Oriental Financial Group, Inc. v. Cooperativa De Ahorro Y Crédito Oriental

United States Court of Appeals
For the First Circuit
No. 15-1009
ORIENTAL FINANCIAL GROUP, INC., ORIENTAL FINANCIAL SERVICES
CORP., ORIENTAL BANK AND TRUST,
Plaintiffs, Appellants,
v.
COOPERATIVA DE AHORRO Y CRÉDITO ORIENTAL,
Defendant, Appellee.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
[Hon. José Antonio Fusté, U.S. District Judge]
Before
Barron, Hawkins,* and Lipez,
Circuit Judges.
Roberto C. Quiñones-Rivera, with whom Leslie Yvette Flores
and McConnell Valdés LLC were on brief, for appellants.
Carla Ferrari-Lugo, with whom Veronica Ferraiuoli-Hornedo was
on brief, for appellee.
August 3, 2016
* Of the Ninth Circuit, sitting by designation.
LIPEZ, Circuit Judge. Four years ago, we affirmed a
judgment that a Puerto Rico credit union (in Spanish, a
"cooperativa") infringed on the trademark rights of a competing
bank by adopting a confusingly similar logo and trade dress.
Oriental Fin. Grp., Inc. v. Cooperativa de Ahorro y Crédito
Oriental, 698 F.3d 9 (1st Cir. 2012) ("Oriental I"). In this
subsequent appeal, we consider whether the credit union also
infringed the bank's word mark and trade name ORIENTAL with its
competing marks COOP ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP,
and CLUB DE ORIENTALITO. Notwithstanding the similarity between
them, the district court found that the latter marks did not
infringe upon the former, and refused to enjoin their use.
With regard to COOP ORIENTAL, COOPERATIVA ORIENTAL, and
ORIENTAL POP, the district court's determination of non-
infringement was clearly erroneous. We reverse that portion of
the judgment and remand for reconsideration of whether the
injunction should be expanded to remedy the infringing use of those
marks. We conclude, however, that the district court's
determination is supportable as to CLUB DE ORIENTALITO, and affirm
that portion of the judgment.
- 2 -
I.
A. Competing financial institutions
Plaintiffs-appellants Oriental Financial Group, Inc.,1
Oriental Bank and Trust, and Oriental Financial Services Corp.
(collectively, "Oriental Group") originated in eastern Puerto Rico
and expanded to offices and retail locations throughout the island.
It has used the word mark ORIENTAL to market its financial services
since 1964.2 The mark means "eastern" in both Spanish and English.
Although it originally signaled Oriental Group's geographic
origins, it is now used as an arbitrary mark3 to distinguish its
1 Oriental Financial Group, Inc. changed its name to OFG
Bancorp on April 25, 2013, during the pendency of this litigation.
2 We use "word mark" herein to refer to a standard character
mark, not limited to "any particular font style, size or color,"
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
1353 (Fed. Cir. 2011) (quoting 37 C.F.R. § 2.52(a)), or other
design elements, see Igloo Prods. Corp. v. Brantex, Inc., 202 F.3d
814, 815, 817 (5th Cir. 2000) (distinguishing trademark protection
for "a words-only trademark" from "a trademark including both words
and images in a distinct manner").
3 As an arbitrary mark, ORIENTAL does not convey to the
consumer that Oriental Group's financial services are somehow
"eastern" in their character. ORIENTAL, "when used with the . . .
services in issue, neither suggest[s] nor describe[s] any
ingredient, quality or characteristic of those . . . services." 2
J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition
§ 11:11, Westlaw (database updated June 2016); cf. Sun Banks of
Fla., Inc. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311, 315-17
(5th Cir. 1981) (suggesting that SUN is an arbitrary mark, neither
describing the geographic origin of a Florida-based bank, nor any
characteristic of the bank's services). In its brief in this
appeal, Cooperativa appears to contend that the ORIENTAL mark is
geographically descriptive rather than arbitrary. Having failed
- 3 -
financial services from others in the marketplace. Oriental Group
also uses a logo consisting of the word ORIENTAL in orange letters
and distinctive orange trade dress. Oriental I, 698 F.3d at 14.
Defendant-appellee Cooperativa de Ahorro y Crédito
Oriental ("Cooperativa") has used ORIENTAL in its full name since
1966, and began using a shortened version, COOP ORIENTAL, in 1995.
For many years its advertising was "de minimis," id. at 23, and it
maintained only a few branches in the eastern part of the island.
However, starting in 2008, Cooperativa substantially expanded its
geographic reach, changed its branding, and began an advertising
campaign at roughly the same time. Between 2008 and 2010,
Cooperativa added branches in San Juan and other regions of Puerto
Rico, becoming a competitor to Oriental Group in such financial
services as checking and savings accounts, certificates of
deposit, IRAs, and credit cards. See id. at 13-14; Oriental Fin.
Grp. Inc. v. Cooperativa de Ahorro y Crédito Oriental, 750 F. Supp.
2d 396, 400-01 (D.P.R. 2010) ("2010 Injunction Order"). In 2009,
it rebranded itself and adopted new trade dress, similar to
Oriental's in tone and its use of the color orange. Oriental I,
698 F.3d at 13-14; 2010 Injunction Order, 750 F. Supp. 2d at 401.
As part of the rebranding, it also adopted a black, brown and
orange logo featuring the COOP ORIENTAL word mark, with the word
to raise this argument on the first appeal, however, it cannot do
so here.
- 4 -
ORIENTAL in larger type than COOP. 2010 Injunction Order, 750 F.
Supp. 2d at 401. At the same time, it initiated "an expansive
advertising campaign in newspapers[,] television . . . [and]
billboards." Oriental I, 698 F.3d at 14. Soon thereafter, several
incidents of consumer confusion occurred in which consumers
wrongly believed that Oriental Group and Cooperativa were
affiliated. Id. at 19. Oriental Group then brought this action
on May 21, 2010.
B. The district court proceedings
Oriental Group sued Cooperativa for, inter alia, service
mark4 infringement under section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a).5 Oriental Group alleged that Cooperativa's COOP
ORIENTAL word mark, and its logo and trade dress, were confusingly
similar to its ORIENTAL mark. Oriental I, 698 F.3d at 14. It
asked for injunctive relief against Cooperativa to prevent the use
of, inter alia, "any composite trademark that includes the term
4
Because the marks at issue are used to identify the source
of financial services rather than goods, they are service marks
rather than trademarks. See Chance v. Pac-Tel Teletrac Inc., 242
F.3d 1151, 1156 (9th Cir. 2001) ("Service marks and trademarks are
governed by identical standards . . . .").
5
Oriental Group also sued under the Puerto Rico Trademark
Act of 2009, Act No. 169 of Dec. 16, 2009. Consistent with the
district court's decision and the parties' briefs, we concern
ourselves only with federal trademark law, and assume without
deciding that there are no relevant differences between the Lanham
Act and the Puerto Rico Trademark Act of 2009. See Oriental I,
698 F.3d at 16 n.4.
- 5 -
ORIENTAL." Id. (emphasis added). This claim did not include
Cooperativa's full name, which Oriental concedes is non-
infringing. Id. at 20.
After a preliminary injunction hearing in 2010, which
the parties subsequently agreed to treat as a bench trial on the
issue of a permanent injunction, the district court made findings
of fact and conclusions of law pursuant to Federal Rule of Civil
Procedure 52(a). 2010 Injunction Order, 750 F. Supp. 2d at 400.
