GIBSON GUITAR CORP., Plaintiff-Appellee, v. PAUL REED SMITH GUITARS, LP, Defendant-Appellant.
Nos. 04-5836, 04-5837
United States Court of Appeals, Sixth Circuit.
Argued: Dec. 10, 2004. Decided and Filed: Sept. 12, 2005.
Frazier argues that he has made a substantial preliminary showing that paragraph 9 contains deliberately or recklessly false averments because it does not accurately state the date that he moved out of his apartment. Paragraph 9 certainly contains errors. Agent Steward could not have been told on May 1, 2003, about a May 6, 2003, cocaine seizure. But the record does not support the conclusion that the falsehoods contained in paragraph 9 are anything more than typographical errors. A defendant cannot demonstrate entitlement to a Franks hearing by merely identifying typographical errors in the affidavit. In any event, no prejudice ensued from any errors that Agent Steward made concerning the date of Frazier‘s eviction because paragraph 9 makes it clear that he was not living in the Culver Court residence when the drugs were found.
Frazier also takes issue with paragraph 13 of the affidavit, which states that the Kentucky State Police were unable to muster enough officers to search Frazier‘s home, despite their suspicion that he was a drug dealer. Frazier argues that he is entitled to a Franks hearing to explore the “unlikelihood that Kentucky State Police could not get a search warrant due to ‘manpower issues and priorities to other investigations.‘” Because Frazier‘s argument merely speculates that the Kentucky State Police had the manpower to execute the warrant, he has failed to make a substantial preliminary showing that paragraph 13 contains a deliberately or recklessly false averment. Finding no basis upon which to remand his case with instructions to hold a Franks hearing, we deny the request for remand.
IV.
Finally, Frazier argues that his “trial counsel‘s failure to investigate allegedly false statements in the affidavit in support of the search warrant and to reassert the motion for an evidentiary hearing constitute ineffective assistance of counsel.” We generally do not rule on ineffective assistance of counsel claims raised for the first time on direct review. United States v. Garcia-Meza, 315 F.3d 683, 687 (6th Cir. 2003). An exception to this general rule exists when the record is adequately developed to allow the reviewing court to assess the merits of the appellant‘s Strickland claim. United States v. Hall, 200 F.3d 962, 965 (6th Cir. 2000). This is not such a case.
V.
For the foregoing reasons, we AFFIRM the district court‘s order denying Frazier‘s motion to suppress; we DENY his request for a remand; and we DISMISS without prejudice his claim of ineffective assistance of counsel.
Before: KENNEDY, MARTIN, and MOORE, Circuit Judges.
MOORE, J., delivered the opinion of the court, in which MARTIN, J., joined. KENNEDY, J. (pp. 553-56), delivered a separate opinion concurring in part and dissenting in part.
OPINION
MOORE, Circuit Judge.
This is an interlocutory appeal of an injunction granted in a trademark case. The parties agree that the mark purports to include at least the two-dimensional guitar shape set out in the trademark-registration papers. However, they disagree as to whether the mark extends to cover three-dimensional objects where two dimensions of those objects have the same general shape (but not the same exact proportions) as the drawing in the registration papers, and as to whether the mark includes additional product features shown in a photograph accompanying the registration papers.1 Whatever the scope of the mark, the parties also dispute whether the mark is valid and whether it has been infringed.
With respect to Gibson‘s trademark-infringement claim, we REVERSE the district court‘s decision granting summary judgment in favor of Gibson, REVERSE the district court‘s decision denying summary judgment in favor of PRS, and VACATE the permanent injunction issued by the district court. We REMAND the case to the district court with instructions that summary judgment be entered in favor of PRS on Gibson‘s trademark-infringement claim.2
I. BACKGROUND
A. Facts
Certain basic facts are not in dispute. Gibson and PRS both manufacture high-quality guitars. Gibson has been in the business of manufacturing musical instruments for over 100 years. PRS founder Paul Reed Smith (“Smith“) began manufacturing custom guitars in the mid-1970s and opened a guitar factory in 1985.
