text:
335 F.3d 141

VIRGIN ENTERPRISES LTD., Plaintiff-Appellant,
v.
Tahir NAWAB, Nathan Erlich, Simon Blitz, Daniel Gazal, Gerald Wren, Bob Wroblewski, Corporation Solutions, LLC, Cel-Net Communication, Inc., the Cellular Network Communication Group, Inc., d/b/a CNCG, SD Telecommunications Inc., Virgin Wireless, Inc., Iwaycity, and Virginwireless.com, Defendants-Appellees.

Docket No. 02-7491.

United States Court of Appeals, Second Circuit.

Argued: August 5, 2002.

Decided: July 11, 2003.

James W. Dabney (Catherine M. Clayton, Melissa A. Antonecchia, on the brief), Pennie & Edmonds LLP, New York, NY, for Appellant.

Kevin J. Harrington (John C. Mascari, on the brief), Harrington, Ocko & Monk, LLP, White Plains, NY, for Appellees.

Before: LEVAL, CALABRESI, and POOLER, Circuit Judges.

LEVAL, Circuit Judge.

1
Plaintiff Virgin Enterprises Limited ("VEL" or "plaintiff") appeals from the denial of its motion for a preliminary injunction. This suit, brought under § 32 of the Lanham Act, 15 U.S.C. § 1114(1), alleges that defendants infringed plaintiff's rights in the registered mark VIRGIN by operating retail stores selling wireless telephones and related accessories and services under the trade name VIRGIN WIRELESS. The United States District Court for the Eastern District of New York (Sifton, J.) denied plaintiff's motion for a preliminary injunction, based upon its finding that plaintiff's registration did not cover the retail sale of wireless telephones and related products, and that plaintiff failed to show a likelihood of consumer confusion.

2
We find that the plaintiff is likely to succeed on the merits and was entitled to a preliminary injunction. We therefore reverse and remand with instructions to enter a preliminary injunction.1

BACKGROUND

3
Plaintiff VEL, a corporation with its principal place of business in London, owns U.S. Registration No. 1,851,817 ("the 817 Registration"), filed on May 5, 1991, and registered on August 30, 1994, for the VIRGIN mark as applied to "retail store services in the fields of ... computers and electronic apparatus" (emphasis added). Plaintiff filed an affidavit of continuing use, pursuant to 15 U.S.C. § 1058(a), on April 27, 2000, which averred that plaintiff had used the mark in connection with retail store services selling computers and electronic apparatus. Plaintiff also owns U.S. Registration No. 1,852,776 ("the 776 Registration"), filed on May 9, 1991, and registered on September 6, 1994, for a stylized version of the VIRGIN mark for use in connection with "retail store services in the fields of ... computers and electronic apparatus," and U.S. Registration No. 1,863,353 ("the 353 Registration"), filed on May 19, 1992, and registered on November 15, 1994, for the VIRGIN MEGASTORE mark. It is undisputed that these three registrations have become incontestable pursuant to 15 U.S.C. § 1065.

4
VEL, either directly or through corporate affiliates, operates various businesses worldwide under the trade name VIRGIN, including an airline, large-scale record stores called Virgin Megastores, and an internet information service. Plaintiff or its affiliates also market a variety of goods branded with the VIRGIN name, including music recordings, computer games, books, and luggage. Three of plaintiff's megastores are located in the New York area. According to an affidavit submitted to the district court in support of plaintiff's application for preliminary injunction, Virgin Megastores sell a variety of electronic apparatus, including video game systems, portable CD players, disposable cameras, and DVD players. These stores advertise in a variety of media, including radio.

5
Defendants Simon Blitz and Daniel Gazal are the sole shareholders of defendants Cel-Net Communications, Inc. ("Cel-Net"); The Cellular Network Communications, Inc., doing business as CNCG ("CNCG"); and SD Telecommunications, Inc. ("SD Telecom"). Blitz and Gazal formed Cel-Net in 1993 to sell retail wireless telephones and services in the New York area. Later, they formed CNCG to sell wireless phones and services on the wholesale level. CNCG now sells wireless phones and services to more than 400 independent wireless retailers. In 1998, Cel-Net received permission from New York State regulators to resell telephone services within the state.

6
Around 1999, Andrew Kastein, a vice-president of CNCG, began to develop a Cel-Net brand of wireless telecommunications products. In early 1999, Cel-Net entered into negotiations with the Sprint PCS network to provide telecommunications services for resale by Cel-Net. In August 1999, Cel-Net retained the law firm Pennie & Edmonds to determine the availability of possible service marks for Cel-Net. Pennie & Edmonds associate Elizabeth Langston researched for Kastein a list of possible service marks; among the marks Cel-Net asked to have researched was VIRGIN. Defendants claim that Langston told Cel-Net officer Simon Corney that VIRGIN was available for use in the telecommunications field. Plaintiff disputed this, offering an affidavit from Langston that she informed defendants that she would not search the VIRGIN mark because her firm represented plaintiff.2

7
According to defendants, in December 1999, Cel-Net retained Corporate Solutions, LLC and its principals Nathan Erlich and Tahir Nawab as joint venture partners to help raise capital to launch Cel-Net's wireless telephone service. On December 2, 1999, Erlich and Nawab filed four intent-to-use applications with the U.S. Patent and Trademark Office ("PTO") to register the marks VIRGIN WIRELESS, VIRGIN MOBILE, VIRGIN COMMUNICATIONS, and VIRGIN NET in the field of telecommunications services, class 38. On December 24, 1999, Corporate Solutions incorporated defendant Virgin Wireless, Inc. ("VWI") and licensed to VWI the right to use the marks VIRGIN WIRELESS and VIRGIN MOBILE. Meanwhile, one of plaintiff's affiliates had begun to offer wireless telecommunication services bearing the VIRGIN mark in the United Kingdom. A press release dated November 19, 1999, found on plaintiff's website, stated that its Virgin Mobile wireless services were operable in the United States.

8
On June 23, 2000, defendant Blitz signed a lease under the name Virgin Wireless for a kiosk location in South Shore Mall in Long Island from which to re-sell AT & T wireless services, telephones, and accessories under the retail name Virgin Wireless. Defendants Cel-Net and VWI later expanded their telecommunications re-sale operations to include two retail stores and four additional retail kiosks in malls in the New York area and in Pennsylvania. All of these stores have been run by VWI under the trade name VIRGIN WIRELESS. VWI also has leases and bank accounts in its name, and has shown evidence of actual retail transactions and newspaper advertisements.

9
In August 2000, plaintiff licensed Virgin Mobile USA, LLC, to use the VIRGIN mark for wireless telecommunications services in the United States. On August 10, 2000, plaintiff filed an intent-to-use application with the PTO for use of the VIRGIN mark in the United States on telecommunications services and mobile telephones. On October 11, 2001, the PTO suspended this mark's registration in international class 9, which covers wireless telephones, and class 38, which covers telecommunications services, because the VIRGIN mark was already reserved by a prior filing, presumably defendants'. On August 16, 2001, plaintiff filed another intent-to-use application for the mark VIRGIN MOBILE to brand telecommunications services. The PTO issued a non-final action letter for both of plaintiff's pending new registrations on October 31, 2001, which stated that defendant Corporation Solutions' pending applications for similar marks in the same class could give rise to "a likelihood of confusion." The PTO suspended action on plaintiff's application pending the processing of Corporation Solutions' applications.

10
In October 2001, plaintiff issued a press release announcing that it was offering wireless telecommunications services and mobile telephones in the United States.

11
Plaintiff became aware of Corporation Solutions' application for registration of the VIRGIN WIRELESS and VIRGIN MOBILE marks by May 2000. In October 2001 and December 2001, defendant VWI filed suits against plaintiff in the federal district courts in Arizona and Delaware, alleging that plaintiff was using VWI's mark. Plaintiff maintains (and the district court found) that it learned in January 2002 that VWI and Cel-Net were operating kiosks under the VIRGIN WIRELESS name and two days later filed the present suit seeking to enjoin defendants from selling mobile phones in VIRGIN-branded retail stores.

12
On May 2, 2002, the district court considered plaintiff's application for a preliminary injunction. It found that no essential facts were in dispute, and therefore no evidentiary hearing was required. It was uncontested (and the district court accordingly found) that plaintiff sold "electronic apparatus" in its stores, including "various video game systems, portable cassette tape, compact disc, mp3, and mini disc players, portable radios, and disposable cameras," but not including telephones or telephone service, and that the only products the defendants sold in their stores were wireless telephones, telephone accessories, and wireless telephone services.

13
Noting that a party seeking a preliminary injunction must show the probability of irreparable harm in the absence of relief, and either (1) likelihood of success on the merits or (2) serious questions going to the merits and a balance of hardships tipping decidedly in its favor, the court found that plaintiff had failed to satisfy either standard. Arguing against plaintiff's likelihood of success, the court noted that plaintiff's registrations did not claim use of the VIRGIN mark "in telecommunications services or in the associated retail sale of wireless telephones and accessories." While plaintiff's 817 and 776 Registrations covered the retail sale of "computers and electronic apparatus," they did not extend to telecommunications services and wireless phones.

14
The court noted that the defendants were the first to use the VIRGIN mark in telecommunications, and the first to attempt to register VIRGIN for telecommunications and retail telephone sales. The court also observed that the dissimilarity in appearance of plaintiff's and defendants' logos and the differences between plaintiff's huge Virgin Megastores and defendants' small retail outlets in malls diminished likelihood of consumer confusion. Finally, because the defendants had expended substantial resources in pursuing their trademark applications and in establishing their retail presence, the court found that plaintiff could not demonstrate that the balance of hardships tipped in its favor.

15
The court denied the application for preliminary injunction. The crux of the court's decision lay in the facts that plaintiff's prior use and registration of the VIRGIN mark in connection with the sale of consumer electronic equipment did not include the sale of telephones or telephone services, and that defendants were the first to register and use VIRGIN for telephones and wireless telephone service. This appeal followed.

DISCUSSION

I.

16
As the court below correctly noted, in order to obtain a preliminary injunction, a party must demonstrate probability of irreparable harm in the absence of injunctive relief, and either a likelihood that it will succeed on the merits of its claim, or a serious question going to the merits and a balance of hardships tipping decidedly in its favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam); Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir.1992). We review the court's denial of a preliminary injunction for abuse of discretion. Bristol-Myers, 973 F.2d at 1038.

17
In an action for trademark infringement, where a mark merits protection, a showing that a significant number of consumers are likely to be confused about the source of the goods identified by the allegedly infringing mark is generally sufficient to demonstrate both irreparable harm and a likelihood of success on the merits. Bristol-Myers, 973 F.2d at 1038; W. Publ'g Co. v. Rose Art Indus., Inc., 910 F.2d 57, 59 (2d Cir.1990). Thus, our inquiry must be whether the district court correctly determined that the plaintiff was not entitled to protection from use of its mark by others in the sale of wireless telephones and related services, and that there was no likelihood that, in the absence of a preliminary injunction, a significant number of consumers would be confused about the sponsorship of defendants' retail stores. For the reasons discussed below, we find that the mark is entitled to protection, and there is a significant likelihood of confusion. We reverse and remand.

II.

18
A claim of trademark infringement, whether brought under 15 U.S.C. § 1114(1) (for infringement of a registered mark) or 15 U.S.C. § 1125(a) (for infringement of rights in a mark acquired by use), is analyzed under the familiar two-prong test described in Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072 (2d Cir.1993). See Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d Cir.1999) (noting that Gruner test is applicable to claims brought under § 1114(1) and § 1125(a)). The test looks first to whether the plaintiff's mark is entitled to protection, and second to whether defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods. Gruner, 991 F.2d at 1074. Examining the question as the test dictates, we have no doubt that plaintiff was entitled to a preliminary injunction.

19
We believe the district court accorded plaintiff too narrow a scope of protection for its famous, arbitrary, and distinctive mark. There could be no dispute that plaintiff prevailed as to the first prong of the test — prior use and ownership. For years, plaintiff had used the VIRGIN mark on huge, famous stores selling, in addition to music recordings, a variety of consumer electronic equipment. At the time the defendants began using VIRGIN, plaintiff owned rights in the mark. The focus of inquiry thus turns to the second prong of the test — whether defendants' use of VIRGIN as a mark for stores selling wireless telephone services and phones was likely to cause confusion. There can be little doubt that such confusion was likely.

