OPINION OF THE COURT
I. Facts. .208
II. Procedural History . .209
III. The Direct Confusion Claim. O rH 03
A. The Lapp Test and the District Court’s Opinion H rH 03
B. The Test for Directly Competing Goods. (M rH 03
C. The District Court’s Methodology. lO rH 03
IV. Review of the District Court’s Analysis.216
A. Similarity of the Marks.216
1. Sight, Sound, Meaning.217
2. The Housemarks and the Disclaimer.218
3. The PTO’s Rejection of Victoria’s Secret’s Application.220
4. Summary.221
B. Strength of the Marks.221
1. Distinctiveness or Conceptual Strength.221
2. Commercial Strength of the Mark .224
3. Summary. 224
C. Product Similarity.224
D. Marketing and Advertising Channels .225
E. Sophistication of Consumers.225
F. The Intent of the Defendant.225
G. Actual Confusion.226
H. Combining the Factors.227
V. The Reverse Confusion Claim.227
A. Introduction.227
B. The Test for Reverse Confusion.229
1. The Factors that are the Same.229
2. Similarity of the Marks.229
3. Strength of the Marks.230
a. Commercial Strength.230
b. Distinctiveness or Conceptual Strength.231
*206 4. The Intent of the Defendant .232
5. Factors Relating to Actual Confusion.233
6. Other Relevant Facts .234
7. Summary of the Test for Reverse Confusion .234
C. The District Court’s Opinion.234
D. Guidance for Remand.236
1. Introduction .236
2. Similarity of the Marks.236
3. Strength of the Marks.236
4. Intent.237
E. Summary.237
VI. Conclusion.238
The critical question in this trademark infringement case, before us for the second time, is whether a typical consumer is likely to confuse MIRACLESUIT swimwear with THE MIRACLE BRA swimwear. 1 The former is a product of Plaintiff A & H Sportswear Company (“A & H”), which manufactures ten percent of all swimsuits made in the United States. The latter is a product of Defendant Victoria’s Secret, the lingerie leviathan that recently entered the swimwear market. A & H filed suit in the District Court for the Eastern District of Pennsylvania claiming that The Miracle Bra swimwear mark violates the Lanham Act because it is confusingly similar to the Miraclesuit swimwear mark, which A & H registered first. A & H contends that: (1) consumers are likely to wrongly associate The Miracle Bra with A & H (the direct confusion claim 2 ); or, in the alternative, (2) consumers are likely to think that Miraclesuit is a product of Victoria’s Secret (the reverse confusion claim).
During an extensive bench trial, A & H argued that Victoria’s Secret should be enjoined from using The Miracle Bra mark for swimwear. Finding a “possibility of confusion,” the District Court granted relief to A & H. Following an appeal to this Court that clarified that likelihood of eon-fusion (instead of possibility of confusion) was the correct standard, the District Court concluded that A & H had failed to show by a preponderance of the evidence that Victoria’s Secret’s The Miracle Bra swimwear mark created a likelihood of either direct or reverse confusion with the Miraclesuit product.
In
Interpace Corp. v. Lapp, Inc.,
The District Court placed particular emphasis on the fact that the The Miracle Bra mark typically appears alongside Victoria’s Secret’s housemark (the mark of the manufacturer), and that Victoria’s Secret uses a disclaimer with its mark that explicitly states that The Miracle Bra swimwear is unrelated to Miraclesuit or A *207 & H. The court also concluded that Victoria’s Secret’s intent, the paucity of credible incidents of actual confusion, and the sophistication of the consumers weighed in favor of Victoria’s Secret, while the competitive proximity of the products and the strength of the Miraclesuit mark weighed in favor of A & H. Taking all this into account, the District Court found no likelihood of direct confusion between the marks, rejected A & H’s direct confusion claim, and, on the assumption that the disclaimer would continue to be used in an effective manner, denied injunctive relief. Notwithstanding that likelihood of confusion is an issue of fact subject to deferential review, the District Court’s disposition of the direct confusion claim has given rise to a number of important issues in this appeal.
A & H first contends that multi-factored tests, like the one used by the District Court, are inapplicable to competing goods, and that with directly competing goods a court should examine only the similarity of the marks. We disagree. Though a court need not look beyond the marks when goods are directly competing and the marks virtually identical, we conclude that the factors we have developed in the noncompeting goods context are helpful tools and should be used to aid in the determination of the likelihood of confusion in other cases. Our jurisprudence does not preclude this result, and the District Court did not err in taking other considerations into account.
Alternatively, A & H submits that the District Court erred as a matter of law by not following precisely the ten-factor Lapp test that we have previously developed to determine likelihood of confusion. It argues that by not considering certain factors that would clearly have weighed in favor of A & H, the District Court distorted the likelihood of confusion standard. We reject this argument for two reasons. First, we have developed the ten-factor Lapp test only as a guide. Although all of the factors can be useful, the Lanham Act does not require that they be followed precisely so long as the relevant comparisons suggested by the test are made. More importantly, although the District Court arguably used a creative test, all of the Lapp factors are integrated, in one way or another, into the court’s analysis. Therefore, even if the Lapp test were mandatory, A & H could not show prejudice.
A & H also argues that, regardless of the test to be used, the District Court clearly erred in resting its finding that there was no likelihood of confusion on Victoria Secret’s disclaimer. A & H asserts that it constitutes legal error even to consider such a disclaimer, but we disagree, seeing no reason to forbid courts from considering this kind of distinguishing feature. In this case, the District Court properly weighed the disclaimer. We also reject A & H’s assertion that the District Court erred in failing to give weight to the refusal of a Patent and Trademark Office (“PTO”) examining attorney to register The Miracle Bra mark for swimwear because of its similarity to Miraclesuit. Where, as here, the PTO examining attorney did not consider all the relevant factors, and lacked significant information that was available to the District Court, his determination need not be given weight. In fact, one legal error that we do find weighs in Victoria’s Secret’s favor: The District Court erred by relying almost entirely on its classification of A & H’s mark as “suggestive to arbitrary” in its determination that Miraclesuit was a conceptually strong mark deserving of a high degree of protection. In sum, we conclude that neither the District Court’s fact-finding nor its balancing of factors warrants reversal, and hence we will affirm its judgment on the direct confusion claim.
As for the reverse confusion claim, A & H challenges the District Court’s treatment as inadequate, and inconsistent with the method laid out in our leading reverse confusion case,
Fisons Horticulture, Inc. v. Vigoro Industries, Inc.,
After reviewing Fisons and our precedent, we are persuaded that the District Court erred in fashioning a two-step inquiry, and in failing to consider the Lapp factors as they apply to reverse confusion claims. We will demonstrate that the application of some of the factors changes in the reverse confusion context, and we conclude that, on the record before us, the judgment must be vacated with respect to the reverse confusion claim and the case remanded for further proceedings.
I. Facts 3
The Miraclesuit bathing suit is made by A & H, which manufactures ten percent of all swimwear in the United States. The Miraclesuit is distributed by Swim Shaper, a division of Mainstream Swimsuits. The Miraclesuit is advertised as having a slimming effect on the wearer without using uncomfortable girdle-like binds. Its material purportedly smooths out middle body bulges and works with a flattering design to confuse the eye such that the wearer is advised, in advertising and in tags that generally accompany the product, that she will “[l]ook ten pounds fighter in 10 seconds[:] The ten seconds it takes to slip it on.” Miraclesuits also include tags indicating that they are Swim Shaper products.
