similarity of function; and
    13
    (10) 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.
    In Lapp, we applied these factors to decide an issue of
    trademark protection where two parties used the same trademark on
    non-competing products.     The Lapp Division of plaintiff Interpace
    Corporation ("Lapp-Interpace") made and sold ceramic insulators
    under the "Lapp" trademark.     The trademark was registered in
    1953.     Defendant, Lapp, Inc., the U.S. marketing arm of a German
    corporation, had distributed wire, cable and related electrical
    hardware in the U.S. under the names "Lapp" and "Lapp Cable"
    since 1977 but had never applied for federal registration of its
    mark.     Lapp-Interpace sued under the Lanham Act to enjoin Lapp,
    Inc., from using the "Lapp" name on its products.     The district
    court had dismissed the complaint because of its reading of Scott
    Paper.     We reversed, holding that Scott Paper mandated judgment
    for the plaintiff.     Lapp, 
    721 F.2d at 462
    .
    The district court made factual findings in every
    relevant area of inquiry, but it did not formally apply the Scott
    Paper factors.    Lapp, 
    721 F.2d at 463
    .   We applied them and found
    they weighed in favor of the plaintiff.      While the parties'
    sales efforts at that time were not directed to the same targets,
    there was evidence that they would likely clash in the future;
    defendant, which had previously sold wire and cable for use in
    electrical components shipped to Europe and conforming to
    European specifications, had begun to manufacture wire and cable
    14
    that met United Stated specifications.   We noted "[t]his
    development considerably increase[d] the overlap in the parties'
    actual and potential customer pool," 
    id. at 464
    , and determined
    plaintiff's ceramic insulators and defendant's wire and cable
    were closely related functionally.   Both were basic electrical
    components and were often used together.
    We concluded customers would find it natural for the
    manufacturer of Lapp ceramic insulators and pole hardware to
    expand into wire and cable, and Lapp-Interpace introduced
    evidence it planned to do just that. We noted:
    The likelihood-of-expansion factor is pivotal
    in non-competing products cases such as this.
    One of the chief reasons for granting a
    trademark owner protection in a market not
    his own is to protect his right someday to
    enter that market. When it appears extremely
    likely, as it does here, that the trademark
    owner will soon enter the defendant's field,
    this final factor weighs heavily in favor of
    injunctive relief.
    
    Id.
     (citation omitted).   We noted the purpose of the ten-factor
    analysis was to determine likelihood of confusion in those cases
    where the trademark owner had not yet entered the defendant's
    market.   The factors are of importance here, where the markets
    for peat moss and fertilizer overlap slightly, but are not in
    direct competition.   The two products are often used together.
    Fisons has not yet entered the consumer fertilizer market, but
    claims it has plans to do so and introduced evidence to that
    effect.
    B.   Reverse Confusion
    15
    Plaintiffs under the Lanham Act also rely on "reverse
    confusion" or "dilution" of trademark theories that have been
    adopted by a number of other courts of appeal.0   Ordinarily, one
    expects that the new or junior user of the mark will use to its
    advantage the reputation and good will of the senior user by
    adopting a similar or identical mark.   Reverse confusion occurs
    when a larger, more powerful company uses the trademark of a
    smaller, less powerful senior owner and thereby causes likely
    confusion as to the source of the senior user's goods or
    services.   See Sands, Taylor & Wood Co. v. Quaker Oats Co., 
    978 F.2d 947
     (7th Cir. 1992) (Quaker Oats Co.'s use of "Thirst-Aid"
    in advertising for Gatorade was trademark infringement of
    "Thirst-Aid" registered trademark owned and formerly used by
    small Vermont company); Banff, Ltd. v. Federated Dep't Stores,
    Inc., 
    841 F.2d 486
     (2d Cir. 1988) (marketer of women's clothing
    with unregistered trademark "Bee Wear" could enjoin Bloomingdales
    from using term "B-Wear" in its stores and on its clothes);
    Ameritech, Inc. v. American Information Technologies Corp., 
    811 F.2d 960
     (6th Cir. 1987) (use by defendant holding company for
    five midwestern Bell telephone companies of unregistered trade
    name and mark of plaintiff, a small Ohio corporation that
    reclaimed industrial oils, might cause consumers to assume
    plaintiff was subsidiary of defendant); Capital Films Corp. v.
    Charles Fries Productions, Inc., 
    628 F.2d 387
     (5th Cir. 1980)
    0
    While we have not previously adopted these theories, in Lapp, we
    spoke of protecting the market for expansion by a senior user of
    a trademark, one of the considerations in reverse confusion. See
    Lapp, 
    721 F.2d at 464
    .
    16
    (reverse confusion doctrine could be applied where defendants,
    including American Broadcasting Company, planned to produce movie
    on Lee Harvey Oswald bearing same title as movie produced by
    small production company); Big O Tire Dealers, Inc., v. Goodyear
    Tire & Rubber Co., 
    561 F.2d 1365
     (10th Cir. 1977) (reverse
    confusion occurs where "infringer's use of plaintiff's mark
    results in confusion as to origin of plaintiff's product").    In
    reverse confusion,
    the junior user saturates the market with a
    similar trademark and overwhelms the senior
    user. The public comes to assume the senior
    user's products are really the junior user's
    or that the former has become somehow
    connected to the latter. The result is that
    the senior user loses the value of the
    trademark -- its product identity, corporate
    identity, control over its goodwill and
    reputation, and ability to move into new
    markets.
    Ameritech, 
    811 F.2d at 964
    .
    Without the recognition of reverse confusion, smaller
    senior users would have little protection against larger, more
    powerful companies who want to use identical or confusingly
    similar trademarks.
    The logical consequence of [failing to
    recognize reverse confusion] would be the
    immunization from unfair competition
    liability of a company with a well
    established trade name and with the economic
    power to advertise extensively for a product
    name taken from a competitor. If the law is
    to limit recovery to passing off, anyone with
    adequate size and resources can adopt any
    trademark and develop a new meaning for that
    trademark as identification of the second
    user's products.
    17
    Big O Tire Dealers, 
    561 F.2d at 1372
     (quoting Big O Tire Dealers
    v. Goodyear Tire & Rubber Co., 
    408 F. Supp. 1219
    , 1236 (D. Colo.
    1976)).
    Although we have not yet adopted the doctrine of
    reverse confusion in a trademark case, we do so here and endorse
    the statement of the United States Court of Appeals for the
    Second Circuit:
    The objectives of [the Lanham] Act -- to
    protect an owner's interest in its trademark
    by keeping the public free from confusion as
    to the source of goods and ensuring fair
    competition -- are as important in a case of
    reverse confusion as in typical trademark
    infringement. Were reverse confusion not a
    sufficient basis to obtain Lanham Act
    protection, a larger company could with
    impunity infringe the senior mark of a
    smaller one. Consequently, we hold that
    reverse confusion . . . is actionable under
    §43(a) of the Lanham Act.
    Banff, 
    841 F.2d at 490-91
     (citation omitted).
    III.
    On appeal, Fisons contends the district court
    misapplied the relevant law in finding there was little
    likelihood of confusion.0   We have jurisdiction under 
    28 U.S.C. § 1291
    .
    0
    We review the district court's findings of fact for clear error,
    Sheet Metal Workers Int'l Assn., Local 19 v. 2300 Group, Inc.,
    
