*2 in сonnection with its website. Adventis DUNCAN, Circuit Judge. filed U.S. Trademark Application No. In cross-appeals, to the 78/069,918 (the for “The BIG Lot!” underlying trademark action contest the mark) with the PTO on June district court’s denial of their cross-mo- claiming a first use in May commеrce on for summary tions judgment on their com- peting claims of trademark infringement. At about the same time began Adventis motions, Prior filing both parties mark, using the 918 CPHI introduced two during admitted discovery that there was a part new marks as of an effort to “roll[ ] likеlihood of Appel- confusion between the out new image.” [a] national J.A. 183. lant’s use of its mark “The BIG Lot!” and These marks were “BIG LOTS!” and the Appellee’s use of its marks “BIG “BIG ! Shortly thereafter, LOTS.” CPHI LOTS!” and ! “BIG LOTS.” In finding that became aware of Aventis’s 918 mark and neither could infringe- demonstrate sent a cease and desist letter ment, August dated the district court concluded that the 7, 2001, asserting mark, that its 643 word marks in question were not confusingly from which its similar, two new marks was de- despite the parties’ admissions to rived, was senior to Advеntis’s mark contrary. Because the imper- and that the 918 mark missibly confusingly was disregarded the parties’ discovery later, similar. admissions, Three weeks CPHI we vacate filed the district court’s Application 76/305,- Trademark order and No. remand for further proceedings. (the
489 for the mark “BIG LOTS!” I. mark) Application 76/305,490 No. (the mark), the mark ! “BIG LOTS” issues this appeal arise from the claiming a first use of May these marks in following sequence of events. In 2001.2 Appellant/Cross-Appellee Consolidated Property (“CPHI”), Holdings, Inc. par- Unable to resolve its differences with company ent Big Lots filed CPHI, Adventis filed April this action on application with the United States Pat- 25, 2002. In its complaint, amended Ad- (“PTO”) ent and Trademark Office to reg- ventis charged CPHI with federal trade- ister the wоrd mark “BIG LOTS.” CPHI mark Act, under the Lanham has used this mark since 1985 to identify see 15 U.S.C. 1125(a)(1)(A), § and common its stores, nationwide chain Big Lots law trademark infringement. In its coun-
which sell discount and close-out retail terclaim, presented CPHI five claims: merchandise.1 granted The PTO CPHI’s trademark under the Lan- registered “BIG LOTS” as Act, ham unfair competition and false des- (the 2,087,643 U.S. Trademark No. 643 ignation origin, dilution, trademark com- mark) 12,1997. on August mon law trademark infringement, and
In Appellee/Cross-Appellant Ad- common competition. law unfair During began ventis an online used car discovery, classifieds party requested each operates 1. CPHI also preliminarily an internet site but appli- does The PTO denied CPHI's cations, asserting through not sell merchandise it. likelihood of confusion with Adventis’s 918 mark. AT T Wire the Lanham Act. See Rule of under pursuant to Federal other admit ques- PCS, Zoning that the marks Civil Procedure 86 less v. Winstom-Salem similar. Adventis confusingly tion were Adjustment, Bd. of confusingly was that its 918 mark denied never Summary judgment *3 mark but admitted similar to CPHI’s 643 no is genuine there is аppropriate unless of confusion that there was a likelihood moving party and the of material fact sue mark recent its and CPHI’s more between law. as a matter of is entitled part, its 489 and 490 marks. For CPHI Catrett, 477 Corp. Celotex admitted that thеre existed likelihood (1986). 2548, In 265 91 L.Ed.2d all of its marks and confusion between assessment, apply this we making Drawing Adventis’s 918 mark. on dis by used same tests standards admissions, parties filed cross-motions (and the facts trict court consider judgement. summary for therefrom) in drawn inferences reasonable parties’ The district court denied the most favorable the non-mov light infringement motions as to their claims of Inc., Sews., Blair ant. See v. Defender Act, however, the Lanham based (4th Cir.2004). 623, Howev F.3d 625 386 (con- on its that principally determinаtion er, the district court’s while review admissions) trary parties’ to the none novo, the de infringement determination question confusingly were the marks necessary underlying factual determina dif- similar. The court reasoned that the tions, there a like including еxists whether in presentation ferences between the vari- marks, are lihood of confusion between the marks and the different modes of ous Int’l Ban reviewed clear error. See parties operated commerce which the Mеr et corp, LLC v. Societe des Bains de distinguish sufficed to the marks. As a Monaco, result, Etrangers the court no des 329 found du Cercle party. order Although (4th either 359, Cir.2003), cert. de F.3d 362-63 did not address the common law nied, 1106, 1052, 124 157 540 U.S. S.Ct. claim, claims or federal dilution CPHI’s (2004).3 L.Ed.2d 891 summary judgment the сourt its certified at oral argument, In their briefs and interlocutory appeal pursuant order that both asserted 1292, § 28 accepted U.S.C. and this court in disregarding erred their admis- appeal. regarding
sions
likelihood
II.
that
they
finding
were entitled
infringed
had
on their
the other
grant
de
We review novo the
or denial
However,
summary judgment
only
on
claims marks.
we address
Cir.1999) ("[W]e
consistently
court has
review a
under-
This
held
trial court’s
infringe-
lying
findings
likelihood of confusion issue in an
factual
for clear error but re-
inherеntly
de
ment claim an
factual determi-
view
novo whether these facts indicate
Anheuser-Busch,
also,
See,
confusion.”);
e.g.,
J.
v. L. &
likelihood of
see
3
nation.