Gibson introduced at least one guitar model under the Les Paul name in 1952. Since that time, Gibson has offered a number of guitar models under the Les Paul name. At least some of these models were solid-body, single-cutaway electric guitars of the type at issue in this litigation.3 For a number of years during the 1960s, Gibson did not manufacture guitars in the Les Paul series. At some time thereafter, Gibson resumed manufacturing solid-body,
PRS is a relatively recent entrant to the solid-body, single-cutaway electric-guitar market. Although PRS had previously manufactured a number of other guitars, it did not offer a single-cutaway guitar in its normal line until January 2000 at the earliest. In February 2000, PRS displayed models of the PRS Singlecut, a solid-body, single-cutaway electric guitar, at a music industry trade show.4 On March 27, 2000, Gibson sent a letter demanding that PRS cease and desist from producing and selling the Singlecut.
B. Procedural History
The procedural posture of this case is somewhat unusual. We briefly summarize those aspects relevant to this interlocutory appeal. On November 6, 2000, Gibson sued PRS in federal district court in Nashville, Tennessee. The complaint sought injunctive relief, costs, attorney fees, and treble damages for trademark infringement, counterfeiting, false designation of origin, and dilution under the Lanham Act,
PRS moved for summary judgment on all claims and counterclaims, and Gibson moved for partial summary judgment on the trademark-infringement claim. On January 22, 2004, the district court granted Gibson‘s motion for partial summary judgment on its trademark-infringement claim and denied PRS‘s motion for summary judgment in its entirety. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F. Supp. 2d 690, 725 (M.D. Tenn. 2004) (”Gibson I“). After the district court‘s summary judgment decision, the parties jointly requested that the district court allow them to: (1) amend Gibson‘s complaint to state only the trademark-infringement claim; (2) amend PRS‘s answer to state only trademark-related counterclaims; and (3) dismiss all other claims and counterclaims with prejudice. The district court approved this request, and shortly thereafter Gibson filed an amended complaint and PRS filed an amended answer. As amended, Gibson‘s complaint seeks injunctive relief, attorney fees, and treble damages for infringement of the LP Trademark. PRS‘s amended counterclaim seeks declaratory and injunctive relief, costs, and attorney fees, on the basis that the LP Trademark is invalid and unenforceable and that the LP Trademark is not infringed by the PRS Singlecut.
This is hereby ORDERED that the Defendant Paul Reed Smith, its partners, employees, agents and all persons in active concert with them are ENJOINED from manufacturing, selling, or distributing, or in any manner[] enabling or aiding others to manufacture, or to sell, or to distribute the PRS Singlecut guitar and all versions thereof, including but not limited to their exterior shapes and features, the designs of which have been determined to violate Plaintiff‘s rights to protection under the Lanham Act for its incontestable trademark registration, No. 1,782,606 for Les Paul guitar.
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841, 855 (M.D. Tenn. 2004) (”Gibson II“).5 The district court‘s order explicitly reserved decision on all other issues remaining in the case pending a hearing on disgorgement of profits.6 In this interlocutory appeal, PRS challenges the July 2, 2004 injunction and the January 22, 2004 order granting partial summary judgment to Gibson and denying summary judgment to PRS.