    949 F.2d 1274
    , 1278 (3d Cir. 1991), and exercise plenary review
    over its interpretation, application and conclusions of law.
    Tudor Dev. Group v. United States Fidelity & Gaur. Co., 
    968 F.2d 357
    , 359 (3d Cir. 1992).   We review the cross-appeal of a denial
    of attorneys' fees under the Lanham Act for abuse of discretion.
    Standard Terry Mills, Inc. v. Shen Mfg. Co., 
    803 F.2d 778
    , 782
    (3d Cir. 1986).
    18
    In this case, the mark is registered and incontestible,
    so plaintiff had to show only likelihood of confusion to be
    entitled to relief.   Because the goods in question are not in
    direct competition, the district court applied the ten-factor
    test of Interpace Corp. v. Lapp, Inc., 
    721 F.2d 460
    , 463 (3d Cir.
    1983).   The district court found "purchasers of ordinary
    intelligence" were unlikely to confuse the Fisons' Fairway
    trademark with Vigoro's Fairway Green mark.   On appeal, Fisons
    contends the court misapplied the Lapp factors and should have
    applied the law of reverse confusion.
    In its analysis of the likelihood of confusion, the
    district court combined some of the ten factors set out in Ford
    Motor Co. v. Summit Motor Products, Inc., 
    930 F.2d 277
    , 293 (3d
    Cir. 1991) and Lapp and omitted others.   We follow its outline
    and note the corresponding Lapp factors in parentheses.
    A.   Channels of Trade and Evidence of Actual Confusion (Lapp
    factors (6), (4), (7), (8) and (3)).
    The district court stated:
    These two products, fertilizer and peat
    moss, are sold in similar channels of trade,
    including retail home and garden supply
    stores, and they are directed to the same or
    similar purchasers, homeowners who do their
    own lawn and garden care. With Vigoro
    placing its product in the market in August
    of 1992, and having implemented an extensive
    plan for promotion and advertising in that
    market, one would have expected that, if
    there were a substantial risk of actual
    confusion in the market place, the plaintiff
    would have come forward at the trial in July
    19
    of 1991 with some evidence of that actual
    confusion. It did not.
    Fisons Horticulture, slip op. at 8.    Although acknowledging the
    channels of trade (Lapp factor (7)) and the target audience (Lapp
    factor (8)) were the same or similar, the district court did not
    weigh these similarities in Fisons' favor.    Instead, it appeared
    to assume that because of these similarities, plaintiff should
    have been able to collect and present evidence of actual
    confusion (Lapp factor 6)) if there had been any risk or
    likelihood of confusion.   Because plaintiff did not present such
    evidence, the court apparently failed to count the similarities
    in channels of trade and target audience in Fisons' favor.     The
    district court misapplied the law here.    In Lapp, we did not
    discount the strength of plaintiff's case in one area because of
    weakness in another; we weighed each factor separately.0    More
    importantly, while evidence of actual confusion would strengthen
    plaintiff's case, it is not essential.    As we stated in Lapp,
    "Once a trademark owner demonstrates likelihood of confusion, it
    is entitled to injunctive relief."    Lapp, 
    721 F.2d at 462
    .
    Furthermore, the district court's conclusion that any
    evidence of actual confusion (Lapp factor (6)) would have
    appeared in the time the two products were on the market (Lapp
    0
    This is not to say that all factors must be given equal weight.
    The weight given to each factor in the overall picture, as well
    as its weighing for plaintiff or defendant, must be done on an
    individual fact-specific basis. Not all of the factors are
    present in every case. We have emphasized the importance of
    similarity of the marks in likelihood of confusion, Ford Motor
    Co., 930 F.2d at 293, but we have not ranked the factors
    otherwise.
    20
    factor (4)) may not be warranted in this case.    The district
    court stated that Vigoro had placed its product in the market in
    August, 1991, a year before the start of the trial, but that
    finding was in error.    August, 1991 was the date of the trade
    show when Vigoro first displayed its new product, not the date of
    distribution to retail outlets or even to distributors.     The
    fertilizer was not shipped to distributors until January 1992 and
    probably was not offered to consumers until a month or more after
    that.   The test is the likelihood of confusion from the
    perspective of ordinary consumers, not from the perspective of
    people in the trade.    See Ford Motor Co., 930 F.2d at 297.     By
    the start of trial, the product had been available to consumers
    for less than six months.
    When parties have used similar marks for a sufficient
    period of time without evidence of consumer confusion about the
    source of the products, there is an inference that future
    consumers will not be confused either.    See e.g. Scott Paper, 
    589 F.2d at 1230
     (finding no likelihood of confusion in part because
    "defendant's mark had been utilized . . . for over forty years
    without any evidence of actual confusion.").    In this case, the
    district court will have to reevaluate Lapp factor (4) in light
    of the fact that Vigoro's produce was not available to consumers
    until the winter or spring of 1992.   In addition, the court
    should take into account that the products were ones consumers
    21
    spend little time and care in selecting; in the case of such
    products, confusion as to their origin may pass unnoticed.0
    B.   Similarity of the Two Marks (Lapp factor (1)).
    As we have said, degree of similarity of the marks may
    be the most important of the ten factors in Lapp.     Ford Motor
    Co., 
    930 F.2d at 293
    .   In considering this factor, the district
    court noted the obvious similarities in Fisons' and Vigoro's
    marks.   "Both include the word fairway.   Both attempt to
    associate the product with golf, and both do so by using a
    package design that has a golf course green, a pin on the green
    and a red triangular flag on the pin [as opposed to the
    rectangular flag generally found on golf courses]."     Fisons
    Horticulture, slip op. at 8.   The court, however, declined to
    find these similarities confusing.   It stated:
    0
    Because the products at issue represent a small investment for
    the consumer, this may not be a case in which actual confusion
    would readily manifest itself to a manufacturer. The products
    are not likely to malfunction. If the consumer thinks Fairway
    peat moss and Fairway Green fertilizer are produced by the same
    company, the manufacturers may not know. "Purchasers are unlikely
    to bother to inform the trademark owner when they are confused
    about an inexpensive product." Beer Nuts v. Clover Club Foods
    Co., 
    805 F.2d 920
    , 928 (10th Cir. 1986); see also Union Carbide
    Corp. v. Ever-Ready, Inc., 
    531 F.2d 366
    , 383 (7th Cir.), cert.
    denied, 
    429 U.S. 830
     (1976).
    The court did not discuss Lapp factor (3), the price of
    the goods and other factors indicative of the care and attention
    expected of ordinary consumers when making a purchase. The
    greater the care and attention, the less the likelihood of
    confusion. Although the district court made no finding on this
    factor, there was uncontested evidence in the record that
    consumers spend little time and attention deciding which of the
    low-cost products to buy in this market.
    22
    [W]hile the two marks incorporate the word
    [fairway]0, they do so in ways that suggest
    somewhat different things. Fairway suggests
    a thing or a place, a golf course fairway.
    Fairway Green suggests a color, the color of
    a golf course fairway (although including a
    drawing of a golf course green on the package
    may lead one to associate Fairway Green with
    the green on a golf course). The names alone
    do not, therefore suggest a risk of
    confusion.
    
