*2 MERRILL, GOODWIN, Before WAL- KENNEDY, LACE, TANG, SCHROEDER, ALARCON, FERGUSON, NELSON, BOO- CHEVER, NORRIS, Judges. Circuit MERRILL, Judge: Circuit brought Levi Strauss & Co. has this ac- Bell, Inc., against seeking tion Blue dam- ages injunctive relief for federal trade- infringement, mark 15 U.S.C. § (1982), designation origin, false 1125(a) and, (1982),1 U.S.C. under Califor- 1114(l)(a) likely liability 1. 15 U.S.C. creates civil the sale of where such use “is mistake, anyone “any confusion, who makes use in commerce of cause or to cause or to de- counterfeit, reproduction, copy, im- or colorable ceive.” registered itation of a mark” in connection with usages likely law, infringement, shirt are to cause consumer for trademark nia state infringe upon dilution. confusion and thus that in- competition and trademark unfair tab, See, e.g., is for a terest. Levi Strauss & Co. v. The claimed trademark Bell, Inc., as a folded cloth Blue describes which Strauss Cir.1980) (Blue I). “gar- Bell vertical seam of sewn ribbon *3 alleged to pocket.” Blue Bell patch ment simply rely Strauss cannot on the rights trademark violated Strauss’s have tabs, registration federal of certain most tab, bearing the word by using a horizontal notably pants, those on to establish a “Maverick,” pockets on the “Wrangler” or protected pocket gar interest a tab on of its shirts. generally, registration ments because con prima protected facie of a I stitutes evidence respect goods specified interest to the with adopted pocket was The tab trademark registration only. 15 U.S.C. 1115.2 September put by use on and to Strauss Further, alleged Strauss has not 10,May registration was and on “inherently mark is distinctive.” tab granted by the Patent and Trademark Of- McCarthy, J. Trademarks and as “a small Unfair fice. The mark was described (2d Competition, 11:1-2 at 433-36 ed. §§ material or the marker or tab of textile 1984) (hereinafter McCarthy). J. In order red____” like, goods in colored The con- to the first element of its cause of establish nection with which it was used were stated interest, action, namely protected a Strauss patch pocket type.” to be “overalls has, therefore, relied the doctrine of subsequent years In in other other tabs secondary meaning. colors, bearing name, some the “Levi’s” registered jackets for have been use on and meaning way Secondary is another “garments, particularly trousers.” expressing the of a trade- distinctiveness I, mark. 632 F.2d at 820. In Blue Bell began using pocket a In 1969 Strauss tab “ circuit, meaning ‘[secondary this has application registration An on shirts. association, nothing been defined as bearing the Levi’s name has of a shirt tab ” 820, quoting more.’ Id. Carter-Wal- opposition filed. Blue Bell has filed been lace, Inc. v. Proctor & Gamble application, proceedings to that and have The basic suspended pending been the outcome of is, thus, element of registered litigation. this A shirt tab was by seg- mental a association substantial by Strauss under California state law on potential ment of consumers and consum- Commencing June around alleged single ers mark and a “between began marketing bearing a shirt product.” McCarthy, source of the 1 J. “Wrangler” imprint- or “Maverick” label 15:11(B) 15:2 at at 686. See §§ consisting ed on a tab of a folded cloth I, Blue 632 F.2d at 820. Bell pock- a shirt ribbon affixed to the seam of pocket It is use a shirt et. this tab trial, district court After a bench subject Blue Bell that is the of this action. found that Strauss tab claims, prevail possess its federal shirt market did not order to on moreover, (1) and, if the must that it has a that even establish both (or pos- to protected right) interest trademark in tab as used on shirts was assumed infringed secondary meaning, Blue Bell’s use of allegedly Blue sess (2) likely to cause usages Blue Bell’s its on shirts was not Bell’s shirt and, therefore, 1125(a) pertains only liability registration, al Section creates civil one designation proved reg- any infringement who markets origin including with a false which can be symbols 1125(a), prohibits "words or other tend- Section which istered marks. ing falsely represent not, however, to describe or the same." designation origin, lim- false registered marks. ited to prohibits U.S.C. which trademark infringement, applies to marks with feder- The district court court’s concerning customer confusion.3 determination likelihood of confusion.4 consequently ruled in favor of Blue Bell respect Strauss’s federal with both In United States v. McConney, We af- — trademark and state law claims. (9th Cir.) (en banc), firm the district court as to Strauss’s feder- -, U.S. 83 L.Ed.2d 46 competition unfair al trademark state (1984), this court stated that where a mixed claims, but we remand for further consider- question predominantly of law and fact is infringe- fact, ation Strauss’s state one of we review the trial court’s determination under the clearly ment and dilution claims. erroneous