20
The landmark case of Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.1961) (Friendly, J.), outlined a series of nonexclusive factors likely to be pertinent in addressing the issue of likelihood of confusion, which are routinely followed in such cases. See, e.g., Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743-46 (2d Cir.1998); Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 391-99 (2d Cir.1995); Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256-60 (2d Cir.1987).

21
Six of the Polaroid factors relate directly to the likelihood of consumer confusion. These are the strength of the plaintiff's mark; the similarity of defendants' mark to plaintiff's; the proximity of the products sold under defendants' mark to those sold under plaintiff's; where the products are different, the likelihood that plaintiff will bridge the gap by selling the products being sold by defendants; the existence of actual confusion among consumers; and the sophistication of consumers. Of these six, all but the last (which was found by the district court to be neutral) strongly favor the plaintiff. The remaining two Polaroid factors, defendants' good or bad faith and the quality of defendants' products, are more pertinent to issues other than likelihood of confusion, such as harm to plaintiff's reputation and choice of remedy. We conclude that the Polaroid factors powerfully support plaintiff's position.

22
Strength of the mark. The strength of a trademark encompasses two different concepts, both of which relate significantly to likelihood of consumer confusion. The first and most important is inherent strength, also called "inherent distinctiveness." This inquiry distinguishes between, on the one hand, inherently distinctive marks — marks that are arbitrary or fanciful in relation to the products (or services) on which they are used — and, on the other hand, marks that are generic, descriptive or suggestive as to those goods. The former are the strong marks. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). The second sense of the concept of strength of a mark is "acquired distinctiveness," i.e., fame, or the extent to which prominent use of the mark in commerce has resulted in a high degree of consumer recognition. See TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 100 (2d Cir.2001) (describing these two concepts of strength); Streetwise Maps, 159 F.3d at 743.

23
Considering first inherent distinctiveness, the law accords broad, muscular protection to marks that are arbitrary or fanciful in relation to the products on which they are used, and lesser protection, or no protection at all, to marks consisting of words that identify or describe the goods or their attributes. The reasons for the distinction arise from two aspects of market efficiency. The paramount objective of the trademark law is to avoid confusion in the marketplace. The purpose for which the trademark law accords merchants the exclusive right to the use of a name or symbol in their area or commerce is identification, so that the merchants can establish goodwill for their goods based on past satisfactory performance, and the consuming public can rely on a mark as a guarantee that the goods or services so marked come from the merchant who has been found to be satisfactory in the past. See Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir.1997) (quoting Restatement (Third) of Unfair Competition § 21 comment i (1995)); Power Test Petroleum Distribs., Inc. v. Calcu Gas, Inc., 754 F.2d 91, 97 (2d Cir.1985); McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir.1979). At the same time, efficiency and the public interest require that every merchant trading in a class of goods be permitted to refer to the goods by their name, and to make claims about their quality. Thus, a merchant who sells pencils under the trademark Pencil or Clear Mark, for example, and seeks to exclude other sellers of pencils from using those words in their trade, is seeking an advantage the trademark law does not intend to offer. To grant such exclusivity would deprive the consuming public of the useful market information it receives where every seller of pencils is free to call them pencils. Abercrombie, 537 F.2d at 9; CES Publ'g Corp. v. St. Regis Publ'ns, Inc., 531 F.2d 11, 13 (2d Cir.1975). The trademark right does not protect the exclusive right to an advertising message — only the exclusive right to an identifier, to protect against confusion in the marketplace. Thus, as a matter of policy, the trademark law accords broader protection to marks that serve exclusively as identifiers and lesser protection where a grant of exclusiveness would tend to diminish the access of others to the full range of discourse relating to their goods. See TCPIP, 244 F.3d at 100; Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir.1999); Otokoyama Co. Ltd. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir.1999).

24
The second aspect of efficiency that justifies according broader protection to marks that are inherently distinctive relates directly to the likelihood of confusion. If a mark is arbitrary or fanciful, and makes no reference to the nature of the goods it designates, consumers who see the mark on different objects offered in the marketplace will be likely to assume, because of the arbitrariness of the choice of mark, that they all come from the same source. For example, if consumers become familiar with a toothpaste sold under an unusual, arbitrary brand name, such as ZzaaqQ, and later see that same inherently distinctive brand name appearing on a different product, they are likely to assume, notwithstanding the product difference, that the second product comes from the same producer as the first. The more unusual, arbitrary, and fanciful a trade name, the more unlikely it is that two independent entities would have chosen it. In contrast, every seller of foods has an interest in calling its product "delicious." Consumers who see the word delicious used on two or more different food products are less likely to draw the inference that they must all come from the same producer. Cf. Streetwise Maps, 159 F.3d at 744 (noting that several map producers use "street" in product names; thus plaintiff's mark using "street" was not particularly distinctive); W. Publ'g, 910 F.2d at 61 (noting numerous registrations of marks using word "golden"). In short, the more distinctive the mark, the greater the likelihood that the public, seeing it used a second time, will assume that the second use comes from the same source as the first. The goal of avoiding consumer confusion thus dictates that the inherently distinctive, arbitrary, or fanciful marks, i.e., strong marks, receive broader protection than weak marks, those that are descriptive or suggestive of the products on which they are used. See Abercrombie, 537 F.2d at 9-11; TCPIP, 244 F.3d at 100-01.

25
The second sense of trademark strength, fame, or "acquired distinctiveness," also bears on consumer confusion. See TCPIP, 244 F.3d at 100-01; Streetwise Maps, 159 F.3d at 744. If a mark has been long, prominently and notoriously used in commerce, there is a high likelihood that consumers will recognize it from its prior use. Widespread consumer recognition of a mark previously used in commerce increases the likelihood that consumers will assume it identifies the previously familiar user, and therefore increases the likelihood of consumer confusion if the new user is in fact not related to the first. See Nabisco, 191 F.3d at 216-17. A mark's fame also gives unscrupulous traders an incentive to seek to create consumer confusion by associating themselves in consumers' minds with a famous mark. The added likelihood of consumer confusion resulting from a second user's use of a famous mark gives reason for according such a famous mark a broader scope of protection, at least when it is also inherently distinctive. See McGregor, 599 F.2d at 1132 (noting that secondary meaning may further enlarge the scope of protection accorded to inherently distinctive marks).

26
Plaintiff's VIRGIN mark undoubtedly scored high on both concepts of strength. In relation to the sale of consumer electronic equipment, the VIRGIN mark is inherently distinctive, in that it is arbitrary and fanciful; the word "virgin" has no intrinsic relationship whatsoever to selling such equipment. Because there is no intrinsic reason for a merchant to use the word "virgin" in the sale of consumer electronic equipment, a consumer seeing VIRGIN used in two different stores selling such equipment will likely assume that the stores are related.

27
Plaintiff's VIRGIN mark was also famous. The mark had been employed with world-wide recognition as the mark of an airline and as the mark for megastores selling music recordings and consumer electronic equipment. The fame of the mark increased the likelihood that consumers seeing defendants' shops selling telephones under the mark VIRGIN would assume incorrectly that defendants' shops were a part of plaintiff's organization. See Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 873 (2d Cir.1986).

28
There can be no doubt that plaintiff's VIRGIN mark, as used on consumer electronic equipment, is a strong mark, as the district court found. It is entitled as such to a broad scope of protection, precisely because the use of the mark by others in connection with stores selling reasonably closely related merchandise would inevitably have a high likelihood of causing consumer confusion.

29
Similarity of marks. When the secondary user's mark is not identical but merely similar to the plaintiff's mark, it is important to assess the degree of similarity between them in assessing the likelihood that consumers will be confused. See McGregor, 599 F.2d at 1133. Plaintiff's and defendants' marks were not merely similar; they were identical to the extent that both consisted of the same word, "virgin."

30
The district court believed this factor did not favor plaintiff because it found some differences in appearance. Defendants' logo used a difference typeface and different colors from plaintiff's. While those are indeed differences, they are quite minor in relation to the fact that the name being used as a trademark was the same in each case.

31
Advertisement and consumer experience of a mark do not necessarily transmit all of the mark's features. Plaintiff, for example, advertised its Virgin Megastores on the radio. A consumer who heard those advertisements and then saw the defendants' installation using the name VIRGIN would have no way of knowing that the two trademarks looked different. See Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir.1996). A consumer who had visited one of plaintiff's Virgin Megastores and remembered the name would not necessarily remember the typeface and color of plaintiff's mark. The reputation of a mark also spreads by word of mouth among consumers. One consumer who hears from others about their experience with Virgin stores and then encounters defendants' Virgin store will have no way knowing of the differences in typeface. See Hills Bros. Coffee, Inc. v. Hills Supermarkets, Inc., 428 F.2d 379, 381 (2d Cir.1970) (per curiam).

32
In view of the fact that defendants used the same name as plaintiff, we conclude the defendants' mark was sufficiently similar to plaintiff's to increase the likelihood of confusion. This factor favored the plaintiff as a matter of law. We conclude that the district court erred in concluding otherwise on the basis of comparatively trivial and often irrelevant differences.

33
Proximity of the products and likelihood of bridging the gap. The next factor is the proximity of the products being sold by plaintiff and defendant under identical (or similar) marks. See Arrow Fastener, 59 F.3d at 396. This factor has an obvious bearing on the likelihood of confusion. When the two users of a mark are operating in completely different areas of commerce, consumers are less likely to assume that their similarly branded products come from the same source. In contrast, the closer the secondary user's goods are to those the consumer has seen marketed under the prior user's brand, the more likely that the consumer will mistakenly assume a common source. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480-81 (2d Cir.1996).

34
While plaintiff had not sold telephones or telephone service prior to defendant's registration evincing intent to sell those items, plaintiff had sold quite similar items of consumer electronic equipment. These included computer video game systems, portable cassette-tape players, compact disc players, MP3 players, mini-disc players, and disposable cameras. Like telephones, many of these are small consumer electronic gadgets making use of computerized audio communication. They are sold in the same channels of commerce. Consumers would have a high expectation of finding telephones, portable CD players, and computerized video game systems in the same stores. We think the proximity in commerce of telephones to CD players substantially advanced the risk that consumer confusion would occur when both were sold by different merchants under the same trade name, VIRGIN.

35
Our classic Polaroid test further protects a trademark owner by examining the likelihood that, even if the plaintiff's products were not so close to the defendants' when the defendant began to market them, there was already a likelihood that plaintiff would in the reasonably near future begin selling those products. See Cadbury Beverages, 73 F.3d at 482. VEL's claim of proximity was further strengthened in this regard because, as the district court expressly found, "plans had been formulated [for VEL] to enter [the market for telecommunications products and services] shortly in the future." VEL had already begun marketing telephone service in England which would operate in the United States, and, as the district court found, had made plans to sell telephones and wireless telephone service under the VIRGIN name from its retail stores.

36
The district court, nonetheless, found in favor of the defendants with respect to the proximity of products and services. We would ordinarily give considerable deference to a factual finding on this issue. Here, however, we cannot do so because it appears the district court applied the wrong test. The court did not assess the proximity of defendants' VIRGIN-branded retail stores selling telephone products to plaintiff's VIRGIN-branded retail stores selling other consumer electronic products. It simply concluded that, because defendants were selling exclusively telephone products and services, and plaintiff's electronic products did not include telephones or related services, the defendants must prevail as to the proximity factor.

37
This represents a considerable misunderstanding of the Polaroid test. The famous list of factors of likely pertinence in assessing likelihood of confusion in Polaroid was specially designed for a case like this one, in which the secondary user is not in direct competition with the prior user, but is selling a somewhat different product or service. In Polaroid, the plaintiff sold optical and camera equipment, while the defendant sold electronic apparatus. The test the court discussed was expressly addressed to the problem "how far a valid trademark shall be protected with respect to goods other than those to which its owner has applied it." 287 F.2d at 495 (emphasis added); see also Arrow Fastener, 59 F.3d at 396 (noting that products need not actually compete with each other). The very fact that the test includes the "proximity" between the defendant's products and the plaintiff's and the likelihood that the plaintiff will "bridge the gap" makes clear that the trademark owner does not lose, as the district court concluded, merely because it has not previously sold the precise good or service sold by the secondary user.