    Id. at 8-9
     (footnote added).   The court went on to note that
    while there were some similarities in the packaging, the
    differences in design, color, and materials were so substantial
    they tended to differentiate the products and sellers.0     
    Id. at 9
    .
    The fact that there may be some differences in what the
    two names suggest is not alone enough to conclude the names are
    not confusingly similar.   Vigoro's use of Fisons' entire
    trademark, "Fairway," in an arc over a descriptive word, "green,"
    suggests a likelihood of confusing similarity.     "[A] subsequent
    user may not avoid likely confusion by appropriating another's
    entire mark and adding descriptive or non-descriptive matter to
    it."   J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair
    Competition, § 23:15[8] at 23-102 (3d ed. 1992).    Vigoro contends
    that courts have not recognized such a rule explicitly, but this
    court and others have recognized it implicitly.    In Lapp, we
    0
    The district court's opinion used the word "green" here, but it
    must have meant "fairway," because both marks contain only one
    common word, "fairway."
    0
    Fisons pointed out the similarities in the pictures of golf
    course greens on the packages, but made no claim for trade dress
    infringement. However, similarity in trade dress is "highly
    probative" of likelihood of confusion. Ford Motor Co., 930 F.2d
    at 297.
    23
    found the trademarks "Lapp" and "Lapp Cable" identical for all
    practical purposes.     
    721 F.2d at 463
    .   See also Tree Tavern
    Products, Inc. v. Conagra, Inc., 
    640 F.Supp. 1263
    , 1270 (D. Del.
    1986) ("[S]imilarity between the marks 'Side Dish' and 'Banquet
    Side Dish for One' is obvious"); Country Floors, Inc. v. Gepner,
    