standard. 728 F.2d at 1203-04. The issue of likelihood of confusion ques is mixed II appears tion which predominantly be that a de novo parties agree factual in nature. *4 appropriate for the standard review Likelihood of confusion is type the rulings district court’s on matters of law. question mixed which fits within the cate agree question They also that the of sec gories suggested in McConney as suited to ondary meaning is one of fact which is clearly erroneous impli not review —cases “clearly reviewed under the erroneous” cating rights constitutional and those “in I, standard. Blue Bell 632 F.2d at 821. applicable legal which the pro standard differ, however, They toas what standard strictly test, vides for a factual such as appropriate for our review of the trial Id. state of mind.” at 1203. De novo court’s decision that there no likeli was review of this issue signif would demand a a de urges hood of confusion. Strauss icant appellate diversion of court resources review, novo argues Blue Bell while for the to a task properly belongs which more to clearly erroneous standard. We hold that See id. at 1201 & judge. the district court clearly henceforth the Universe, erroneous standard n. 7. See also Miss Inc. v. Flesh er, applied in reviewing 1130, (9th should be a trial Cir.1979). 605 F.2d 1133 1240, pertained Lindy Most of the evidence Corp., at trial Pen Co. v. Bic Pen 725 F.2d so, (9th Cir.1984) market children's shirts. (omitting disputed Even the dis- 1243-44 recognized denied, facts/undisputed distinction), trict court that Strauss and Blue Bell facts cert. — men’s, women's, -, compete 955, in the markets for U.S. 105 S.Ct. 83 L.Ed.2d 962 shirts, (1985); Door, Odisho, holding children’s and our here covers all Golden Inc. v. 646 F.2d 347, (9th Cir.1980); I, shirts manufactured Blue Bell and Strauss Blue Bell 632 F.2d at projecting patch pockets. which bear tabs on 822 n. 6. At least one commentator concluded that the distinction had been abolished and that universally appli the two-level test had become upon disagreement 4. The focus their Gilson, cable. J. Trademark Protection and concerning whether the trial court’s decision Practice, (1984) (hereinafter § 8.15 8-194 Gil- upon undisputed today, was based facts. Until son). degree the of deference accorded in this circuit to trial court likelihood of dispensing confusion determina previous In now with our distinc hinged upon tions has the nature of disputed the evi undisputed tions based the or facts, dence below. We have reviewed such determi nature of the we are in accord with anal upon undisputed ogous principles nations de novo when based from non-trademark fields. facts, different, but have two-level test See Commissioner Internal Revenue v. Duber involved, stein, 278, 291, 1190, disputed apply where facts have been 363 U.S. 80 S.Ct. ing clearly (Rule (1959) 52(a) applies the erroneous standard to the under to factu lying facts); giving undisputed "foundational facts” and de novo al inferences from United Chesher, “legal (9th review to the conclusion” on likelihood of States v. F.2d 1358 n. 3 AMF, Boats, 1982) (clearly confusion. applies Inc. v. Cir. erroneous standard Sleekcraft facts); Alpha judge’s stipulated F.2d dustries, 346-47 See In trial decision based on Freeman, Alpha Lundgren Shapes, Inc. v. Steel Tube & 307 F.2d 113-15 (9th Cir.1980); Cir.1962) (Rule 52(a) applies findings J.B. Wil based Cosmetics, Inc., upon documentary liams Co. v. Le Conte evidence as well as to those (9th Cir.1975), involving credibility); Advisory witness Note of Rules, (deference 47 L.Ed.2d 317 Committee on Fed.R.Civ.P. 52 has, 52(a) distinction between these alternative tests mandated Rule is not limited however, facts). judge’s disputed often been omitted or obscured. See trial resolution of Moreover, plicitly recognized pant pocket precedential limited value tab decisions, possessed strong secondary meaning. each likelihood of confusion facts, reduces upon its own which stands however, argues, Strauss Blue Bell McConney, the need for de novo review. (through has I established sec- McLinn, F.2d at 1201. Matter ondary meaning) right a trademark in a Cir.1984) 1395, 1401(9th (en banc). pocket garments. tab on all We cannot likely is a factual confusion is Whether agree. pant Secondary tab woven into the law. We rou- determination necessarily inhere in the shirt does not tab the issue one of fact in a tinely treat registered was as a since procedural For the variety of contexts.5 specific location mark. See 15 U.S.C. accuracy, uniformity, and consist- sake of 1057(b); re Levi In Strauss & ency predominant view in other with 1970). U.S.P.Q. (TTAB More im- circuits,6 findings we will hereafter review portant, regard we do not the Blue Bell I clearly of likelihood of confusion under litigation appropriate as an basis for collat- standard. erroneous estoppel any eral area other than the pants market. Ill place, In the first it is clear that this I, an earlier lawsuit Blue Bell I had no intention of brought by Strauss over Blue Bell’s use of deciding questions mean- right pants, on the rear of its ing in any and likelihood of confusion area *5 pocket this court determined that Strauss’s pants other than the market. secondary meaning in acquired had the ultimate conclusion was: Our pants market. See 632 F.2d at Under estoppel, of the has that a the doctrine collateral Strauss established substan- pant pocket pos prospective buyers continues to tial number of associ- Strauss See, secondary meaning. e.g., only sess Park ate its tab trademark with 322, Shore, Hosiery pants, Wrangler’s 439 U.S. one seller of and that lane Co. v. 5, 645, 5, projecting 326 n. 99 S.Ct. 649 n. 58 L.Ed.2d use of a label with its ends (1979). Indeed, captured edge patch pocket the court ex- of rear 552 district an McCarthy, employed by Elby’s See 2 J. 32:37 at 745. For in dards the various circuits. stance, Steubenville, deciding Big Boy trial courts disfavor trademark Inc. v. Frisch’s Restau of 916, 231, rants, summary judgments because the ulti U.S. 103 S.Ct. 74 L.Ed.2d cases 459 See, J., (1982) (White, inherently e.g., dissenting). is so White mate issue factual. 