BEBE Stores v. May Dept. Stores ( 2002 )

United States Court of Appeals
FOR THE EIGHTH CIRCUIT
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No. 02-3619
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Bebe Stores, Inc., *
*
Appellee, *
*
v. * Appeal from the United States
* District Court for the
May Department Stores International, * Eastern District of Missouri.
doing business as The May Department *
Stores Company, Inc., * [PUBLISHED]
*
Appellant. *
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Submitted: December 10, 2002
Filed: December 18, 2002
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Before BOWMAN, MORRIS SHEPPARD ARNOLD, and RILEY, Circuit Judges.
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PER CURIAM.
May Company has submitted an expedited appeal of a preliminary injunction
that, with limited exceptions, bars May from advertising and selling women's clothing
under its new label entitled "be." May, which operates eleven department stores
nationwide, introduced the "be" clothing line in June 2002 to target women aged 18
to 30. Bebe Stores, an upscale clothier with a customer base of women aged 19 to 30,
sued May for trademark infringement, unfair competition, and trademark dilution, and
also sought a preliminary injunction. The District Court1 granted the injunction and
required Bebe to post a bond of $3 million. We affirm the injunction and remand for
reconsideration of the amount of the bond.
May's appeal concerns three issues: the validity of Bebe's mark, the likelihood
of confusion between Bebe's mark and the "be" mark, and the amount of the
injunction bond. Having carefully reviewed the District Court's decision for clearly
erroneous factual determinations and for errors of law, we have found none. See
United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1179 (8th Cir. 1998). With regard
to the validity of the Bebe mark, the record contains sufficient evidence, including the
testimony of Bebe's founder and the registration of the Bebe mark with the United
States Patent and Trademark Office, to support the District Court's finding that "bebe"
is an arbitrary mark. See First Bank v. First Bank Sys., Inc., 84 F.3d 1040, 1044 (8th
Cir. 1998) (explaining that, under 15 U.S.C. § 1115(b), registration of mark is prima
facie evidence of validity). As for likelihood of confusion, the similarities between
the respective names, logos, clothes, and customer bases of "be" and Bebe, together
with Bebe's evidence of actual confusion, provide ample justification for the District
Court's decision. Although Bebe did not introduce survey evidence, the live
testimony of Bebe's employees and of a confused Bebe shopper were compelling
enough to demonstrate the likelihood of actual confusion. We discern no clear error
in any of the District Court's findings of fact. Having concluded that the District
Court's analysis under the framework of Dataphase Systems, Inc. v. C L Systems,
Inc., 640 F.2d 109, 114 (8th Cir. 1981), did not result in an abuse of discretion, we
affirm the injunction. See 8th Cir. R. 47B. The case is remanded to the District Court
for further proceedings.
1
The Honorable Catherine D. Perry, United States District Judge for the Eastern
District of Missouri.
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On remand, we direct the District Court to reconsider its setting the injunction
bond at $3 million. Although its order stated that it believed the cost of the injunction
to May is much less than the $30 million that May claims, the District Court did not
make any other findings in this regard nor did it give reasons for selecting the $3
million amount. We are not instructing the District Court necessarily to increase the
amount of the bond, but the District Court should do so if upon reconsideration its
additional findings of fact lead to the conclusion that a larger amount would be
appropriate.
A true copy.
Attest:
CLERK, U.S. COURT OF APPEALS, EIGHTH CIRCUIT.
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