II. ANALYSIS
A. Jurisdiction
The district court had jurisdiction over the underlying action pursuant to the Lanham Act,
In determining whether a district court has properly granted a permanent injunction, we review factual findings for clear error, legal conclusions de novo, and the scope of injunctive relief for abuse of discretion. Worldwide Basketball and Sport Tours, Inc. v. Nat‘l Collegiate Athletic Ass‘n, 388 F.3d 955, 958 (6th Cir. 2004). A district court normally must hold an evidentiary hearing prior to issuing a permanent injunction. Moltan Co. v. Eagle-Picher Indus., Inc., 55 F.3d 1171, 1174 (6th Cir. 1995). In this case, it is unclear from the parties’ submissions whether the district court held an evidentiary hearing prior to issuing the permanent injunction. However, because an evidentiary hearing is not required when “no factual issues remain for trial,” id., the district court‘s decision to grant a permanent injunction without such a hearing could still be upheld if the entry of summary judgment in favor of Gibson and against PRS was proper. Accordingly, resolution of PRS‘s interlocutory appeal from the permanent injunction requires us to determine whether summary judgment was properly granted to Gibson. We conclude that it was not, and the district court accordingly erred in granting a permanent injunction.
Summary judgment should be granted whenever “there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law.”
C. The Scope of the LP Trademark
Prior to conducting our substantive inquiry, we take this opportunity to clarify a fundamental issue. The district court appears to have confused trademark law and trade-dress law when it concluded that the LP Trademark covered the entire guitar, rather than the two-dimensional silhouette included in the registration papers, Gibson I, 311 F. Supp. 2d at 719; see also Gibson II, 325 F. Supp. 2d at 852. This affected the remainder of the district court‘s reasoning and prevented proper analysis of the parties’ claims. Specifically, we do not believe that the two-dimensional drawing included in the LP Trademark should be construed to create a trademark on the entire guitar as depicted in photographs accompanying the trademark application (including the location and style of knobs, switches, and other hardware).8
To establish trademark infringement within the meaning of the Lanham Act, Gibson must demonstrate that the PRS Singlecut “is likely to cause confusion among consumers regarding the origin [of the Singlecut].” Daddy‘s Junky Music Stores, Inc. v. Big Daddy‘s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997) (citing
The district court concluded that, with the exception of actual confusion (factor four), all factors on which it made a finding favored Gibson for summary judgment purposes.12 Because there was no evidence of point-of-sale confusion, factor four would have favored PRS. Gibson I, 311 F. Supp. 2d at 709-10, 723. However, the district court nonetheless concluded that “[g]iven the striking similarity of the PRS Singlecut to Gibson‘s Les Paul and the instant market recognition of Gibson‘s Les Paul ... initial confusion would occur in the marketplace between parties’ products as to the ‘Singlecut’ guitar‘s source. This factor favors Gibson.” Gibson I, 311 F. Supp. 2d at 724. Having made this substitution of “initial confusion” for actual confusion at the point of sale, the district court went on to determine that summary judgment in favor of Gibson was appropri-
1. Gibson‘s Theories of Purchaser Confusion
Gibson argues that despite the lack of actual confusion at the point of sale, the district court‘s decision can be affirmed under a theory of either initial-interest confusion (the theory relied on by the district court), post-sale confusion, or some combination of the two. Initial-interest confusion takes place when a manufacturer improperly uses a trademark to create initial customer interest in a product, even if the customer realizes, prior to purchase, that the product was not actually manufactured by the trademark-holder. See PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003); see also J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:6 (4th ed. 1996 & Supp. 2005) (“MCCARTHY ON TRADEMARKS“) (collecting cases). Post-sale confusion occurs when use of a trademark leads individuals (other than the purchaser) mistakenly to believe that a product was manufactured by the trademark-holder. See Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir. 1991), cert. denied, 505 U.S. 1219 (1992); see also MCCARTHY ON TRADEMARKS § 23:7 (collecting cases). We conclude that neither initial-interest confusion, nor post-sale confusion, nor any combination of two, is applicable in this case.
a. Initial-Interest Confusion
The one case where we arguably have applied initial-interest confusion involved facts strikingly different than those involved in the present dispute. In PACCAR, we were faced with a dispute between Telescan, a company operating
To the contrary, the applicability of the initial-interest-confusion doctrine outside of the Internet context is an issue of first impression in our circuit. Although other circuits have applied the initial-interest-confusion doctrine to find trademark infringement based on use of a deliberately deceptive name or logo, see, e.g., Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975), we are not aware of any circuit that has applied the initial-interest-confusion doctrine to a trademark on a product‘s shape.