38
In our view, had the district court employed the proper test of proximity, it could not have failed to find a high degree of proximity as between plaintiff VEL's prior sales of consumer electronic audio equipment and defendants' subsequent sales of telephones and telephone services, which proximity would certainly contribute to likelihood of consumer confusion. And plaintiff was all the more entitled to a finding in its favor in respect of these matters by virtue of the fact, which the district court did find, that at the time defendants began using the VIRGIN mark in the retail sale of telephones and telephone services, plaintiff already had plans to bridge the gap by expanding its sales of consumer electronic equipment to include sales of those very goods and services in the near future. Consumer confusion was more than likely; it was virtually inevitable.

39
Actual confusion. It is self-evident that the existence of actual consumer confusion indicates a likelihood of consumer confusion. Nabisco, 191 F.3d at 228. We have therefore deemed evidence of actual confusion "particularly relevant" to the inquiry. Streetwise Maps, 159 F.3d at 745.

40
Plaintiff submitted to the district court an affidavit of a former employee of defendant Cel-Net, who worked at a mall kiosk branded as Virgin Wireless, which stated that individuals used to ask him if the kiosk was affiliated with plaintiff's VIRGIN stores. The district court correctly concluded that this evidence weighed in plaintiff's favor.

41
Sophistication of consumers. The degree of sophistication of consumers can have an important bearing on likelihood of confusion. Where the purchasers of a products are highly trained professionals, they know the market and are less likely than untrained consumers to be misled or confused by the similarity of different marks. The district court recognized that "[r]etail customers, such as the ones catered to by both the defendants and [plaintiff], are not expected to exercise the same degree of care as professional buyers, who are expected to have greater powers of discrimination." On the other hand, it observed that purchasers of cellular telephones and the service plans were likely to give greater care than self-service customers in a supermarket. Noting that neither side had submitted evidence on the sophistication of consumers, the court made no finding favoring either side. We agree that the sophistication factor is neutral in this case.

42
Bad faith and the quality of the defendants' services or products. Two factors remain of the conventional Polaroid test: the existence of bad faith on the part of the secondary user and the quality of the secondary user's products or services. Polaroid, 287 F.2d at 495. Neither factor is of high relevance to the issue of likelihood of confusion. A finding that a party acted in bad faith can affect the court's choice of remedy or can tip the balance where questions are close. It does not bear directly on whether consumers are likely to be confused. See TCPIP, 244 F.3d at 102. The district court noted some evidence of bad faith on the defendants' part, but because the evidence on the issue was scant and equivocal, the court concluded that such a finding "at this stage [would be] speculative." The court therefore found that this factor favored neither party.

43
The issue of the quality of the secondary user's product goes more to the harm that confusion can cause the plaintiff's mark and reputation than to the likelihood of confusion. See Arrow Fastener, 59 F.3d at 398 (noting that first user's reputation may be harmed if secondary user's goods are of poor quality). In any event, the district court found this factor to be "neutral" with respect to likelihood of confusion.

44
* * * * * *

45
In summary we conclude that of the six Polaroid factors that pertain directly to the likelihood of consumer confusion, all but one favor the plaintiff, and that one — sophistication of consumers — is neutral. The plaintiff is strongly favored by the strength of its mark, both inherent and acquired; the similarity of the marks; the proximity of the products and services; the likelihood that plaintiff would bridge the gap; and the existence of actual confusion. None of the factors favors the defendant. The remaining factors were found to be neutral. Although we do not suggest that likelihood of confusion may be properly determined simply by the number of factors in one party's favor, the overall assessment in this case in our view admits only of a finding in plaintiff's favor that defendants' sale of telephones and telephone-related services under the VIRGIN mark was likely to cause substantial consumer confusion.

46
One issue remains. Defendants argue that plaintiff should be barred by laches from seeking injunctive relief. They contend that because of plaintiff's delay after learning of the defendants' applications to register the VIRGIN marks, they expended considerable sums and developed goodwill in their use of the VIRGIN marks before plaintiff brought suit. Because the district court ruled in the defendants' favor it made no express finding on the issue of laches. But the district court explicitly found that plaintiff first learned of defendants' use of the name VIRGIN in commerce only two days before plaintiff instituted this suit. Given that finding, plaintiff could not be chargeable with laches.

47
We conclude that, as a matter of law, plaintiff demonstrated irreparable harm and likelihood of success on the merits and was entitled to a preliminary injunction.

CONCLUSION

48
REVERSED and REMANDED.

Notes:

1
Immediately following oral argument, we issued a summary order, opinion to follow, directing the district court to enter a preliminary injunction

2
Because of Pennie & Edmonds's involvement in searching marks for defendants, and because of the factual dispute about whether plaintiff's counsel searched the VIRGIN mark for defendants, defendants sought in the district court to have Pennie & Edmonds disqualified from representing plaintiff. The district court denied this motion on March 13, 2002