The court found that Oriental Group's "mark is strong in Puerto
Rico," that it and Cooperativa "offer many of the same services to
some of the same geographical regions in Puerto Rico," and
"advertise in the same newspapers," and that incidents involving
actual consumer confusion took place beginning in 2010. Id. at
403-04. Building on those findings, the district court concluded
that Cooperativa's "new logo -- in particular, the prominent
placement of the word 'Oriental' -- and its new color scheme," in
"combination," "infringe[] [Oriental Group's] service mark under
both federal and Puerto Rico law." Id. at 406.
In determining whether an injunctive remedy was
appropriate, the court considered the factors outlined in eBay
Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). See eBay, 547
U.S. at 391 (listing equitable considerations that must be
considered before a permanent injunction may be issued); Voice of
the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 34
- 6 -
(1st Cir. 2011) (applying the eBay factors in the trademark
context). After determining that Oriental Group suffered ongoing
and irreparable harm from the infringement, that the balance of
hardships favored Oriental Group, and that the public interest
would be served by an injunction, see eBay, 547 U.S. at 391, the
court enjoined Cooperativa from using its infringing orange trade
dress and logo, 2010 Injunction Order, 750 F. Supp. 2d at 405.
Though it was not clear on this point, the district court
apparently believed that Oriental Group was challenging only
Cooperativa's logo and trade dress, and had not challenged its use
of the word mark COOP ORIENTAL. Oriental I, 698 F.3d at 16 (citing
2010 Injunction Order, 750 F. Supp. 2d at 404, 406). Consistent
with that view of the case, the district court never analyzed the
likelihood of confusion based on the word mark alone, and allowed
Cooperativa to "revert to the mark and dress it used prior to
2009," which incorporates COOP ORIENTAL. 2010 Injunction Order,
750 F. Supp. 2d at 406. Its order also left Cooperativa free to
use the word mark in print and radio advertising. Cooperativa
subsequently registered COOP ORIENTAL and COOPERATIVA ORIENTAL
with the United States Patent and Trademark Office (PTO).
C. The first appeal
Unsatisfied, Oriental Group moved to amend or alter the
injunction to proscribe all use of COOP ORIENTAL and COOPERATIVA
ORIENTAL, even when not embedded in the infringing logo or
- 7 -
accompanied by the infringing trade dress. Oriental I, 698 F.3d
at 15. It noted that consumers might encounter the word marks
abstracted from logos or trade dress in radio advertisements and
news media. The district court denied the motion on the ground
that Oriental Group had not shown a likelihood of confusion based
on the word marks alone. The court reasoned that Oriental Group's
evidence of consumer confusion was limited to the time following
the 2009 introduction of Cooperativa's new logo, whereas
Cooperativa's use of its shortened names, COOP ORIENTAL and
COOPERATIVA ORIENTAL, had begun in 1995. Id. The district court
entered final judgment, and Oriental Group timely appealed.6
In the first appeal, as here, the only issue was the
likelihood of confusion. We affirmed the judgment in part and
vacated in part. We held that "to the extent that the district
court concluded that Oriental did not challenge the COOP ORIENTAL
mark divorced from the 2009 orange trade dress, it was incorrect."
Id. at 16. To the contrary, "[t]he record is clear that Oriental
challenged not only Cooperativa's use of the 2009 logo and trade
6Oriental Group first raised the issue of ORIENTAL POP and
CLUB ORIENTALITO (a variant of CLUB DE ORIENTALITO) in a
supplemental brief supporting its motion to amend or alter the
injunction. These marks are not used as trade names for
Cooperativa as a whole -- they refer to financial products for
teenagers and children, respectively. In denying Oriental Group's
motion, the district court did not address these marks. Oriental
Group later asked that CLUB DE ORIENTALITO be enjoined, and dropped
references to CLUB ORIENTALITO. We address ORIENTAL POP and CLUB
DE ORIENTALITO in Part IV, infra.
- 8 -
dress, but also Cooperativa's use of the COOP ORIENTAL mark and
similar marks apart from that trade dress." Id. Further, we held
that the district court erred when it rejected the request to
broaden the injunction on the ground that there was no evidence of
actual confusion prior to 2009. Id. at 17. As we pointed out,
this ruling ran "contrary to the established principle that
evidence of actual confusion is not necessary to establish a
likelihood of confusion." Id.; accord Societe des Produits Nestle,
S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 640 (1st Cir. 1992).
Accordingly, we remanded for "the district court to determine
whether the COOP ORIENTAL mark and similar marks create a
likelihood of confusion, and to fashion an appropriate injunction
if a likelihood of confusion is established." Oriental I, 698
F.3d at 24.
Before remanding, we observed that "many of the findings
made by the district court are not specific to the orange trade
dress contained in the 2009 logo, and thus are equally relevant in
assessing Cooperativa's use of the COOP ORIENTAL mark standing
alone." Id. at 18. The district court had found that five of the
eight Pignons factors, used as a framework to gauge the likelihood
of confusion between marks, weighed in Oriental Group's favor.
Id.; see Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,
657 F.2d 482, 487 (1st Cir. 1981). We held that the analysis of
those factors -- the similarity of Oriental Group's and
- 9 -
Cooperativa's services (second factor); the relationship between
their channels of trade, advertising, and prospective customers
(third, fourth, and fifth factors); and the strength of Oriental
Group's mark (eighth factor) -- "equally support[ed] a finding of
likelihood of confusion with respect to the COOP ORIENTAL mark
divorced from the 2009 logo." Oriental I, 698 F.3d at 18. As for
the similarity of the marks (first factor), evidence of actual
confusion (sixth factor), and Cooperativa's intent (seventh
factor), we recognized that they might apply differently to the
word marks alone. Id. at 18-19. We "conclude[d] that there is at
least evidence in the record that would support" a finding of
likely confusion based on COOP ORIENTAL but left evaluation of the
evidence to the district court in the first instance. Id. at 18.
We instructed the district court to consider whether COOPERATIVA
ORIENTAL "and other potentially infringing usages of the ORIENTAL
mark" created a likelihood of confusion, but did not directly
address ORIENTAL POP or CLUB DE ORIENTALITO. Id. at 19-20.
D. This appeal
Roughly two years after we remanded the case, the
district court ordered a joint status report, and the parties
expressly declined to conduct further discovery or participate in
another evidentiary hearing. Accordingly, the district court
reviewed the same record evidence it first considered in 2010, and
considered whether Cooperativa's word marks created a likelihood
- 10 -
of confusion. Oriental Fin. Grp., Inc. v. Cooperativa de Ahorro
y Crédito Oriental, No. 3:10-cv-1444 (JAF), 2014 WL 5844166 (D.P.R.
Nov. 12, 2014) ("2014 Order"). With regard to COOP ORIENTAL and
COOPERATIVA ORIENTAL, the district court found that the first,
sixth, and seventh Pignons factors weighed in favor of Cooperativa,
and concluded that with five factors favoring the plaintiffs and
three favoring the defendant, "Plaintiffs have not demonstrated a
likelihood of confusion by Defendant's use of the word marks 'Coop
Oriental' or 'Cooperativa Oriental.'" Id. at *5. It also found
no likelihood of confusion with respect to ORIENTAL POP and CLUB
DE ORIENTALITO. Id. at *6. Accordingly, it determined that the
word marks were non-infringing and found "no basis to broaden the
injunctive relief." Id. at *7.
Oriental Group timely brought this appeal. It argues
that four word marks used by Cooperativa -- COOP ORIENTAL,
COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE ORIENTALITO --
create a likelihood of confusion and therefore infringe its
ORIENTAL mark, and it seeks to enjoin Cooperativa from using them.
Cooperativa argues that they do not create a likelihood of
confusion, and that therefore the district court did not err in
denying Oriental Group's request to enjoin their use.