The potential ramifications of applying this judicially created doctrine to product-shape trademarks are different from the ramifications of applying the doctrine to trademarks on a product‘s name, a company‘s name, or a company‘s logo. Cf. Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 201-03, 207, 209, 212-13, 215 (3d Cir. 1995) (discussing the related context of product-configuration trade dress). Specifically, there are only a limited number of shapes in which many products can be made. A product may have a shape which is neither functional nor generic (and hence which can be trademarked) but nonetheless is still likely to resemble a competing product when viewed from the far end of a store aisle. Thus, many legitimately competing product shapes are likely to create some initial interest in the competing product due to the competing product‘s resemblance to the better-known product when viewed from afar. In other words, application of the initial-interest-confusion doctrine to product shapes would allow trademark holders to protect not only the actual product shapes they have trademarked, but also a “penumbra” of more or less similar shapes that would not otherwise qualify for trademark protection.
In response, the dissent suggests that product-shape trademark-holders be required to
Finally, our concerns about the effect of extending the initial-interest-confusion doctrine to product-shape trademarks are particularly relevant in the summary-judgment context. To the extent we allow it to do so, evidence of initial-interest confusion comes into the eight-factor Frisch test as a substitute for evidence of actual confusion. If our belief that nearly all product-shape trademark-holders will be able to show an issue of fact as to whether a competing product creates initial-interest confusion is correct, application of the initial-interest-confusion doctrine in the product-shape context would make it substantially easier for product-shape trademark-holders to survive a defendant‘s summary-judgment motion than for plaintiffs alleging any other type of trademark infringement. (Contrary to the dissent‘s view, see Dissent at 556 n. 7, product-shape trademark-holders are perfectly capable of protecting their rights without the initial-interest-confusion doctrine: they must simply show, for example, that the marks are sufficiently similar or that purchasers exercise sufficiently little care in choosing a product to show confusion at the point of sale). Given severe anti-competitive effects such a decision could have, we do not believe it is appropriate to extend the initial-interest-confusion doctrine in this manner.
Given the limited fact situation we have before us, we do not go so far as to hold that there is never a circumstance in which it would be appropriate to apply the initial-interest-confusion doctrine to a product-shape trademark. However, we are unable to imagine such a situation at this juncture, and we do hold that the doctrine cannot apply on the facts of this case.16
b. Post-Sale Confusion
The one published case where we have applied post-sale confusion is also clearly distinguishable from the present case. Esercizio, a trade-dress case, involved Ferrari sports cars which were manufactured in deliberately limited quantities “in order to create an image of exclusivity.” Esercizio, 944 F.2d at 1237. The alleged infringer built fiberglass kits intended to be “bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero” in order to make the “donor car” look like a far-more-expensive Ferrari. Id. at 1238. Our concern in Esercizio was that “Ferrari‘s reputation in the field could be damaged by the marketing of Roberts’ [clearly inferior] replicas.” Id. at 1245. Such a concern is not present here, where Gibson concedes that PRS guitars are not clearly inferior to Gibson guitars. See, e.g., Gibson Br. at 5, 23. Accordingly, post-sale confusion cannot serve as a substitute for point-of-sale confusion in this case.18
c. Gibson‘s Smoky-Bar Theory of Confusion
Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale-confusion doctrines should be extended to include something that we can only describe as a “smoky-bar theory of confusion.” Initial-interest-confusion doctrine, which we have already rejected on the facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we have also rejected on the facts of this case, applies when allegedly improper use of protected trade dress on a lower-quality product diminishes the reputation of the holder of the rights to that trade dress. In the smoky-bar context, however, Gibson does not suggest that consumer confusion as to the manufacturer of a PRS guitar would lead a potential purchaser to consider purchasing a PRS, rather than a Gibson, or that Gibson‘s reputation is harmed by poor-quality PRS guitars. Rather, Gibson argues that this confusion occurs when
In the context of guitar sales, initial interest confusion is of real consequence. Guitar manufacturers know that they can make sales by placing their guitars in the hands of famous musicians. On a distant stage, a smoky bar, wannabe musicians see their heroes playing a guitar they then want.