182 Justice First, Fifth, Eighth Jaycees United States v. San Francisco Junior noted that the Circuits Commerce, 61, (cit F.Supp. clearly erroneous standard. Id. Chamber 354 68-69 follow the of (9th (N.D.Cal.1972), aff’d, ing Corp., 513 F.2d 1226 Cir. Keebler Co. v. Rovira Biscuit 624 F.2d 366, Florida, 1975) curiam). (1st Cir.1980); (per Additionally, question Sun Banks the 377 of Ass’n, routinely Savings of likelihood of confusion is submitted Inc. v. Sun Federal & Loan 651 311, (5th Cir.1981); jury question Squirtco for determination as a of fact. F.2d 314-15 v. Sev 1086, Collins, 827, (8th Cir.1980)). (S.D. F.Supp. en-Up See v. 628 F.2d 1091 Stuart 489 830 Fourth, Tenth, Platters, Purdie, addition, N.Y.1980); Five and Eleventh Inc. v. 419 In 372, (D.Md.1976). appear clearly F.Supp. erroneous 381-82 Circuits to follow Corp. Temple, v. 747 standard. See Uno Pizzeria 1522, (4th Cir.1984); Frito-Lay, v. F.2d 1526 Inc. 6. A review trademark cases in other circuits 298, Foods, Inc., (10th Morton 316 F.2d 300 clearly demonstrates that the erroneous stan Cir.1963); Jellibeans, Skating Inc. v. Clubs predominates dard for review of a district Inc., 833, (11th Georgia, F.2d Cir. 716 839-40 court’s determination on likelihood of confu 1983). Gilson, 8-189; the Seventh Cir The Second Circuit and generally 2 sion. See 8:14 at J. 15, 20; question cuit treat likelihood of confusion as a McCarthy, n. § 23:22 at 111 n. 113 Com fact, ment, utilizing de novo review for com Appellate Act Review Lanham Viola parisons similarity Playboy of the marks. Question Is Likelihood tions: of Confusion Inc., 743, 77, Fact?, Chuckleberry Publishing, Enterprises v. 687 Law or 38 Sw.L.J. 752 & n. Cir.1982); (2d (1984). dissenting Henri’s Food 566 Prod from the denial Inc., (7th Kraft, 717 F.2d for in which the Sixth Cir ucts Co. v. certiorari a case 1983); Sign Burrough adopted James Ltd. v. cuit the two-level Justice White Cir. test. partially Beefeater, disparity in 540 F.2d documented the the stan- confusion, alternative, likely to cause In the argues is Strauss pants of its mistake, estoppel if collateral inapplicable, or to deceive.7 even to cause “the evidence offered at trial established as added). (emphasis 632 F.2d at a matter of law that the Levi Strauss & Co. I Footnote 7 of Blue Bell makes the pocket tab as acquired used on shirts had dispute: parties point beyond clear “The secondary meaning sufficient to entitle argued general toward definitions of have Levi Strauss & Co. to usage” exclusive rights under various Strauss’s (emphasis supplied). hypothetical circumstances. Such defini- argument First, Strauss’s is two-fold. presentation of an tions must await actual Strauss claims that the district court erred controversy involving case or established considering as a matter of law not facts.” Id. tab as es- estoppel, the doctrine of collateral Under estoppel collateral tablished from Blue judgment prior parties in a suit between It proof Bell I. insists that this was neces- precludes relitigation by of is sarily relevant to a determination of sec- actually litigated necessary sues ondary meaning in the shirt tab. Parklane, outcome of first action. strength The of the tab as a trademark 5;n. U.S. at 326 n. 99 S.Ct. at 649 Clark is not irrelevant to the issue of Watchie, Cir.), v. secondary meaning in the shirt market public where evidence exists of awareness (1975). IB Moore’s Federal and transference of its trademark function ¶ 0.441[2], Practice at 722 Similari to shirts. See Levi & Co. v. Gen suffice; ty between issues does not collat esco, (Fed. Cir.1984). estoppel applied only eral when the is present Strauss did such evidence. Parklane, sues are identical. U.S. not, however, ig- district court did 649; Watchie, 99 S.Ct. at Clark strong meaning secondary nore the F.2d at 998. If different facts are in issue pant strong tab. The court noted: “The in a second case from those that were pants’ pocket *6 case, in litigated the first then the TAB, potential and the for customer confu- collaterally estopped litigation are not from arising competing sion out of a manufac- litigated in the second case. If the issues of turer’s use a tab device on its are the same—the same facts at issue—es pants, recently has been confirmed the toppel apply will and an offer of different Appeals Ninth of Circuit Court Bell [Blue proof provide a later case will not es cape. gave very good The court then a reason Here, different; proof than the more is why strength the of the mark in the con- the facts are different. We deal with dif- pants text of the market should not control shirts) products (jeans ferent and differ- in the context of the shirt market. It stat- markets; assumptions, percep- ent and the ed, “[tjhere ample and sufficient evi- recognitions tions and with which custom- dence in the trial to indicate consum- that approach purchase a are different. ers See differently. pants ers treat and shirts The Litronix, Litton Industries v. perceptions court finds that consumer of (C.C.P.A.1978) (admission pants shirts and are different.” That previous proceedings involved an statement is more than sufficient to estab- application by party register the same a judgment lish that the the district mark “for is fatal the secondary meaning in the mar- court different estoppel.”). reliance on board’s collateral carry ket does not over into the shirt mar- ket. therefore, say,