- 11 -
II.
A. Standard of review
To prevail in a trademark infringement claim under the
Lanham Act, "a plaintiff must establish (1) that its mark is
entitled to trademark protection, and (2) that the allegedly
infringing use is likely to cause consumer confusion." Boston
Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir.
2008). As the case comes to us, it is established that ORIENTAL
is an arbitrary -- and therefore inherently distinctive -- service
mark, Oriental I, 698 F.3d at 18 n.7, and that Oriental Group is
its senior user, id. at 13. Hence, Oriental Group's mark is
entitled to protection, and we need only address whether the
allegedly infringing marks create a likelihood of confusion.7
The issue before us is thus one of fact. Dorpan, S.L.
v. Hotel Meliá, Inc., 728 F.3d 55, 64 (1st Cir. 2013) ("Likelihood
of confusion is a question of fact."); Boston Duck Tours, 531 F.3d
at 15 (stating that the Pignons factors, used to gauge likelihood
of confusion, are issues of fact). We do not set aside findings
of fact unless they are clearly erroneous. In re Pharm. Indus.
7 Cooperativa belatedly suggests that Oriental Group does not
have rights in ORIENTAL. In its words, "the evidence fails to
show that [Oriental Group] has consistently used the mark
'oriental' alone, which it now wants to appropriate through
judicial fiat." The argument should have been raised on the first
appeal. It is now established that ORIENTAL is a protected mark
of Oriental Group.
- 12 -
Average Wholesale Price Litig., 582 F.3d 156, 163 (1st Cir. 2009);
Fed. R. Civ. P. 52(a)(6). Accordingly, we may set aside the
district court's findings on the likelihood of confusion or the
Pignons factors only if we are "left with the definite and firm
conviction that a mistake has been committed." Anderson v. City
of Bessemer City, 470 U.S. 564, 573 (1985) (quoting United States
v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)).8
If we are convinced that there is "only one permissible
interpretation" of the evidence on the Pignons factors or the
likelihood of confusion, we are empowered to substitute our own
finding for that of the district court. Muñiz v. Rovira-Martinó,
453 F.3d 10, 13 (1st Cir. 2006); see also Dorpan, 728 F.3d at 66
(determining on appeal that "'Hotel Meliá' and 'Gran Meliá' are
essentially identical for trademark purposes," and that "[n]o
reasonable factfinder could conclude otherwise"). As we put it in
Boston Duck Tours, where the district court errs but "the
8 As discussed above, we review the district court's order
denying Oriental Group's motion to expand the scope of the
permanent injunction. Though injunctions are "often said to be
reviewed for abuse of discretion, a more complete statement is
that issues of law are reviewed de novo, factual findings for clear
error, and most other issues -- procedure, balancing of factors,
even law application -- with varying degrees of deference depending
upon the circumstances." Diálogo, LLC v. Santiago-Bauzá, 425 F.3d
1, 3 (1st Cir. 2005) (citation omitted). In this case, the
district court's decision not to expand the injunction to encompass
Cooperativa's word marks was based entirely on the factual finding
that the word marks created no likelihood of confusion and were
therefore non-infringing. Our review is limited to that finding,
and therefore we apply the clear error standard.
- 13 -
underlying facts are largely undisputed," a remand would be "a
waste of judicial resources" and we may draw our own conclusions
on the Pignons factors and the likelihood of confusion. 531 F.3d
at 15.9
B. Legal background
We assume familiarity with trademark law, as discussed
in Oriental I, 698 F.3d at 15-17, and summarize only those aspects
relevant to the theory of infringement argued by Oriental Group in
this appeal. To set the stage, Oriental Group consists of a number
of financial firms with ORIENTAL in their names, and it has rights
in a family of marks, including the following: ORIENTAL GROUP,
ORIENTAL BANK, ORIENTAL MONEY, ORIENTAL INSURANCE, ORIENTAL
MORTGAGES, ORIENTAL ETA,10 KEOGH ORIENTAL,11 ORIENTAL SAVINGS PLUS,
9 In Oriental I, 698 F.3d at 19, we quoted Munoz v. Porto Rico
Ry. Light & Power Co. for the proposition that "this court on
appeal will not undertake to find the facts or to lay down rulings
on specific issues . . . but will remand the case to the court
below for final disposition on the evidence." 83 F.2d 262, 270
(1st Cir. 1936) (omission in original). That was the wisest course
in Munoz, where we heard an appeal from the grant of a preliminary
injunction at the outset of a case in which key facts were
disputed. It was also the best course in Oriental I itself, given
that the district court had entirely omitted to address the issue
of the word marks, and was well-placed to consider the issue in
the first instance. In both cases, the district court had not yet
weighed in on issues of fact. Munoz does not state a general rule
beyond such a case.
10 ORIENTAL ETA refers to an Electronic Transfer Account.
11ORIENTAL KEOGH refers to a type of retirement plan formerly
known as a "Keogh plan."
- 14 -
ORIENTAL MANAGED INVESTMENTS, ORIENTAL FINANCIAL GROUP, ORIENTAL
FINANCIAL SERVICES, ORIENTALONLINE.COM, ORIENTAL KIDS, and
ORIENTAL AMIGA.12 Id. at 18 ("[T]he ORIENTAL mark is used as a
surname in Oriental's family of marks to identify businesses and
services associated with Oriental [Group.]"); see also J & J Snack
Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1462 (Fed. Cir.
1991) (defining "family of marks"). In essence, Oriental Group's
theory is that the infringing marks will be seen as members of the
ORIENTAL family of marks, and, as a result, Cooperativa will be
confused for a member of Oriental Group's corporate family. See
15 U.S.C. § 1125(a)(1)(A) (defining trademark infringement to
include "confusion . . . as to the affiliation, connection, or
association of [the defendant] with [the plaintiff], or as to the
origin, sponsorship, or approval of his or her . . . services").
This confusion would arguably allow Cooperativa to free-ride on
the reputation, or imply that it has the financial backing, of the
larger Oriental Group.13
12 At trial, Oriental Group produced evidence of the Puerto
Rico registrations of ORIENTAL MONEY, ORIENTALONLINE.COM, ORIENTAL
KIDS, and ORIENTAL AMIGA. Per Cooperativa's motion in this court,
we take judicial notice of Oriental Group's Puerto Rico
registration of ORIENTAL MANAGED INVESTMENTS. Other marks listed
above have been used in commerce but are not necessarily
registered. Though we have recognized an ORIENTAL family of marks,
this is not necessarily a complete list of its members, and we
offer no opinion on whether all of the listed marks are protected
in their own right.
13Oriental Group illustrates the family-of-marks concept with
other examples from the Puerto Rico banking sector. One of its
- 15 -
As stated above, whether the defendant's mark creates a
likelihood of confusion is analyzed using eight non-exclusive
factors, sometimes referred to as the Pignons factors. This
analysis requires a comparison of the allegedly infringing mark
with the plaintiff's protected marks. Courts consider: "(1) the
similarity of the marks; (2) the similarity of the goods; (3) the
relationship between the parties' channels of trade; (4) the
relationship between the parties' advertising; (5) the classes of
prospective purchasers; (6) evidence of actual confusion; (7) the
defendant's intent in adopting its mark; and (8) the strength of
the plaintiff's mark." Oriental I, 698 F.3d at 17 (quoting Beacon
Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 15 (1st Cir.
2004)); see also Pignons, 657 F.2d at 487.