Gibson Br. at 20-21. As Gibson concedes that PRS produces high-quality guitars, we do not believe such an occurrence could result in confusion harmful to Gibson. If a budding musician sees an individual he or she admires playing a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.
2. The Summary Judgment Motions
We have determined as a matter of law that initial-interest confusion, post-sale confusion, and Gibson‘s “smoky-bar theory of confusion” cannot be used to demonstrate infringement of the trademark at issue in this case. Gibson has conceded that point-of-sale confusion does not occur between these high-priced guitars, and our review of the record does not suggest otherwise. Accordingly, there is simply no basis on which Gibson can show confusion that would demonstrate trademark infringement in violation of the Lanham Act. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 (2004) (noting that a claim of trademark infringement under the Lanham Act “requires a showing that the defendant‘s actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question“). Accordingly, PRS, rather than Gibson, must be granted summary judgment on Gibson‘s trademark-infringement claim.
III. CONCLUSION
With respect to Gibson‘s trademark-infringement claim, we REVERSE the district court‘s decision granting summary judgment in favor of Gibson, REVERSE the district court‘s decision denying summary judgment in favor of PRS, and VACATE the permanent injunction issued by the district court. We DENY all other claims and motions AS MOOT, and REMAND the case to the district court with instructions that summary judgment be entered in favor of PRS on Gibson‘s trademark-infringement claim.
KENNEDY, Circuit Judge, concurring in part and dissenting in part.
I agree that the district court erred in granting summary judgment in favor of Gibson and I also agree that Gibson cannot maintain its trademark infringement claim either on a theory of likelihood of confusion at the point-of-sale (for it has disclaimed that a consumer could be confused at the point-of-sale)1 or on a theory of
First, this court has recognized initial-interest confusion as an infringement under the Lanham Act. See PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003) (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000) (“Such confusion, which is actionable as an infringement under the Lanham Act, occurs when a consumer is lured to a product by its similarity to a known mark, even though the consumer realizes the true identity and origin of the product before consummating a purchase.“)).3 Second, a product shape can serve as a trademark, i.e. it can identify the source of the product. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 172-73 (1995) (recognizing that the Senate Report accompanying the Lanham act revision of 1988 stated that the “revised definition intentionally retains ... the words ‘symbol’ or ‘device’ so as not to preclude the registration of colors, shapes, sounds or configurations where they function as trademarks.“) (citation omitted and ellipsis in original); see also Kohler Co. v. Moen Inc., 12 F.3d 632, 636 (7th Cir. 1993) (concluding, in a case involving faucet manufacturer, which received a trademark after demonstrating that “purchasers of its products recognized the source of its faucets by their distinctive shapes,” that product configurations were entitled to trademark protection). Since a product shape can serve as a trademark, and since initial interest confusion is a recognized theory of relief generally for trademark infringements, I believe that a product shape trademark holder whose product shape does in fact identify the product‘s source should not be precluded from presenting evidence that a competitor‘s product shape causes consumers to be attracted to it because of its similarity to a trademark holder‘s mark.
The majority‘s reason for rejecting the application of initial interest confusion to product shapes is based upon the concern that since many product shapes within the same category will appear similar when viewed from a sufficient distance, if the initial-interest confusion doctrine were applied to product shapes, a product shape trademark holder could prevent competitors from producing even dissimilar products that appeared from a sufficient distance to be somewhat similar to a
Thus, this preliminary question (whether a product shape identifies its source when viewed from the point where the confusion is alleged to have occurred), when in dispute, as it is here, must be addressed before determining if there is an issue of fact as to whether a competitor‘s product shape causes initial interest confusion due to its similarity to a trademark holder‘s product shape.5 For if the product shape
Here, PRS argues that, as there are only a few general shapes in which guitars are made, and since there are numerous single-cutaway style guitars in the market, a consumer would not, and, indeed, could not, identify the source of a guitar on the basis of its shape. Although PRS would likely prevail on this issue, I cannot say, in light of the record as developed, that it has met its burden establishing that there is no genuine issue of material fact as to whether the shape of Gibson‘s guitar identifies its source.