We cannot that Blue Bell prong argument I established The second of Strauss’s applied garments, acquired secondary let had Strauss tab as to all that its shirt tab meaning validity an attack on the alone as to shirts. cat, (9th Cir.1974). The secondary mean- of no evidence affirmative found, though, that had court. As a by the district ing relied begun using the tab on shirts in 1969 and recently explained: has panel of this court it introduced no evidence of sales of determining wheth- considered Factors until 1973. Strauss’s shirts with meaning secondary has been er a issue of the first use evidence on the tab’s (1) pur- whether actual include: achieved mainly testimo- on shirts is uncorroborated bearing the product chasers was entitled to ny which the district court trade- associate the claimed The court also found that “there discredit. (2) degree producer, mark with the advertising the is little evidence of Levi’s advertising under and manner period during the 1969-76 shirt tab” trademark, (3) length claimed pock- a shirt companies that “other utilized the claimed trademark of use of manner Strauss, (even through though et tab Levi and, (4) trade- use of the claimed whether action, legal was able to have threat of Gilson, exclusive. See mark has been tab).” Evidence of them cease the use of Practice, & Protection Trademark party usage third did exist and is relevant 209[1], disprove secondary existence of Transmission Transgo, Inc. v. AJAC Carter-Wallace, 434 F.2d meaning.7 See (9th Cir. Corp., 768 F.2d Parts might Finally, the district court at 802-03. Zatarains, 1985). Inc. v. Oak Accord that Strauss’s adver- well have concluded Smokehouse, Inc., 698 F.2d Grove tising primarily promote the shirt did not Cir.1983). survey pur expert An against the shirt as a whole. persuasive provide can the most chasers meaning. secondary J. evidence on task is not to determine wheth Our 15:13(D) at 690. Zata McCarthy, finding might made alterna er a have been rains, at 795. court; the district it is to tive to finding no sec whether the determine finding of no second- The district court’s meaning clearly erroneous. ondary was applied to the ary meaning in the tab as sup in the record Mindful of evidence primarily upon shirt market was based finding, porting the court’s we conclude careful, in- expert surveys purchasers, that it was not. In Inwood Laboratories v. survey cluding survey. Strauss’s own Laboratories, 844, 102 S.Ct. Ives supported the district court believed which (1982), Supreme 72 L.Ed.2d 606 finding of no was Court stated: probative conducted for Strauss was findings segment By rejecting the District Court’s evidence that a substantial given have more public simply not associate the tab because it would purchasing did source, i.e., mislabeling than weight to *7 single used on shirts a evidence as with court, Appeals recognized the did the trial the Court The court also Strauss. Determining weight clearly of such circumstantial factors erred. relevance spe- is the length credibility has and of the evidence “as the of time the mark been Be- used, province trier of fact. advertising, and the cial extent findings concern- cause the trial court’s of sales” and “whether Levi volume the instances of ing significance a was the exclusive user of such Strauss erroneous, mislabeling clearly not patch pockets of shirts were projecting label on disturbed____ they not have during period.” required should been Strauss was its appellate An court cannot substitute prove that the as used on shirts had to tab for that of interpretation of the evidence acquired secondary meaning by when simply the review- on the trial court because began using protruding Blue Bell a label “might give the facts another ing court Publishing HMH v. Brin- shirts. See Co. rights had attached at all. The is not whether Strauss issue in this case trademark, trademark abandoned a but whether other, distinguish any it construction, ambiguities dif- from cannot be resolve the 1 McCarthy, p. confused.” J. 15:3 at sinister cast to find a more ferently, appar- the District Court actions which argues that this is un Strauss case innocent.” ently deemed usual in that Strauss has established sec 2189-90, 856-58, quoting 102 S.Ct. Id. at meaning in ondary applied the tab as to the Real v. National Ass’n. States United market pants and that likelihood confu 485, 495, Boards, Estate therefore, may, also be sion established 711, 717, We similar- 94 L.Ed. 1007 between the Strauss tab and the Blue reweigh in this ly to the evidence decline independent finding The Bell shirt tab. case. possess that Strauss’s tab does not shirt secondary meaning argument this dooms to this case summary, pleaded In if Ultimately, failure. even the tab does applied its as infringement as an tab not possess secondary meaning pants in the applied to the pants market or as to the market, Strauss must establish that con market, infringement an of its but as shirt likely are that Blue sumers to believe Bell rights pocket in a tab on alleged trademark If, however, shirts emanate from Strauss. The district court cor- generally. garments distinguish consumers do not Strauss’s secondary meaning recognized that rectly shirts, mark on then it is axiomatic that pants applied in as inhered the tab they will not attribute Blue Bell shirts to finding market, not err in no but it did Strauss, they distinguish if even Strauss’s in the to secondary tab pants. mark on To to allow Strauss estab is a shirt market. Because lish likelihood of confusion the shirt mar mark, could not specific the court location ket on the basis of the findings concerning properly have made would, market of its tab gar- on rights short, allowing be tantamount to a second generally. ments opportunity prove that consumers distin guish mark on shirts. We have Strauss’s IV they do not. held finding secondary meaning in of no appeal goods” applied to the shirt market Strauss’s to the “related the tab as doctrine, AMF, v. normally any possibility foreclose see Inc. would Sleekcraft Boats, (9th Cir.1979), Sleeper 599 F.2d is likelihood of confusion. Co., goods analysis Manufacturing to no avail. The related is Lounge Co. v. Bell designed protect infringe- a mark from In order noncompetitive Strauss ment a similar mark on to establish customer confusion goods; buyer may likely Bell still be to as- must establish that use of the Blue sponsorship. 2 likely to cause a reason- sume a common source or mark on shirts knowledgeable prudent purchaser McCarthy, 24:6 at 182. other ably J. words, large- manufac- the related test serves that Strauss was the believe potential scope of second- ly to define the turer of shirts. See Toho Co. Sears, ary meaning. any If the doctrine serves Roebuck & Cir.1981). cannot, however, potential buyer purpose A other than to define the meaning, it looking he is for a reach of as a be “confused unless of likeli- recognizes picks up another in manifestation of the ultimate test label he *8 Here, hood confusion. at 183.8 Ergo, buyer his confusion. who does not See id. however, if and shirts are relat- recognize plaintiffs ‘mark’ and does not even 1243; 349-50; AMF, Door, goods separate 646 F.2d at 8. The related test is not a test for Golden 348-49; Corp. establishing F.2d New West v. NYM of confusion but incor likelihood Cir.1979); (9th applied K-S-H Plas porates 595 F.2d the same factors which are tics, Carolite, Inc., (9th involving competitive goods Inc. v. with the addi cases Cir.), denied, S.Ct. "proximity" cert. 396 U.S. tion of such factors as the of the (1969); Originals Co. v. goods expansion Paul Sachs and the likelihood Cir.1963). Pen, Sachs, See, product e.g., Lindy lines. 725 F.2d at goods, independent analysis meaning; has es- goods question; ed an class of used; marketing channels tablished that evidence of ac- confusion; tual type goods degree does not extend to the shirt and Strauss tab market, consequently by purchaser; care exercised and there is no need and in- tent of defendant separate goods” to “related undertake a [citations omitted]. analysis. allegation No has been made that wrongly prohibited district court Strauss