Miraclesuits, which sell for between $50 and $100, come in both single pieces and bikinis. Many are equipped with push-up bras, shaping or underwire bras, or simple, unshaped bras. They are typically sold to trade buyers for department store sales and national mail-order catalogues, and, on two occasions, they were featured in the Victoria’s Secret catalogue. A & H received a trademark registration for the mark Miraclesuit in the fall of 1992. The District Court found that A & H has spent over $1.2 million to advertise the Miracle-suit in magazines and trade papers, and has received the equivalent of $1.5 million of advertising in “free publicity,” i.e., publicity in trade magazines, consumer columns, and the general press. The advertising and publicity campaign has been a success, and Miraclesuits constitute approximately ten percent of all of A & H’s sales.
While A & H is busy selling skinny waists and midriffs, Victoria’s Secret, the nation’s premier lingerie seller, has focused on instant enlargements of the bust. 4 In 1993, Victoria’s Secret released The Miracle Bra, a padded push-up bra. Victoria’s Secret filed an application to register its The Miracle Bra trademark, and unleashed an avalanche of advertising and publicity, ultimately spending over $13 million on The Miracle Bra products. The campaign succeeded, and sales of The Mir *209 acle Bra products have topped $140 million since they were first introduced.
In 1994, Victoria’s Secret’s trademark application for The Miracle Bra mark on lingerie was approved. Later that year, Victoria’s Secret moved The Miracle Bra mark into swimwear, and The Miracle Bra swimsuit and The Miracle Bra bikini started appearing in Victoria’s Secret cata-logues. (The Miracle Bra lingerie and swimwear are sold only in Victoria’s Secret stores and catalogues.). The cost of The Miracle Bra swimwear varies, but it is typically in the neighborhood of $70, and The Miracle Bra and Victoria’s Secret tags are prominently featured on all swimwear. This product also succeeded: The total sales of The Miracle Bra swimsuits reached $28 million by summer 1997. The last critical fact regarding this swimwear is that, as a result of this litigation, Victoria’s Secret has committed itself to using the following disclaimer with all promotion, advertising, and sales of The Miracle Bra: “The Miracle Bra Swimwear Collection is exclusive to Victoria’s Secret and is not associated with Miraclesuit by Swimsha-per.”
In 1995, after this litigation began, Victoria’s Secret applied to the PTO for a trademark for The Miracle Bra for swimsuits, bathing suits, and bikinis. Because it had previously conducted a search for The Miracle Bra as applied to lingerie, which had led it to the conclusion that The Miracle Bra did not threaten to infringe on other trademarks, Victoria’s Secret had not conducted a separate trademark search of The Miracle Bra trademark as it applied to swimwear. However, the PTO examining attorney denied Victoria’s Secret’s application due to its similarity to Miraclesuit because he determined that: (1) “Miracle” was the dominant feature of each mark; and (2) the product lines overlap. The denial was not appealed.
II. Procedural History
In December 1994, A
&
H filed a complaint against Victoria’s Secret, alleging direct and reverse trademark infringement, unfair competition, dilution, and unjust enrichment. The District Court held a bench trial on liability in the fall of 1995, and a damages and relief trial in 1996. The court found that Victoria’s Secret’s use of The Miracle Bra on its lingerie created no likelihood of confusion with A & H’s Miraclesuit.
See A & H Sportswear Co. v. Victoria’s Secret Stores, Inc.,
During the prior appeal, we heard the case en banc to consider the viability of the “possibility of confusion” standard originally used by the District Court. We rejected that standard, and remanded the case to the District Court to apply the traditional “likelihood of confusion” standard to the swimsuits’ marks.
See A & H Sportswear Inc. v. Victoria’s Secret Stores, Inc.,
[T]he standard to be applied when goods that are the subject of a trademark infringement claim are directly competing, as is the situation with [Miraclesuit and The Miracle Bra swimwear], is different than that applied when the goods are not competing. The ten-factor test for likelihood of confusion between marks that are not competing, derived from Scott Paper Co. [v. Scott’s Liquid Gold, Inc.], 589 F.2d [1225,] 1229 [(3d Cir. 1978) ], is not required when the goods directly compete. In fact, we have said that “where the trademark owner and the alleged infringer deal in competing goods or services, the court need rarely look beyond the mark itself’.
Id.
at 202 (quoting
Interpace Corp. v. Lapp, Inc.,
Following our mandate, the District Court applied the “likelihood of confusion” test and found that there was no likelihood of direct confusion and no grounds for consideration of reverse confusion. It therefore denied the request for injunctive relief.
See A & H Sportswear Co. v. Victoria’s Secret Stores, Inc., 57
F.Supp.2d 155, 178-79 (E.D.Pa.1999)
(“A & H IV”).
A & H appeals. We review the District Court’s factual determinations for clear error, but we give plenary review to its legal conclusions.
See A & H III,
III. The Direct Confusion Claim
We measure federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15 U.S.C. § 1125(a)(1)(A), by identical standards.
See A&H III,
A. The Lapp Test and the District Court’s Opinion
A likelihood of confusion exists when “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 Assocs. v. Sklar,
(1) the 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;
(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.
Id.
at 463 (citing
Scott Paper Co. v. Scott’s Liquid Gold, Inc.,
The District Court recognized that we have not “explicitly elucidated what kind of factors should be considered in the case of directly competing goods.”
A & HIV,
(1) strength of the plaintiffs mark;
(2) similarity between the marks;
(3) similarity of the products and the degree to which they directly compete with each other;
(4) marketing or advertising channels used;
(5) sophistication of consumers;
(6) defendant’s intent in selecting the mark; and
(7) incidents of actual confusion.
Id. A & H contends that the District Court erred in three ways in applying these factors. First, it argues that when goods are directly competing, a district court need only examine the similarity of the marks. Second, it submits that inasmuch as the District Court fashioned its own test, the Lapp factors it omitted would have tipped the balance in favor of finding a likelihood of confusion. Third, it contends that on any test the similarity of the marks creates a likelihood of confusion.
*212 B. The Test for Directly Competing Goods
We have not previously settled upon a method that district courts should use to examine whether there exists a likelihood of confusion between directly competing goods. Uncertainty on this point in the district courts within the circuit, as demonstrated in the margin, counsels that we clarify this area of law. 6
The multi-factored test rescribed above was developed to determine likelihood of confusion for noncompeting goods.
See Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd.,
Nonetheless, despite the test’s etiology, the raison d’etre of the
Lapp
factors and the purpose of their development was to aid in the navigation of the difficult course of determining a “likelihood of confusion.” A district court should not be foreclosed from using any factors that it deems helpful in analyzing whether a likelihood of confusion exists between given products, whether or not they directly compete.
Lapp’s
suggestion that, for competing goods, the court “need rarely look beyond the mark itself,”
Interpace Corp. v. Lapp, Inc.,
Further, we recognize that many of the
Lapp
factors that are specifically applicable only to noncompeting goods are often used by courts to determine, in the first instance, whether goods are or are not directly competing. This makes the plaintiffs proposed prohibition on the examination of evidence beyond the marks themselves somewhat illusory. For instance, in
AMF Inc. v. Sleekcraft Boats,
The above observations lead us to conclude that the Lapp factors should be used both for competing and for noncompeting goods. As for those factors that specifically refer to noncompeting goods, we believe that, rather than force courts first to inquire as to whether or not the goods are directly competitive simply for the purpose of determining if those factors apply — and, presumably, applying Lapp factors to make this initial determination — factors (7), (9), and (10) of the Lapp test must be adapted to make them applicable whether the products directly compete or not.