Because the district court has already found that the
second, third, fourth, fifth, and eighth factors weigh in favor of
a finding of likelihood of confusion, 2014 Order, 2014 WL 5844166,
at *2; see also Oriental I, 698 F.3d at 18, we address only the
first, sixth, and seventh factors. These are, according to one of
our sister circuits, the three most important factors in
determining the likelihood of confusion. Sorensen v. WD-40 Co.,
792 F.3d 712, 726 (7th Cir. 2015) ("No single factor is
witnesses testified at trial that Citigroup uses a family of marks
to promote Citifinancial and Citimortgage, while Banco Popular
promotes Popular Auto, Popular Mortgage, and Popular Finances.
- 16 -
dispositive, but we have said that three are especially important:
the similarity of the marks, the intent of the defendant, and
evidence of actual confusion.").
Similarity of the marks in particular can be highly
influential when the products bearing those marks "directly
compete." Checkpoint Sys., Inc. v. Check Point Software Techs.,
Inc., 269 F.3d 270, 281 (3d Cir. 2001); see also Barton Beebe, An
Empirical Study of the Multifactor Tests for Trademark
Infringement, 94 Cal. L. Rev. 1581, 1600, 1603 (2006) (analyzing
which factors are most predictive of outcomes on likelihood of
confusion in the district courts, and observing that "[t]he
similarity of the marks factor is by far the most influential").
Put differently, similarity of the marks is highly salient where,
as here, the parties sell similar goods, via similar channels of
trade and similar modes of advertising, and compete for similar
consumers. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199,
1205 (9th Cir. 2000) (referring to "similarity of the marks,"
"relatedness of the services," and "use of a common marketing
channel" as "the controlling troika" of factors in determining the
likelihood of confusion in the internet context); see also
Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir. 2006)
("[T]he more similar the marks are, the less necessary it is that
the products themselves be very similar to create confusion.").
- 17 -
III.
We first address COOP ORIENTAL and COOPERATIVA ORIENTAL.
In analyzing the first, sixth, and seventh Pignons factors, and
the likelihood of confusion, we make no distinction between those
two marks. This approach is consistent with the briefs of the
parties and the opinions of the district court. The two marks are
indisputably similar to one another, and neither party identifies
any relevant difference between them for purposes of comparison
with ORIENTAL.
A. Similarity of the marks
Though we noted in 2012 that the first factor could weigh
in favor of Oriental Group, Oriental I, 698 F.3d at 18, the
district court determined that it did not, 2014 Order, 2014 WL
5844166, at *3. This was the most important factor in the district
court's conclusion that COOP ORIENTAL and COOPERATIVA ORIENTAL are
non-infringing. Its conclusion that these two marks are dissimilar
to ORIENTAL rests upon two premises: that the public in Puerto
Rico understands that the terms COOP and COOPERATIVA have a special
meaning, and that because of that meaning, these words make a
stronger impression than the word ORIENTAL.
1. Significance of COOP and COOPERATIVA
The district court explained that the terms COOP and
COOPERATIVA create "a recognizable difference with important
meaning in Puerto Rico," because Cooperativa "is a cooperative, a
- 18 -
credit union formed under the laws of Puerto Rico," and not "a
full-service commercial bank"14 like Oriental Group. Id. It relied
on the assertion, unsupported by evidence, that "[t]he term 'Coop'
(or 'Cooperativa') is a common term easily recognizable by the
people of Puerto Rico," noting that cooperatives are required, and
for-profit entities forbidden, to use designators such as "Coop"
in their names. Id. (citing P.R. Laws Ann. tit. 7, § 1363a).15
We agree with Oriental Group that these assertions about
consumer perception constitute a finding of adjudicative fact by
judicial notice, to which Rule of Evidence 201 applies. See Fed.
R. Evid. 201 ("Judicial Notice of Adjudicative Facts"); United
States v. Bello, 194 F.3d 18, 22 (1st Cir. 1999).16
14The district court did not say why it considered Oriental
Group to be "full-service," and Cooperativa not. We note, again,
that the district court found that both institutions provide
checking and savings accounts, certificates of deposit, IRA
accounts, and credit cards. 2010 Order, 750 F. Supp. 2d at 400-
01.
15 The district court correctly notes that Puerto Rico's
Cooperative Savings and Credit Associations Act of 2002 requires
that a credit union include in its name the words "Savings and
Credit Cooperative" ("Cooperativa de Ahorro y Crédito"), or an
abbreviation thereof, such as "Coop." P.R. Laws Ann. tit. 7,
§ 1363a. The Act also provides, with exceptions not relevant here,
that no entity other than a cooperative may "use as a name, trade
name, mark or designation . . . the term 'cooperative' or 'COOP'."
Id. § 1369.
16 Though Oriental Group does not explicitly argue that this
is a matter of adjudicative fact, that is the necessary implication
of its argument that the court violated Rule 201. See Fed. R.
Evid. 201(a) ("This rule governs judicial notice of an adjudicative
fact only, not a legislative fact.").
- 19 -
Public perception of an element of a trademark is
typically a matter of adjudicative fact. See Bello, 194 F.3d at
22 (noting that an adjudicative fact "is a fact germane to what
happened in the case," while a legislative fact is "a fact useful
in formulating common law policy or interpreting a statute").
Because public perception of a mark is central to any trademark
dispute, we are particularly concerned that "Rule 201 [be] applied
with some stringency" in finding such facts. United States v.
Hoyts Cinemas Corp., 380 F.3d 558, 570 (1st Cir. 2004).
Rule 201, as applicable here, permits courts to take
judicial notice only of facts "not subject to reasonable dispute"
because they are "generally known within the trial court's
territorial jurisdiction." Fed. R. Evid. 201(b). The district
court effectively determined that it is indisputable not only that
consumers of financial services in Puerto Rico understand that
COOP and COOPERATIVA refer to a credit union, but also that they
understand that, as a credit union, Cooperativa may not be
affiliated with a for-profit bank like Oriental Group.17 It is
hardly beyond dispute that the public has such a clear
understanding of Puerto Rico banking laws. Indeed, as discussed
17As Oriental Group rightly points out in its brief, the key
issue "is not whether consumers know what type of entit[ies]
Cooperativa and Oriental [Group] are. The issue is whether
consumers are likely to believe that Cooperativa or its products
or services are somehow affiliated to Oriental [Group]."
- 20 -
below, the only available evidence points in the other direction
-- some customers actually believed that Cooperativa was
affiliated with Oriental Group. Oriental I, 698 F.3d at 19.
We have found no other examples of a court using judicial
notice to find such facts about the knowledge of the consuming
public. The use of judicial notice in trademark cases is, and
should be, limited to more obvious facts about consumer perception.
See Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d
1197, 1204-05 (11th Cir. 2004) (affirming a finding by judicial
notice that the color of ice cream is indicative of its flavor).
More often, such conclusions should be supported by record
evidence. See, e.g., Keebler Co. v. Rovira Biscuit Corp., 624
F.2d 366, 375 (1st Cir. 1980) (affirming a finding that "export
soda" was generic for a type of soda cracker in Puerto Rico,
relying on witness testimony on the historical use of the term);
Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439, 443-
45 (5th Cir. 2000) (holding that "chupa" is generic for lollipops
in Spanish, relying on record evidence of multiple firms using
"chupa" in product names for lollipops).18
18
We also observe that the finding was made without prior
notice to the parties, in violation of Rule 201. See Fed. R. Evid.
201(e) (requiring notice to parties to allow them "to be heard on
the propriety of taking judicial notice and the nature of the fact
to be noticed"); Cooperativa de Ahorro y Credito Aguada v. Kidder,
Peabody & Co., 993 F.2d 269, 273 (1st Cir. 1993).