V introducing from any evidence on of these found, in the al The district factors. ternative, if that even Strauss’s It is true that aspects certain secondary meaning, and acquired

had thus multifactor test describe the circumstances right, applied protected to to which a trier of fact would refer in market, prevail the shirt Strauss could not making an gúess educated as to what was in this it had failed to dem action because going on in the minds of consumers in the infringement right through onstrate of that proof, absence of direct survey such as likelihood of confusion. evidence and testimony, as to how consum matter, ers were responding to the Survey As an initial we note that marks. testimony however, evidence and may, likelihood of confusion issue is out weigh whatever circumstantial upon reached in this case evidence assumption has been introduced. Anti-Monopoly, applied that the Strauss tab as to the shirt Cf Inc. v. General Group, Mills Fun possesses secondary meaning. market We (9th Cir.1982), conclusion, supra reiterate our see note 75 L.Ed.2d that goods incorporates the related test (1983) (consumer surveys ample are same factors as are in cases involv- legitimate and evidence in trademark ing competitive goods, with the addition of cases); McCarthy, (discus 2 J. 32:46-55 §§ proximity such factors as the goods sion survey of the use of evidence in trade expansion product likelihood of cases). mark Proceeding upon assumption lines. directly that a competing good manufac- recognize We survey evidence and by possesses tured Strauss retailer testimony primarily are relevant to meaning renders factors such as “likeli- confusion, the existence of actual which is expansion hood of product super- lines” but one facet of the multifactor test.10 It fluous, we, therefore, see no need to was, however, prerogative of the dis- employ any supplementary related trict weigh court to evaluate and the evi- analysis.9 Bell, dence by introduced Strauss and Blue and to find that Blue Bell’s direct evidence argues the district court outweighed Strauss’s circumstantial evi- ignored the multifactor test which has been job dence. appellate Our as an court is not by set forth this court. simply This is not reweigh the evidence. See Inwood Lab- so. The court stated: oratories, 856-58, 456 U.S. at 102 S.Ct. at Factors that are relevant in determining 2189-90. whether a likelihood of confusion exists strength marks; are or weakness of the Retailers called Blue Bell testified similarity sound, that, appearance, based experience, they their did that, was, however, 9. We also note for the reasons discussed 351. Strauss no means fore- supra, the issue of likelihood of confusion in the putting closed from on evidence of actual confu- subject any shirt market is no more fact, collateral proving sion in likelihood of confusion. estoppel pants litigation effect from the than Moreover, Strauss did introduce such evidence. secondary meaning. was the issue of putting Blue Bell was not barred from on evi- merely dence of no actual confusion because 10. The absence of evidence of actual confusion required prove Strauss was not actual confu- give need not rise to an inference of no likeli- sion. Door, hood of confusion. Golden 646 F.2d at *9 Blue Bell’s shirt tab would 739 F.2d at where our not that court en believe held Further, banc that in cases customers. both review should de confuse both be novo. While McLinn did not re- survey discuss employed independent Bell and Blue view of issues which mix fact with state pur- surveys to conduct organizations law, McConney apparently and dealt with of children’s shirts. The district chasers mix law, issues which fact with detail, in- surveys discussed those in federal 1199-1204, F.2d at McLinn relied exten- survey orga- cluding the manner in which sively upon McConney opinion the to reach samples, selected the random the nizations holding “appellate the that review of con- survey that interviewers questions clusions of state law should be under asked, questions. and the results of those same ... standard as conclusions of feder- that possibility the consumer views McLinn, Thus, al law.” 739 F.2d at 1403. influenced, expressed easily were uncertain we conclude that the standard of review is, therefore, quite low. or uninformed the same for both infringement federal Further, possibility surveys that pendent those claims and state claims artificial or were unreflective of views presented here. We will questions review persons simply who notice of state novo and law de the factual conclu- during casual was shirts street encounters sions of likelihood of confusion under by by diminished the use of shirt tabs both clearly erroneous standard. years over several their sub- presence stantial in the shirt market. The B court, making in credibility determinations considering Strauss’s state trade evidence, weighing found Blue claim, infringement court, mark the district survey Bell’s evidence more credible than after that finding Strauss’s shirt tab trade concluded, that of Strauss. The court how- validly registered, erroneously mark was ever, parties’ that survey both evidence give failed to Strauss the pre benefit of a indicated that there was no reasonable like- sumption thereby it met its burden of customer lihood confusion. proof establishing the validity of this conclude, therefore, ultimate We trademark state registra under law. State finding of the district court of likelihood no “prima tion of a trademark constitutes fa was not clearly of confusion erroneous.11 the ownership cie evidence of of such mark ... the State California.” Cal.Bus. &