label: Sentence

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text: d

text: VIRGIN

text: ENTERPRISES

text: LTD

text: Plaintiff

text: Appellant

text: v

text: Tahir

text: NAWAB

text: Nathan

text: Erlich

text: Simon

text: Blitz

text: Daniel

text: Gazal

text: Gerald

text: Wren

text: Bob

text: Wroblewski

text: Corporation

text: Solutions

text: LLC

text: Cel

text: Net

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text: Cellular

text: Network

text: Communication

text: Group

text: Inc

text: d

text: b

text: a

text: CNCG

text: SD

text: Telecommunications

text: Inc

text: Virgin

text: Wireless

text: Inc

text: Iwaycity

text: and

text: Virginwireless

text: com

text: Defendants

text: Appellees

text: Docket

text: No

text: United

text: States

text: Court

text: of

text: Appeals

text: Second

text: Circuit

text: Argued

text: August

text: Decided

text: July

text: James

text: W

text: Dabney

text: Catherine

text: M

text: Clayton

text: Melissa

text: A

text: Antonecchia

text: on

text: the

text: brief

text: Pennie

text: Edmonds

text: LLP

text: New

text: York

text: NY

text: for

text: Appellant

text: Kevin

text: J

text: Harrington

text: John

text: C

text: Mascari

text: on

text: the

text: brief

text: Harrington

text: Ocko

text: Monk

text: LLP

text: White

text: Plains

text: NY

text: for

text: Appellees

text: Before

text: LEVAL

text: CALABRESI

text: and

text: POOLER

text: Circuit

text: Judges

text: LEVAL

text: Circuit

text: Judge

text: Plaintiff

text: Virgin

text: Enterprises

text: Limited

text: VEL

text: or

text: plaintiff

text: appeals

text: from

text: the

text: denial

text: of

text: its

text: motion

text: for

text: a

text: preliminary

text: injunction

text: This

text: suit

text: brought

text: under

text: of

text: the

text: Lanham

text: Act

text: U

text: S

text: C

text: alleges

text: that

text: defendants

text: infringed

text: plaintiff

text: s

text: rights

text: in

text: the

text: registered

text: mark

text: VIRGIN

text: by

text: operating

text: retail

text: stores

text: selling

text: wireless

text: telephones

text: and

text: related

text: accessories

text: and

text: services

text: under

text: the

text: trade

text: name

text: VIRGIN

text: WIRELESS

text: The

text: United

text: States

text: District

text: Court

text: for

text: the

text: Eastern

text: District

text: of

text: New

text: York

text: Sifton

text: J

text: denied

text: plaintiff

text: s

text: motion

text: for

text: a

text: preliminary

text: injunction

text: based

text: upon

text: its

text: finding

text: that

text: plaintiff

text: s

text: registration

text: did

text: not

text: cover

text: the

text: retail

text: sale

text: of

text: wireless

text: telephones

text: and

text: related

text: products

text: and

text: that

text: plaintiff

text: failed

text: to

text: show

text: a

text: likelihood

text: of

text: consumer

text: confusion

text: We

text: find

text: that

text: the

text: plaintiff

text: is

text: likely

text: to

text: succeed

text: on

text: the

text: merits

text: and

text: was

text: entitled

text: to

text: a

text: preliminary

text: injunction

text: We

text: therefore

text: reverse

text: and

text: remand

text: with

text: instructions

text: to

text: enter

text: a

text: preliminary

text: injunction

text: BACKGROUND

text: Plaintiff

text: VEL

text: a

text: corporation

text: with

text: its

text: principal

text: place

text: of

text: business

text: in

text: London

text: owns

text: U

text: S

text: Registration

text: No

text: the

text: Registration

text: filed

text: on

text: May

text: and

text: registered

text: on

text: August

text: for

text: the

text: VIRGIN

text: mark

text: as

text: applied

text: to

text: retail

text: store

text: services

text: in

text: the

text: fields

text: of

text: computers

text: and

text: electronic

text: apparatus

text: emphasis

text: added

text: Plaintiff

text: filed

text: an

text: affidavit

text: of

text: continuing

text: use

text: pursuant

text: to

text: U

text: S

text: C

text: a

text: on

text: April

text: which

text: averred

text: that

text: plaintiff

text: had

text: used

text: the

text: mark

text: in

text: connection

text: with

text: retail

text: store

text: services

text: selling

text: computers

text: and

text: electronic

text: apparatus

text: Plaintiff

text: also

text: owns

text: U

text: S

text: Registration

text: No

text: the

text: Registration

text: filed

text: on

text: May

text: and

text: registered

text: on

text: September

text: for

text: a

text: stylized

text: version

text: of

text: the

text: VIRGIN

text: mark

text: for

text: use

text: in

text: connection

text: with

text: retail

text: store

text: services

text: in

text: the

text: fields

text: of

text: computers

text: and

text: electronic

text: apparatus

text: and

text: U

text: S

text: Registration

text: No

text: the

text: Registration

text: filed

text: on

text: May

text: and

text: registered

text: on

text: November

text: for

text: the

text: VIRGIN

text: MEGASTORE

text: mark

text: It

text: is

text: undisputed

text: that

text: these

text: three

text: registrations

text: have

text: become

text: incontestable

text: pursuant

text: to

text: U

text: S

text: C

text: VEL

text: either

text: directly

text: or

text: through

text: corporate

text: affiliates

text: operates

text: various

text: businesses

text: worldwide

text: under

text: the

text: trade

text: name

text: VIRGIN

text: including

text: an

text: airline

text: large

text: scale

text: record

text: stores

text: called

text: Virgin

text: Megastores

text: and

text: an

text: internet

text: information

text: service

text: Plaintiff

text: or

text: its

text: affiliates

text: also

text: market

text: a

text: variety

text: of

text: goods

text: branded

text: with

text: the

text: VIRGIN

text: name

text: including

text: music

text: recordings

text: computer

text: games

text: books

text: and

text: luggage

text: Three

text: of

text: plaintiff

text: s

text: megastores

text: are

text: located

text: in

text: the

text: New

text: York

text: area

text: According

text: to

text: an

text: affidavit

text: submitted

text: to

text: the

text: district

text: court

text: in

text: support

text: of

text: plaintiff

text: s

text: application

text: for

text: preliminary

text: injunction

text: Virgin

text: Megastores

text: sell

text: a

text: variety

text: of

text: electronic

text: apparatus

text: including

text: video

text: game

text: systems

text: portable

text: CD

text: players

text: disposable

text: cameras

text: and

text: DVD

text: players

text: These

text: stores

text: advertise

text: in

text: a

text: variety

text: of

text: media

text: including

text: radio

text: Defendants

text: Simon

text: Blitz

text: and

text: Daniel

text: Gazal

text: are

text: the

text: sole

text: shareholders

text: of

text: defendants

text: Cel

text: Net

text: Communications

text: Inc

text: Cel

text: Net

text: The

text: Cellular

text: Network

text: Communications

text: Inc

text: doing

text: business

text: as

text: CNCG

text: CNCG

text: and

text: SD

text: Telecommunications

text: Inc

text: SD

text: Telecom

text: Blitz

text: and

text: Gazal

text: formed

text: Cel

text: Net

text: in

text: to

text: sell

text: retail

text: wireless

text: telephones

text: and

text: services

text: in

text: the

text: New

text: York

text: area

text: Later

text: they

text: formed

text: CNCG

text: to

text: sell

text: wireless

text: phones

text: and

text: services

text: on

text: the

text: wholesale

text: level

text: CNCG

text: now

text: sells

text: wireless

text: phones

text: and

text: services

text: to

text: more

text: than

text: independent

text: wireless

text: retailers

text: In

text: Cel

text: Net

text: received

text: permission

text: from

text: New

text: York

text: State

text: regulators

text: to

text: resell

text: telephone

text: services

text: within

text: the

text: state

text: Around

text: Andrew

text: Kastein

text: a

text: vice

text: president

text: of

text: CNCG

text: began

text: to

text: develop

text: a

text: Cel

text: Net

text: brand

text: of

text: wireless

text: telecommunications

text: products

text: In

text: early

text: Cel

text: Net

text: entered

text: into

text: negotiations

text: with

text: the

text: Sprint

text: PCS

text: network

text: to

text: provide

text: telecommunications

text: services

text: for

text: resale

text: by

text: Cel

text: Net

text: In

text: August

text: Cel

text: Net

text: retained

text: the

text: law

text: firm

text: Pennie

text: Edmonds

text: to

text: determine

text: the

text: availability

text: of

text: possible

text: service

text: marks

text: for

text: Cel

text: Net

text: Pennie

text: Edmonds

text: associate

text: Elizabeth

text: Langston

text: researched

text: for

text: Kastein

text: a

text: list

text: of

text: possible

text: service

text: marks

text: among

text: the

text: marks

text: Cel

text: Net

text: asked

text: to

text: have

text: researched

text: was

text: VIRGIN

text: Defendants

text: claim

text: that

text: Langston

text: told

text: Cel

text: Net

text: officer

text: Simon

text: Corney

text: that

text: VIRGIN

text: was

text: available

text: for

text: use

text: in

text: the

text: telecommunications

text: field

text: Plaintiff

text: disputed

text: this

text: offering

text: an

text: affidavit

text: from

text: Langston

text: that

text: she

text: informed

text: defendants

text: that

text: she

text: would

text: not

text: search

text: the

text: VIRGIN

text: mark

text: because

text: her

text: firm

text: represented

text: plaintiff

text: According

text: to

text: defendants

text: in

text: December

text: Cel

text: Net

text: retained

text: Corporate

text: Solutions

text: LLC

text: and

text: its

text: principals

text: Nathan

text: Erlich

text: and

text: Tahir

text: Nawab

text: as

text: joint

text: venture

text: partners

text: to

text: help

text: raise

text: capital

text: to

text: launch

text: Cel

text: Net

text: s

text: wireless

text: telephone

text: service

text: On

text: December

text: Erlich

text: and

text: Nawab

text: filed

text: four

text: intent

text: to

text: use

text: applications

text: with

text: the

text: U

text: S

text: Patent

text: and

text: Trademark

text: Office

text: PTO

text: to

text: register

text: the

text: marks

text: VIRGIN

text: WIRELESS

text: VIRGIN

text: MOBILE

text: VIRGIN

text: COMMUNICATIONS

text: and

text: VIRGIN

text: NET

text: in

text: the

text: field

text: of

text: telecommunications

text: services

text: class

text: On

text: December

text: Corporate

text: Solutions

text: incorporated

text: defendant

text: Virgin

text: Wireless

text: Inc

text: VWI

text: and

text: licensed

text: to

text: VWI

text: the

text: right

text: to

text: use

text: the

text: marks

text: VIRGIN

text: WIRELESS

text: and

text: VIRGIN

text: MOBILE

text: Meanwhile

text: one

text: of

text: plaintiff

text: s

text: affiliates

text: had

text: begun

text: to

text: offer

text: wireless

text: telecommunication

text: services

text: bearing

text: the

text: VIRGIN

text: mark

text: in

text: the

text: United

text: Kingdom

text: A

text: press

text: release

text: dated

text: November

text: found

text: on

text: plaintiff

text: s

text: website

text: stated

text: that

text: its

text: Virgin

text: Mobile

text: wireless

text: services

text: were

text: operable

text: in

text: the

text: United

text: States

text: On

text: June

text: defendant

text: Blitz

text: signed

text: a

text: lease

text: under

text: the

text: name

text: Virgin

text: Wireless

text: for

text: a

text: kiosk

text: location

text: in

text: South

text: Shore

text: Mall

text: in

text: Long

text: Island

text: from

text: which

text: to

text: re

text: sell

text: AT

text: T

text: wireless

text: services

text: telephones

text: and

text: accessories

text: under

text: the

text: retail

text: name

text: Virgin

text: Wireless

text: Defendants

text: Cel

text: Net

text: and

text: VWI

text: later

text: expanded

text: their

text: telecommunications

text: re

text: sale

text: operations

text: to

text: include

text: two

text: retail

text: stores

text: and

text: four

text: additional

text: retail

text: kiosks

text: in

text: malls

text: in

text: the

text: New

text: York

text: area

text: and

text: in

text: Pennsylvania

text: All

text: of

text: these

text: stores

text: have

text: been

text: run

text: by

text: VWI

text: under

text: the

text: trade

text: name

text: VIRGIN

text: WIRELESS

text: VWI

text: also

text: has

text: leases

text: and

text: bank

text: accounts

text: in

text: its

text: name

text: and

text: has

text: shown

text: evidence

text: of

text: actual

text: retail

text: transactions

text: and

text: newspaper

text: advertisements

text: In

text: August

text: plaintiff

text: licensed

text: Virgin

text: Mobile

text: USA

text: LLC

text: to

text: use

text: the

text: VIRGIN

text: mark

text: for

text: wireless

text: telecommunications

text: services

text: in

text: the

text: United

text: States

text: On

text: August

text: plaintiff

text: filed

text: an

text: intent

text: to

text: use

text: application

text: with

text: the

text: PTO

text: for

text: use

text: of

text: the

text: VIRGIN

text: mark

text: in

text: the

text: United

text: States

text: on

text: telecommunications

text: services

text: and

text: mobile

text: telephones

text: On

text: October

text: the

text: PTO

text: suspended

text: this

text: mark

text: s

text: registration

text: in

text: international

text: class

text: which

text: covers

text: wireless

text: telephones

text: and

text: class

text: which

text: covers

text: telecommunications

text: services

text: because

text: the

text: VIRGIN

text: mark

text: was

text: already

text: reserved

text: by

text: a

text: prior

text: filing

text: presumably

text: defendants

text: On

text: August

text: plaintiff

text: filed

text: another

text: intent

text: to

text: use

text: application

text: for

text: the

text: mark

text: VIRGIN

text: MOBILE

text: to

text: brand

text: telecommunications

text: services

