*1 BANK, Plaintiff- HEARTLAND

Appellant, FINANCE,

HEARTLAND HOME

INC., Defendant-Appellee.

No. 02-2468. of Appeals, Court

United States

Eighth Circuit. 16, 2003. Jan.

Submitted: July

Filed: *2 Walsh, Louis, Thomas C. argued, registered St. Bank its Heartland mark with (K. Marshall, Louis, MO, MO Lee St. on the state of Missouri. In year, the same brief), appellant. for the Bank began using mark, “Heart- Mortgage,” land registered and Dee, mark argued, Chicago, Thomas R. IL (Chad with the state Both Schiefelbein, IL, marks are A. in Chicago, Jordan used in Cherrick, Fink, conjunction Jeffrey Louis, B. R. St. with char- Bank’s MO, brief), on the for appellee. acteristic wheat emblem. HHF is an HANSEN,* corporation Illinois in Judge,

Before Chief BRIGHT, SMITH, mortgage Judges. lending Circuit service business. HHF has used the word Heartland in its name BRIGHT, Judge. Circuit since its formation in Initially, HHF (“Bank”) Heartland brought Bank a operated in Illinois and Ohio. Today complaint against five-count Heartland does in twenty-five business states and (“HHF”) Finance, Home Inc. alleging un- almost exclusively telemarkets its services. n Act, fair competition under the Lanham 1998, February In HHF established an common law trade name service mark office in Missouri and began offering mort- infringement, service infringement gage financing in St. services Louis under and mark dilution under Missouri state name, its Heartland Home Finance. HHF law, and common competition. law unfair asserts that it has never used the name granted The district court several of Heartland Mortgage Missouri, Company in HHF’s motions to certain evidence exclude but uses that name Illinois. HHF’s and testimony. At the conclusion of the mark also features a emblem. wheat case, the district court granted motion judgment HHF’s for as a matter of According to the it initiated this law because the Bank failed to adduce action after receiving phone series of sufficient evidence of secondary meaning calls from complaining individuals to the and likelihood of confusion. Bank about HHF’s rude telemarketing The Bank appealed judgment and other conduct. Bank does not district court. We judgment vacate the engage in telemarketing. and remand for further proceedings and At the inception of this dispute, possible alternative sanctions consistent Bank’s outside counsel recognized that evi- opinion.

dence consumer confusion would be ad- I. vantageous First, BACKGROUND litigation. Bank Henry hired D. Ostberg to conduct a The Bank was in 1887 founded under survey to determine likelihood of con- Economy name adopted It Federal. fusion between the Bank HHF. The the name Heartland 1987. Since trial court eventually excluded this evi- it has time used the name continuous- at trial dence because the Bank ly services, failed banking including consum- loans, timely er make deposits, expert disclosure their checking business ac- counts, reports and originating pursuant refinancing the court’s case man- single family mortgages. agement Second, order. the outside coun- * stepped Honorable David R. Hansen close of business on March 2003. He has Judge down as Chief of the United States been succeeded Honorable James B. Appeals Eighth Court for the Circuit at the Loken. January this motion on entitled, denied Confu- “Name a form drafted sel 25, 2002. March date of a trial instructed and set Log,” Incident