VI (West 1984). See, e.g., Prof.Code § complaint III and Counts IV of Strauss’s Foundation, Dairy North Carolina Inc. infringement alleged Foremost-McKesson, state Cal.App.3d v. rights, dilution of under 154 Cal.Rptr. its trademarks 106 n. 798 n. law, under competition state unfair 3369 of

section the California Code. Civil Moreover, the district court erred rejected when it Strauss’s state law trade A infringement largely mark claim on the recently suggested We have survey basis of evidence which was found infringement the standard of review for through reflective of consumer attitudes based defer claims state law is more out the continental United States. Certain than that Act deci ential used Lanham infringement state law trademark claims Shirt, sions. Monte Carlo v. Daewoo Inc. trial, may joined federal be with claims for (America) Corp., 707 F.2d either, International plaintiff prevail can on and a nei The state ther, Door, or both. Golden Inc. v. Od isho, Cir.1980); law-federal law distinction in was review In eliminated, however, McLinn, Daughters Matter ternational Job’s Order of holding might 11. Our is limited to the facts on this another manufacturer lead to a likelihood express opinion products record and we no to whether with manufactured confusion other some use of a Blue Bell or Strauss. *10 1362 912, (9th Co., Because we affirm the dismissal of the 633 F.2d 915-16

Lindeburg & action, 941, portions Cir.1980), denied, federal of Strauss’s how 452 U.S. 101 cert. ever, (1981). we leave discretion of the dis 3086, If confu L.Ed.2d 956 S.Ct. 69 question trict court the of whether exercise (the location of Strauss’s sion in California jurisdiction pendent purely over this shown, remedies un headquarters) can be appropriate state claim is or whether it may be available. der law California prejudice. should dismissed be without Gibbs, Mine v. 383 U.S. United Workers C 715, 727-29, 1139-40, 1130, 16 considering dilution Strauss’s Wham-O-Mfg. Co. claim, erroneously con the district Co., Manufacturing v. Paradise showing likelihood that absent a cluded 748, 753-54 We note that confusion, Strauss could not establish diversity jurisdiction does not exist be ex right to relief. The dilution statute tween the because both Strauss pressly possibility states that the of dilu Delaware, in incorporated Blue Bell are see for ground a trademark “shall be a tion of 1332(c), 28 U.S.C. and the sole basis notwithstanding injunctive relief ... jurisdiction the district court’s over di of confusion as to the source of absence pendent jurisdiction lution claim remains goods Prof.Code or services.” Cal.Bus. & 1338(b). under 28 U.S.C. § (West 1984). 14330 See Monte Carlo PART, JUDGMENT AFFIRMED IN VA- Shirt, 4; Toho, F.2d at n. 645 707 1058 CATED AND REMANDED IN PART. 793; Disney F.2d at Productions v. Walt (9th Pirates, F.2d 760 & n. 19 Air 581 NELSON, Judge, Circuit with whom Cir.1978), 99 BOOCHEVER, GOODWIN and Circuit (1979). Thus, 59 L.Ed.2d S.Ct. 94 Judges, join, concurring part in and dis- district court erred as a matter of law in senting part: in dismissing the dilution claim this ba sis alone. A, B, I II in concur Part sections VI, respectfully and C of Part but dissent