In holding that the
Lapp
test is to be employed when examining both competing and noncompeting goods, we acknowledge that we have at times suggested that the method for comparing competing goods is different from that for noncompeting goods. In
Williamsonr-Dickie Manufacturing Co. v. Davis Manufacturing Co.,
[w]here the trademark owner and the alleged infringer deal in competing goods or services, the court need rarely look beyond the mark itself. In those cases the court will generally examine the registered mark, determine whether it is inherently distinctive or has acquired sufficient secondary meaning to make it distinctive, and compare it against the challenged mark.
showing of proof plaintiff must make for[likelihood of confusion] depends on whether the goods or services offered by the trademark owner and the alleged infringer are in direct competition.... 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.
Nonetheless, we read our prior opinions on this subject to counsel only that a district court may, if it so chooses, examine only mark similarity for directly competing goods.
A
&
H urges us to take the quoted statement from
A & H III
to mean that a district court should not consider any factors at all beyond the similarity of the marks themselves. However, we believe that the word “standard” is different from the word “test.” The better reading of this statement is the literal one: The “standard” for deter mining when marks are likely to be confused is different when the marks directly compete, i.e., the factor regarding the similarity of marks may increase in importance, but it does not eliminate the other factors entirely. This proposition is not only unremarkable, it flows naturally from the
Lapp
test, which considers the competition and potential competition of the products in the marketplace. We have certainly never held that a court
may not
look beyond the marks themselves to determine likelihood of confusion. The quote from
Lapp
itself, res-cribed in our prior opinion in this case (“the court need rarely look beyond the mark itself’) presumes that a court might sometimes need to look beyond the mark.
Lapp,
We think that this inference is a sound one, for there appears to be no reason, statutory or otherwise, to impose the restrictive rule proposed by A & H. Indeed, the cases relied upon by A & H do no more than suggest that the
Lapp
inquiry may be unnecessary in some directly competing goods cases.
See, e.g., A & H III,
Our conclusion that the
Lapp
factors may be used to determine the likelihood of confusion in cases of directly competing goods, at least when the marks are not identical, accords with the approaches of the Second, Sixth, Eighth, and Ninth Circuits, which also have approved using mul-ti-factored tests, developed for noncompetitive goods, in the competitive goods arena.
See Banff, Ltd. v. Federated Dep’t Stores, Inc.,
As explained above, we do not hold that a District Court
must
use the factors. In fact our precedents suggest the opposite. If products are directly competing, and the marks are clearly very similar, a district judge should feel free to consider only the similarity of the marks themselves.
See, e.g., Opticians Ass’n of Am. v. Independent Opticians of Am.,
To summarize, we hold that whether or not the goods directly compete, the Lapp factors should be employed to test for likelihood of confusion. Therefore, likelihood of confusion for both competing and noneompeting goods should be tested with reference to the following:
(1) the 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, competing or 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, whether because of the near-identity of the products, the similarity of function, or other factors;
(10) other facts suggesting that the consuming public might expect the prior owner to manufacture both products, or expect the prior owner to manufacture a product in the defendant’s market, or expect that the prior owner is likely to expand into the defendant’s market.
As we stress further below, the Lapp test is a qualitative inquiry. Not all factors will be relevant in all cases; further, the different factors may properly be accorded different weights depending on the particular factual setting. A district court should utilize the factors that seem appropriate to a given situation.
C. The District Court’s Methodology
A & H argues in the alternative that inasmuch as the District Court used a multi-factored test, it should have considered all of the Lapp factors, and that the “missing” factors would have favored A & H. It therefore contends that the court erred as a matter of law in fashioning its own test. However, the test used by the District Court is functionally the same as the Lapp test. A comparison of these factor lists reveals that the ostensibly missing Lapp factors appear to be incorporated into the District Court’s test. Lapp factor (9), “the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors” and Lapp factor (8), “the extent to which the targets of the parties’ sales efforts are the same,” are subsumed in the court’s factor (3), which considers the “similarity of the products and the degree to which they directly compete with each other.” Lapp factor (4), “the length of time the defendant has used the mark without evidence of actual confusion” is subsumed along with factor (6), “evidence of actual confusion,” within the District Court’s factor (7), “incidents of actual confusion.” Lapp factor (10), “other facts suggesting that the consuming public might expect the prior owner to manufacture both products, or expect the prior owner to manufacture a product in the defendant’s market, or expect that the prior owner is likely to expand into the defendant’s market,” is unmentioned, but also unnecessary, because the similarity of the goods and their competitive relationship was accounted for in the court’s factor (3).
A & H essentially argues that, had the
Lapp
test been applied as written, a greater absolute number of factors would have been decided in its favor, thus leading to a different outcome; for instance, the court’s factor (3), rather than counting in its favor a single time, would have been divided into at least two factors, each of which would have weighed in its favor. However, we
*216
have repeatedly insisted that the
Lapp
factors are not to be mechanically tallied, but rather that they are tools to guide a qualitative decision.
See Fisons,
The District Court did not engage in a simplistic quantitative comparison, but accurately understood the role of the factors:
No single factor is dispositive, and a finding of a likelihood of confusion does not require a positive finding on a majority of these factors. Instead, they are simply a guide to help determine whether confusion would be likely between the use of two contested trademarks on competing products. In addition to the listed factors, a court is free to consider other relevant factors in determining whether a likelihood of confusion exists.
A & H IV,
IV. Review of the District Court’s Analysis
Because we hold that the District Court’s methodology was functionally similar to the Lapp test, we will review the court’s decision on its own terms; i.e., using the multi-factored test that the District Court created. In the future, however, for the sake of consistency, district courts should employ the formulation of the test for confusion as set forth in Lapp and in Part III.B, supra.
A. Similarity of the Marks
The single most important factor in determining likelihood of confusion is mark similarity.
See Fisons,
The District Court acknowledged this principle, recognizing that “side-by-side comparison of the conflicting marks is improper if that is not the way buyers see the products in the market.”
A & H IV,
1. Sight, Sound, Meaning
The District Court closely examined the sight, sound, and meaning of the competing marks and concluded that, purely on the aesthetic level, the marks alone are “somewhat distinct.”
A&H TV,
The District Court recognized that other, less similar-sounding marks had been found to be confusingly similar, as in
Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co.,
Turning to the visual difference, the court noted that Miraclesuit is often accompanied by the “Look ten pounds lighter in ten seconds!” slogan, in various incarnations. Moreover, the court observed that:
The Miracle Bra is presented in either all capital block letters or in small capital letters with the letters, T, M, B alone in upper capital letters, while the Mira-clesuit has sometimes been advertised with the initial letter M capitalized and the rest of the mark in lower-case letters in italicized script or as one word with both the M and S capitalized.
A & HIV,
Taking all of these elements into account, the District Court concluded that, without consideration of the role of the housemark and the disclaimer, “the Mira-clesuit mark and The Miracle Bra mark are somewhat distinct in sight, sound and meaning.”
A & H IV,
According to A & H, the same logic dictates that these marks are likely to be confused. Not only is the dominant portion of each mark “MIRACLE,” but the PTO examining attorney discounted the word “bra” in Victoria’s Secret’s PTO application to use The Miracle Bra for swimwear. Furthermore, A & H notes that in Fisons, in which “Fairway” and “Fairway Green” were up against each other, we took the district court to task for focusing too heavily on the differences between the marks instead of analyzing the overall impression. There, we held that “a subsequent user may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-descriptive matter to it.” Id. at 477 (quoting 2 J. McCarthy, Trademarks and Unfair Competition § 23:15[8], at 23-102 (3d ed.1992)).