- 21 -
2. The most salient word
Further, the district court viewed COOP and COOPERATIVA
as the most salient words in their respective marks. Because those
words have an "important meaning in Puerto Rico," the district
court believed, consumers would distinguish COOP ORIENTAL and
COOPERATIVA ORIENTAL on the one hand from ORIENTAL on the other.
2014 Order, 2014 WL 5844166, at *3; see 4 J. Thomas McCarthy,
McCarthy on Trademarks & Unfair Competition § 23:42, Westlaw
(database updated June 2016) ("It is appropriate in determining
the question of likelihood of confusion to give greater weight to
the important or 'dominant' parts of a composite mark, for it is
that which may make the greatest impression on the ordinary
buyer.").
Such a finding cannot be sustained, however, even on
deferential review. COOP and COOPERATIVA are "merely []
descriptive term[s]" for a credit union. Oriental I, 698 F.3d at
18; cf. Nw. Airlines, Inc. v. NWA Fed. Credit Union, No. Civ. 03-
3625DWFSRN, 2004 WL 1968662, at *7 (D. Minn. Sept. 2, 2004)
(identifying "Federal Credit Union" as a generic term). COOP and
COOPERATIVA are "of minimal significance" to the similarity
analysis "because of [their] highly descriptive nature." Boston
Duck Tours, 531 F.3d at 30; accord Peoples Fed. Sav. Bank v.
People's United Bank, 672 F.3d 1, 13 (1st Cir. 2012). By contrast,
ORIENTAL, in addition to being a strong mark in its own right, is
- 22 -
an inherently distinctive term. "[A] buyer would be more likely
to remember and use" ORIENTAL "as indicating [the] origin of the
goods," and we therefore conclude that "this is the dominant
portion of the mark." McCarthy, supra, § 23:44. There is no
question that the common element of the marks -- ORIENTAL -- weighs
more heavily in the analysis than COOP or COOPERATIVA.
Where two marks share their most salient word, that fact
weighs strongly in favor of similarity. Dorpan, 728 F.3d at 66
("The marks 'Hotel Meliá' and 'Gran Meliá' are essentially
identical for trademark purposes because both marks have the word
'Meliá' as their most salient word."); Beacon Mut., 376 F.3d at 18
(concluding that a reasonable factfinder could conclude that
BEACON MUTUAL INSURANCE COMPANY was similar to ONEBEACON INSURANCE
GROUP in part because they shared BEACON as their "most salient"
word). The "addition of a suggestive or descriptive element" to
the dominant word in a mark "is generally not sufficient to avoid
confusion." Oriental I, 698 F.3d at 18 (quoting 4 J. Thomas
McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th
ed. 2012)); accord Pizzeria Uno Corp. v. Temple, 747 F.2d 1522,
1534-35 (4th Cir. 1984) (holding that, because PIZZERIA UNO and
TACO UNO share a dominant word, their similarity weighs in favor
of a likelihood of confusion).
- 23 -
3. Family of marks
As further evidence of salience, the shared word
ORIENTAL is the "surname in Oriental's family of marks." Oriental
I, 698 F.3d at 18. The family is "a group of marks having a
recognizable common characteristic, wherein the marks are composed
and used in such a way that the public associates not only the
individual marks, but the common characteristic of the family,
with the trademark owner." J & J Snack Foods, 932 F.2d at 1462.
"[T]he purchasing public recognizes that the common
characteristic," the word ORIENTAL, "is indicative of a common
origin of the goods." Han Beauty, Inc. v. Alberto-Culver Co., 236
F.3d 1333, 1336 (Fed. Cir. 2001). This public association between
ORIENTAL and Oriental Group is further support for the proposition
that ORIENTAL is the most salient, and the most source-identifying,
element in the marks.
The family of marks concept also supports a finding of
similarity in another way. Oriental Group can show similarity of
the marks not only by comparing COOP ORIENTAL and COOPERATIVA
ORIENTAL with the ORIENTAL mark, but also with the entire family
of marks sharing the ORIENTAL root. J & J Snack Foods illustrates
the concept. There, the Federal Circuit agreed with McDonald's
Corporation that it not only owns particular word marks, e.g.,
McMUFFIN, McRIB, and McCHICKEN, but also has rights in the larger
family of marks sharing the same structure and the "Mc" root.
- 24 -
J & J Snack Foods, 932 F.2d at 1462-63. Hence, even if McDonald's
does not sell pretzels and McPRETZEL will not create confusion
with any particular "Mc" product, it is infringing if it is likely
to be confused for a member of the "Mc" family, and thus perceived
as a McDonald's product. Ultimately, because it shared the same
structure and "Mc" root as the other family members, McPRETZEL was
found to be infringing. Id. at 1464; see also McDonald's Corp. v.
McSweet, LLC, 112 U.S.P.Q.2d 1268, 2014 WL 5282256, at *5 (T.T.A.B.
2014) ("If an opposer is found to own a family of marks for a range
of goods, that is an additional factor -- beyond the similarities
between applicant's marks and goods, and any one of opposer's mark
and goods -- weighing in favor of a likelihood of confusion.").
Here, the contested marks clearly share similarities
with the ORIENTAL mark. But they share even greater similarities
with the family of ORIENTAL marks. Consider the list of marks
belonging to the family.19 Every one includes ORIENTAL as the
first word, except for KEOGH ORIENTAL. Most are two-word marks,
though several have three words. Most clearly refer to financial
services, though some, like ORIENTAL KIDS and ORIENTAL AMIGA, do
not. Most are English-language marks. Only one, ORIENTAL AMIGA,
19
As noted in Part II.B, supra, they are: ORIENTAL GROUP,
ORIENTAL BANK, ORIENTAL MONEY, ORIENTAL INSURANCE, ORIENTAL
MORTGAGES, ORIENTAL ETA, KEOGH ORIENTAL, ORIENTAL SAVINGS PLUS,
ORIENTAL MANAGED INVESTMENTS, ORIENTAL FINANCIAL GROUP, ORIENTAL
FINANCIAL SERVICES, ORIENTALONLINE.COM, ORIENTAL KIDS, and
ORIENTAL AMIGA.
- 25 -
is not. These facts do not necessarily mean that only the marks
with every signal characteristic of the family are members of the
family. ORIENTAL BANK and ORIENTAL MONEY are obviously members,
for example, but the trial evidence makes clear that ORIENTAL KIDS,
ORIENTAL AMIGA, and KEOGH ORIENTAL were also presented to the
public as members of the family.
In that context, consumers are likely to recognize the
pattern and conclude that COOP ORIENTAL and COOPERATIVA ORIENTAL
-- two-word marks consisting of ORIENTAL and a descriptive term
for financial services -- are members of the same family. They
are not a perfect match, given that COOPERATIVA can only be read
as a Spanish term. Further, both marks place the adjective
ORIENTAL second, consistent with Spanish grammar. Nonetheless,
the attributes they share with the ORIENTAL family weigh in favor
of a finding of similarity.
4. Sight, sound, and meaning
Though the district court focused on the meaning of the
marks, we also consider the impression they make through sight and
sound. See Boston Duck Tours, 531 F.3d at 24 ("The degree of
similarity between two marks . . . is determined by analyzing their
sight, sound, and meaning."). Adding one word to the ORIENTAL
mark changes the appearance and sound of the mark somewhat, but
not enough to make a decisive difference here. See Den-Mat Corp.
v. Block Drug Co., 895 F.2d 1421, at *1 (Fed. Cir. 1990) (Table)
- 26 -
("There is an obvious visual difference between a two-word and
one-word mark, but here the difference is not great enough to
overcome the similarities . . . ."). Indeed, though the fact that
COOP ORIENTAL and COOPERATIVA ORIENTAL are two-word marks
differentiates them from ORIENTAL, it makes them more similar to
the two-word marks in the ORIENTAL family.