    930 F.2d 1056
     (3d Cir. 1991) (where dominant portions of two
    marks, "Country Floors" and "Country Tiles," are the same,
    confusion is likely).    Here, the similarity of marks resembles
    that in Lapp.   As Fisons correctly noted, trademark infringement
    does not require exact copying of the trademark as the owner uses
    it.   "The marks need not be identical, only confusingly similar."
    Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., 
    963 F.2d 628
    , 636 (3d Cir. 1992) (quoting Country Floors, 
    930 F.2d at 1063
    ).   They are confusingly similar if ordinary consumers would
    likely conclude that Fairway peat moss and Fairway Green
    fertilizer share a common source, affiliation, connection or
    sponsorship.    Sands, Taylor & Wood Co. v. Quaker Oats Co., 
    978 F.2d 947
    , 957 (7th Cir. 1992); see also International Kennel
    Club, Inc. v. Mighty Star, Inc., 
    846 F.2d 1079
    , 1089 (7th Cir.
    1988); M. Kramer Mfg. Co. v. Andrews, 
    783 F.2d 421
    , 449 (4th Cir.
    1986).
    In analyzing the appearance of the products, as in
    analyzing their names, the district court did not seem to focus
    on the overall impression.     As the United States Court of Appeals
    for the Second Circuit stated, the test for determining the
    similarity of the marks is "whether the labels create the 'same
    overall impression' when viewed separately."     Banff, Ltd. v.
    24
    Federated Dep't Stores, Inc., 
    841 F.2d 486
    , 492 (2d Cir. 1988)
    (citations omitted).   See American Auto. Ass'n. v. AAA Ins.
    Agency, Inc., 
    618 F. Supp. 787
    , 792 (W.D.Tex. 1985) (In
    determining whether two marks are confusingly similar,
    appropriate test is not side-by-side comparison of marks, the
    emphasizing differences in detail, but whether average consumer,
    on encountering one mark in isolated circumstances of marketplace
    and having only general recollection of the other, would likely
    confuse or associate the two.)   In Ford Motor Co., 930 F.2d at
    293, we stated:
    Perhaps the most important of these [10]
    factors is the first on the Scott Paper list:
    the degree of similarity between the two
    marks. We recently held that "if the overall
    impression created by marks is essentially
    the same, 'it is very probable that the marks
    are confusingly similar.'"
    Id. at 293.
    We conclude the district court misapprehended the legal
    standard when it undertook a detailed analysis of the differences
    in the marks rather than focusing on the overall impression
    created by them.
    25
    C.   Strength of the Fairway Mark (Lapp factor (2)).
    The district court credited Fisons' evidence of
    strength of its mark: that the mark was incontestible within the
    meaning of the Lanham Act, 
    15 U.S.C. §§ 1058
    , 1065,0 that it was
    a strongly suggestive mark bordering on being arbitrary, and that
    it had been in use for thirty years.     However, the court
    concluded:
    This list of examples of the strength of
    the Fisons mark is not particularly
    compelling evidence of risk of confusion.
    Fisons has not, for example, shown that its
    FAIRWAY mark is uncommon, or contains an
    unusual use of the word; nor has it shown
    that it has built up the strength of the mark
    over the years with a substantial economic
    investment that can be confirmed by evidence
    of a depth of consumer awareness of the mark
    and its product. Fisons' failure to offer
    this evidence undermines its argument that
    FAIRWAY is, in fact, a strong mark.
    Fisons Horticulture, slip op. at 10.     Fisons contends the
    district court applied incorrect standards in ignoring its
    evidence of strength and using other tests for the strength of
    its mark.     Fisons argues its mark qualifies for protection
    because of its distinctiveness.     Trademark law recognizes
    categories of marks based on their levels of inherent
    distinctiveness.     From least to most distinctive, they are: (1)
    generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5)
    fanciful.0    Two Pesos, Inc. v. Taco Cabana, Inc., 
    112 S.Ct. 2753
    ,
    0
    For the meaning of "incontestible" under the Lanham Act, see,
    supra, n. 7.
    0
    Sometimes, only four categories are used, with arbitrary and
    fanciful grouped together. See e.g. Dranoff-Perlstein Assoc. v.
    Sklar, 
    967 F.2d 852
    , 855 (3d Cir. 1992).
    26
    2757 (1992). The latter three categories are deemed "inherently
    distinctive" and are entitled to protection.     
    Id.
     The word
    "green" is so common that it has no trademark significance when
    applied to lawn and garden products, but there was expert
    testimony, which the district court accepted, that the term
    "Fairway" was either suggestive or arbitrary.0    It could
    therefore qualify for protection.
    The district court focused on Fisons' failure to show
    that its mark, "Fairway," was uncommon or contained an unusual
    use of the word.   The fact that a word is common does not
    necessarily make it weak or unworthy of protection as a
    trademark; the district court's focus on an unusual use of the
    word is closer to mark.   As the United States Court of Appeals
    for the Sixth Circuit stated, "The significant factor is not
    whether the word itself is common, but whether the way the word
    is used in a particular context is unique enough to warrant
    trademark protection."    Wynn Oil Co. v. Thomas, 
    839 F.2d 1183
    ,
    1190 n.4 (6th Cir. 1988).   The words "shell," "camel" and "apple"
    are not uncommon, but they are arbitrary when applied to
    gasoline, cigarettes and computers.    1 McCarthy on Trademarks,
    0
    Arbitrary trademarks are ones that do not describe any quality
    or characteristic of the goods or services for which they are
    used. The mark "V-8" on juice made from eight different
    vegetables was held to be arbitrary. Standard Brands, Inc. v.
    Smidler, 
    151 F.2d 34
     (2d Cir. 1945). As a result of advertising,
    consumers came to associate the mark with such a drink, but