We agree with A & H that the words “the” and “bra” and “suit” are not particularly potent, but none of our cases has suggested a per se rule about the impact of generic terms within a nongeneric trademark; ultimately, the weight to be given each word is a judgment call, best suited to the fact-finder. Although the District Court might well have been more emphatic in stating its ultimate conclusions on this score, in our view, the court did not err, much less clearly err, in finding that the sight and sound were distinct, despite the fact that the differences involve generic elements. 9
2. The Housemarks and the Disclaimer
Having found the marks only “somewhat distinct,” the District Court further concluded that Victoria’s Secret’s use of its housemark and disclaimer renders the marks dissimilar.
10
As the District Court recognized, affixing a well-known housemark like that of Victoria’s Secret can help diminish the likelihood of confusion.
See A & H IV, 57
F.Supp.2d at 168. We have previously acknowledged the importance of housemarks in comparing the “overall impression” of two marks.
A & H Sportswear Inc. v. Victoria’s Secret Stores, Inc.,
Although A & H contends that Victoria’s Secret’s housemark should not have been a part of the similarity of marks analysis, the consideration of the effect of such marks has wide support in the case law. “Use of a strong, well-known mark as a part of a composite name reduces the likelihood that the remainder of the composite name will create a commercial impression distinct from that mark.”
Four Seasons Hotels Ltd. v. Koury Corp.,
Furthermore, and most importantly, the District Court concluded that the disclaimer used by Victoria’s Secret “create[d] a distinction” between the two marks. Therefore, it held that there was no similarity “solely
based on the presumption
that Defendants will continue to use the disclaimer when marketing The Miracle Bra swimwear.”
A & H IV,
[ajlthough the positioning varied, the disclaimer often appeared in dark, black type against a light background at the lower left corner of the actual page on which The Miracle Bra Swimwear Collection was featured in the catalog, just above the telephone number for placing an order. The President of VS Cata-logue stated that since there are only a few seconds in which to capture a consumer’s attention, placement near the telephone number is particularly appropriate.
Id. (citations omitted). The disclaimer, the court concluded, tips the balance and makes it unlikely that consumers will be confused by the marks themselves. 11
A & H argues that disclaimers cannot be considered when determining likelihood of confusion, relying heavily on
United States Jaycees v. Philadelphia Jaycees,
In sum, the District Court committed no legal err or in considering the disclaimer. We are also satisfied that the District Court committed no factual error in concluding that Victoria’s Secret’s disclaimer helped to dispel potential consumer confusion between the Miraclesuit and The Miracle Bra swimwear.
*220 3. The PTO’s Rejection of Victoria’s Secret’s Application
Finally, A & H argues that the District Court erred in failing to give weight to the fact that the PTO attorney rejected Victoria’s Secret’s application to register The Miracle Bra for “swimsuits, bathing suits and bikinis” on the ground that there was a likelihood of confusion between its mark and Miraclesuit. 12 A & H does not argue that a PTO determination is controlling, but rather that it is important evidence that should be given considerable weight. 13
There is some jurisprudence, although not in Third Circuit case law, suggesting that a PTO determination that marks are likely to be confused should be given weight as a matter of law.
See, e.g., Guardian Life Ins. Co. of Am. v. American Guardian Life Assur. Co.,
On the other hand, the Ninth Circuit has held that a preliminary determination by a low-level PTO administrator should not be accorded much weight, especially where the PTO officer did not have access to the full panoply of information that might inform a likelihood-of-confusion analysis.
See Carter-Wallace, Inc. v. Procter & Gamble Co.,
Any such determination made by the Patent Office under the circumstances just noted must be regarded as inconclusive since made at its lowest administrative level.... The determination by the Patent Office is rendered less persuasive still by the fact that the Patent Office did not have before it the great mass of evidence which the parties have since presented to both the District Court and this court in support of their claims.
Id.
(citation omitted). Moreover, other courts have held that a court need not
*221
defer to the patent office when there is relevant evidence not considered by the office that informs the analysis.
See, e.g., Marketing Displays, Inc. v. Traffix Devices, Inc.,
We find
Carter-Wallace
and
Marketing Displays
persuasive, and conclude that, although an initial PTO determination by an examining attorney may be considered, it need not be given weight when the PTO attorney did not review all the evidence available to the District Court. In
A
&
H I,
4. Summary
In sum, we conclude that the District Court did not clearly err in concluding that the marks themselves were not confusingly similar, considering their overall commercial impression, and did not make an error of law in choosing to consider Victoria’s Secret’s housemark and the disclaimer, or in refusing to give weight to the decision of the PTO attorney.
B. Strength of the Marks
With respect to
Lapp
factor (2),“the strength of the owner’s mark,” the District Court applied the
Fisons
test, which measures mark strength by “(1) the distinctiveness or conceptual strength of the mark; and (2) the commercial strength or marketplace recognition of the mark.”
A&H1V,
1. Distinctiveness or Conceptual Strength
In order to determine whether a mark is protectable as a trademark, marks are divided into four classifications: (1) generic (such as “DIET CHOCOLATE FUDGE SODA”); (2) descriptive (such as “SECURITY CENTER”); (3) suggestive (such as “COPPERTONE”); and (4) arbitrary or fanciful (such as “KODAK”).
See Two Pesos, Inc. v. Taco Cabana, Inc.,
Under the Lanham Act, stronger marks receive greater protection. See,
e.g., Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd.,
Suggestive or arbitrary marks may, in fact, be “weak” marks, particularly if they are used in connection with a number of different products. For instance, in
H. Lubovsky, Inc. v. Esprit de Corp.,
The District Court originally determined that the MIRACLE part of Miraclesuit was fanciful because it does not describe or reveal anything about the product. However, the court believed that the SUIT part was generic because it merely describes the qualities of the product. In sum, taking the mark’s parts together, the court concluded that Miraclesuit “ranges
*223
from suggestive to arbitrary” because it requires some consumer imagination to determine its meaning, and therefore that the mark should receive the highest level of protection.
A & H IV,
For reasons we will presently explain, we conclude that the District Court’s categorization of the Miraclesuit mark was clearly erroneous, and that the term Mira-clesuit does not rise to the arbitrary level but is, at best, merely suggestive. Further, we believe that the Court erred as a matter of law in holding that its categorization of the mark was dispositive of the inquiry into the mark’s strength. Because both of these conclusions were relevant to the District Court’s determination that the mark was entitled to a high level of protection, we review each separately.
The District Court concluded that the Miraclesuit mark ranged from “suggestive to arbitrary” because it believed that the word MIRACLE did not reveal anything about the product. To the contrary, we believe that both parts of the mark describe or suggest something about the product: The word “suit” has many meanings, but “bathing suit” is a frequent and familiar one. The word MIRACLE, unlike, say, XEROX, indicates the effect that the product is supposed to have on the user or wearer, and is ultimately merely a declaration of praise. Just as a “miracleworker” is a person who works miracles, a “miraclesuit” is a suit that works miracles. Whether the slimming effect is literally miraculous may be subject to debate, but the mark itself communicates something about the product. Suggestive or descriptive marks are, of course, protected, but, depending on surrounding circumstances (discussed below), they may receive lesser protection than arbitrary marks.