text: The

text: PTO

text: issued

text: a

text: non

text: final

text: action

text: letter

text: for

text: both

text: of

text: plaintiff

text: s

text: pending

text: new

text: registrations

text: on

text: October

text: which

text: stated

text: that

text: defendant

text: Corporation

text: Solutions

text: pending

text: applications

text: for

text: similar

text: marks

text: in

text: the

text: same

text: class

text: could

text: give

text: rise

text: to

text: a

text: likelihood

text: of

text: confusion

text: The

text: PTO

text: suspended

text: action

text: on

text: plaintiff

text: s

text: application

text: pending

text: the

text: processing

text: of

text: Corporation

text: Solutions

text: applications

text: In

text: October

text: plaintiff

text: issued

text: a

text: press

text: release

text: announcing

text: that

text: it

text: was

text: offering

text: wireless

text: telecommunications

text: services

text: and

text: mobile

text: telephones

text: in

text: the

text: United

text: States

text: Plaintiff

text: became

text: aware

text: of

text: Corporation

text: Solutions

text: application

text: for

text: registration

text: of

text: the

text: VIRGIN

text: WIRELESS

text: and

text: VIRGIN

text: MOBILE

text: marks

text: by

text: May

text: In

text: October

text: and

text: December

text: defendant

text: VWI

text: filed

text: suits

text: against

text: plaintiff

text: in

text: the

text: federal

text: district

text: courts

text: in

text: Arizona

text: and

text: Delaware

text: alleging

text: that

text: plaintiff

text: was

text: using

text: VWI

text: s

text: mark

text: Plaintiff

text: maintains

text: and

text: the

text: district

text: court

text: found

text: that

text: it

text: learned

text: in

text: January

text: that

text: VWI

text: and

text: Cel

text: Net

text: were

text: operating

text: kiosks

text: under

text: the

text: VIRGIN

text: WIRELESS

text: name

text: and

text: two

text: days

text: later

text: filed

text: the

text: present

text: suit

text: seeking

text: to

text: enjoin

text: defendants

text: from

text: selling

text: mobile

text: phones

text: in

text: VIRGIN

text: branded

text: retail

text: stores

text: On

text: May

text: the

text: district

text: court

text: considered

text: plaintiff

text: s

text: application

text: for

text: a

text: preliminary

text: injunction

text: It

text: found

text: that

text: no

text: essential

text: facts

text: were

text: in

text: dispute

text: and

text: therefore

text: no

text: evidentiary

text: hearing

text: was

text: required

text: It

text: was

text: uncontested

text: and

text: the

text: district

text: court

text: accordingly

text: found

text: that

text: plaintiff

text: sold

text: electronic

text: apparatus

text: in

text: its

text: stores

text: including

text: various

text: video

text: game

text: systems

text: portable

text: cassette

text: tape

text: compact

text: disc

text: mp

text: and

text: mini

text: disc

text: players

text: portable

text: radios

text: and

text: disposable

text: cameras

text: but

text: not

text: including

text: telephones

text: or

text: telephone

text: service

text: and

text: that

text: the

text: only

text: products

text: the

text: defendants

text: sold

text: in

text: their

text: stores

text: were

text: wireless

text: telephones

text: telephone

text: accessories

text: and

text: wireless

text: telephone

text: services

text: Noting

text: that

text: a

text: party

text: seeking

text: a

text: preliminary

text: injunction

text: must

text: show

text: the

text: probability

text: of

text: irreparable

text: harm

text: in

text: the

text: absence

text: of

text: relief

text: and

text: either

text: likelihood

text: of

text: success

text: on

text: the

text: merits

text: or

text: serious

text: questions

text: going

text: to

text: the

text: merits

text: and

text: a

text: balance

text: of

text: hardships

text: tipping

text: decidedly

text: in

text: its

text: favor

text: the

text: court

text: found

text: that

text: plaintiff

text: had

text: failed

text: to

text: satisfy

text: either

text: standard

text: Arguing

text: against

text: plaintiff

text: s

text: likelihood

text: of

text: success

text: the

text: court

text: noted

text: that

text: plaintiff

text: s

text: registrations

text: did

text: not

text: claim

text: use

text: of

text: the

text: VIRGIN

text: mark

text: in

text: telecommunications

text: services

text: or

text: in

text: the

text: associated

text: retail

text: sale

text: of

text: wireless

text: telephones

text: and

text: accessories

text: While

text: plaintiff

text: s

text: and

text: Registrations

text: covered

text: the

text: retail

text: sale

text: of

text: computers

text: and

text: electronic

text: apparatus

text: they

text: did

text: not

text: extend

text: to

text: telecommunications

text: services

text: and

text: wireless

text: phones

text: The

text: court

text: noted

text: that

text: the

text: defendants

text: were

text: the

text: first

text: to

text: use

text: the

text: VIRGIN

text: mark

text: in

text: telecommunications

text: and

text: the

text: first

text: to

text: attempt

text: to

text: register

text: VIRGIN

text: for

text: telecommunications

text: and

text: retail

text: telephone

text: sales

text: The

text: court

text: also

text: observed

text: that

text: the

text: dissimilarity

text: in

text: appearance

text: of

text: plaintiff

text: s

text: and

text: defendants

text: logos

text: and

text: the

text: differences

text: between

text: plaintiff

text: s

text: huge

text: Virgin

text: Megastores

text: and

text: defendants

text: small

text: retail

text: outlets

text: in

text: malls

text: diminished

text: likelihood

text: of

text: consumer

text: confusion

text: Finally

text: because

text: the

text: defendants

text: had

text: expended

text: substantial

text: resources

text: in

text: pursuing

text: their

text: trademark

text: applications

text: and

text: in

text: establishing

text: their

text: retail

text: presence

text: the

text: court

text: found

text: that

text: plaintiff

text: could

text: not

text: demonstrate

text: that

text: the

text: balance

text: of

text: hardships

text: tipped

text: in

text: its

text: favor

text: The

text: court

text: denied

text: the

text: application

text: for

text: preliminary

text: injunction

text: The

text: crux

text: of

text: the

text: court

text: s

text: decision

text: lay

text: in

text: the

text: facts

text: that

text: plaintiff

text: s

text: prior

text: use

text: and

text: registration

text: of

text: the

text: VIRGIN

text: mark

text: in

text: connection

text: with

text: the

text: sale

text: of

text: consumer

text: electronic

text: equipment

text: did

text: not

text: include

text: the

text: sale

text: of

text: telephones

text: or

text: telephone

text: services

text: and

text: that

text: defendants

text: were

text: the

text: first

text: to

text: register

text: and

text: use

text: VIRGIN

text: for

text: telephones

text: and

text: wireless

text: telephone

text: service

text: This

text: appeal

text: followed

text: DISCUSSION

text: I

text: As

text: the

text: court

text: below

text: correctly

text: noted

text: in

text: order

text: to

text: obtain

text: a

text: preliminary

text: injunction

text: a

text: party

text: must

text: demonstrate

text: probability

text: of

text: irreparable

text: harm

text: in

text: the

text: absence

text: of

text: injunctive

text: relief

text: and

text: either

text: a

text: likelihood

text: that

text: it

text: will

text: succeed

text: on

text: the

text: merits

text: of

text: its

text: claim

text: or

text: a

text: serious

text: question

text: going

text: to

text: the

text: merits

text: and

text: a

text: balance

text: of

text: hardships

text: tipping

text: decidedly

text: in

text: its

text: favor

text: See

text: Jackson

text: Dairy

text: Inc

text: v

text: H

text: P

text: Hood

text: Sons

text: Inc

text: F

text: d

text: d

text: Cir

text: per

text: curiam

text: Bristol

text: Myers

text: Squibb

text: Co

text: v

text: McNeil

text: P

text: P

text: C

text: Inc

text: F

text: d

text: d

text: Cir

text: We

text: review

text: the

text: court

text: s

text: denial

text: of

text: a

text: preliminary

text: injunction

text: for

text: abuse

text: of

text: discretion

text: Bristol

text: Myers

text: F

text: d

text: at

text: In

text: an

text: action

text: for

text: trademark

text: infringement

text: where

text: a

text: mark

text: merits

text: protection

text: a

text: showing

text: that

text: a

text: significant

text: number

text: of

text: consumers

text: are

text: likely

text: to

text: be

text: confused

text: about

text: the

text: source

text: of

text: the

text: goods

text: identified

text: by

text: the

text: allegedly

text: infringing

text: mark

text: is

text: generally

text: sufficient

text: to

text: demonstrate

text: both

text: irreparable

text: harm

text: and

text: a

text: likelihood

text: of

text: success

text: on

text: the

text: merits

text: Bristol

text: Myers

text: F

text: d

text: at

text: W

text: Publ

text: g

text: Co

text: v

text: Rose

text: Art

text: Indus

text: Inc

text: F

text: d

text: d

text: Cir

text: Thus

text: our

text: inquiry

text: must

text: be

text: whether

text: the

text: district

text: court

text: correctly

text: determined

text: that

text: the

text: plaintiff

text: was

text: not

text: entitled

text: to

text: protection

text: from

text: use

text: of

text: its

text: mark

text: by

text: others

text: in

text: the

text: sale

text: of

text: wireless

text: telephones

text: and

text: related

text: services

text: and

text: that

text: there

text: was

text: no

text: likelihood

text: that

text: in

text: the

text: absence

text: of

text: a

text: preliminary

text: injunction

text: a

text: significant

text: number

text: of

text: consumers

text: would

text: be

text: confused

text: about

text: the

text: sponsorship

text: of

text: defendants

text: retail

text: stores

text: For

text: the

text: reasons

text: discussed

text: below

text: we

text: find

text: that

text: the

text: mark

text: is

text: entitled

text: to

text: protection

text: and

text: there

text: is

text: a

text: significant

text: likelihood

text: of

text: confusion

text: We

text: reverse

text: and

text: remand

text: II

text: A

text: claim

text: of

text: trademark

text: infringement

text: whether

text: brought

text: under

text: U

text: S

text: C

text: for

text: infringement

text: of

text: a

text: registered

text: mark

text: or

text: U

text: S

text: C

text: a

text: for

text: infringement

text: of

text: rights

text: in

text: a

text: mark

text: acquired

text: by

text: use

text: is

text: analyzed

text: under

text: the

text: familiar

text: two

text: prong

text: test

text: described

text: in

text: Gruner

text: Jahr

text: USA

text: Publ

text: g

text: v

text: Meredith

text: Corp

text: F

text: d

text: d

text: Cir

text: See

text: Time

text: Inc

text: v

text: Petersen

text: Publ

text: g

text: Co

text: L

text: L

text: C

text: F

text: d

text: d

text: Cir

text: noting

text: that

text: Gruner

text: test

text: is

text: applicable

text: to

text: claims

text: brought

text: under

text: and

text: a

text: The

text: test

text: looks

text: first

text: to

text: whether

text: the

text: plaintiff

text: s

text: mark

text: is

text: entitled

text: to

text: protection

text: and

text: second

text: to

text: whether

text: defendant

text: s

text: use

text: of

text: the

text: mark

text: is

text: likely

text: to

text: cause

text: consumers

text: confusion

text: as

text: to

text: the

text: origin

text: or

text: sponsorship

text: of

text: the

text: defendant

text: s

text: goods

text: Gruner

text: F

text: d

text: at

text: Examining

text: the

text: question

text: as

text: the

text: test

text: dictates

text: we

text: have

text: no

text: doubt

text: that

text: plaintiff

text: was

text: entitled

text: to

text: a

text: preliminary

text: injunction

text: We

text: believe

text: the

text: district

text: court

text: accorded

text: plaintiff

text: too

text: narrow

text: a

text: scope

text: of

text: protection

text: for

text: its

text: famous

text: arbitrary

text: and

text: distinctive

text: mark

text: There

text: could

text: be

text: no

text: dispute

text: that

text: plaintiff

text: prevailed

text: as

text: to

text: the

text: first

text: prong

text: of

text: the

text: test

text: prior

text: use

text: and

text: ownership

text: For

text: years

text: plaintiff

text: had

text: used

text: the

text: VIRGIN

text: mark

text: on

text: huge

text: famous

text: stores

text: selling

text: in

text: addition

text: to

text: music

text: recordings

text: a

text: variety

text: of

text: consumer

text: electronic

text: equipment

text: At

text: the

text: time

text: the

text: defendants

text: began

text: using

text: VIRGIN

text: plaintiff

text: owned

text: rights

text: in

text: the

text: mark

text: The

text: focus

text: of

text: inquiry

text: thus

text: turns

text: to

text: the

text: second

text: prong

text: of

text: the

text: test

text: whether

text: defendants

text: use

text: of

text: VIRGIN

text: as

text: a

text: mark

text: for

text: stores

text: selling

text: wireless

text: telephone

text: services

text: and

text: phones

text: was

text: likely

text: to

text: cause

text: confusion

text: There

text: can

text: be

text: little

text: doubt

text: that

text: such

text: confusion

text: was

text: likely

text: The

text: landmark

text: case

text: of

text: Polaroid

text: Corp

text: v

text: Polarad

text: Electronics

text: Corp

text: F

text: d

text: d

text: Cir

text: Friendly

text: J

text: outlined

text: a

text: series

text: of

text: nonexclusive

text: factors

text: likely

text: to

text: be

text: pertinent

text: in

text: addressing

text: the

text: issue

text: of

text: likelihood

text: of

text: confusion

text: which

text: are

text: routinely

text: followed

text: in

text: such

text: cases

text: See

text: e

text: g

text: Streetwise

text: Maps

text: Inc

text: v