    without advertising, no one could have reasonably expected
    consumers to associate V-8 with a vegetable juice cocktail. Id.;
    see also 1 McCarthy on Trademarks § 11.04[1].
    27
    §11:26[3].0   Similarly, the term "Fairway," is not uncommon, but
    when applied to peat moss, Fisons' expert stated it ranked
    between arbitrary and suggestive on the scale of distinctiveness.
    Fisons therefore presented evidence that its use of the common
    term was unusual enough that it could qualify for trademark
    protection.
    Distinctiveness on the scale of trademarks is one
    measure of a mark's strength.   See, e.g., Nutri/System Inc. v.
    Con-Stan Industries, Inc., 
    809 F.2d 601
    , 605 (9th Cir. 1987).
    Commercial strength, or marketplace recognition of the mark, is
    another.   See e.g. Ford Motor Co., 930 F.2d at 297.   Vigoro
    contends the registration and use of "Fairway" as a trademark by
    third parties for related products and services undermines
    Fisons' claim of the strength of its mark.    O.M. Scott registered
    a trademark, "Super Fairway," for commercial fertilizer in 1989,
    and six other companies have active or pending registrations of
    marks using the term "Fairway" for grass seed, lawn and garden
    machinery and equipment, and lawn services.    While other
    registrations and uses of Fairway for related products and
    services would make the mark less strong if they were in the same
    market, their use in different markets and for products and
    services that are not closely related does not necessarily
    undermine Fisons' claim of strength.
    0
    McCarthy refers to the conclusion that a common word is
    automatically "weak" as a trademark as the 'Common Word' fallacy.
    1 McCarthy on Trademarks § 11.26[3].
    28
    The district court found Fisons had not demonstrated it
    had built up consumer awareness of the mark and its product
    through substantial investment and concluded Fisons' failure to
    offer evidence of commercial strength "undermines its argument
    that FAIRWAY is, in fact, a strong mark."     Fisons Horticulture,
    slip op. at 10.   If this were a case of forward confusion, rather
    than reverse confusion, the district court would be correct in
    giving considerable weight to evidence of commercial strength, or
    its absence.
    But in a case of reverse confusion, the evidence of
    commercial strength is different from what we expect in a case of
    forward confusion, where the junior user tries to palm off his
    goods as those of the senior user.     In forward confusion, the
    junior user trades on the senior user's good name; it is
    therefore saved much of the expense of advertising to create
    market recognition of its mark.    In reverse confusion, the junior
    user is typically a wealthier, more powerful company who can
    overwhelm the market with advertising.     An aggressive junior user
    may thereby achieve greater commercial strength in a short period
    of time than the senior user has after years of marketing its
    product.   See, e.g., Big O Tire Dealers, Inc. v. Goodyear Tire &
    Rubber Co., 
    561 F.2d 1365
    , 1367-68 (10th Cir. 1977) (in one year,
    defendant Goodyear spent over $9,690,000 in massive, nationwide
    promotional campaign using "Bigfoot" trademark of plaintiff, a
    small tire-buying organization with total net worth of $200,000).
    "The result is that the senior user loses the value of the
    trademark -- its product identity, corporate identity, control
    29
    over its goodwill and reputation, and ability to move into new
    markets."   Ameritech, Inc. v. American Information Technologies
    Corp., 
    811 F.2d 960
    , 964 (6th Cir. 1987).    In one year, Vigoro
    spent over $500,000 on advertising its new product, Fairway
    Green.   That is approximately the amount of Fisons' total yearly
    sales of Fairway peat moss.
    Fisons' Fairway mark was strong on the scale of
    trademarks and in active use when Vigoro started using the
    Fairway Green mark, but it was commercially weak.    The district
    court, in treating this case like one of forward confusion, put
    great emphasis on the lack of commercial strength of Fisons' mark
    and virtually none on its distinctiveness.    In reverse confusion,
    the mark of the senior user is typically weaker commercially than
    that of the junior user.    On remand, the strength of Fisons' mark
    will have to be reevaluated in light of our adoption of reverse
    confusion and its distinctiveness as well as its commercial
    strength will have to be considered.
    D.   Vigoro's Intent in Adopting the Mark (Lapp factor (5)).
    The district court had the following to say about
    Vigoro's intent:
    The relevant intent inquiry in a likelihood
    of confusion case is "whether the defendant
    adopted a mark with the intent of promoting
    confusion and appropriating the prior user's
    good will." W.W.W. Pharmaceutical Co., Inc.
    v. The Gillette Co., 
    23 U.S.P.Q.2d 1609
    , 1619
    (S.D.N.Y. 1992), aff'd, 
    1993 U.S. App. LEXIS 1051
     (2d Cir. 1993). There is no proof that
    Vigoro adopted the name Fairway green in an
    attempt to benefit from the general good will
    developed by Fisons in its FAIRWAY mark.
    30
    Fisons Horticulture, slip op. at 10.
    While the inquiry the district court identifies as the
    "relevant intent inquiry" is important, it is appropriate to
    cases of forward confusion, not reverse confusion.   In the latter
    type of case, the junior user does not seek to trade on the good
    will and name of the senior user; instead he overwhelms it.
    The intent inquiry appropriate to this case is more
    like one we identified in Lapp in relying on the district court's
    finding that Lapp, "while it may have acted innocently, was
    careless in not conducting a thorough name search for American
    uses of the name."   Lapp, 
    721 F.2d at 463
    .   The questions the
    district court should consider here are whether Vigoro conducted
    an adequate name search for other companies marketing similar
    goods under trademarks including the name "Fairway," and whether