Since the district court incorrectly analyzed the issue of whether Gibson‘s trademark served to identify its source from the distance where the confusion was alleged to have occurred, I would remand for consideration of this issue.6 If it were found that the shape of Gibson‘s guitar does serve to identify its source from the distance where the confusion is alleged to have occurred, then I believe that Gibson should be entitled, just as any other trademark holder would be, to present evidence that a competitor‘s use of a similar mark causes confusion as to the source of the competitor‘s product.7 Thus, I respectfully dissent.
Notes
Gibson‘s Les Paul single cutaway guitar is a traditionally shaped guitar with a portion removed from [the] body of the guitar where the lower section of the fingerboard meets the body of the guitar. The term “cutaway guitar” denotes that portion of the guitar between the neck and its lower[] part, that appears to be missing from the natural, rounded body contour. The removal of this portion forms what is often referred to as the “horn.” One aspect of this horn design is that the musician can access higher strings [and] position[s].
As to other parts of a guitar, a pickup selector switch allows the player to change quickly the electromagnetic inputs to any one of three options: the pickup closest to the neck (the “neck pickup“), the one furthest from the neck (the “bridge pickup“), or a combination of both. The combination of volume and tone knobs for each pickup[] allow[s] the player to set the tone and volume of each pickup and[] switching among these pickups can achieve different sounds.
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F. Supp. 2d 690, 694-95 (M.D. Tenn. 2004) (”Gibson I“) (quotation marks, citations, and footnote omitted). 3. The majority, in footnote 15, explains that PACCAR‘s discussion of initial interest confusion was specifically in reference to a dispute over internet-domain names. Obviously, as applied in that case, the doctrine‘s application related to a company‘s name trademark as used in an internet-domain name. All trademarks, whether they be a company‘s name, logo, or a product shape, do the same thing: they identify the source of a good. Since we (and many other circuits) have recognized the doctrine, the majority must explain why this recognized doctrine should not apply to trademarked product shapes. I find the majority‘s explanation unpersuasive.Here, the Court did not initially award injunctive relief in contemplation of a motion to alter or amend its earlier findings and conclusions of law for potential error. The Court was of the view that the declaration of rights was sufficient in the interim. PRS did not file a Rule 59 motion or a motion to reconsider. The Court is now firmly convinced that injunctive relief to bar the production and sale of PRS‘s Singlecut is appropriate and necessary.
As to any stay pending an appeal, the standards to consider are those on awarding injunctive relief. For the reasons set forth in the Court‘s Memorandum, the Court does not believe that PRS will prevail on appeal. Gibson will suffer irreparable injury to its goodwill in its Les Paul[] if PRS is not enjoined. Gibson‘s dealers would be injured by PRS‘s unlawful sales of its Singlecut. The Court deems it in the interest of justice to enforce registered trademarks. Given these findings, PRS‘s request for a stay of injunctive relief will be denied.