D opinion. from the remainder of The district court did not err Bell, Inc., In Levi Strauss & Co. v. Blue dismissing competi Strauss’s state unfair (9th Cir.1980) Belli”), (“Blue 632 F.2d 817 claim, tion since both protected pant pocket we Strauss’ public and a likelihood of confusion are against infringement Blue Bell’s in the cas See, required prevail. e.g., order to Al Here, pants ual market. seeks re Friedman, Corp. lied Pictures Artists places lief when the identical tab 127, 134-36, Cal.App.3d Cal.Rptr. pants on casual shirts. Casual and casual (1977); Witkin, Summary 98-99 7 B. goods” they “related com shirts are are — Law, Equity ed. §§ items,1 plementary through sold the same California 1974). trade,2 purc

channels of used the same hasers,3 price and sold within the same E range.4 There could be no clearer case for We, therefore, portion vacate application goods of the related doctrine. judgment dismissing Strauss’s dilution and pants satisfy every Casual and shirts one infringement state trademark claims and requirements protection. portions remand those applying action district court erred in not the re goods district court. lated doctrine to and shirts. London, E.g., E.g., Inc. v. Kasser 1. Valmor Products Co. v. Standard Products 3. Dunhill Alfred F.Supp. (1st Cir.1972). Corp., Corp., Distillers Products (3d Cir.1973). (E.D.Pa.1972), aff’d, 480 F.2d 917 E.g., Crystal, Valley David Inc. v. Soo London, E.g., Inc. v. Scoa Dunhill of Alfred (C.C.P.A.1973). Industries, (S.D.N.Y. U.S.P.Q. case, By summarily rejecting the related the district court truncated considera- *11 protection tion of Strauss’ claim claim, the district court did not even consid- its pant by saying only tab “pants meaning secondary pant pock- er shirts are different.” It refused to consid- market, the shirt an issue resolved et in proof that, er many Strauss’ in ways, pants in I. This should be done on and shirts are eyes “related” remand. consumers. rejection The district court’s of the relat- The casual and casual shirts at resulted, further, goods ed claim in its fail- issue here certainly goods. are related apply ure to the multi-factor framework set They items, are complementary brought to determining by forth our cases for likeli- through market the same channels of addition, In hood of consumer confusion. trade, by used purchasers, the same purport ap- where the district court did price sold within the same range. See ply the multi-factor test—in Strauss’ claim Sleekcraft, Furthermore, 599 F.2d at 350. infringement upon its shirt tab—it did Trademark courts routinely consider all Accordingly, incorrectly. so the case wearing apparel items of to be related. proper application should be remanded for See, Inc., e.g., In re USPQ Duofold of the multi-factor framework. (TT Bd.1974); & A Unlimited, In re Sox USPQ (TT Bd.1971); & A In

I. Yours, Cosmetically USPQ (TT re Bd.1971). & A The district court’s denial Related Goods Doctrine goods of related protection based its seeks two forms of relief this “pants articulated rationale that and shirts First, protection lawsuit. it seeks of its are different” should be reversed. pocket shirt in the shirt market. Blue directly Bell shirts and Strauss shirts are II. goods; competitive goods the related doc- Secondary Meaning inapplicable trine is to this contention. A. Strauss’s Pants versus Blue Bell’s However, protection Strauss also seeks Shirts. pant pocket its tab in the shirt market. When the district summarily reject- competitive goods, Pants and shirts are not goods claims, ed the related it failed to goods so the related doctrine should be secondary meaning pant consider the

used to determine if relief warranted. pocket tab. It should do so on remand goods goods which, Related are those applying goods when the related test. though identical, not are related in the clearly Blue IBell established the sec- minds of consumers. In Fleischmann Dis ondary meaning of pant tab. In that tilling Corp. Brewing v. Maier case, finding pant we affirmed a that the (9th Cir.), “pocket acquired tab trademark has a sec- 1870, 10 ondary meaning marketplace and is (1963), whiskey this circuit determined that garments distinctive of in com- [Strauss’] goods, and beer were related and reversed merce.” 632 F.2d at 821. We also held: judgment a district court that had denied “The evidence of protection solely trademark on the basis strong and the Strauss mark is entitled to products the two were “different.” scope protection.” (empha- a broad Id. Corp. Id. at 152. Yale Electric v. Rob added). sis Since the district court errone- ertson, (2d Cir.1928), 26 F.2d 972 the Sec ously thought this suit concerned Hand) (per Judge ond Circuit Learned held shirts, estoppel it ruled that collateral did protect that a lock manufacturer could be apply not I because Blue Bell concerned against infringement by ed However, pants. under the related flashlight manufacturer, despite doctrine, the differ the issue of underlying goods. pant part ences Yet in this tab is a of this action. It was 1975) (expensive goods likely moderately priced goods.) not to be confused with

litigated I marketing used; in Blue Bell two 5. channels litigation. ordinary princi- to this Under type good degree of care like- ples estoppel, parties of collateral cannot ly to be exercised purchaser; relitigate factual issues that were conclu- 7. defendant’s intent in selecting the sively determined in an earlier lawsuit. mark; and See, Shore, Hosiery e.g., Parklane Co. v. expansion likelihood of product 326 n. 649 n. U.S. S.Ct. lines; party 58 L.Ed.2d 552 Neither Id. at 348-49. suggests tab has been *12 agree I majority with the clearly altered since Bell I or Blue that consumers erroneous standard of review should be no longer pant associate the tab with applied to a trial court’s Therefore, determination of Strauss. under the doctrine of likelihood of only confusion—but if that estoppel, pant pocket collateral the Strauss determination through is arrived at tab has which should proper application of the multi-factor test. have been considered the district court The district court’s apply failure to considering goods the related claim of multi-factor test to the versus shirts infringement pant of Strauss’ tab claim, and its apply failure to all of that trademark.

test’s factors to the shirts versus shirts B. Strauss’ Shirts versus Blue Bell’s claim are They errors of law. must be