Beyond the addition of a second word, Cooperativa claims
another difference in the sound of the marks -- that the ORIENTAL
mark is pronounced in English, while COOPERATIVA ORIENTAL and COOP
ORIENTAL are pronounced in Spanish. While the ORIENTAL element of
the marks looks the same, it argues, it sounds different in the
context of COOP or COOPERATIVA. The argument is consistent with
testimony from an Oriental Group marketing executive that ORIENTAL
is pronounced in English and COOP ORIENTAL in Spanish. Similarly,
"Cooperativa" is not an English word, and consumers are likely to
use a Spanish pronunciation of COOPERATIVA ORIENTAL. The
differences in pronunciation are limited, however –- while English
and Spanish pronunciations of "oriental" differ in the placement
of emphasis and pronunciation of the final vowel, they are
otherwise essentially the same. We conclude that this possible
difference in sound does not outweigh the strong similarities
between these marks.
- 27 -
5. Conclusion on similarity
The conclusion is inescapable that ORIENTAL, COOP
ORIENTAL, and COOPERATIVA ORIENTAL are similar. The first Pignons
factor weighs in favor of Oriental Group. We are left with the
firm conviction that the district court erred in finding to the
contrary.
B. Evidence of actual confusion
The district court found that the lack of evidence of
actual confusion "weighs strongly in favor" of Cooperativa. 2014
Order, 2014 WL 5844166, at *4. In the district court's view,
"[t]he evidence before the court demonstrated a confusion between
the Defendant's 2009 trade dress and the Plaintiffs' trade dress
because of their shared color schemes and word placement emphasis.
Plaintiffs presented no evidence of actual confusion prior to the
Defendant's introduction of the 2009 trade dress despite
Defendant's use of 'Coop Oriental' for nearly fifteen years." Id.
Because Oriental Group offered evidence only of incidents taking
place in 2010, the district court was "convinced that absent the
infringing use of the 2009 trade dress, the instances of actual
confusion post-2009 would likely not have occurred." Id.
"Evidence of actual confusion is not invariably
necessary to prove likelihood of confusion; on the other hand,
absent evidence of actual confusion, when the marks have been in
the same market, side by side, for a substantial period of time,
- 28 -
there is a strong presumption that there is little likelihood of
confusion." Pignons, 657 F.2d at 490 (internal quotation marks
omitted). We have said that a lack of evidence of actual confusion
weighs against a finding of likely confusion when competing marks
have competed in the same market for six years, Aktiebolaget
Electrolux v. Armatron Int'l, Inc., 999 F.2d 1, 4 (1st Cir. 1993),
four years, Pignons, 657 F.2d at 490, or as little as three and a
half years, Keebler, 624 F.2d at 377. With these precedents in
mind, the district court concluded that because roughly 15 years
passed between Cooperativa's adoption of the COOP ORIENTAL word
mark in 1995 and the incidents of actual confusion evidenced at
trial, the absence of evidence suggested a lack of actual –- or
likely –- confusion. 2014 Order, 2014 WL 5844166, at *4.
This analysis misses two essential considerations.
First, the district court did not address the nature of the post-
2009 incidents evidenced at trial. They indicated that, around
the same time Cooperativa increased its advertising and began
competing with Oriental Group in San Juan and other areas, existing
customers of both institutions became confused and believed the
two were affiliated. In several instances, this confusion was
apparently driven by the word marks alone. As we summarized the
trial testimony in Oriental I:
A supervisor at one of Oriental's branches
testified that several customers had attempted to
- 29 -
cash checks bearing the name COOPERATIVA ORIENTAL
at the Oriental branch, apparently associating that
name with Oriental's business. The supervisor also
testified that customers with Cooperativa accounts
had attempted to withdraw or deposit money at the
Oriental branch. A customer relations officer at
a different Oriental branch also testified that
customers had called an Oriental branch attempting
to verify their accounts, which were actually held
by Cooperativa. These customers, according to the
employee's testimony, relied on the similarity of
Oriental's marks and the COOP ORIENTAL mark in
assuming that Cooperativa was a subsidiary of
Oriental. Oriental also presented several other
examples of actual consumer confusion, including
telephone calls by Cooperativa customers to
Oriental branches and inquiries by Oriental
customers about branches that actually were a part
of Cooperativa. Each of these instances of actual
confusion appeared to be attributable to the use of
the name COOP ORIENTAL without the logo.
698 F.3d at 19 (emphasis added). The district court concluded too
quickly that these incidents, because they took place after the
adoption of Cooperativa's new logo and trade dress, were caused by
the new logo and trade dress.
Second, the district court treated 1995 to roughly 2010
as the relevant time frame, without analyzing whether, during that
time, the marks were actually "in the same market, side by side."
Pignons, 657 F.2d at 490. Yet for the great majority of that time,
the marks did not co-exist in any geographic market outside of
Humacao in eastern Puerto Rico. There is no dispute that, for
years after adopting the COOP ORIENTAL mark, Cooperativa did not
compete with Oriental Group beyond operating a small number of
- 30 -
branches in that relatively small municipality.20 Oriental I, 698
F.3d at 22 ("Cooperativa operated only three branches in the mid
to late 1990s, and these branches were located almost exclusively
within Humacao. At that time, Cooperativa had no presence in San
Juan. . . . It was not until 2008 that Cooperativa began to expand
its business into San Juan, acquiring three San Juan branches by
2010."). Further, Cooperativa's minimal advertising until roughly
2009 suggests that its COOP ORIENTAL mark appeared alongside
Oriental Group's marks little, if at all. See id. at 22-24.
Hence, the absence of evidence of confusion before 2010
tells us little, given the relative obscurity of COOP ORIENTAL and
COOPERATIVA ORIENTAL at the time. We conclude that the district
court clearly erred and that, given the trial evidence of actual
confusion apparently attributable to the word mark alone in the
2009 to 2010 timeframe, id. at 19, the sixth Pignons factor weighs
in favor of Oriental Group.
C. Defendant's intent
Though the district court found that Cooperativa "knew
of and intended to benefit from [Oriental Group's] considerable
advertising efforts" when it adopted its orange trade dress and
logo, 2010 Injunction Order, 750 F. Supp. 2d at 403, the same
20The U.S. Census Bureau estimates the population of Humacao
at about 55,000. U.S. Census Bureau, U.S. Dep't of Commerce,
Annual Estimates of the Resident Population: April 1, 2010 to July
1, 2015 (2015).
- 31 -
inference does not necessarily apply with respect to the word marks
alone. Cooperativa adopted service marks that are shortened
versions of its longstanding legal name. Common sense suggests
that the pithy COOP ORIENTAL makes for a better trade name than
"Cooperativa de Ahorro y Crédito Oriental" even absent any
similarity to Oriental Group's marks. Moreover, Cooperativa
adopted the mark in the 1990s, long before it entered into more
direct competition with Oriental Group. In Oriental I, we said
that an inference of bad faith "might . . . be drawn" based on
"Cooperativa's use of the COOP ORIENTAL mark standing alone." 698
F.3d at 19 (emphasis added). Since that time, however, no new
evidence has been presented, and the district court has come to
the opposite conclusion. See 2014 Order, 2014 WL 5844166, at *5.
The district court did not clearly err in finding that the seventh
Pignons factor weighs in Cooperativa's favor.
D. Conclusion on likelihood of confusion
The Pignons factors are not a "mechanical formula."