    it followed through with its investigation when it found there
    were such companies.   Did Vigoro consider the likelihood of
    confusion with other companies' marks and products (as opposed to
    considering the likelihood that someone would contest its new
    mark)?   Did it attempt to contact companies using a similar mark,
    such as Fisons?   Was Vigoro careless in its evaluation of the
    likelihood of confusion?
    31
    E.   Fisons' Plans to Enter the Market (Lapp factor (10)).
    The district court found:
    Fisons currently sells fertilizer in
    Canada. At the trial it offered some
    evidence that it had plans to expand that
    business into the United States. There was
    not sufficient evidence on this point to
    suggest that this possibility should be a
    factor in an analysis of a risk of possible
    likelihood of confusion.
    Fisons Horticulture, slip op. at 10.      As this factor appears in
    Lapp, it includes "other facts suggesting that the consuming
    public might expect the prior owner to manufacture a product in
    the defendant's market, or that it is likely to expand into that
    market."   
    721 F.2d at 463-64
    .   The district court considered only
    evidence of planned expansion, the second part of the test.       Such
    a narrow view is not warranted.
    Under Lapp, the court looks not only at the likelihood
    of expansion, but also at facts "suggesting the consuming public
    might expect the prior owner to manufacture a product in the
    defendant's market."   
    721 F.2d at 463
    .    In a case of reverse
    confusion, it may also consider facts suggesting the consuming
    public might expect the junior owner to manufacture a product in
    the senior user's market.   One fact suggesting this possibility
    is that other companies market both products.     Fisons presented
    evidence that the market leader, O.M. Scott, sold both peat moss
    and fertilizer under the same brand name, Hyponex.     In addition,
    three other lawn and garden companies in this country, Kellog,
    Gandini and Fertiloam sell both peat moss and fertilizer under
    the same brand name.   Therefore, the public is used to seeing
    32
    both fertilizer and peat moss marketed under the same name by the
    same company.
    Second, the products are closely related and are used
    together in preparing lawns and gardens.      Even if other companies
    did not market both products, the consuming public might find it
    natural for one company to do so.      See, e.g., International
    Kennel Club, 
    846 F.2d at 1089
     (fact that parties' products are
    the kind the public might very well attribute to the same source
    provides additional evidence of likelihood of confusion).
    Finally, there is Fisons' evidence of planned
    expansion.     In Lapp, we stated:
    One of the chief reasons for granting a
    trademark owner protection in a market not
    his own is to protect his right someday to
    enter that market. 2 J.T. McCarthy,
    Trademarks and Unfair Competition § 24:5
    (1973). When it appears extremely likely, as
    it does here, that the trademark owner will
    soon enter the defendant's field, this . . .
    factor weighs heavily in favor of injunctive
    relief.
    Lapp, 
    721 F.2d at 464
    .     In Lapp, where the evidence showed
    expansion to be extremely likely, the factor weighed heavily in
    plaintiff's favor.     If there is evidence of expansion, but it is
    less strong, it will weigh less heavily in plaintiff's favor.
    F.   Relationship of the Goods (Lapp factor (9)).
    The district court did not consider this factor, "the
    relationship of the goods in the minds of consumers because of
    the similarity of function."     Fisons' peat moss and Vigoro's
    fertilizer are both sold as soil conditioners and meant to be
    33
    used for the same purpose: to improve the soil for planting.      The
    question is whether the consumer might therefore reasonably
    conclude that one company would offer both of these related
    products.   In Scott Paper, 
    589 F.2d at 1230
    , we noted other cases
    in which the relationship of the products was close enough to
    lead to the likelihood of confusion and the relationship of those
    products: Scarves by Vera, Inc. v. Todo Imports Ltd., 
    544 F.2d 1167
    , 1173 (2d Cir. 1976) (women's scarves and apparel with
    women's cosmetics and fragrances); James Burrough Ltd. v. Sign of
    Beefeater, Inc., 
    540 F.2d 266
    , 275 (7th cir. 1976) (liquor with
    restaurant selling liquor); Union Carbide Corp. v. Ever-Ready,
    Inc., 
    531 F.2d 366
    , 381-82 (7th Cir.), cert. denied, 
    429 U.S. 830
    (1976) (batteries and lamps with light bulbs and lamps); Alfred
    Dunhill of London, Inc. v. Kasser Distillers Products Corp., 
    350 F. Supp. 1341
     (E.D. Pa. 1972), aff'd without opinion, 
    480 F.2d 917
     (3d cir. 1973) (pipe tobacco and bar accessories with scotch
    whisky).    See Scott Paper, 
    589 F.2d at 1230
    .
    In Wynn Oil Co. v. Thomas, 
    839 F.2d 1183
    , 1187 (6th
    Cir. 1988), the court analyzed this factor under the category,
    "Relatedness of the Goods."   It assessed the relatedness of the
    car care products one company sold to consumers and the bulk car
    wax for use in car washes and the car washing service another
    company sold under an essentially similar trademark.   The court
    noted the test was whether the goods were similar enough that a
    consumer could assume they were offered by the same source.    The
    court concluded, "A consumer who was used to buying CLASSIC
    products to wash his or her car could easily assume that the
    34
    makers of CLASSIC products had expanded into the car wash
    business."    
    839 F.2d at 1187
    .
    In this case, the question is whether a consumer who
    bought Fisons' peat moss could reasonably assume that the company
    had expanded its offerings to include fertilizer or, as would be
    more likely in this case of reverse confusion, whether a consumer
    who bought or saw the advertising for Fairway Green fertilizer