Gibson II, 325 F. Supp. 2d at 854. 5. The majority views this inquiry as “needlessly complicated and unworkable.” I view it as essential. Since, as noted before, the purpose of every trademark is to identify the source of its good, if a trademark does not identify its source, a trademark holder cannot successfully prosecute a trademark infringement claim. If a product shape trademark holder believes that a competitor‘s product causes confusion as to its source due to the competitor‘s product‘s resemblance to the trademark holder‘s product shape when viewed from a store‘s aisle or front-door, then the product shape trademark holder will need to establish that its trademark identifies its source when viewed from those perspectives for any evidence of such confusion to support its claim. Thus, the relevant observation distance or location for determining whether the trademark holder‘s product shape identifies its source is from whatever distance or location the trademark holder alleges confusion occurred.The Court follows [In re ECCS, Inc., 94 F.3d 1578, 1581 (Fed. Cir. 1996)] to conclude that any variations between Gibson‘s drawings and the Les Paul guitar are not controlling. The core consideration is whether the Les Paul guitar is covered by Gibson‘s trademark. Here, the undisputed facts are that the Gibson‘s Les Paul guitar is the same shape of the guitar shown in Gibson‘s trademark and application papers. Pictures of the Les Paul guitar, as well as pictures from market publications and business records about the Les Paul guitar were part of Gibson‘s application papers upon which the USTPO issued Gibson‘s trademark registrations. The Court concludes PRS‘s contention about ... Gibson‘s drawing lacks merit[.]
Gibson I, 311 F. Supp. 2d at 719; see also Gibson II, 325 F. Supp. 2d at 849 (“Elements of the Les Paul are so intermingled with PRS‘s Singlecut that the entire Singlecut guitar is the offending product.“); id. at 852 (“Finally, Gibson‘s trade mark is not, as PRS argues, the two dimensional guitar, but rather is the entire Les Paul guitar and its appearance.“).
Abercrombie, 280 F.3d at 629 (internal quotations omitted) (brackets and ellipses in Abercrombie). The distinction between trademark and trade dress is particularly important, given the posture of this case. As we noted above, after the district court granted Gibson‘s partial summary judgment motion, the district court approved the parties’ agreement to dismiss with prejudice all of Gibson‘s remaining claims, including its claim for trade-dress infringement. Accordingly, the only remaining Gibson claim is the[t]rade dress refers to the image and overall appearance of a product. It embodies that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, [that] make[s] the source of the product distinguishable from another and ... promote[s] its sale. Trade dress involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.
This Circuit considers the question of whether there is a likelihood of confusion a mixed question of fact and law. Factual findings must be made with respect to the likelihood of confusion factors set out above. However, the further determination of whether a given set of foundational facts establishes a likelihood of confusion is a legal conclusion. Because this case is presented to us after a grant of summary judgment, our task is to determine whether the District Court correctly held that no genuine issues of material fact were presented regarding the likelihood of confusion factors.
To resist summary judgment in a case where the likelihood of confusion is the dispositive issue, a nonmoving party must establish, through pleadings, depositions, answers to interrogatories, admissions and affidavits in the record, that there are genuine factual disputes concerning those of the Frisch factors which may be material in the context of the specific case.
Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991).Telescan also contends that the district court erred in discounting the disclaimer included on its web sites. The district court found that Telescan‘s disclaimer does not remedy the confusion caused by the use of PACCAR‘s trademarks in its domain names. An infringing domain name has the potential to misdirect consumers as they search for web sites associated with the owner of a trademark. A disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the web site comes too late. This “initial interest confusion” is recognized as an infringement under the Lanham Act.
Id. at 253 (emphasis added). The three cases we cited in support of the initial-interest-confusion comment in PACCAR are also Internet cases. See id. (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000) (Internet sale of herbal products intended as alternatives to well-known prescription medications, using names for the herbal products confusingly similar to those of the prescription medications); Brookfield Communications, Inc. v. West Coast Entm‘t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (use of trademark “moviebuff.com” in metatags of a competitor‘s website); Green Prods. Co. v. Independence Corn By-Products Co., 992 F. Supp. 1070 (N.D. Iowa 1997) (registration of website domain name confusingly similar to competitor‘s trademarked name)). Our suggestion that initial-interest-confusion doctrine applies to disputes over Internet domain names does not mean (as the dissent seems suggest) that “initial interest confusion is a recognized theory of relief generally for [all types of] trademark infringements.” Dissent at 554.