Shirts. reviewed de novo. Corp. See Bose v. Con- States, sumers Union United 466 agree I majority with the that Blue Bell I 485, 1949, 104 17, U.S. S.Ct. 1959-60 & n. does not have collateral estoppel effect (1984)(“Rule 80 52(a) does not upon finding of secondary meaning of the appellate inhibit an power court’s to correct shirt This tab. issue has never before law, errors of including those may litigated been by the parties. Secondary infect a so-called finding mixed of law and meaning pant tab does not necessar- fact, finding or a predicated that is on a ily tab, inhere in the shirt pant since the misunderstanding governing of the rule of registered tab was as location-specific law.”). Pizzeria Corp. Temple, Uno 747 trademark. Strauss, See In re Levi 165 1522, (4th Cir.1984) (“Nor F.2d will USPQ 348, (TT Bd.1970). & A clearly protect erroneous findings rule which have been made on the basis of the III. application legal of incorrect standards or Likelihood of Confusion disregard made in applicable legal stan- Our cases have defined a multi-factor ”); dards— Kentucky Fried Chicken framework to determine the likelihood of Corp. v. Packaging Corp., 549 Diversified consumer confusion. Corp. See New West 368, (5th Cir.1977) (if F.2d test applied Cal., Inc., v. NYM 1194, Co. law, is incorrect as a “findings matter of (9th Cir.1979); J.B. Williams v.Co. lose the ‘clearly shield of the erroneous’ Cosmetics, Inc., Le 187, Conte standard”). When, here, as the appropri- (9th Cir.1975), denied, cert. 424 U.S. legal applied ate standard is not at all or (1976); 96 S.Ct. 47 L.Ed.2d 317 applied incorrectly, necessary remand is for Plastics, Carolite, Inc., K-S-H Inc. v. 408 factual determinations to be made on the (9th Cir.), F.2d 396 U.S. legal basis the correct standard. Pull- (1969). 90 S.Ct. 24 L.Ed.2d 76 Swint, 273, 292, man-Standard v. 456 U.S. AMF Boats, Inc. v. 599 F.2d 341 Sleekcraft 1781, 1792, (1982); S.Ct. 72 L.Ed.2d 66 (9th Cir.1979) eight sets forth factors to be United Singer States v. Manufacturing considered: 194 n. strength mark; of the 1784 n. 10 L.Ed.2d 823 See Bose 2. proximity goods; of the Corp., 104 S.Ct. at 1959-60 n.& 17. 3. similarity marks; respect goods claim, With to the related confusion; evidence of actual ap- the district court should directed to be respect greater With to ply protection. the multi-factor test. Sleekcraft, claim, 354; West, 599 F.2d at the shirts versus shirt the district see also New 1202; apply court should be directed to that test Paul Original, Sachs F.2d at 215. properly. For the district court did while attempt apply the multi-factor test to the CONCLUSION claim, shirts versus shirts it failed to con- The majority sider all the relevant factors. I While concur Part II and in sections A, B, opinion attempts legitimize the district ofC Part VI of the majority opinion, I would court’s focus on one factor —the sur- reverse and remand this application case to the district court vey by characterizing that factor evidence— goods doctrine, the related a consideration stigmatizing as “direct evidence” and pant However, tab others as “circumstantial.” doctrine, related sufficiently district court’s failure to make application and for of this Circuit’s multi- findings detailed on some of the factors factor test infringement both the and its misconstruction of others cannot be Strauss’ Blue Bell’s shirt overlooked. infringement and the of Strauss’ shirt tab instance, *13 considering For when by Blue Bell’s shirt tab. strength respect of the mark with PART, CONCURRING IN DISSENT- tab, shirt the district court erred as IN ING PART. excluding a matter of law tab’s secondary meaning from its determination strength mark;

of the shirt tab’s

consequently, its conclusion that the shirt

tab is a weak mark cannot be sustained. channels, question marketing

On the the district court found that the fact that CO., INC., FARLEY TRANSPORTATION Strauss and Blue Bell shirts were sold Farley Co., Inc., Piggyback Terminal the same stores did not render confusion as Trailermate, Inc., Systems Terminal, like[ly] “more to occur.” It miscited a case Inc., Plaintiffs, proposition, this Interstate Brands v. Corp. v. Seasonings, Celestial (C.C.P.A.1978), and the rule is to the The SANTA FE TRAIL TRANSPORTA- contrary. COMPANY, al., et TION Defendants. question similarity On the ATCHISON, AND TOPEKA SANTA marks, the district court found that COMPANY, corpora- FE RAILWAY similarity of the marks by was reduced tion, Defendant/Counter-Claimant/Ap- point packag- Blue Bell’s distinctive of sale pellee, ing advertising proper materials. The however, inquiry, similarity considers the CO., FARLEY TRANSPORTATION of the marks as encountered consumers INC., Co., Inc., Farley Terminal throughout marketplace, and not mere- Plaintiff/Counter-Defendant/Appellant. ly point at the Lindy of sale. See Pen Co. Corp., v. Bic Pen No. 84-5947.

Cir.1984); I, 632 F.2d at 822. Appeals, States United Court

Finally, among the factors not even con- Ninth Circuit. sidered proximity district court were Argued Sept. Submitted goods, type goods, degree of care Decided Dec. by purchasers. exercised Nor did it consid- degree competition er between shirts,

Strauss’ shirts and Blue Bell’s al-

though highly competitive goods receive