sion form for each complete personnel 20, 2002, the Bank moved February On *3 person the believes inquiry call or where court denied discovery. The reopen to or the are related HHF Bank and that the to extend discov- and this motion refused by the simi- confused is otherwise person discovery cer- noted that ery. The court names. entities’ larity of the 13, 2001, by April tainly was foreclosed of this the results Bank counsel obtained court to vacate Bank asked the the when During dis- personnel. Bank from form date, not re- and did trial impending the re- to HHF’s responded the Bank covery, discovery an extension quest in- alleged all state that the Bank quest point. attorney- asserting of confusion stances to 5, 2002, days prior twenty March On pro- product privileges client and .work date, over its turned trial the Bank the discovery. Instead of logs the from tect pretrial HHF. disclo- This trial exhibits affidavits, forms, and the actual providing Inci- the Confusion sure included Name the instances that documented other items statements, forms, affi- Log witness dent confusion, Bank created summaries the davits, documents Bank and other to HHF those documents presented and disclosed, but which previously had not and called, Actual Confusion Incidents of Log of its Confusion the basis formed Confu- Incidents of Actual Supplemental received evi- When HHF Summaries.2 Log Summar- (collectively “Confusion sion dence, underlying docu- the compared it ies”). Log Summaries with the Confusion ments to oc- depositions scheduled parties the the arrived at conclusion and discovery deadline of Octo- the cur before and committed had misled HHF Bank depositions 31, But the before ber underlying the court on the because fraud tenta- representatives began, parties’ Log Confusion support did not documents through case to resolve the tively agreed basis, HHF made On this Summaries. settlement, can- depositions and the were on the which it served following motion De- through early celled. From October 25, Defendant’s of March 2002: trial date cember, exchanged settle- parties draft Al- Evidence of Bar Plaintiffs Motion memoranda. ment Confusion, of Actual Strike leged Incidents 18, 2001, before just days three April On Judgment Enter Pleadings, Plaintiffs 16, 2001, April the trial date of At- Defendant Plaintiff and Award Against unilaterally informed torneys’ Fees Costs. finalizing settlement parties In this motion the defendant described be stricken. the trial date asked that coun- the conduct trial canceling the entered an order court a fraud upon perpetration sel “the provide ordering the Bank date and “offend[s] and the HHF Court” which by May with papers settlement justice.” play notions of fair most basic 11, 2001, May face dismissal. On trial, day first On March enforce moved the district ex- motion to considered HHF’s The district agreement.1 settlement included about materials were vehemently dispute the facts These parties 1. The process, those surrounding but the settlement 250 exhibits. of this disputes are material to the issues appeal. Summaries, (3) elude the Confusion Item 7 in the summary stated: documents, underlying from “Ms. Stefan complained about rude any witnesses connected to these items. In treatment by Heartland Home Finance (sic) summaries, each which consisted of which he mistook to be Heartland twenty-seven entries, discovery fact, re- Bank.” In proposed Trial Exhibit sponse essence asserted per- 89 shows that Ms. Stefan actually com- contacting sons complained plained about “Heartland Mortgage.” rude treatment from which the re- After employee the bank taking the call cipient of the treatment mistook to be the informed Ms. Stefan possible about con- *4 However, fusion, Bank. the reports exam- Ms. Stefan “called back after she by ined report- revealed that the found Heartland Mortgage Centers on ing person, with one exception, [illegible] stated Lind Ave.” the contact or call came from “Heartland (4) Sellers, Item Eileen in the sum- Mortgage.” The reporting individuals did mary stated: “Ms. complained Sellers not use the name “Heartland Home.Fi- about rude treatment Heartland nance,” nor could each one of the entries Home Finance which she mistook to be necessarily be to HHF. attributed Heartland Bank.” The Bank’s proposed Trial Exhibit showed that Ms. Sellers calls, At the time of the a company not received a call from “Heartland Mort- affiliated with party either operated in St. gage.” Proposed Trial Exhibit Louis under the name of Heartland Mort- Bank, statement taken by the reveals “e”). gage (spelled Centers without the that Ms. Sellers tried to trace the tele- Moreover, HHF operates as Heartland ’ marketing call she from in- received an Mortgage only in At no time Illinois. dividual named “Joe Schnell.” After plaintiff definitively established that each unsuccessful, that was Ms. Sellers and entry in the Confusion Summaries is her husband “resorted to phone directly most, attributable to HHF. At book, They book.” phone looked in the only would a possibility. Obviously, saw, “Heartland Mortgage,” the happened what plaintiffs is that attorneys mortgage division of the Bank. Upon put their own spin log, on the spin calling the a Bank informed Ms. has not been substantiated. Sellers the existence of HHF. Ms. The trial court following discussed the Sellers then “looked in the phoné book incidents with counsel when she consid- and contacted Home Fi- Heartland ered HHF’s motion to exclude: nance.” Ms. Sellers to a spoke manager (1) who confirmed that Joe Schnell was an Item 3 in summary stated: employee. “Unidentified complained female caller