We also believe that the District Court committed an error of law in its automatic conclusion that, because the Miraclesuit mark “range[d] from suggestive to arbitrary,” it therefore should receive the highest level of protection, thus dismissing efforts by Victoria’s Secret to show that the Miraclesuit mark is conceptually weaker because MIRACLE has been used by several other companies. MIRACLE is used in other apparel markets, such as hosiery, children’s wear, ready-to-wear, and maternity wear. The court held that these other uses were irrelevant because the term MIRACLE was not used specifically in conjunction with swimwear.
See A & H TV,
For example, in
Sun Banks of Florida, Inc. v. Sun Federal Savings & Loan Association,
A & H notes that in
Fisons
we stated that “[wjhile 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.”
2. Commercial Strength of the Mark
Turning to the second part of the test, the District Court determined that the Miraclesuit mark has a high level of commercial strength. It based its finding on the fact that A
&
H had spent so much money on advertising, and that “their efforts undoubtedly resulted in increased public recognition.”
A & H TV,
3. Summary
The District Court erred in concluding that the Miraclesuit mark contained an arbitrary component, and in concluding that the mark Miraclesuit was conceptually strong solely on the basis of its categorization. However, if anything, the District Court’s error weighed in A & H’s favor by leading the court to reject evidence that the Miraclesuit mark was weaker than A & H claimed. Therefore, the District Court’s error does not affect our affirmance of the District Court’s conclusion that there was no likelihood of direct confusion between Miraclesuit and The Miracle Bra.
C. Product Similarity
In discussing product similarity, the District Court first noted that although the products were both swimsuits, they have slightly different functions: The Miraclesuit is designed and advertised to make the figure appear slim, whereas The Miracle Bra suit is designed and advertised to enhance cleavage. However, the court also noted that most Miraclesuits have bras — some even have cleavage enhancing bras — and that a few Miracle Bra suits have lower body control. A review of these facts led the District Court to conclude that the Miraclesuit and Miracle Bra suits were “somewhat interchangeable.”
A & H TV,
Given the evidence that, although both products may have a primary bust or midriff focus, both products also have attributes that enhance both aspects of the female figure, we do not think that the District Court clearly erred in making this finding. Furthermore, there was evidence that both products pitch themselves as “improving” female shapeliness through swimwear, and although the means of improvement are different and *225 the products have different foci, the two suits are similar. In sum, while the products are not identical, the court committed no error of law here, and its conclusion on product similarity is supported by the record.
D. Marketing and Advertising Channels
The District Court concluded that the channels of sale and advertising of the products overlap. It noted that both the price range for the suits and their means of sale are similar. It observed that the Miraelesuit has been advertised in in-store promotions, magazines, department store bill enclosures, and press kits to buyers, editors, and publishers, and that The Miracle Bra suits have been marketed in point-of-sale promotions in Victoria’s Secret stores, and through press kits and print and television advertising. The court held that the channels of trade were similar, in that Miraelesuit is sold to department stores and catalogues that compete with Victoria’s Secret Stores and Victoria’s Secret Catalogue. Although the court noted that The Miracle Bra suits are never sold outside of the Victoria’s Secret store or catalogue, and that “[s]uch fine distinctions between the channels in which the products are sold may weigh in favor of diminishing a likelihood of confusion,” A & H IV, 57 F.Supp.2d at at 171, it concluded that the “conditions of purchase” were similar, and weighed this factor in favor of A & H.
Although there are significant differences in trade channels — notably, that Victoria’s Secret sells its product only in its own stores and catalogues — perfect parallelism will rarely be found. Furthermore, the Miraelesuit has twice been sold in Victoria’s Secret catalogues. Thus, the District Court did not clearly err in its factual conclusion that channels of marketing and advertising weigh in favor of A & H.
E. Sophistication of Consumers
The District Court next considered the “sophistication of consumers,” which is the functional equivalent of
Lapp
factor (3), “the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase.” The court concluded that the products’ consumers were likely to be sophisticated, and weighed this factor in favor of the defendants. Three considerations drove this decision. The court relied on cases holding that buyers of women’s apparel are sophisticated purchasers, and on the fact that A & H had presented no evidence that its consumers were not sophisticated. The court also noted that the “entire success” of each brand “relies on the premise that consumers will discern the slimming effect and cleavage enhancement features of their respective swimsuits.”
A & H TV,
A & H submits that the District Court erred in reaching this conclusion. It points to Victoria’s Secret’s admission during this litigation that the attention of consumers must be captured within a few seconds.
See A & H II,
F. The Intent of the Defendant
Before discussing this factor, it is important to reiterate the purpose of the “intent” inquiry in the
Lapp
analysis. Intent is relevant to the extent that it bears on the likelihood of confusion. We have held that a defendant’s mere intent to copy, without more, is not sufficiently probative of the defendant’s
success
in causing confusion to weigh such a finding in the plain
*226
tiffs favor; rather, defendant’s intent will indicate a likelihood of confusion only if an intent to
confuse
consumers is demonstrated via purposeful manipulation of the junior mark to resemble the senior’s.
See Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd.,
The District Court found that Victoria’s Secret had not intended to confuse customers when it began using The Miracle Bra in conjunction with its swimwear line. The record supports the conclusion that Victoria’s Secret brought the mark into swimwear because of its success in lingerie. The court thus properly found that Victoria’s Secret had not expanded The Miracle Bra into swimwear in an effort to ride on A & H’s good name.
A
&
H argues that the court should have weighed the intent factor in its favor because when The Miracle Bra was registered for lingerie, Victoria’s Secret’s counsel learned that there were several preexisting MIRACLE marks, including A & H’s Miraclesuit. However, the court credited evidence that in 1994, when Victoria’s Secret attempted to register The Miracle Bra for “swimsuits, bathing suits and bikinis,” Victoria’s Secret Stores assumed that its original trademark search had uncovered no confusingly similar registrations.
See A & H IV,
G. Actual Confusion
The District Court found that, although there was some evidence of actual confusion, that evidence was insufficient to permit weighing this factor in A & H’s favor. A & H produced an article in
Women’s Wear Daily
mentioning “the introduction of the Miracle Swimsuit in the upcoming Victoria’s Secret Catalog.”
A & H TV,
The District Court, while not explicitly discrediting this evidence, viewed it with great skepticism, given the interested sources and the inability to cross-examine the supposedly confused individuals.
17
Furthermore, it concluded that, even if it credited all the submissions, the evidence of actual confusion was isolated and idiosyncratic.
See id.
at 175. This decision is supported by the case law. “Ownership of a trademark does not guarantee total absence of confusion in the marketplace. Selection of a mark with a common surname naturally entails a risk of some uncertainty and the law will not assure absolute protection.”