Inc.,
316,
(4th
Wings,
McCarthy, McCarthy
L.
962 F.2d
318
Cir.
Thomas
on Trademarks
however,
(4th
1992).
recognize,
§
Competition
We
Unfair
that a minori-
23:73
ed.2001),
split
ty
regard
other
the issue as a mixed
and that
over this issue
circuits
law, see,
continues, see,
Majes-
McMonagle
question
e.g.,
e.g.,
of fact and
In re
v. Northeast
Co.,
904,
1311,
Center, Inc.,
901,
Distilling
493 U.S.
tic
Women's
261,
(Fed.Cir.2003)
(WHITE,
(1989)
(describing
likelihood of confu-
S.Ct.
107 L.Ed.2d
cеrtiorari);
J.,
question
findings
dissenting
law based
from denial of
sion "as
Jet,
facts”);
Heartsprings,
Heartspring,
underlying
Inc. v.
Inc. v.
of relevant
550,
(10th Cir.1998).
(6th
Sewage
Sys.,
Aeration
appeal.
former issue in this
litigation may
Because we
re-
quest
conclude that
district court
could nоt
from
adversaries
reach a result
par-
regarding purely
that conflicted
factual
or the
matters
facts,
ties’
admissions under Rule
we vacate
but not
law
matters
See,
e.g.,
Carney,
district court’s
and remand for
of law.
In re
proceedings.
furthеr
8A Charles Alan
Miller,
Wright,
Kay
R.
Mary
Arthur
A.
Kane,
Procedure,
Practice &
Federal
(3d ed.1999);
§ 2255 & n. 8
see also Fed.
it
proceeding,
Before
is useful to review
36(a).
purpose
R.Civ.P.
of such ad-
of a
relevant elements
claim for trade-
*4
missions is to
the array
narrow
of issues
mark infringement under the Lanham Act.
court,
before
expedite
the
and thus
both
In order to establish trademark infringe-
the discovery process and the resolution of
Act,
ment under
Lanham
the
the com-
litigation.
Carney,
the
See
Monarch Life proceed- for further district (3d Cir.1992) (“Rule 36 admissions are con- parties’ asser- ings, we do not reach litigation purposеs clusive for of the and and clear tions that facts law are summary judg- are to support sufficient court to enough permit this remand added)).4 (emphasis ment.” in instructions to enter case with C. noted of one or the other. As favor above, re- lаrge part have here, Applied principles indicate Lanham Act claims competing duced their that the district court was bound of Unit- dispute priority over use. parties’ that Adventis’s 918 Cf. Co., v. 248 Drug ed Co. Theodore Rectanus mark and CPHI’s 489 and 490 marks are 100, 48, 90, L.Ed. 141 mat- confusingly similar. As threshold (1918) (“[T]he that, rule is as be- general ter, the likelihood is “an issue right claimants conflicting tween inherently factual depends issue mark, priority appropria- same use the facts unique and circumstances of each quеstion.”). Because Anheuser-Busch, tion determines case,” L. Inc. v. L. & inadequate current (4th there is evidence 316, Wings, Cir. (internal 1992) on which to resolve the omitted), record quotations arguments regarding priority, may thus various presents properly matter that issuеs, remaining includ- do not reach the subject request be for admission 36(b). alia, Indeed, inter whether Adventis’s ing, the Fifth Cir- cuit an result in Ameri- mark is a colorable imitation of CPHI’s reached identical mark, Legal back may can Automobile v. AAA whether CPHI refer Association abuse 4. address whether a district court would We are not confronted here with a situation have, declining conclu- reasons known its discretion in accord where admission, themselves, whether stipulated effect to such an or only to аn admission sive obviously an case or misrepresents a factu- a suit would constitute actual material such controversy. litigation, not al in the and therefore do issue to its 643 mark under doctrine
tacking purposes establishing priori use,
ty of see v. Dyne-Crotty, Van Corp.,
Wear-Guard (Fed.Cir.1991) (discussing tacking); PETTYJOHN, see Appellant, L.J. Plaintiff — Group, also Homeowners Inc. v. Home v. 1100, 1106 Mktg. Specs., LINES, ESTES EXPRESS Cir.1991) (“Homeowners cannot make out Appellee. Defendant — against Specialists by case (the showing ownership one mark ini No. 04-1342. alone) tials HMS a likelihood of confu Court Appeals, United States comparison sion based on a between Fourth Circuit. (the different mark design HMS-roof mark) marks.”), Specialists’ Argued Nov. whether an of the tacking doc March Decided trine results in abandonment of the earlier mark, see, e.g., Health System Iowa
Trinity Corp., F.Supp.2d Health (N.D.Iowa 2001).
917-23 These matters
must be left to district court in
first instance.
III. *6 reasons,
For the foregoing we vacate the denying
district court’s order summary judgment
cross-motions for toas
their claims of
Lanham Act and remand proceedings further consistent opinion. this
VACATED AND REMANDED
LUTTIG, Judge, concurring Circuit judgment.
I am sufficiently unclear as to the rea- majority’s holding,
sons and there- implications of the
fore court’s deci-
sion, that simply I concur
reached the court.