about rude treatment Heartland only entry Item is the in the Confusion Home Finance she which mistook to be Log Summaries alleged where the rude fact, the Heartland Bank.” In proposed call is shown to have emanated from HHF. Trial Exhibit disclosed that the caller However, it is not clear that Ms. Sellers only stated that she had received a call associated that call Bank. She from Mortgage. Heartland called an effort to trace - call. (2) 5, Marge Dodta, Item the sum- n mary and proposed sum, Trial Exhibit 87 the court examined four of essentially were items, same twenty-seven as Item 3 clearly and three above. served mislead HHF. The trial court said, Finance,” “Heart- Home produced have should

ruled Mortgage.” land “at least as ear- underlying documents motion to when the January” ly as 27). (Tr. at denied, and the settlement was enforce action in dis- viewed counsel’s The court un- the documents nondisclosure Bank’s stating, highly improper, “[T]he covery trial was inexcusa- days before twenty til summary is not reflect of this purpose found Additionally, ble. to reflect what logic is but your what Log Summaries were Confusion accurately.” do so say documents many of misleading” because “clearly 30). (Tr. added: the caller forms did reflect log Now, these summar- they did receive Home Finance.” “Heartland actually said inaccurate and clearly which were ies were based Log Summaries Confusion as- essentially represented why peo- about assumption the Bank’s say- people what were about sumption accurately than confused “rather ple reflecting accurately rather than ing, say and the documents reflecting what say and what the documents what *5 actually Rejecting said.” the callers what misleading. actually said. That’s callers that be entered request judgment HHF’s exclud- the court instead the against accurately re- they don’t And because at trial and logs as evidence the actual ed callers, they was said these flect what offering the testi- the Bank from precluded what was accurately reflect don’t even nine witnesses and mony third-party who took by your employees reported employees. two misleading. they’re these calls. And court, the before During the discussion misleading. Clearly following made the court judge district the 85-36). (Tr. at The court asked rulings. comments an oral determination The court made HHF for re- and counsel prejudice about stating: issue on the sanctions plied: is Now, the defendant I think the They wrong DEE: have MR. appropri- is that some sanction correct They’re suing Your company, Honor. I don’t believe that ate in this case. gone have wrong parties here. We the is the judgment in the form of a sanction years spent two-and-a-half through are remedy, because there appropriate money fighting a my too much client’s I think will address lesser remedies company. wrong the against that is case mis- plaintiffs the the issue and address against wrong They knew was plaintiff depriving conduct short that it They the facts company. hid relief in the any pursue to opportunity wrong They can’t against company. case. that when the caller around the fact get you whether either of I don’t know said, they Mortgage,” told “Heartland say to issue anything has further said, “Heartland Home us—the caller But, clearly, I grant will of sanctions. Finance.” a verified defendant leave submit that it said, attorney’s fees statement of the that the caller they had told If us present- incurred in connection Mortgage,” the case would “Heartland Court; and I will this motion to ing This different. entire completely be make a determination about reason- the fact claim upon case is based attorney’s fees costs said, award of able “Heartland that all these callers to be assessed to the defendant and but the adduced no evidence of any against this case. “association customers make between the far and the bank.” In regard As as these documents are con- prov- cerned, ing confusion, appear documents that un- district court con- any testimony der Tab H and cluded that relating Bank’s evidence of portion contained in docu- confusion Bryan those was that Morak’s mother ments, I am going present not to let you mistakenly believed that her son was em- you if you that. So have who ployed by witnesses the Bank when in fact he was call going to to talk about employed by these HHF. The court determined of actual reports confusion that are re- it was clear Mrs. Morak was con- H, flected I am going fused, Exhibit but there was no evidence about you permit present testimony, precisely what prompted her confusion. you nor will permitted to present Ultimately, stated, guess “So I evidence on that issue. line is that bottom this lack of evidence on issue of secondary (Tr. 36-37). mean- is, view, ing in my fatal to Thereafter, proceeded case to trial case.” jury. before a The Bank’s took four case hours; it called five witnesses offered motion Bank’s for reconsideration eleven exhibits into evidence. One of the was denied and the district court entered witnesses, Morak, Bryan a former judgment HHF on March employee, testify was not allowed to appeal This followed. *6 that he believed he had been working for

the Bank when he was working for HHF. II. DISCUSSION The trial court prohibited this of line testi- A. Exclusion of Actual Confusion Evi- mony because the Bank notify failed dence Testimony HHF of Morak’s potential testimony in advance of the trial. We review sanctions imposed un