Scott Paper Co. v. Scott’s Liquid Gold, Inc.,
H. Combining the Factors
As the foregoing discussion demonstrates, the District Court carefully considered the relevant factors weighing for and against a finding of likelihood of confusion. Most importantly, the court determined that, although the overall commercial impressions of the marks are only “somewhat distinct” if one looks just to sight, sound, and meaning, the fact that Victoria’s Secret uses a housemark and a disclaimer tips the balance and makes this factor, the similarity of the marks themselves, weigh in favor of Victoria’s Secret. This factor was essential to the District Court’s ultimate finding of fact; it found that “solely” on the assumption that the disclaimer would continue to be used, the marks were not similar. As to the other factors, the court found that: (1) the products; and (2) the channels of marketing were sufficiently similar to weigh those factors in favor of A & H, but that: (3) the consumers were sophisticated; (4) Victoria’s Secret exhibited no culpable intent in selecting its mark; and (5) there was insufficient credible evidence of instances of actual confusion, all of which weighed in favor of Victoria’s Secret. We find no reason to disturb any of these findings. Finally, the court also concluded that the mark Miraelesuit merited a high level of protection, and weighed this factor in favor of A & H. Though we believe that the District Court could have been more emphatic in its finding that the marks were dissimilar, and may also have overrated the strength of the Miraelesuit mark, these factors only support our affirmance of the ultimate conclusion that the marks are not likely to be directly confused.
Although a number of factors favored A & H, these do not upset the balance. In sum, we find no error in the District Court’s careful consideration and weighing of the factors, and its use of them as tools in reaching its ultimate finding of fact. We therefore will affirm the judgment with respect to the direct confusion claim.
V. The Reverse Confusion Claim
A. Introduction
We recently recognized the doctrine of “reverse confusion” as a distinct
*228
basis for a claim under § 43(a) of the Lanham Act.
See Fisons,
[t]he 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.... [T]he 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, Inc.,
This would be an undesirable result; in fact, it is precisely to allow a certain amount of “space” for companies to expand their product lines under established marks that we allow infringement suits against suppliers of noncompeting goods.
See Interpace Corp. v. Lapp, Inc.,
B. The Test for Reverse Confusion
As in a direct confusion claim, the ultimate question in a reverse confusion claim is whether there is a likelihood of consumer confusion as to the source or sponsorship of a product.
See Fisons,
1. The Factors that are the Same
As an initial matter, there are several factors that should generally be analyzed in the same way for a reverse confusion claim as they are for a direct confusion claim.
20
First, the attentiveness of consumers does not change (factor (3)); in both direct and reverse confusion, the question is whether this is the kind of product that consumers will care enough about to notice the differences, or purchase hastily with only a limited impression.
See Fisons,
2. Similarity of the Marks
Generally speaking, the similarity ’ of the marks themselves is necessarily analyzed in the same way in direct and reverse confusion claims; the court looks to sight, sound, and meaning, and compares whether these elements combine to create a general commercial impression that is the same for the two marks.
See, e.g., Fisons,
On the other hand, the direct confusion claim in this case was rejected by the District Court in considerable measure because the court felt that the Victoria’s Secret housemark, coupled with the disclaimer, alleviated any confusion that might otherwise result.
See A & H IV,
As to the presence of the housemark on the Victoria’s Secret product, not only is there the possibility that consumers will fail to remember the mark when encountering A & H’s swimwear, but there is also the possibility that the mark will
aggravate,
rather than mitigate, reverse confusion, by reinforcing the association of the word “miracle” exclusively with Victoria’s Secret.
See, e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co.,
Clearly, the proper significance to be accorded these facts is a matter best suited for the determination of the trial court. Instead, we merely highlight the questions raised by the use of the housemarks and disclaimers in order to emphasize that a district court must separately examine the similarity factor to determine whether there are any aspects of the analysis that should be different for a reverse confusion claim, and, if so, alter its examination accordingly.
3. Strength of the Marks
An important difference between reverse and direct confusion manifests in the analysis of the strength of the marks. As we explained supra, this factor requires consideration both of the mark’s commercial and conceptual strength. For ease of understanding, we will explain the appropriate treatment of commercial strength first, and the treatment of conceptual strength second.
a. Commercial Strength
It has been observed that a consumer first encountering a mark with one set of goods is likely to continue to associate the mark with those goods, and whether any subsequent confusion is “direct” or “reverse” will depend on whether the consumer’s first experience was with the junior or the senior user of the mark.
See Banff, Ltd. v. Federated Dep’t Stores, Inc.,
Logically, then, in a direct confusion claim, a plaintiff with a commercially strong mark is more likely to prevail than a plaintiff with a commercially weak mark. Conversely, in a reverse confusion claim, a plaintiff with a commercially weak mark is more likely to prevail than a plaintiff with a stronger mark, and this is particularly true when the plaintiffs weaker mark is pitted against a defendant with a far stronger mark. McCarthy has written that “the relatively large advertising and promotion of the
junior
user ... is the hallmark of a reverse confusion case.” 3 McCarthy,
supra,
§ 23:10, at 23-37. “[T]he lack of commercial strength of the smaller senior user’s mark is to be given less weight in the analysis because it is the strength of the larger, junior user’s mark which results in reverse confusion.”
Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc.,
Therefore, in a reverse confusion claim, a court should analyze the “commercial strength” factor in terms of (1) the commercial strength of the junior user as compared to the senior user; and (2) any advertising or marketing campaign by the junior user that has resulted in a saturation in the public awareness of the junior user’s mark.
See Fisons,
b. Distinctiveness or Conceptual Strength
In
Fisons
we remanded the case for the district court to “reevaluate[ ] ... distinctiveness as well as [the mark’s] commercial strength” for the reverse confusion claim.
Fisons,
As stated above, in the paradigmatic reverse confusion case, the senior user has a commercially weak mark when compared with the junior user’s commercially strong mark. When it comes to conceptual strength, however, we believe that, just as in direct confusion cases, a strong mark should weigh in favor of a senior user. Our decision is supported by the fact that those courts that have clearly distinguished conceptual from commercial strength in the reverse confusion context have weighed a conceptually strong mark in the senior user’s favor, in the same manner as they would in direct confusion cases.
See, e.g., Worthington Foods, Inc. v. Kellogg Co.,
In
H. Lubovsky, Inc. v. Esprit de Corp.,
The H. Lubovsky logic resonates, for it makes more sense to hold that con *232 ceptual strength, unlike commercial strength, works in the plaintiffs favor. That is, if we were to apply the rule stated above for commercial strength, i.e., weighing weakness in the plaintiffs favor, we would bring about the perverse result that less imaginative marks would be more likely to win reverse confusion claims than arbitrary or fanciful ones. We therefore hold that, as in direct confusion claims, a district court should weigh a conceptually strong mark in the plaintiffs favor, particularly when the mark is of such a distinctive character that, coupled with the relative similarity of the plaintiffs and defendant’s marks, a consumer viewing the plaintiffs product is likely to assume that such a mark would only have been adopted by a single source — i.e., the defendant.
4. The Intent of the Defendant
In the direct confusion context, the intent of the defendant is relevant to the extent that it bears on the likelihood of confusion analysis. As we have said:
In the likelihood of confusion inquiry ... we do not focus on a defendant’s bare intent to adopt a mark ... substantially identical to a plaintiffs mark ..., since there is little basis in fact or logic for supposing from a defendant’s intent to copy without more that the defendant’s actions will in fact result in confusion. Thus, what we have held is that a defendant’s intent to confuse or deceive consumers as to the product’s source may be highly probative of likelihood of confusion.
Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd.,
When reverse, rather than direct, confusion is alleged, “intent to confuse” is unlikely to be present.
Cf. Fisons,
As we have noted in our two prior cases on this issue, the defendant’s intent may be discovered through such inquiries as whether the defendant was aware of the senior user’s mark when it adopted its own mark, and whether the defendant considered that its adoption of the mark might result in confusion.