text: Vandam

text: Inc

text: F

text: d

text: d

text: Cir

text: Arrow

text: Fastener

text: Co

text: v

text: Stanley

text: Works

text: F

text: d

text: d

text: Cir

text: Mobil

text: Oil

text: Corp

text: v

text: Pegasus

text: Petroleum

text: Corp

text: F

text: d

text: d

text: Cir

text: Six

text: of

text: the

text: Polaroid

text: factors

text: relate

text: directly

text: to

text: the

text: likelihood

text: of

text: consumer

text: confusion

text: These

text: are

text: the

text: strength

text: of

text: the

text: plaintiff

text: s

text: mark

text: the

text: similarity

text: of

text: defendants

text: mark

text: to

text: plaintiff

text: s

text: the

text: proximity

text: of

text: the

text: products

text: sold

text: under

text: defendants

text: mark

text: to

text: those

text: sold

text: under

text: plaintiff

text: s

text: where

text: the

text: products

text: are

text: different

text: the

text: likelihood

text: that

text: plaintiff

text: will

text: bridge

text: the

text: gap

text: by

text: selling

text: the

text: products

text: being

text: sold

text: by

text: defendants

text: the

text: existence

text: of

text: actual

text: confusion

text: among

text: consumers

text: and

text: the

text: sophistication

text: of

text: consumers

text: Of

text: these

text: six

text: all

text: but

text: the

text: last

text: which

text: was

text: found

text: by

text: the

text: district

text: court

text: to

text: be

text: neutral

text: strongly

text: favor

text: the

text: plaintiff

text: The

text: remaining

text: two

text: Polaroid

text: factors

text: defendants

text: good

text: or

text: bad

text: faith

text: and

text: the

text: quality

text: of

text: defendants

text: products

text: are

text: more

text: pertinent

text: to

text: issues

text: other

text: than

text: likelihood

text: of

text: confusion

text: such

text: as

text: harm

text: to

text: plaintiff

text: s

text: reputation

text: and

text: choice

text: of

text: remedy

text: We

text: conclude

text: that

text: the

text: Polaroid

text: factors

text: powerfully

text: support

text: plaintiff

text: s

text: position

text: Strength

text: of

text: the

text: mark

text: The

text: strength

text: of

text: a

text: trademark

text: encompasses

text: two

text: different

text: concepts

text: both

text: of

text: which

text: relate

text: significantly

text: to

text: likelihood

text: of

text: consumer

text: confusion

text: The

text: first

text: and

text: most

text: important

text: is

text: inherent

text: strength

text: also

text: called

text: inherent

text: distinctiveness

text: This

text: inquiry

text: distinguishes

text: between

text: on

text: the

text: one

text: hand

text: inherently

text: distinctive

text: marks

text: marks

text: that

text: are

text: arbitrary

text: or

text: fanciful

text: in

text: relation

text: to

text: the

text: products

text: or

text: services

text: on

text: which

text: they

text: are

text: used

text: and

text: on

text: the

text: other

text: hand

text: marks

text: that

text: are

text: generic

text: descriptive

text: or

text: suggestive

text: as

text: to

text: those

text: goods

text: The

text: former

text: are

text: the

text: strong

text: marks

text: Abercrombie

text: Fitch

text: Co

text: v

text: Hunting

text: World

text: Inc

text: F

text: d

text: d

text: Cir

text: The

text: second

text: sense

text: of

text: the

text: concept

text: of

text: strength

text: of

text: a

text: mark

text: is

text: acquired

text: distinctiveness

text: i

text: e

text: fame

text: or

text: the

text: extent

text: to

text: which

text: prominent

text: use

text: of

text: the

text: mark

text: in

text: commerce

text: has

text: resulted

text: in

text: a

text: high

text: degree

text: of

text: consumer

text: recognition

text: See

text: TCPIP

text: Holding

text: Co

text: v

text: Haar

text: Communications

text: Inc

text: F

text: d

text: d

text: Cir

text: describing

text: these

text: two

text: concepts

text: of

text: strength

text: Streetwise

text: Maps

text: F

text: d

text: at

text: Considering

text: first

text: inherent

text: distinctiveness

text: the

text: law

text: accords

text: broad

text: muscular

text: protection

text: to

text: marks

text: that

text: are

text: arbitrary

text: or

text: fanciful

text: in

text: relation

text: to

text: the

text: products

text: on

text: which

text: they

text: are

text: used

text: and

text: lesser

text: protection

text: or

text: no

text: protection

text: at

text: all

text: to

text: marks

text: consisting

text: of

text: words

text: that

text: identify

text: or

text: describe

text: the

text: goods

text: or

text: their

text: attributes

text: The

text: reasons

text: for

text: the

text: distinction

text: arise

text: from

text: two

text: aspects

text: of

text: market

text: efficiency

text: The

text: paramount

text: objective

text: of

text: the

text: trademark

text: law

text: is

text: to

text: avoid

text: confusion

text: in

text: the

text: marketplace

text: The

text: purpose

text: for

text: which

text: the

text: trademark

text: law

text: accords

text: merchants

text: the

text: exclusive

text: right

text: to

text: the

text: use

text: of

text: a

text: name

text: or

text: symbol

text: in

text: their

text: area

text: or

text: commerce

text: is

text: identification

text: so

text: that

text: the

text: merchants

text: can

text: establish

text: goodwill

text: for

text: their

text: goods

text: based

text: on

text: past

text: satisfactory

text: performance

text: and

text: the

text: consuming

text: public

text: can

text: rely

text: on

text: a

text: mark

text: as

text: a

text: guarantee

text: that

text: the

text: goods

text: or

text: services

text: so

text: marked

text: come

text: from

text: the

text: merchant

text: who

text: has

text: been

text: found

text: to

text: be

text: satisfactory

text: in

text: the

text: past

text: See

text: Estee

text: Lauder

text: Inc

text: v

text: The

text: Gap

text: Inc

text: F

text: d

text: d

text: Cir

text: quoting

text: Restatement

text: Third

text: of

text: Unfair

text: Competition

text: comment

text: i

text: Power

text: Test

text: Petroleum

text: Distribs

text: Inc

text: v

text: Calcu

text: Gas

text: Inc

text: F

text: d

text: d

text: Cir

text: McGregor

text: Doniger

text: Inc

text: v

text: Drizzle

text: Inc

text: F

text: d

text: d

text: Cir

text: At

text: the

text: same

text: time

text: efficiency

text: and

text: the

text: public

text: interest

text: require

text: that

text: every

text: merchant

text: trading

text: in

text: a

text: class

text: of

text: goods

text: be

text: permitted

text: to

text: refer

text: to

text: the

text: goods

text: by

text: their

text: name

text: and

text: to

text: make

text: claims

text: about

text: their

text: quality

text: Thus

text: a

text: merchant

text: who

text: sells

text: pencils

text: under

text: the

text: trademark

text: Pencil

text: or

text: Clear

text: Mark

text: for

text: example

text: and

text: seeks

text: to

text: exclude

text: other

text: sellers

text: of

text: pencils

text: from

text: using

text: those

text: words

text: in

text: their

text: trade

text: is

text: seeking

text: an

text: advantage

text: the

text: trademark

text: law

text: does

text: not

text: intend

text: to

text: offer

text: To

text: grant

text: such

text: exclusivity

text: would

text: deprive

text: the

text: consuming

text: public

text: of

text: the

text: useful

text: market

text: information

text: it

text: receives

text: where

text: every

text: seller

text: of

text: pencils

text: is

text: free

text: to

text: call

text: them

text: pencils

text: Abercrombie

text: F

text: d

text: at

text: CES

text: Publ

text: g

text: Corp

text: v

text: St

text: Regis

text: Publ

text: ns

text: Inc

text: F

text: d

text: d

text: Cir

text: The

text: trademark

text: right

text: does

text: not

text: protect

text: the

text: exclusive

text: right

text: to

text: an

text: advertising

text: message

text: only

text: the

text: exclusive

text: right

text: to

text: an

text: identifier

text: to

text: protect

text: against

text: confusion

text: in

text: the

text: marketplace

text: Thus

text: as

text: a

text: matter

text: of

text: policy

text: the

text: trademark

text: law

text: accords

text: broader

text: protection

text: to

text: marks

text: that

text: serve

text: exclusively

text: as

text: identifiers

text: and

text: lesser

text: protection

text: where

text: a

text: grant

text: of

text: exclusiveness

text: would

text: tend

text: to

text: diminish

text: the

text: access

text: of

text: others

text: to

text: the

text: full

text: range

text: of

text: discourse

text: relating

text: to

text: their

text: goods

text: See

text: TCPIP

text: F

text: d

text: at

text: Nabisco

text: Inc

text: v

text: PF

text: Brands

text: Inc

text: F

text: d

text: d

text: Cir

text: Otokoyama

text: Co

text: Ltd

text: v

text: Wine

text: of

text: Japan

text: Import

text: Inc

text: F

text: d

text: d

text: Cir

text: The

text: second

text: aspect

text: of

text: efficiency

text: that

text: justifies

text: according

text: broader

text: protection

text: to

text: marks

text: that

text: are

text: inherently

text: distinctive

text: relates

text: directly

text: to

text: the

text: likelihood

text: of

text: confusion

text: If

text: a

text: mark

text: is

text: arbitrary

text: or

text: fanciful

text: and

text: makes

text: no

text: reference

text: to

text: the

text: nature

text: of

text: the

text: goods

text: it

text: designates

text: consumers

text: who

text: see

text: the

text: mark

text: on

text: different

text: objects

text: offered

text: in

text: the

text: marketplace

text: will

text: be

text: likely

text: to

text: assume

text: because

text: of

text: the

text: arbitrariness

text: of

text: the

text: choice

text: of

text: mark

text: that

text: they

text: all

text: come

text: from

text: the

text: same

text: source

text: For

text: example

text: if

text: consumers

text: become

text: familiar

text: with

text: a

text: toothpaste

text: sold

text: under

text: an

text: unusual

text: arbitrary

text: brand

text: name

text: such

text: as

text: ZzaaqQ

text: and

text: later

text: see

text: that

text: same

text: inherently

text: distinctive

text: brand

text: name

text: appearing

text: on

text: a

text: different

text: product

text: they

text: are

text: likely

text: to

text: assume

text: notwithstanding

text: the

text: product

text: difference

text: that

text: the

text: second

text: product

text: comes

text: from

text: the

text: same

text: producer

text: as

text: the

text: first

text: The

text: more

text: unusual

text: arbitrary

text: and

text: fanciful

text: a

text: trade

text: name

text: the

text: more

text: unlikely

text: it

text: is

text: that

text: two

text: independent

text: entities

text: would

text: have

text: chosen

text: it

text: In

text: contrast

text: every

text: seller

text: of

text: foods

text: has

text: an

text: interest

text: in

text: calling

text: its

text: product

text: delicious

text: Consumers

text: who

text: see

text: the

text: word

text: delicious

text: used

text: on

text: two

text: or

text: more

text: different

text: food

text: products

text: are

text: less

text: likely

text: to

text: draw

text: the

text: inference

text: that

text: they

text: must

text: all

text: come

text: from

text: the

text: same

text: producer

text: Cf

text: Streetwise

text: Maps

text: F

text: d

text: at

text: noting

text: that

text: several

text: map

text: producers

text: use

text: street

text: in

text: product

text: names

text: thus

text: plaintiff

text: s

text: mark

text: using

text: street

text: was

text: not

text: particularly

text: distinctive

text: W

text: Publ

text: g

text: F

text: d

text: at

text: noting

text: numerous

text: registrations

text: of

text: marks

text: using

text: word

text: golden

text: In

text: short

text: the

text: more

text: distinctive

text: the

text: mark

text: the

text: greater

text: the

text: likelihood

text: that

text: the

text: public

text: seeing

text: it

text: used

text: a

text: second

text: time

text: will

text: assume

text: that

text: the

text: second

text: use

text: comes

text: from

text: the

text: same

text: source

text: as

text: the

text: first

text: The

text: goal

text: of

text: avoiding

text: consumer

text: confusion

text: thus

text: dictates

text: that

text: the

text: inherently

text: distinctive

text: arbitrary

text: or

text: fanciful

text: marks

text: i

text: e

text: strong

text: marks

text: receive

text: broader

text: protection

text: than

text: weak

text: marks

text: those

text: that

text: are

text: descriptive

text: or

text: suggestive

text: of

text: the

text: products

text: on

text: which

text: they

text: are

text: used

text: See

text: Abercrombie

text: F

text: d

text: at

text: TCPIP

text: F

text: d

text: at

text: The

text: second

text: sense

text: of

text: trademark

text: strength

text: fame

text: or

text: acquired

text: distinctiveness

text: also

text: bears

text: on

text: consumer

text: confusion

text: See

text: TCPIP

text: F

text: d

text: at

text: Streetwise

text: Maps

text: F

text: d

text: at

text: If

text: a

text: mark

text: has

text: been

text: long

text: prominently

text: and

text: notoriously

text: used

text: in

text: commerce

text: there

text: is

text: a

text: high

text: likelihood

text: that

text: consumers

text: will

text: recognize

text: it

text: from

text: its

text: prior

text: use

text: Widespread

text: consumer

text: recognition

text: of

text: a

text: mark

text: previously

text: used

text: in

text: commerce

text: increases

text: the

text: likelihood

text: that

text: consumers

text: will

text: assume

text: it

text: identifies

text: the

text: previously

text: familiar

text: user

text: and

text: therefore

text: increases

text: the

text: likelihood

text: of

text: consumer

text: confusion

text: if

text: the

text: new

text: user

text: is

text: in

text: fact

text: not

text: related

text: to