At case, the close of the Bank’s the trial der either Rule 37 of the Federal of Rules granted court HHF’s motion judgment for Civil or power Procedure the inherent of aas matter of law based on the Bank’s the district court for abuse of discretion. failure to establish secondary meaning in Martin v. DaimlerChrysler Corp., 251 (8th Cir.2001). its marks or a likelihood of confusion. On F.3d 694 We have secondary meaning, the court held that characterized this “very review as deferen (1) the Bank had established: it had used tial” and stressed that we “will not inter the name “Heartland” continuously since great fere with the latitude by exercised (2) 1987; it had made considerable efforts the district discovery court in matters.” generate advertise its name and good Sylla-Sawdon Uniroyal v. Goodrich Tire (3) will in the community; Co., (8th expanded Cir.1995). it had 47 F.3d Our its operations throughout duty the St. Louis just is scrutinize not the conclusion metropolitan However, area since 1987. court, by reached the district but “to ex the Bank failed prove that “its mark amine respect with care and process has become associated in the up mind led to it.” Bonds v. District public as identifying Columbia, goods (D.C.Cir.1996) source 93 F.3d or services.” The district court acknowl- (quoting Founding Church Scientology edged Webster, (D.C.Cir. that there are “a ways number 802 F.2d 1986)). that [secondary meaning] proved” can be decision, Misleading ii. Disclosure arriving at its sanctions

In the nature explained ground The district court’s second (1) docu “these misconduct: the Bank’s Log excluding the Bank’s Confusion (2) disclosed”; and timely ments were was Summaries summarizing these docu “the information HHF initial disclosure to that the Bank’s time that misleading at the was ments Log of the Confusion Summar in the form (Tr. at to the defendant.” presented of The court misleading. had been ies 38). these both of will examine We as, prong the second reasoning its fered in turn. for exclusion grounds- inac clearly were “these summaries which essentially the represented