See id.
at 444;
Fisons,
Although we recognize that our opinion in
Fisons
perhaps implied that mere carelessness, as opposed to deliberate intent to confuse, would weigh in a plaintiffs favor in a reverse confusion case, we are reluctant to adopt such an interpretation, as it would be manifestly out of step with our prior holdings regarding the rele-
*233
vanee of “intent” in trademark infringement claims.
Cf. O. Hommel Co. v. Ferro Corp.,
5. Factors Relating to Actual Confusion
As a matter of intuition, one would expect that in a reverse confusion claim, evidence of actual confusion would be as important as in a direct confusion claim, though the nature of the confusion that would be probative would be quite different.
See Lang v. Retirement Living Publ’g Co.,
However, marshalling evidence of actual confusion is often difficult.
See, e.g., Liquid Glass Enters., Inc. v. Dr. Ing. h.c.F. Porsche AG,
Given the problems litigants typically encounter in locating evidence of actual confusion, then, we decline to create a strict bar to the use of “direct” confusion evidence in a “reverse” confusion case, or vice versa. However, evidence working in the same direction as the claim is preferred, and “misfitting” evidence must be treated carefully, for large amounts of one type of confusion in a claim for a different type may in fact work against the plaintiff. For instance, the existence of reverse confusion might disprove a plaintiffs claim that its descriptive mark has secondary meaning, thus resulting in no recovery at all.
See Jefferson Home Furniture Co.,
*234
Inc. v. Jefferson Furniture Co., Inc.,
It follows that the other factor relating to actual confusion, Lapp factor (4), examining the time the mark has been used without evidence of actual confusion, should be approached similarly.
6. Other Relevant Facts
The final factor of the
Lapp
test directs courts to look at “other facts suggesting that the consuming public might expect the prior owner to manufacture both products, or expect the prior owner to manufacture a product in the defendant’s market, or expect that the prior owner is likely to expand into the defendant’s market.” This factor is necessarily transformed in the reverse confusion context to an examination of other facts suggesting that the consuming public might expect the larger, more powerful company to manufacture both products, or expect the larger company to manufacture a product in the plaintiffs market, or expect that the larger company is likely to expand into the plaintiffs market.
See Fisons,
7. Summary of the Test for Reverse Confusion
In sum, in the typical case in which there is a claim of reverse confusion, a court should examine the following factors as aids in its determination whether or not there is a likelihood of such confusion:
(1) the degree of similarity between the owner’s mark and the alleged infringing mark;
(2) the strength of the two marks, weighing both a commercially strong junior user’s márk and a conceptually strong senior user’s mark in the senior user’s favor;
(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, competing or 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, whether because of the near-identity of the products, the similarity of function, or other factors;
(10) other facts suggesting that the consuming public might expect the larger, more powerful company to manufacture both products, or expect the larger company to manufacture a product in the plaintiffs market, or expect that the larger company is likely to expand into the plaintiffs market.
As with the test for direct confusion, no one factor is dispositive, and in individual cases, particular factors may not be probative on the issue of likelihood of confusion. “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.”
Fisons,
C. The District Court’s Opinion
The District Court approached the reverse confusion claim in a different manner from that described in the foregoing section. It held that
before
engaging the reverse confusion factors, A & H needed to demonstrate, as a threshold matter, that Victoria’s Secret “used their economic power to overwhelm the market with advertising” of their product.
A & H IV,
The court noted that A & H did not dispute — even heralded — the fact that its campaign was widely successful. Therefore, it found that “[plaintiffs’ [sic] are not entirely without market power in the swimwear industry” and that “[i]n light of Plaintiffs’ advertising campaign, we find that, in comparison, Defendants did not saturate the marketplace with its advertising to promote The Miracle Bra swimwear.” Id. at 177. Consequently, the District Court concluded that the doctrine of reverse confusion was not even implicated, and “decline[d] to examine whether a likelihood of reverse confusion exists.” Id. at 178.
In
A & H III,
we began our discussion of reverse confusion with an explanation of the phenomenon: “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.”
The quoted statements are understandably confusing, and the method of applying the doctrine of reverse confusion is admittedly still developing. However, a close examination of Fisons, from which the quotes hail, reveals that they are nothing more than descriptions of the phenomenon of reverse confusion, and do not establish an initial inquiry that a court needs to make in order to apply the reverse confusion analysis. In Fisons we held that the Lapp factors constitute the method courts should use in order to determine if a likelihood of reverse confusion exists. We made no mention of a threshold requirement, nor did we direct the District Court, on remand, to use one.
The District Court further explained its choice not to apply the reverse confusion factors by reference to the fact that several reverse confusion cases involve enormous junior companies pitted against tiny senior companies; it cited these cases and concluded that the same degree of economic disparity was non-existent in this case.
See A & H IV,
In short, we hold that, although economic disparity between the companies and the marks is an important consideration in the evaluation of the marks’ commercial strength, the District Court legally erred in fashioning a threshold “economic disparity” requirement before a reverse confusion claim will even be considered. Because the District Court failed to undertake the Lapp analysis with respect to A & H’s reverse confusion claim, we must vacate the judgment with respect to that claim and remand to the District Court for a redetermination of those factors that receive different treatment under direct and reverse confusion theories, and for a reweighing of all of the factors once those redeterminations have been made.
D. Guidance for Remand
1.Introduction
If the record suggested that, under the test we have set forth, A & H could not succeed as a matter of law in a reverse confusion claim, we would be bound to explicate our reasoning and affirm the judgment of the District Court. However, we do not so conclude, and hence vacatur and remand is necessary. Inasmuch as we have clarified the law of reverse confusion in this circuit by filling the gaps left in Fisons, it will be useful to the District Court if we comment on the extent to which it needs to revisit the various issues. As explained supra, the factors concerning the market, sales, and function similarity (factors (3), (7), (8) & (9)) need not be reexamined for the reverse confusion claim because the District Court has already discussed them in connection with direct confusion and there is typically no difference in the analysis of these factors for reverse and direct confusion claims. As for the “actual confusion” factors ((4) & (6)), the District Court did not credit the evidence proffered by A & H and, in its best light, regarded it as de minimis. A & H’s evidence of actual confusion primarily supported its claim for direct, rather than reverse, confusion, see supra Section IV.G, with the only exception being the Women’s Wear Daily article mentioning “the introduction of the Miracle Swimsuit in the upcoming Victoria’s Secret catalog.” Because these incidents, though relevant to reverse confusion, are more probative of direct confusion but the District Court felt that they were too weak to support even that claim, the court may, but need not, reexamine this factor on remand.
2. Similarity of the Marks
When addressing the direct confusion claim, the District Court placed great weight on the presence of Victoria’s Secret’s housemark and disclaimer when it concluded that the marks were not confusingly similar.
See A & H IV,
3. Strength of the Marks
The District Court did not consider the commercial strength of the marks within the ambit of the reverse confusion Fisons analysis, but it functionally did as *237 much in its “threshold” determination that A & H lacked sufficient “economic disparity” relative to Victoria’s Secret to advance a reverse confusion claim. Therefore, the District Court essentially demonstrated that it weighed this factor in favor of Victoria’s Secret. However, in comparing the relative commercial strengths of the products, the District Court committed clear error: Although it considered the free publicity received by A & H in determining its commercial strength, it did not consider the free publicity received by Victoria’s Secret. This led to an inaccurate comparison of their relative commercial vitality. Had the court used the same calipers to measure the commercial strength of each, it might have determined that the Miraclesuit had less commercial strength relative to The Miracle Bra. Of course, the court might well deem the difference unimportant, but we cannot say that either Victoria’s Secret or A & H should have this factor weighed in its favor as a matter of law.