Attrezzi, 436 F.3d at 39. Oriental Group does not prevail simply
because seven of the eight factors weigh in its favor. It will
surely be the rare case, however, where the Pignons analysis is so
lopsided and yet no likelihood of confusion is found. This is not
that rare case. Oriental Group and Cooperativa offer similar
services to similar customers through similar channels of trade
and advertise in similar media. Cooperativa identifies its
- 32 -
services with a word mark similar to a strong mark belonging to
Oriental Group. Indeed, the marks share their most salient word,
and the only difference between them is the addition of the generic
term COOP or COOPERATIVA. Cooperativa's marks also share traits
in common with Oriental Group's family of marks. It is not
surprising that these marks have caused confusion in the past.
Under these circumstances, consumer confusion is also likely in
the future. We are left with the firm conviction that the district
court erred in finding no such likelihood. We hold that COOP
ORIENTAL and COOPERATIVA ORIENTAL infringe Oriental Group's rights
in the ORIENTAL mark.
IV.
Oriental Group also claims that the district court erred
in finding that ORIENTAL POP and CLUB DE ORIENTALITO were non-
infringing.21 This infringement claim differs from the COOP
ORIENTAL and COOPERATIVA ORIENTAL claims. ORIENTAL POP and CLUB
DE ORIENTALITO are product marks designating particular financial
services, while COOP ORIENTAL and COOPERATIVA ORIENTAL are house
marks referring to the institution providing those services.22
21We limit our review to ORIENTAL POP and CLUB DE ORIENTALITO,
the specific marks disputed in Oriental Group's opening brief and
Cooperativa's brief. Though Cooperativa's use of CUENTA
ORIENTALITO is documented in the record, Oriental Group did not
complain about the CUENTA ORIENTALITO mark until its reply brief
before this court.
22A "house mark" is a mark that appears in conjunction with
different "product marks," indicating that the products originate
- 33 -
There are no storefronts emblazoned with ORIENTAL POP or CLUB DE
ORIENTALITO –- they are the names of savings accounts intended for
children and teens, respectively.
These marks were also considered at a different point in
time than the others: at the post-trial final disposition hearing
after the 2010 injunction had gone into effect. Oriental Group
argued that Cooperativa's website violated the injunction insofar
as it referenced ORIENTAL POP and what was then CLUB ORIENTALITO.
The district court viewed the live website during the hearing and
found the use of those marks non-infringing, noting that the top
of the webpage included the full name Cooperativa Ahorro y Crédito
Oriental, and a subheading, "Ahorros" (literally, "Savings"),
which indicated that ORIENTAL POP and CLUB ORIENTALITO were types
of savings accounts. The website images as they appeared at the
hearing also clearly showed a distinctive logo reminiscent of
interlocking hands, and a green color scheme distinct from the
infringing orange trade dress Cooperativa had used earlier.
The district court revisited ORIENTAL POP and CLUB DE
ORIENTALITO (by then changed from CLUB ORIENTALITO) following
remand after Oriental I, beginning with the Pignons factors. 2014
Order, 2014 WL 5844166, at *5-6. Just as with COOP ORIENTAL and
from the same "house" or company. McCarthy, supra, § 23:43.
Examples include INTEL PENTIUM, FORD MUSTANG, and KELLOGG'S FROOT
LOOPS. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1374
(Fed. Cir. 2002).
- 34 -
COOPERATIVA ORIENTAL, it considered only the first, sixth, and
seventh factors, and did not make findings as to the second, third,
fourth, fifth, and eighth. Instead, it applied the same findings
on those factors it had originally made with regard to
Cooperativa's orange logo and trade dress. See 2010 Injunction
Order, 750 F. Supp. 2d at 403-04. Neither party objected to that
approach. Hence, for purposes of this appeal, we assume that all
five of those factors favor Oriental Group.23
The district court again concluded that, even though
most of the factors weighed in favor of Oriental Group, there was
no likelihood of confusion, and thus no infringement, with respect
to either ORIENTAL POP or CLUB DE ORIENTALITO. The court in effect
adopted its earlier conclusion that the use of these marks in the
context of Cooperativa's website eliminated any risk of confusion.
In reviewing the court's determination, we begin with the Pignons
factors it addressed.
A. Similarity of the marks
As the district court recognized, the way the marks
appeared on Cooperativa's public website is central to the
23 In Oriental I, we said that the findings on these five
factors also applied to the COOP ORIENTAL mark and by implication
the COOPERATIVA ORIENTAL mark, but did not explicitly address their
application to ORIENTAL POP and CLUB DE ORIENTALITO. 698 F.3d at
18. We express no view on whether these findings will need to be
reassessed if Oriental Group pursues additional remedies against
CUENTA ORIENTALITO or other contested marks on remand.
- 35 -
infringement analysis.24 More particularly, context governs the
similarity analysis. "[I]n determining the similarity of marks in
an infringement action, a court must examine the visual appearance
of each mark in the context of its use." Jim Beam Brands Co. v.
Beamish & Crawford Ltd., 937 F.2d 729, 735 (2d Cir. 1991). In
Pignons, for example, the plaintiff's and defendant's allegedly
similar product marks were ALPA and ALPHA respectively, which "[i]n
spelling and pronunciation, . . . differ[ed] . . . only by virtue
of the letter 'h'." 657 F.2d at 487. But defendant Polaroid's
product mark "always appear[ed] in close proximity with an equally
prominent and uniquely identifying designation, such as 'Polaroid
SX-70 Land Camera Alpha 1[.]'" Id. Further, Polaroid packaged
its cameras in white, black or silver with a trademarked geometric
design, while plaintiff Pignons packaged its cameras in red and
white boxes bearing the word "Swiss" or "Switzerland," a white
cross on a red background, and a logo of a mountain. Id. In that
context, we observed that "otherwise similar marks are not likely
24However, although the district court relied on context in
its ultimate conclusion on infringement, it incorrectly failed to
consider context in addressing the first Pignons factor. It found
that both marks are similar to ORIENTAL because "the terms 'Club
de Orientalito' and 'Oriental POP,' standing alone, could easily
be confused as a product of Oriental." 2014 Order, 2014 WL
5844166, at *5 (emphasis added). As explained infra, rather than
considering context only as part of the overall likelihood-of-
confusion assessment, the court should have looked at how the marks
appeared to consumers when addressing the similarity factor. See
Pignons, 657 F.2d at 487.
- 36 -
to be confused" where they are consistently "used in conjunction
with the clearly displayed name and/or logo of the manufacturer."
Id.; see also Astra Pharm. Prods., Inc. v. Beckman Instruments,
Inc., 718 F.2d 1201, 1205 (1st Cir. 1983).
To a significant extent, the graphic arrangement of
Cooperativa's website, with the credit union's full name used as
a house mark, the interlocking hands logo, and the green color
scheme, serves the same function as Polaroid's use of its house
mark, logo, and distinctive packaging. With respect to ORIENTAL
POP, however, that context is not enough to distance the mark from
Oriental Group and the ORIENTAL family of marks such that the
similarity factor would weigh in favor of Cooperativa. Of
particular importance is that ORIENTAL POP -- a two-word mark with
ORIENTAL as the first word -- closely fits the pattern of the
ORIENTAL family of marks. Marks such as ORIENTAL AMIGA and
ORIENTAL KIDS closely resemble ORIENTAL POP in their structure and
use of the ORIENTAL root. See J & J Snack Foods, 932 F.2d at 1463-
64.
Further, the association between ORIENTAL POP and
Oriental Group's family of marks remains strong even in the context
of the website. ORIENTAL POP appeared on the website in large,
bolded text, and plainly identified a financial product. When
ORIENTAL is used in this way -- as the first word of a two-word
mark that represents a financial product -- it inevitably evokes
- 37 -
an association with Oriental Group's family of financial products.