curate people about what plaintiffs assumption Untimely Disclosure i. accurately than re saying, rather to shift the repeatedly tries say and what the documents flecting what arguing for its nondisclosure blame mislead actually said. That’s the callers underlying doc- requested HHF never (Tr. 35). Moreover, as we have at ing.” However, 2000, during July uments. observed, correctly ex the district docu- discovery, requested “[a]ll summary is purpose this plained, “[T]he evidencing reflecting or things ments your logic is but not to reflect what confusion, or mistake deception, any actual do say documents and to reflect what the by any of the use of arising out (Tr. 30). accurately.” so Brief, Bank clari- Reply its party.” In court, the Bank to this its briefs that HHF argument its to indicate fies defend Confusion Sum- attempts to its underlying asked for the docu- should have characterizing them as “perfect- maries the trial court denied again after ments advocacy” interpretive ly proper to enforce settlement. the motion Although it “logical of a deduction.” result rejected this appropriately district argument explicitly makes never reasoning. The Bank was under line of support, offers case law evi- continuing obligation to disclose its *7 its to contend that Confusion also seems initially it. requested once HHF dence misleading be- Log Summaries are reject Bank’s conten- Similarly, we allegations of confu- only cause are discussions tions that once settlement how a mis- sion. fail to understand We cancelled, depositions were started and allegation of an of actual leading instance disclose, and obligation it under no misleading actual confusion differs from underlying its Confu- that the documents confusion, why it would be instance Log privileged. were sion Summaries for the Bank to mislead proper any privi- had withdrawn claims of arguments allegations. regard These Bank’s con- lege by and the October unworthy advocacy. frivolous and are n tinuing obligation required produce that it luxury of a written do not have We n possessed any nonprivileged documents cannot be in this case and so we order to introduce them at trial. if it wanted the district about the extent of certain examination of the Confu- court not err in deter- court’s The district did rec- A review of the Log sion disclosure. mining untimely that the Bank’s disclosure the materials the district type remedy ord reveals HHF to some entitled ruling on the had it while examine the before the form of sanction. We HHF’s motion with an motion: imposed court’s sanction be- sanctions extent of the the Confusion comparing attached chart low. Log underlying origi- Summaries with the obstructionist conduct on part plain- nal documents sought to have Nonetheless, tiff and attorneys. its exhibits; into admitted evidence as trial record does not substantiate the breadth Summaries; Log the Confusion and all of the sanction imposed by the district underlying original documents. How- court. ever, the trial transcript indicates that the The court did consider some alternative explicitly discussed four of the “I sanctions: don’t believe that a sanction twenty-seven entries parties with the in the form of a judgment is the appropri- three clearly misleading. Naturally, ate remedy, because there are lesser rem- transcript does not reveal whether the I edies that think will address the issue court considered the comparison chart and address plaintiffs misconduct prior to trial or at some point prior other short of depriving the plaintiff any op- ruling. portunity pursue relief in this case.” record, Based on this we cannot be cer- (Tr. 36). However, the district court’s tain that the district court considered each decision to exclude the Bank’s nine third- recorded instance of individually confusion party witnesses and two employees and assessed whether or not it was mis- from testifying was tantamount to a dis- leading. appears It judged missal of its claims. Without the excluded Log Confusion Summaries their en- evidence, the Bank could not show tirety and excluded witnesses and evidence case on confusion. The district court based on a somewhat limited review. should have considered possibility Moreover, the prejudice for the sanctions, lesser perhaps excluding only may trial in question. Defendant’s certain items of evidence from the Confu- principal complaint seems to be that it has Summaries, sion granting HHF a con- spent years more than in litigation two tinuance, imposing monetary sanc- and/or having without the true facts underlying tions relating to abuse of discovery upon complaint, having and now plaintiffs counsel and upon plaintiff. facts, the true complaint is unfounded. litigation The waste of time can be com- III.

pensated by CONCLUSION appropriate monetary sanc- tions. Whether so-called contacts to We remand the threshold matter of persons various came from HHF remains striking proposed all the witness open question. an may It well be that on confusion and remand for reconsidera- plaintiff cannot show confusion with alleged tion of all the discovery abuses *8 twenty-seven the items contained in its counsel, plaintiff and and for consideration disclosures. In that circumstance its ac- of whether the late prejudiced disclosure fail, tion will but it is entitled to trial on ability defendant’s to considering defend the merits. of all the matters disclosed. We need not any address other by claims raised

iii. Appropriateness of Bank.3 Imposed Sanctions are loath to vacate judgment We reverse a We and remand for district court’s sanction in the face of clearly such further consideration of the sanctions con- join separate I do not in the unnecessary concurrence of at this time to address the mat- Smith, Judge joined by Judge Hansen. The upon separate ters commented in the concur- may record on remand well be different than rence. Thus, appeal. the record on this I believe it is second- basically the essence of establish entry and the opinion- with

sistent number are a meaning. There ary costs are No order. appropriate an however, proved; that that can be ways appeal. awarded on this proved has not SMITH, with whom Judge, Circuit in the mind mark has become associated HANSEN, joins, Judge, Circuit provided services public with concurring. with Heart- or associated bank land Bank. but I majority opinion, with the