text: the

text: first

text: See

text: Nabisco

text: F

text: d

text: at

text: A

text: mark

text: s

text: fame

text: also

text: gives

text: unscrupulous

text: traders

text: an

text: incentive

text: to

text: seek

text: to

text: create

text: consumer

text: confusion

text: by

text: associating

text: themselves

text: in

text: consumers

text: minds

text: with

text: a

text: famous

text: mark

text: The

text: added

text: likelihood

text: of

text: consumer

text: confusion

text: resulting

text: from

text: a

text: second

text: user

text: s

text: use

text: of

text: a

text: famous

text: mark

text: gives

text: reason

text: for

text: according

text: such

text: a

text: famous

text: mark

text: a

text: broader

text: scope

text: of

text: protection

text: at

text: least

text: when

text: it

text: is

text: also

text: inherently

text: distinctive

text: See

text: McGregor

text: F

text: d

text: at

text: noting

text: that

text: secondary

text: meaning

text: may

text: further

text: enlarge

text: the

text: scope

text: of

text: protection

text: accorded

text: to

text: inherently

text: distinctive

text: marks

text: Plaintiff

text: s

text: VIRGIN

text: mark

text: undoubtedly

text: scored

text: high

text: on

text: both

text: concepts

text: of

text: strength

text: In

text: relation

text: to

text: the

text: sale

text: of

text: consumer

text: electronic

text: equipment

text: the

text: VIRGIN

text: mark

text: is

text: inherently

text: distinctive

text: in

text: that

text: it

text: is

text: arbitrary

text: and

text: fanciful

text: the

text: word

text: virgin

text: has

text: no

text: intrinsic

text: relationship

text: whatsoever

text: to

text: selling

text: such

text: equipment

text: Because

text: there

text: is

text: no

text: intrinsic

text: reason

text: for

text: a

text: merchant

text: to

text: use

text: the

text: word

text: virgin

text: in

text: the

text: sale

text: of

text: consumer

text: electronic

text: equipment

text: a

text: consumer

text: seeing

text: VIRGIN

text: used

text: in

text: two

text: different

text: stores

text: selling

text: such

text: equipment

text: will

text: likely

text: assume

text: that

text: the

text: stores

text: are

text: related

text: Plaintiff

text: s

text: VIRGIN

text: mark

text: was

text: also

text: famous

text: The

text: mark

text: had

text: been

text: employed

text: with

text: world

text: wide

text: recognition

text: as

text: the

text: mark

text: of

text: an

text: airline

text: and

text: as

text: the

text: mark

text: for

text: megastores

text: selling

text: music

text: recordings

text: and

text: consumer

text: electronic

text: equipment

text: The

text: fame

text: of

text: the

text: mark

text: increased

text: the

text: likelihood

text: that

text: consumers

text: seeing

text: defendants

text: shops

text: selling

text: telephones

text: under

text: the

text: mark

text: VIRGIN

text: would

text: assume

text: incorrectly

text: that

text: defendants

text: shops

text: were

text: a

text: part

text: of

text: plaintiff

text: s

text: organization

text: See

text: Lois

text: Sportswear

text: U

text: S

text: A

text: Inc

text: v

text: Levi

text: Strauss

text: Co

text: F

text: d

text: d

text: Cir

text: There

text: can

text: be

text: no

text: doubt

text: that

text: plaintiff

text: s

text: VIRGIN

text: mark

text: as

text: used

text: on

text: consumer

text: electronic

text: equipment

text: is

text: a

text: strong

text: mark

text: as

text: the

text: district

text: court

text: found

text: It

text: is

text: entitled

text: as

text: such

text: to

text: a

text: broad

text: scope

text: of

text: protection

text: precisely

text: because

text: the

text: use

text: of

text: the

text: mark

text: by

text: others

text: in

text: connection

text: with

text: stores

text: selling

text: reasonably

text: closely

text: related

text: merchandise

text: would

text: inevitably

text: have

text: a

text: high

text: likelihood

text: of

text: causing

text: consumer

text: confusion

text: Similarity

text: of

text: marks

text: When

text: the

text: secondary

text: user

text: s

text: mark

text: is

text: not

text: identical

text: but

text: merely

text: similar

text: to

text: the

text: plaintiff

text: s

text: mark

text: it

text: is

text: important

text: to

text: assess

text: the

text: degree

text: of

text: similarity

text: between

text: them

text: in

text: assessing

text: the

text: likelihood

text: that

text: consumers

text: will

text: be

text: confused

text: See

text: McGregor

text: F

text: d

text: at

text: Plaintiff

text: s

text: and

text: defendants

text: marks

text: were

text: not

text: merely

text: similar

text: they

text: were

text: identical

text: to

text: the

text: extent

text: that

text: both

text: consisted

text: of

text: the

text: same

text: word

text: virgin

text: The

text: district

text: court

text: believed

text: this

text: factor

text: did

text: not

text: favor

text: plaintiff

text: because

text: it

text: found

text: some

text: differences

text: in

text: appearance

text: Defendants

text: logo

text: used

text: a

text: difference

text: typeface

text: and

text: different

text: colors

text: from

text: plaintiff

text: s

text: While

text: those

text: are

text: indeed

text: differences

text: they

text: are

text: quite

text: minor

text: in

text: relation

text: to

text: the

text: fact

text: that

text: the

text: name

text: being

text: used

text: as

text: a

text: trademark

text: was

text: the

text: same

text: in

text: each

text: case

text: Advertisement

text: and

text: consumer

text: experience

text: of

text: a

text: mark

text: do

text: not

text: necessarily

text: transmit

text: all

text: of

text: the

text: mark

text: s

text: features

text: Plaintiff

text: for

text: example

text: advertised

text: its

text: Virgin

text: Megastores

text: on

text: the

text: radio

text: A

text: consumer

text: who

text: heard

text: those

text: advertisements

text: and

text: then

text: saw

text: the

text: defendants

text: installation

text: using

text: the

text: name

text: VIRGIN

text: would

text: have

text: no

text: way

text: of

text: knowing

text: that

text: the

text: two

text: trademarks

text: looked

text: different

text: See

text: Sports

text: Auth

text: Inc

text: v

text: Prime

text: Hospitality

text: Corp

text: F

text: d

text: d

text: Cir

text: A

text: consumer

text: who

text: had

text: visited

text: one

text: of

text: plaintiff

text: s

text: Virgin

text: Megastores

text: and

text: remembered

text: the

text: name

text: would

text: not

text: necessarily

text: remember

text: the

text: typeface

text: and

text: color

text: of

text: plaintiff

text: s

text: mark

text: The

text: reputation

text: of

text: a

text: mark

text: also

text: spreads

text: by

text: word

text: of

text: mouth

text: among

text: consumers

text: One

text: consumer

text: who

text: hears

text: from

text: others

text: about

text: their

text: experience

text: with

text: Virgin

text: stores

text: and

text: then

text: encounters

text: defendants

text: Virgin

text: store

text: will

text: have

text: no

text: way

text: knowing

text: of

text: the

text: differences

text: in

text: typeface

text: See

text: Hills

text: Bros

text: Coffee

text: Inc

text: v

text: Hills

text: Supermarkets

text: Inc

text: F

text: d

text: d

text: Cir

text: per

text: curiam

text: In

text: view

text: of

text: the

text: fact

text: that

text: defendants

text: used

text: the

text: same

text: name

text: as

text: plaintiff

text: we

text: conclude

text: the

text: defendants

text: mark

text: was

text: sufficiently

text: similar

text: to

text: plaintiff

text: s

text: to

text: increase

text: the

text: likelihood

text: of

text: confusion

text: This

text: factor

text: favored

text: the

text: plaintiff

text: as

text: a

text: matter

text: of

text: law

text: We

text: conclude

text: that

text: the

text: district

text: court

text: erred

text: in

text: concluding

text: otherwise

text: on

text: the

text: basis

text: of

text: comparatively

text: trivial

text: and

text: often

text: irrelevant

text: differences

text: Proximity

text: of

text: the

text: products

text: and

text: likelihood

text: of

text: bridging

text: the

text: gap

text: The

text: next

text: factor

text: is

text: the

text: proximity

text: of

text: the

text: products

text: being

text: sold

text: by

text: plaintiff

text: and

text: defendant

text: under

text: identical

text: or

text: similar

text: marks

text: See

text: Arrow

text: Fastener

text: F

text: d

text: at

text: This

text: factor

text: has

text: an

text: obvious

text: bearing

text: on

text: the

text: likelihood

text: of

text: confusion

text: When

text: the

text: two

text: users

text: of

text: a

text: mark

text: are

text: operating

text: in

text: completely

text: different

text: areas

text: of

text: commerce

text: consumers

text: are

text: less

text: likely

text: to

text: assume

text: that

text: their

text: similarly

text: branded

text: products

text: come

text: from

text: the

text: same

text: source

text: In

text: contrast

text: the

text: closer

text: the

text: secondary

text: user

text: s

text: goods

text: are

text: to

text: those

text: the

text: consumer

text: has

text: seen

text: marketed

text: under

text: the

text: prior

text: user

text: s

text: brand

text: the

text: more

text: likely

text: that

text: the

text: consumer

text: will

text: mistakenly

text: assume

text: a

text: common

text: source

text: See

text: Cadbury

text: Beverages

text: Inc

text: v

text: Cott

text: Corp

text: F

text: d

text: d

text: Cir

text: While

text: plaintiff

text: had

text: not

text: sold

text: telephones

text: or

text: telephone

text: service

text: prior

text: to

text: defendant

text: s

text: registration

text: evincing

text: intent

text: to

text: sell

text: those

text: items

text: plaintiff

text: had

text: sold

text: quite

text: similar

text: items

text: of

text: consumer

text: electronic

text: equipment

text: These

text: included

text: computer

text: video

text: game

text: systems

text: portable

text: cassette

text: tape

text: players

text: compact

text: disc

text: players

text: MP

text: players

text: mini

text: disc

text: players

text: and

text: disposable

text: cameras

text: Like

text: telephones

text: many

text: of

text: these

text: are

text: small

text: consumer

text: electronic

text: gadgets

text: making

text: use

text: of

text: computerized

text: audio

text: communication

text: They

text: are

text: sold

text: in

text: the

text: same

text: channels

text: of

text: commerce

text: Consumers

text: would

text: have

text: a

text: high

text: expectation

text: of

text: finding

text: telephones

text: portable

text: CD

text: players

text: and

text: computerized

text: video

text: game

text: systems

text: in

text: the

text: same

text: stores

text: We

text: think

text: the

text: proximity

text: in

text: commerce

text: of

text: telephones

text: to

text: CD

text: players

text: substantially

text: advanced

text: the

text: risk

text: that

text: consumer

text: confusion

text: would

text: occur

text: when

text: both

text: were

text: sold

text: by

text: different

text: merchants

text: under

text: the

text: same

text: trade

text: name

text: VIRGIN

text: Our

text: classic

text: Polaroid

text: test

text: further

text: protects

text: a

text: trademark

text: owner

text: by

text: examining

text: the

text: likelihood

text: that

text: even

text: if

text: the

text: plaintiff

text: s

text: products

text: were

text: not

text: so

text: close

text: to

text: the

text: defendants

text: when

text: the

text: defendant

text: began

text: to

text: market

text: them

text: there

text: was

text: already

text: a

text: likelihood

text: that

text: plaintiff

text: would

text: in

text: the

text: reasonably

text: near

text: future

text: begin

text: selling

text: those

text: products

text: See

text: Cadbury

text: Beverages

text: F

text: d

text: at

text: VEL

text: s

text: claim

text: of

text: proximity

text: was

text: further

text: strengthened

text: in

text: this

text: regard

text: because

text: as

text: the

text: district

text: court

text: expressly

text: found

text: plans

text: had

text: been

text: formulated

text: for

text: VEL

text: to

text: enter

text: the

text: market

text: for

text: telecommunications

text: products

text: and

text: services

text: shortly

text: in

text: the

text: future

text: VEL

text: had

text: already

text: begun

text: marketing

text: telephone

text: service

text: in

text: England

text: which

text: would

text: operate

text: in

text: the

text: United

text: States

text: and

text: as

text: the

text: district

text: court

text: found

text: had

text: made

text: plans

text: to

text: sell

text: telephones

text: and

text: wireless

text: telephone

text: service

text: under

text: the

text: VIRGIN

text: name

text: from

text: its

text: retail

text: stores

text: The

text: district

text: court

text: nonetheless

text: found

text: in

text: favor

text: of

text: the

text: defendants

text: with

text: respect

text: to

text: the

text: proximity

text: of

text: products

text: and

text: services

text: We

text: would

text: ordinarily

text: give

text: considerable

text: deference

text: to

text: a

text: factual

text: finding

text: on

text: this

text: issue

text: Here

text: however

text: we

text: cannot

text: do

text: so

text: because

text: it

text: appears

text: the

text: district

text: court

text: applied

text: the

text: wrong

text: test

text: The

text: court

text: did

text: not

text: assess

text: the

text: proximity

text: of

text: defendants

text: VIRGIN

text: branded

text: retail

text: stores

text: selling

text: telephone

text: products

text: to

text: plaintiff

text: s

text: VIRGIN

text: branded

text: retail

text: stores

text: selling

text: other

text: consumer

text: electronic

text: products

text: It

text: simply

text: concluded

text: that

text: because

text: defendants

text: were

text: selling

text: exclusively