Furthermore, the court should have also considered the conceptual strength of the Miraclesuit mark, according to the standards for conceptual strength set forth in Sections IV.B and V.B.3, supra. In so doing, the court must gauge the strength of the Miraclesuit mark and must consider whether — as with the example set forth supra involving a doll with the mark “Exxon” — the Miracle Bra/Miraclesuit marks are so distinctive that, when considered simultaneously with the court’s determination as to their similarities, consumers with a general awareness of The Miracle Bra swimsuit are likely to assume that the Miraclesuit is a Victoria’s Secret product.
4. Intent
In its evaluation of A & H’s direct confusion claim, the District Court concluded that Victoria’s Secret’s “choice to extend The Miracle Bra mark to swimwear was for legitimate reasons, rather than out of bad faith.”
A & H IV,
E. Summary
Although we believe that the District Court’s evaluation of individual factors relating to market, sales, and functionality would have remained unchanged had it examined A & H’s reverse confusion claim in light of the Lapp factors, we simply do not know how it would have treated the commercial strength and mark similarity factors had it considered the free advertising The Miracle Bra received, or the effect of the housemark and disclaimer in the reverse confusion context. We also cannot predict what the result would have been had the District Court examined the “intent” factor in light of A & H’s reverse confusion claim, or how the District Court would have weighed the various factors had it not determined that there was a threshold commercial disparity requirement.
The question of likelihood of confusion is ultimately one of fact, and we cannot roll up our sleeves and engage in the balancing ourselves. In its balancing on the direct confusion claim, the District Court found that the case was close, holding that no likelihood of confusion existed “solely
based on the presumption
that Defendants will continue to use the disclaimer when marketing The Miracle Bra swimwear,”
A
*238
& HIV,
VI. Conclusion
We will affirm the District Court’s judgment for Victoria’s Secret on the direct confusion claim. However, we will vacate the judgment with respect to the reverse confusion claim, and remand to the District Court for further proceedings consistent with this opinion. The District Court may wish to hear and consider additional evidence from the parties on reverse confusion. The parties shall bear their own costs.
Notes
. We will refer to the marks in lower case throughout the remainder of the opinion.
. Although we described this phenomenon as "forward confusion” in
Fisons Horticulture, Inc.
v.
Vigoro Industries, Inc.,
. The facts are set forth more fully in the District Court’s three opinions in this case.
See A & H Sportswear Co. v. Victoria’s Secret Stores, Inc.,
. Victoria’s Secret Stores, a Delaware corporation with headquarters in Columbus, Ohio, has over 650 stores nationwide. Victoria’s Secret Catalogue, a Delaware corporation with headquarters in New York City, distributes over 300 million catalogues annually. Both companies are independent subsidiaries of Intimate Brands, Inc., owned by The Limited, Inc., which is based in London.
See A & H Sportswear Inc. v. Victoria’s Secret Stores, Inc.,
. Section 32(1) of the Lanham Act provides: 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 in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; ... shall be liable in a civil action by the registrant....
15 U.S.C. § 1114(1).
The same standard is embodied in section 43(a) of the Lanham Act, which governs unfair competition claims. That section provides, in pertinent part:
Any person who, on or in connection with any goods or services, ... uses in commerce any word, term, name, symbol, or device, ... or any false designation of origin ... which—
(A) is likely to cause confusion, or to cause mistake, or to deceive 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.
15 U.S.C. § 1125(a)(1).
. In
Capital Bonding Corp. v. ABC Bail Bonds, Inc.,
. Courts have also occasionally borrowed from antitrust law’s definition of "relevant market” and "submarket” to determine whether goods are directly competitive for the purpose of unfair competition claims.
See, e.g., Sam Lee Corp. v. Kayser-Rot Corp.,
. Although a district court may reasonably decide that certain of the Lapp factors are inapplicable or unhelpful in a particular case. we do counsel that, to facilitate review, the court explain its choice not to employ those factors.
. A & H also argues that all the cases cited by the District Court concern generic or descriptive marks, and not the "highly protectable” mark of Miraciesuit. However, as we discuss below in Part IV.B.l, the level of protectability is a factor discrete from mark strength in "likelihood of confusion” analysis, and it is debatable whether A & H's mark even qualifies for a "high” degree of protection conceptually. Further, A & H has presented no support for its contention that the analysis of mark similarity in a case involving generic marks is not relevant precedent for the similarity of marks analysis in a case involving highly protected marks.
. The court also observed in a footnote that A & H’s use of its own housemark helps render the marks dissimilar.
See A & H IV,
. We consider Victoria’s Secret legally bound to continue the disclaimer practice, as counsel for Victoria’s Secret stated in oral argument that it intends to do. It would be well advised to continue to place the disclaimer near to the telephone number in the cata-logue. We judicially notice the fact that, in one recent catalogue, the disclaimer was not so near the telephone number, a lapse that is potentially problematic.
. A & H also argues that the District Court did not even consider the effect of the PTO attorney's denial. This is incorrect; in its discussion of Victoria’s Secret’s intent, the court acknowledged that the PTO had rejected Victoria's Secret's application, but concluded that such a rejection was not disposi-tive. See A & HIV, 57 F.Supp.2d at 173 n. 26.
. The application denial reads in relevant part (with several citations omitted):
A. Similarity of the Marks
The registrant’s mark is Miraclesuit. The SUIT portion of the mark is descriptive of the type of clothing, in this case, swimsuits. The dominant part of the registered mark is MIRACLE. The dominant part of the applicant’s mark is MIRACLE. These dominant parts are identical. When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant. The addition of generic wording such as BRA does not make the mark less similar to the registered mark (see below for disclaimer requirement).
B. Similarity of the Goods
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. The applicant seeks to register its mark for goods in international class 25 for "swimsuits, bathing suits and bikinis.” Registrant’s goods are also under international class 25 for "swimwear.” The applicant's goods include the same goods as the registrants; swimsuits, bathing suits and bikinis are types of swimwear. Because of the confusing similarity between the registrant's mark Miraclesuit and the applicant's mark The Miracle Bra and the identical class and nature of the goods the, [sic] applicant's mark would cause consumer confusion as to the source of goods.
. The examples are culled from
AJ. Canfield Co. v. Honickman,
. In fact, McCarthy observes that courts often hold self-laudatory marks to be descriptive. See McCarthy, supra, § 11:17, at 11-22 to 24.
. In fact, as has been recognized in the trade dress context,
copying,
absent an intent to confuse, might do no more than signal to potential consumers that the junior user's product is in direct competition with the senior user’s product. Such copying might thus serve a valuable communicative function.
See Conopco, Inc. v. May Dep’t Stores Co.,
. The court also chose not to credit the surveys conducted by either side, a decision that has not been challenged.
. The Domenico note analyzes, inter alia, the propriety of the remedy awarded by the District Court in A & HII.
. Indeed, some courts have simply inquired whether there exists a likelihood of confusion between the marks, temporarily putting aside the distinction between "direct” or “reverse” confusion until after such a likelihood has been demonstrated.
See Americana Trading Inc. v. Russ Berrie & Co.,
. We say "generally” only because we recognize that there may be unforeseen circumstances in which these factors actually do apply differently in the reverse confusion context.
. This finding is significant because A & H contends that the court erred in considering A & H's free publicity, but not considering whether Victoria’s Secret received the same, as is discussed in Part V.D.3, infra.