I concur as to the There’s been no evidence aris- an issue separately address write advertising has had that all of this effect judg- grant the district court’s ing from potential or customers of on customers to HHF. Because matter of as a law ment potential consumers the bank deci- court’s vacated the district we have There has been no products. bank’s proceed- for further and remanded sion that of association cus- evidence in- clarify precedents our ings, I write to and the the mark tomers make between that can be type of evidence volving of actual confu- And on the issue bank. a trademark case. used sion, that at some talked about we’ve raised two issues appeal, On only evidence of already, the length discovery sanctions. addition to the from the confusion at all testimo- comes judg- court’s appealed district regarding Mrs. Mo- ny of the witnesses 1) the issues of a matter of law on ment as mistakenly rak, be- apparently, who was inher- the Bank’s trademark employed her son was lieved that the Bank made a or that ently distinctive he Bank when in fact Heartland secondary meaning, case of submissible Home employed by Finance. Heartland 2) holding erred in and whether recognized Although the district confusion sur- that evidence ways” that “there are number necessary to create a are vey evidence likelihood of confu- secondary meaning and of confusion. case likelihood submissible it concluded that the proven, can be sion the dis- challenges Principally, provide consumer studies Bank’s failure concern- application of the law court’s trict The court’s fatal to its claim. alone needed to estab- type of evidence ing gave no consideration analysis secondary meaning and likelihood lish advertising cam- as the extent of its such confusion. market, and the length of use paign, Meaning or Inherent Secondary mark. The promote money spent Distinctiveness is thus out-of-line district court’s decision persuasive precedent relevant au- HHF’s oral granted thorities. matter of law judgment as a motion stating part: in relevant remand,

after if court deter- the district On inherently is not between mines trademark dispute I think there is no distinctive, court must then the consider obligation parties as to the *9 Bank” the name “Heartland has meaning as an whether secondary to establish In secondary meaning. order regard, acquired in this of its claim. And element secondary meaning, the user of a prove or establish plaintiff has establish by long show that exclu- in mark must has associated that its mark become goods or ser- use of identifying the sive sale public mind of the as vices, so associated the mark become And that is has goods of or source services.

819 mind in the public goods case, with such or a survey necessary prove is that the mark to identify services serves secondary However, meaning. survey goods the source of the and to distinguish data is requirement not a and secondary them from those of others. Aromatique, be, meaning is, can and most prov- often Seal, Inc., 863, Inc. v. Gold 28 F.3d 870 en circumstantial evidence. The other (8th Cir.1994); Products, Co-Rect Inc. v. traditional manner of proving secondary Inc., Marvy! Advertising Photography, meaning byis circumstantial evidence of (8th Cir.1985). 780 F.2d 1330 In the seller’s in advertising efforts determining whether is secondary there mark throughout a wide of group pro- “the meaning, inquiry chief is whether in spective buyers. Such circumstantial the consumer’s mind the mark has become evidence can of consist evidence of the particular associated with a source.” Aro seller, size of the the number of actual Inc., 871; matique, 28 F.3d at Co-Rect made, large sales amounts spent pro- Products, Inc., 780 F.2d at 1332-33. motion advertising, scope of publicity given mark, Generally, surveys consumer and testi- simi- lar mony showing evidence may consumers be wide exposure direct secondary buyer meaning evidence class to the mark in question. should be considered in determining whether a § McCarthy, addition, 15.30. In McCarthy acquired mark has meaning. such Co- notes that usually courts consider the fol- Products, Inc., Rect 780 F.2d at 1333 n. 9 lowing factors in determining whether a added). However, if (emphasis such direct term acquired secondary meaning: absent, is evidence the court must consider Direct Evidence: secondary meaning can be in- ferred from the present- indirect evidence 1. Direct consumer Inc., ed. Aromatique, 28 F.3d at 871. survey Consumer Direct or indirect can evidence be used Circumstantial Evidence: secondary establish meaning, or “ac- 1. Exclusivity, length and manner of 2 quired distinctiveness.” J. Thomas use McCarthy, McCarthy Trademarks and Competition, 15:30, 15:61, Sections 2. Amount and manner advertising Unfair (4th ed.1999); also, and 15:70 15:66 see 3. Amount of sales and number of cus- re Display Inc., Ennco Systems tomers (2000). U.S.P.Q.2d 1279, 1283 Direct evi- place Established in the market dence declarations, includes testimony, 5. Proof of surveys copying intentional consumers to their state of mind. Id. evidence Circumstantial is evi- Accord, Id. Davoil, L.D. Kichler Co. v. dence from which consumer association Inc., (Fed.Cir.1999) 192 F.3d inferred, might years use, such as 1052(f) (noting § that 15 U.S.C.A. indicates amount extensive and advertising, sales prima that it is facie evidence of distinc and any additional showing evidence wide if tiveness exclusively trademark used exposure of the mark to consumers. Id. continuously years); for five Stuart Hall