    could reasonably assume that the same source also offered the
    Fairway peat moss it saw in the stores.
    G.   Weighing the Factors
    Of the ten factors set out in Ford Motor Co. and Lapp
    for determining the likelihood of confusion, the district court
    misapplied some and did not consider others.    On remand, it
    should consider each of the factors and weigh each in a manner
    consistent with this opinion and with the other case law.
    H.   State Law Claims
    The district court concluded that Fisons' Lanham Act
    claims failed because there was no likelihood of confusion and,
    therefore, its state law claims failed as well.     Because the
    court will reconsider the likelihood of confusion on remand, it
    should also reconsider Fisons' state law claims.
    IV.
    For reasons stated above, we will reverse the judgment
    of the district court as to Fisons' claims under the Lanham Act
    and remand for a new trial on those claims and the state law
    35
    claims.0   We will affirm the judgment of the district court
    denying Vigoro's claim for attorneys' fees as a prevailing party
    under the Lanham Act.
    Fisons Horticulture v. Vigoro Industries
    No. 93-7224 and 93-7287
    GARTH, Circuit Judge, concurring in part and dissenting in part:
    The majority opinion has convincingly analyzed this
    appeal under Scott Paper Co. v. Scott's Liquid Gold, Inc., 
    589 F.2d 1225
     (3d Cir. 1978) and Interpace Corp. v. Lapp, 
    721 F.2d 460
     (3d Cir. 1983).     While I am in wholehearted agreement with
    the majority that we must reverse the district court's ruling on
    the merits,0 I can see no purpose in remanding for retrial of
    Fisons' Lanham Act claims when it is so evident that the marks at
    issue here are confusingly similar.
    Accordingly, I would reverse the decision of the
    district court, enter judgment in favor of Fisons on its Lanham
    Act claims, and remand with instructions that the district court
    fashion the appropriate relief, and consider Fisons' state
    claims.
    0
    We recognize that an extensive record has already been developed
    in this case. We will leave it to the sound discretion of the
    district court to determine whether any additional evidence is
    appropriate.
    0
    I also agree with the majority that we must affirm the
    district court's denial of Vigoro's request for attorneys' fees
    inasmuch as Vigoro is no longer the prevailing party under 
    15 U.S.C. § 1117
    .
    36
    I
    The majority's able opinion not only details the
    analysis required in Lanham Act cases, but also applies that
    analysis to the record before us on appeal.     Typically, having
    found error in the district court's application of the Lapp
    analysis, we would reverse and remand to the district court with
    instructions to take actions consistent with the foregoing
    opinion.
    Nevertheless, I see little need to do so in the present
    case.     Judge Scirica's majority opinion already has performed the
    Scott Paper/Lapp analysis and the requisite balancing.    That
    analysis can lead to only one conclusion: that the district court
    erred in ruling for Vigoro on the merits of Fisons' Lanham Act
    claims.
    Although we have held that a district court's finding
    of similarity does not necessarily compel a conclusion that two
    marks are confusingly similar, Merchant & Evans, Inc. v.
    Roosevelt Building Products Co., Inc., 
    963 F.2d 628
    , 636 (3d Cir.
    1992); Country Floors, Inc. v. Gepner, 
    930 F.2d 1056
    , 1065 (3d
    Cir. 1991), we also have held that "[p]erhaps the most important
    of [the] factors is the first on the Scott Paper list: the degree
    of similarity between the two marks."     Ford Motor Co. v. Summit
    Motor Products, Inc., 
    930 F.2d 277
    , 293 (3d Cir. 1991).     In
    Opticians Ass'n of Am. v. Independent Opticians of Am., 
    920 F.2d 187
    , 195 (3d Cir. 1990), we held that, "if the overall impression
    created by the marks is essentially the same, 'it is very
    37
    probable that the marks are confusingly similar.'"    (Citation
    omitted).
    As the majority recognizes, in analyzing the appearance
    of the products at issue here, the district court failed to focus
    on their overall impression.    Maj. Op. typescript at 25.   One
    need only look at the marks themselves to conclude that they are
    so similar that one can only wonder how an ordinary consumer of
    the goods could be anything but confused by the parties'
    indistinguishable use of the FAIRWAY mark.    The packaging of the
    products, the prominent use of the word "Fairway," and the
    inclusion of a triangular flag rising from a tee centered on a
    golfing green, are, for all intents and purposes, virtually
    identical as to both products.    Under Ford Motor Co. and
    Opticians Association of America, this similarity all but creates
    a presumption of the requisite likelihood of confusion.
    Consequently, I see no point in ordering the district
    court to revisit this trademark controversy in its entirety, and
    compelling the parties to spend additional time, money, and
    efforts on re-litigating the Scott Paper/Lapp factors, when the
    conclusion to which the district court must come has been
    outlined so effectively in the majority's opinion.
    II
    Accordingly, I would reverse the district court's order
    and remand with the direction that the district court enter
    judgment for Fisons on its Lanham Act claims.    On remand, then,
    the district court would have to do no more than fashion the
    38
    appropriate relief (i.e., frame an injunction, assess damages,
    impose or not impose attorneys' fees, costs, interest, etc.) and
    resolve Fisons' state law claims, which the district court failed
    to address adequately in its initial decision.   Because the
    majority would dispose of this appeal in a manner which I believe
    is wasteful of judicial resources, I dissent from so much of the
    majority's opinion as would remand to the district court for
    retrial of Fisons' Lanham Act claims.
    39
    