The fact that ORIENTAL POP appears in conjunction with the name
and trade dress of a lesser-known financial institution is not
enough to dispel the similarity with the strong ORIENTAL mark and
its family.
With respect to CLUB DE ORIENTALITO, however, that
context serves to further distance the mark from Oriental Group's
family of marks. Unlike ORIENTAL POP, CLUB DE ORIENTALITO departs
from the ORIENTAL family's readily identifiable format of an
English-language mark containing a generic term for financial
services alongside the word ORIENTAL. Indeed, none of Oriental
Group's marks uses a variant like ORIENTALITO and, hence, a
consumer viewing the CLUB DE ORIENTALITO mark is less likely to
infer a link between it and the ORIENTAL family. In addition to
the different appearance and sound, ORIENTALITO has a somewhat
different meaning from ORIENTAL. "[T]he Spanish diminutive suffix
'ito' . . . is typically used to indicate smaller size. . . .
[A]dding the ending -ito to [a] word implies small size or
cuteness." In re Allen Batres Miranda, No. 77135681, 2009 WL
625571, at *1-2 (T.T.A.B. Feb. 11, 2009). The association between
CLUB DE ORIENTALITO and Oriental Group is thus considerably more
attenuated than for the other challenged marks we have examined.
The website context, featuring a prominent display of
Cooperativa's full name, logo and trade dress, reinforces the
- 38 -
distinction between this mark and Oriental Group. Hence, at least
when used in this way, the differences from the ORIENTAL family
are enough to assign the similarity factor to Cooperativa for CLUB
DE ORIENTALITO.
B. Actual confusion
The district court reasoned that because Oriental Group
had shown no evidence of actual confusion caused by ORIENTAL POP
or CLUB DE ORIENTALITO, the sixth Pignons factor weighed in favor
of Cooperativa. 2014 Order, 2014 WL 5844166, at *6. We assume
arguendo that no relevant evidence was shown.25 But, as discussed
above, lack of evidence of actual confusion does not weigh in
Cooperativa's favor unless Cooperativa's mark existed "in the same
market, side by side, for a substantial period of time" with
ORIENTAL. Pignons, 657 F.2d at 490. Here, available evidence
suggests that ORIENTAL POP and CLUB DE ORIENTALITO were not used
outside Humacao before Cooperativa's geographic expansion in 2008-
2010, and that they enjoyed far less advertising and public
exposure than COOP ORIENTAL and COOPERATIVA ORIENTAL did. A lack
25 Given that Oriental Group first complained about ORIENTAL
POP and CLUB DE ORIENTALITO after trial, there was little trial
evidence specifically addressed to those marks. In the district
court's words, "there [was] only a single time during the trial
when Plaintiffs mention[ed] 'Club de Orientalito' and 'Oriental
POP,' and that was during the testimony of its head of advertising.
The individual speculated that a consumer could get confused by
the Defendant's use of the terms." 2014 Order, 2014 WL 5844166,
at *6.
- 39 -
of actual confusion means little unless the purportedly confusing
marks are shown to the public over a sufficient period of time.
Because that is not the case here, we conclude that the district
court clearly erred, and that the sixth Pignons factor is neutral.26
C. Defendant's intent
The district court also found that the seventh factor,
Cooperativa's intent in adopting the marks, favored Cooperativa.
We agree with the district court that the absence of evidence as
to Cooperativa's intent requires this result. 2014 Order, 2014 WL
5844166, at *6.
D. Conclusion on likelihood of confusion
Ultimately, the district court found that six of the
Pignons factors favored Oriental Group and two favored
Cooperativa, but that, nonetheless, ORIENTAL POP and CLUB DE
ORIENTALITO created no likelihood of confusion.
26 The district court's suggestion that Peoples is to the
contrary is misplaced. See 2014 Order, 2014 WL 5844166, at *6
(citing Peoples, 672 F.3d at 10-11). The facts of Peoples are
analogous insofar as there was at best limited evidence of actual
confusion, and the plaintiff's and defendant's marks had only been
side by side in the market for a short time. But in Peoples,
rather than find that the lack of evidence indicated that the sixth
Pignons factor favored the defendant, we affirmed the district
court's conclusion that "the scarcity of such evidence [was] not
in itself dispositive of plaintiff's claim." Peoples, 672 F.3d at
11 (quoting Peoples Fed. Sav. Bank v. People's United Bank, 750 F.
Supp. 2d 217, 226 (D. Mass. 2010)). In essence, in Peoples as
here, we said that where there is no evidence of actual confusion
but the marks have only been in the same market for a brief time,
the sixth factor is neutral.
- 40 -
We affirm the district court's conclusion on CLUB DE
ORIENTALITO. For that mark, five Pignons factors favor Oriental
Group, two favor Cooperativa, and one is neutral. In this case,
the lack of similarity between the marks makes the difference.
The word mark is sufficiently distinct from ORIENTAL and its family
of marks that, at least when used in conjunction with a prominent
display of Cooperativa's distinctive house mark and trade dress,
we find no clear error in the district court's conclusion that it
is unlikely to cause consumer confusion. It is Oriental Group's
burden to show a likelihood of confusion. On this record, that
burden has not been met.
However, we find clear error in the district court's
conclusion as to ORIENTAL POP. The Pignons analysis is even more
lopsided than the district court's analysis suggested: six factors
favor Oriental Group, with one for Cooperativa and one neutral.
But the numbers alone do not tell the story -- here again,
similarity of the marks is the pivotal factor. Cooperativa
competes with Oriental Group to sign up similar customers for
similar bank accounts using similar modes of advertising in the
same geographic areas of Puerto Rico. In that competition, it
employs the product name ORIENTAL POP, a mark that naturally fits
into the ORIENTAL family of marks, and will likely be associated
with Oriental Group's family of financial products. Because of
its similarity to ORIENTAL and its family, consumers are likely to
- 41 -
mistake ORIENTAL POP for a species within the same genus as
ORIENTAL MONEY, ORIENTAL KIDS, and ORIENTAL AMIGA. As a result,
consumers are likely to believe that ORIENTAL POP is somehow
affiliated with Oriental Group. The likelihood of such confusion
requires a finding that ORIENTAL POP infringes on the ORIENTAL
mark.
V.
The district clearly erred in finding that COOP
ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP create no
likelihood of confusion with the ORIENTAL mark. To the contrary,
we hold that those marks infringe upon Oriental Group's trademark
rights. Accordingly, we vacate the district court's judgment as
it applies to those marks and remand for reconsideration of whether
to expand the scope of the injunction to address the use of those
marks. We affirm the portion of the judgment addressing CLUB DE
ORIENTALITO.
Injunctive relief does not flow automatically from a
finding of trademark infringement. See eBay, 547 U.S. at 391;
Voice of the Arab World, 645 F.3d at 32-35. The decision to grant
or deny expanded injunctive relief rests in the discretion of the
district court, to be exercised consistent with "well-established
principles of equity." eBay, 547 U.S. at 391. On remand, the
district court must reassess equitable factors such as the nature
of the harm flowing from the infringement, the availability of
- 42 -
alternative remedies, and any hardship an injunction might cause
to Cooperativa or to the public. See id. It must do so in light
of present circumstances -- several years have passed since new
evidence was presented on this matter -- and the understanding
that it is now the law of the case that the COOP ORIENTAL,
COOPERATIVA ORIENTAL, and ORIENTAL POP marks do infringe on
Oriental Group's rights in the ORIENTAL mark.
The judgment below is affirmed-in-part, reversed-in-
part, and remanded. The parties are responsible for their own
costs.
So ordered.
- 43 -