McCarthy further type discusses the of Company, Inc. Ampad Corp., 51 F.3d that can establish a claim of sec- (8th Cir.1995); American Scienti ondary meaning, stating: Chemical, Inc. Hospital v. American fic Some courts given (9th have broad Supply Corp., hints 690 F.2d Cir. *10 1982).

that when a less than clear

820 source. 780 F.2d at particular a can with case, evidence circumstantial

In of, and acknowledged that the effect burden of party’s a We to meet be sufficient fact, of, advertising in con a is the a claim. not the extent proof to establish effective, the case, evidence and to be trolling inquiry, circumstantial trademark to establish to public is available must cause the may be all that advertising of sec proof “Direct secondary meaning. source. product’s the mark with the equate to obtain.” is difficult ondary meaning not find the court did second Although Id. v. Burke-Parsons-Bowlby Corporation ad meaning particular based on the ary Inc., Homes, 871 F.2d Appalachian case, did in that vertising efforts court Cir.1989). (6th circuits Various 596 finding secondary of mean preclude not in the ab recognize that and authorities survey evidence. consumer ing without draw must proof, direct sence of Rather, sur court noted that consumer from the evidence of inferences reasonable available, if would be considered veys, advertising to establish money spent factor, than rather an additional source, particular from a mark is that the factor, determining main or used, long- advertising of type of of the meaning. secondary acquired mark has mark, vol and sales usage term also, 9; Equip n. see Truck Id. 1333 Id,.; Colby President & Trustees ume. Cor Company v. ment Service Fruehauf Colby College-New Hampshire, v. College Cir.1976) (8th (dis F.2d 1210 poration, 536 Cir.1975) (normal (1st conse 508 F.2d 804 direct properly relied on both trict court may publicity be of' substantial quences ev testimony and circumstantial consumer inferred); v. Digest Association Reader’s find design copying trademark idence Digest, 821 F.2d Conservative Anheuser-Busch Inc. v. infringement); (“... (D.C.Cir.1987) say proof of that F.2d 631 Brewery Company, 750 Stroh sales advertising and substantial extensive Cir.1984) (8th (survey helpful evidence secondary mean may probative reaction). gauging public common defy logic both and ing is acknowledged sense.”), The district ground on a not rele abrogated Inc., case, circumstantial evi- Fantasy, presented Fogerty this vant to continuously L.Ed.2d it had 114 S.Ct. dence that used 510 U.S. (1994); 1987; Corp. Yamaha International “Heartland Bank” since name (Fed. Co., 840 v. Hoshino Gakki F.2d it had considerable amounts expended (no Cir.1988) obligation to sur introduce ad- money personnel publish and secondary mean vey to establish evidence Bank” and to name “Heartland vertise the Travel, Inc. v. Associ ing); Echo Travel community in the generate good will (7th Cir.1989) ates, Inc., 870 F.2d 1264 activities; through charitable various (court “McCarthy" circumstan evaluated five-million dol- spent approximately it had factors to evaluate existence tial evidence years on lars or more for several advertis- of con secondary meaning in absence promote ing marketing in survey sumer evidence evidence product; grown that it has name copying). tentional throughout the St. expanded since 1987 area; that it had metropolitan Louis Products, Inc., recog- we In Co-Rect entity provides itself as .an “promoted various forms of evidence could nized that service personal service and individualized as the secondary meaning long establish so Century. 19th since the to customers” “through evidence showed However, district court discounted advertising” had long use and an exclusive determining that the did in the mind” public “become so associated