Document Info

Docket Number: 93-7224

Filed Date: 7/22/1994

Precedential Status: Precedential

Modified Date: 10/13/2015

Authorities (30)

tudor-development-group-inc-a-pennsylvania-corp-sidney-cohen-dorothy , 968 F.2d 357 ( 1992 )

Alfred Dunhill of London, Inc. v. Kasser Distillers ... , 350 F. Supp. 1341 ( 1972 )

Beer Nuts, Inc. v. Clover Club Foods Company , 805 F.2d 920 ( 1986 )

Sandoz Pharmaceuticals Corporation v. Richardson-Vicks, Inc. , 902 F.2d 222 ( 1990 )

Nutri/system, Inc. v. Con-Stan Industries, Inc. , 809 F.2d 601 ( 1987 )

Scott Paper Company, a Corporation v. Scott's Liquid Gold, ... , 589 F.2d 1225 ( 1978 )

M. Kramer Manufacturing Co., Inc. v. Hugh Andrews, Tim ... , 783 F.2d 421 ( 1986 )

Dranoff-Perlstein Associates v. Harris J. Sklar , 967 F.2d 852 ( 1992 )

Ameritech, Inc., an Ohio Corporation v. American ... , 811 F.2d 960 ( 1987 )

Standard Brands, Inc. v. Smidler , 151 F.2d 34 ( 1945 )

Wynn Oil Company and Classic Car Wash, Inc. v. Michael F. ... , 839 F.2d 1183 ( 1988 )

Country Floors, Inc. v. A Partnership Composed of Charley ... , 930 F.2d 1056 ( 1991 )

James Burrough Limited and Kobrand Corporation v. Sign of ... , 540 F.2d 266 ( 1976 )

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co. , 408 F. Supp. 1219 ( 1976 )

merchant-evans-inc-v-roosevelt-building-products-company-inc , 963 F.2d 628 ( 1992 )

Big O Tire Dealers, Inc., a Colorado Corporation v. The ... , 561 F.2d 1365 ( 1977 )

sheet-metal-workers-local-19-and-sheet-metal-workers-welfare-pension , 949 F.2d 1274 ( 1991 )

Scarves by Vera, Inc. v. Todo Imports Ltd. (Inc.) , 38 A.L.R. Fed. 360 ( 1976 )

ford-motor-company-and-cross-appellee-v-summit-motor-products-inc-a , 930 F.2d 277 ( 1991 )

American Automobile Ass'n v. AAA Insurance Agency, Inc. , 618 F. Supp. 787 ( 1985 )

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