821 not connect this circumstantial evidence to alone is enough not to establish a trade- impact may an have had on consumers mark infringement or service mark in- provide any fringement and failed to direct consumer under state or federal law. such, impact. of that As confusion, Likelihood like secondary court failed to district consider the circum- meaning, can be through established either merits, evidence on stantial own its direct or circumstantial evidence. In Co instead determined the circumstantial Prods., Inc., llect we established that the evidence had to be tied to “impact” evi- following six factors are to be considered type dence of the noted as “direct evi- in determining whether likelihood of con dence” for the to establish a case of (1) fusion exists: the strength of the own secondary meaning. Clearly, this is not (2) mark; er’s the similarity between the required. require To proof level of owner’s mark and alleged infringer’s eliminate the use of would circumstantial (3) mark; degree to which the prod evidence to establish a through case rea- (4) other; compete ucts al each sonable inferences in one area of law. leged infringer’s intent “pass off’ its (5) goods owner; as those of incidents 2. Likelihood of Confusion (6) confusion; of actual type argues Bank also costs, product, its and conditions of pur in refusing erred to submit to the jury the *Bit, chase. Insty See also Poly- Inc. v. issue likelihood of holding confusion Industries, Inc., (8th Tech 95 F.3d 667 that evidence actual confusion and sur- Cir.1996); Duluth News-Tribune v. Mesa evidence were vey necessary the case. Co., (8th bi Publishing F.3d 1096 stated: Cir.1996); Anheuser-Busch, Inc. v. Bal Publications, (8th ducci 28 F.3d

And there’s no any evidence of likeli- Cir.1994). factors, however, These hood of confusion. do There has been no operate in a mathematically precise evidence that formu plaintiff partook or la; instead, the any weight relative of the fac undertook or consumer studies sur- depends tors veys the facts of the to determine individual public case. First Bank in any confusion National Sioux likely or is to be con- Falls Dakota, v. First National South similarity fused of the names of (8th Cir.1998). F.3d companies. two My recollection our from discussion on McCarthy notes that there are at least one of the yesterday motions in limine three evidentiary to prove routes a likeli- was that there was no evidence that the confusion-survey evidence, hood of evi- produce could plaintiff on that point; confusion, dence of actual argument and/or is, not do any did con- arising judi- based on an inference from a sumer studies. And there were no re- comparison cial conflicting of the marks ports such that were con- studies themselves and the of their context use in ducted. marketplace. McCarthy, § 23:63.

So all we have route, is evidence of two Under the third it would not be companies that both are involved in the necessary testify witness to as to industry financial mortgage confusion, indus- instances of for evi- —the try both of whom use the name dence of actual is not neces- confusion —and word, “Heartland,” in their sary names. prove likelihood or probability And do Thus, both business in a similar of confusion. the decision-maker area, geographical that evidence by inspection but can decide the issue *12 circumstantial understanding that evidence and their manner conflicting marks discussed, sufficient to establish alone can be this is not previously use. As likeli- secondary meaning and elements of as whether subjective judgment a in claim for of confusion a trademark Examiner hood Trademark jury or judge, confused, infringement. but rath- personally would cus- ordinary, prudent er, likely marketplace would

tomer Perlman As Professor

be confused. out, litigation in trademark

points of mind are states whose

persons parties to the case: are not

issue proof on infringement turns

Trademark mind of a class of likely of the state LINVILLE, Appellant, A. Scott particular persons—consumers—in considering are context—when None of goods or services.

purchase of COMPANY, SEARS, AND ROEBUCK party is a to the law- class relevant Foreign Corporation New specific there is no Consequently, suit. York; Appellee. proved by to be direct or action event No. 02-3329. evidence; purchasers the likelihood that ultimately rest on confused must will be Appeals, States Court of United from circum- to be drawn the inference Eighth Circuit. evidence. stantial June 2003. Submitted: Id. Filed: June forms of presence Despite these evidence, En Rehearing Rehearing the district relied Banc evidence such as consum- Aug. the lack of direct Denied: surveys and did not focus on the er of direct

itself. The court’s exclusive use improper considering the

evidence by and other circuits to

test used likelihood confusion

determine whether presented. the evidence

exists based on discounted

Such evidence name, i.e., use same

district court — area, geographical in same

operating un- analyzed when may be sufficient

etc.— noted, example, test factors der the News-Tribune, *Bit, Inc., Duluth

Insty Inc.,

Anheuser-Busch, National and First however, Here, Falls. Sioux analyze did not the evidence such, on remand these factors. As

under court to necessary for the district will be the direct and circumstantial

evaluate both offered Bank with