text: telephone

text: products

text: and

text: services

text: and

text: plaintiff

text: s

text: electronic

text: products

text: did

text: not

text: include

text: telephones

text: or

text: related

text: services

text: the

text: defendants

text: must

text: prevail

text: as

text: to

text: the

text: proximity

text: factor

text: This

text: represents

text: a

text: considerable

text: misunderstanding

text: of

text: the

text: Polaroid

text: test

text: The

text: famous

text: list

text: of

text: factors

text: of

text: likely

text: pertinence

text: in

text: assessing

text: likelihood

text: of

text: confusion

text: in

text: Polaroid

text: was

text: specially

text: designed

text: for

text: a

text: case

text: like

text: this

text: one

text: in

text: which

text: the

text: secondary

text: user

text: is

text: not

text: in

text: direct

text: competition

text: with

text: the

text: prior

text: user

text: but

text: is

text: selling

text: a

text: somewhat

text: different

text: product

text: or

text: service

text: In

text: Polaroid

text: the

text: plaintiff

text: sold

text: optical

text: and

text: camera

text: equipment

text: while

text: the

text: defendant

text: sold

text: electronic

text: apparatus

text: The

text: test

text: the

text: court

text: discussed

text: was

text: expressly

text: addressed

text: to

text: the

text: problem

text: how

text: far

text: a

text: valid

text: trademark

text: shall

text: be

text: protected

text: with

text: respect

text: to

text: goods

text: other

text: than

text: those

text: to

text: which

text: its

text: owner

text: has

text: applied

text: it

text: F

text: d

text: at

text: emphasis

text: added

text: see

text: also

text: Arrow

text: Fastener

text: F

text: d

text: at

text: noting

text: that

text: products

text: need

text: not

text: actually

text: compete

text: with

text: each

text: other

text: The

text: very

text: fact

text: that

text: the

text: test

text: includes

text: the

text: proximity

text: between

text: the

text: defendant

text: s

text: products

text: and

text: the

text: plaintiff

text: s

text: and

text: the

text: likelihood

text: that

text: the

text: plaintiff

text: will

text: bridge

text: the

text: gap

text: makes

text: clear

text: that

text: the

text: trademark

text: owner

text: does

text: not

text: lose

text: as

text: the

text: district

text: court

text: concluded

text: merely

text: because

text: it

text: has

text: not

text: previously

text: sold

text: the

text: precise

text: good

text: or

text: service

text: sold

text: by

text: the

text: secondary

text: user

text: In

text: our

text: view

text: had

text: the

text: district

text: court

text: employed

text: the

text: proper

text: test

text: of

text: proximity

text: it

text: could

text: not

text: have

text: failed

text: to

text: find

text: a

text: high

text: degree

text: of

text: proximity

text: as

text: between

text: plaintiff

text: VEL

text: s

text: prior

text: sales

text: of

text: consumer

text: electronic

text: audio

text: equipment

text: and

text: defendants

text: subsequent

text: sales

text: of

text: telephones

text: and

text: telephone

text: services

text: which

text: proximity

text: would

text: certainly

text: contribute

text: to

text: likelihood

text: of

text: consumer

text: confusion

text: And

text: plaintiff

text: was

text: all

text: the

text: more

text: entitled

text: to

text: a

text: finding

text: in

text: its

text: favor

text: in

text: respect

text: of

text: these

text: matters

text: by

text: virtue

text: of

text: the

text: fact

text: which

text: the

text: district

text: court

text: did

text: find

text: that

text: at

text: the

text: time

text: defendants

text: began

text: using

text: the

text: VIRGIN

text: mark

text: in

text: the

text: retail

text: sale

text: of

text: telephones

text: and

text: telephone

text: services

text: plaintiff

text: already

text: had

text: plans

text: to

text: bridge

text: the

text: gap

text: by

text: expanding

text: its

text: sales

text: of

text: consumer

text: electronic

text: equipment

text: to

text: include

text: sales

text: of

text: those

text: very

text: goods

text: and

text: services

text: in

text: the

text: near

text: future

text: Consumer

text: confusion

text: was

text: more

text: than

text: likely

text: it

text: was

text: virtually

text: inevitable

text: Actual

text: confusion

text: It

text: is

text: self

text: evident

text: that

text: the

text: existence

text: of

text: actual

text: consumer

text: confusion

text: indicates

text: a

text: likelihood

text: of

text: consumer

text: confusion

text: Nabisco

text: F

text: d

text: at

text: We

text: have

text: therefore

text: deemed

text: evidence

text: of

text: actual

text: confusion

text: particularly

text: relevant

text: to

text: the

text: inquiry

text: Streetwise

text: Maps

text: F

text: d

text: at

text: Plaintiff

text: submitted

text: to

text: the

text: district

text: court

text: an

text: affidavit

text: of

text: a

text: former

text: employee

text: of

text: defendant

text: Cel

text: Net

text: who

text: worked

text: at

text: a

text: mall

text: kiosk

text: branded

text: as

text: Virgin

text: Wireless

text: which

text: stated

text: that

text: individuals

text: used

text: to

text: ask

text: him

text: if

text: the

text: kiosk

text: was

text: affiliated

text: with

text: plaintiff

text: s

text: VIRGIN

text: stores

text: The

text: district

text: court

text: correctly

text: concluded

text: that

text: this

text: evidence

text: weighed

text: in

text: plaintiff

text: s

text: favor

text: Sophistication

text: of

text: consumers

text: The

text: degree

text: of

text: sophistication

text: of

text: consumers

text: can

text: have

text: an

text: important

text: bearing

text: on

text: likelihood

text: of

text: confusion

text: Where

text: the

text: purchasers

text: of

text: a

text: products

text: are

text: highly

text: trained

text: professionals

text: they

text: know

text: the

text: market

text: and

text: are

text: less

text: likely

text: than

text: untrained

text: consumers

text: to

text: be

text: misled

text: or

text: confused

text: by

text: the

text: similarity

text: of

text: different

text: marks

text: The

text: district

text: court

text: recognized

text: that

text: r

text: etail

text: customers

text: such

text: as

text: the

text: ones

text: catered

text: to

text: by

text: both

text: the

text: defendants

text: and

text: plaintiff

text: are

text: not

text: expected

text: to

text: exercise

text: the

text: same

text: degree

text: of

text: care

text: as

text: professional

text: buyers

text: who

text: are

text: expected

text: to

text: have

text: greater

text: powers

text: of

text: discrimination

text: On

text: the

text: other

text: hand

text: it

text: observed

text: that

text: purchasers

text: of

text: cellular

text: telephones

text: and

text: the

text: service

text: plans

text: were

text: likely

text: to

text: give

text: greater

text: care

text: than

text: self

text: service

text: customers

text: in

text: a

text: supermarket

text: Noting

text: that

text: neither

text: side

text: had

text: submitted

text: evidence

text: on

text: the

text: sophistication

text: of

text: consumers

text: the

text: court

text: made

text: no

text: finding

text: favoring

text: either

text: side

text: We

text: agree

text: that

text: the

text: sophistication

text: factor

text: is

text: neutral

text: in

text: this

text: case

text: Bad

text: faith

text: and

text: the

text: quality

text: of

text: the

text: defendants

text: services

text: or

text: products

text: Two

text: factors

text: remain

text: of

text: the

text: conventional

text: Polaroid

text: test

text: the

text: existence

text: of

text: bad

text: faith

text: on

text: the

text: part

text: of

text: the

text: secondary

text: user

text: and

text: the

text: quality

text: of

text: the

text: secondary

text: user

text: s

text: products

text: or

text: services

text: Polaroid

text: F

text: d

text: at

text: Neither

text: factor

text: is

text: of

text: high

text: relevance

text: to

text: the

text: issue

text: of

text: likelihood

text: of

text: confusion

text: A

text: finding

text: that

text: a

text: party

text: acted

text: in

text: bad

text: faith

text: can

text: affect

text: the

text: court

text: s

text: choice

text: of

text: remedy

text: or

text: can

text: tip

text: the

text: balance

text: where

text: questions

text: are

text: close

text: It

text: does

text: not

text: bear

text: directly

text: on

text: whether

text: consumers

text: are

text: likely

text: to

text: be

text: confused

text: See

text: TCPIP

text: F

text: d

text: at

text: The

text: district

text: court

text: noted

text: some

text: evidence

text: of

text: bad

text: faith

text: on

text: the

text: defendants

text: part

text: but

text: because

text: the

text: evidence

text: on

text: the

text: issue

text: was

text: scant

text: and

text: equivocal

text: the

text: court

text: concluded

text: that

text: such

text: a

text: finding

text: at

text: this

text: stage

text: would

text: be

text: speculative

text: The

text: court

text: therefore

text: found

text: that

text: this

text: factor

text: favored

text: neither

text: party

text: The

text: issue

text: of

text: the

text: quality

text: of

text: the

text: secondary

text: user

text: s

text: product

text: goes

text: more

text: to

text: the

text: harm

text: that

text: confusion

text: can

text: cause

text: the

text: plaintiff

text: s

text: mark

text: and

text: reputation

text: than

text: to

text: the

text: likelihood

text: of

text: confusion

text: See

text: Arrow

text: Fastener

text: F

text: d

text: at

text: noting

text: that

text: first

text: user

text: s

text: reputation

text: may

text: be

text: harmed

text: if

text: secondary

text: user

text: s

text: goods

text: are

text: of

text: poor

text: quality

text: In

text: any

text: event

text: the

text: district

text: court

text: found

text: this

text: factor

text: to

text: be

text: neutral

text: with

text: respect

text: to

text: likelihood

text: of

text: confusion

text: In

text: summary

text: we

text: conclude

text: that

text: of

text: the

text: six

text: Polaroid

text: factors

text: that

text: pertain

text: directly

text: to

text: the

text: likelihood

text: of

text: consumer

text: confusion

text: all

text: but

text: one

text: favor

text: the

text: plaintiff

text: and

text: that

text: one

text: sophistication

text: of

text: consumers

text: is

text: neutral

text: The

text: plaintiff

text: is

text: strongly

text: favored

text: by

text: the

text: strength

text: of

text: its

text: mark

text: both

text: inherent

text: and

text: acquired

text: the

text: similarity

text: of

text: the

text: marks

text: the

text: proximity

text: of

text: the

text: products

text: and

text: services

text: the

text: likelihood

text: that

text: plaintiff

text: would

text: bridge

text: the

text: gap

text: and

text: the

text: existence

text: of

text: actual

text: confusion

text: of

text: the

text: factors

text: favors

text: the

text: defendant

text: The

text: remaining

text: factors

text: were

text: found

text: to

text: be

text: neutral

text: Although

text: we

text: do

text: not

text: suggest

text: that

text: likelihood

text: of

text: confusion

text: may

text: be

text: properly

text: determined

text: simply

text: by

text: the

text: number

text: of

text: factors

text: in

text: one

text: party

text: s

text: favor

text: the

text: overall

text: assessment

text: in

text: this

text: case

text: in

text: our

text: view

text: admits

text: only

text: of

text: a

text: finding

text: in

text: plaintiff

text: s

text: favor

text: that

text: defendants

text: sale

text: of

text: telephones

text: and

text: telephone

text: related

text: services

text: under

text: the

text: VIRGIN

text: mark

text: was

text: likely

text: to

text: cause

text: substantial

text: consumer

text: confusion

text: One

text: issue

text: remains

text: Defendants

text: argue

text: that

text: plaintiff

text: should

text: be

text: barred

text: by

text: laches

text: from

text: seeking

text: injunctive

text: relief

text: They

text: contend

text: that

text: because

text: of

text: plaintiff

text: s

text: delay

text: after

text: learning

text: of

text: the

text: defendants

text: applications

text: to

text: register

text: the

text: VIRGIN

text: marks

text: they

text: expended

text: considerable

text: sums

text: and

text: developed

text: goodwill

text: in

text: their

text: use

text: of

text: the

text: VIRGIN

text: marks

text: before

text: plaintiff

text: brought

text: suit

text: Because

text: the

text: district

text: court

text: ruled

text: in

text: the

text: defendants

text: favor

text: it

text: made

text: no

text: express

text: finding

text: on

text: the

text: issue

text: of

text: laches

text: But

text: the

text: district

text: court

text: explicitly

text: found

text: that

text: plaintiff

text: first

text: learned

text: of

text: defendants

text: use

text: of

text: the

text: name

text: VIRGIN

text: in

text: commerce

text: only

text: two

text: days

text: before

text: plaintiff

text: instituted

text: this

text: suit

text: Given

text: that

text: finding

text: plaintiff

text: could

text: not

text: be

text: chargeable

text: with

text: laches

text: We

text: conclude

text: that

text: as

text: a

text: matter

text: of

text: law

text: plaintiff

text: demonstrated

text: irreparable

text: harm

text: and

text: likelihood

text: of

text: success

text: on

text: the

text: merits

text: and

text: was

text: entitled

text: to

text: a

text: preliminary

text: injunction

text: CONCLUSION

text: REVERSED

text: and

text: REMANDED

text: Notes

text: Immediately

text: following

text: oral

text: argument

text: we

text: issued

text: a

text: summary

text: order

text: opinion

text: to

text: follow

text: directing

text: the

text: district

text: court

text: to

text: enter

text: a

text: preliminary

text: injunction

text: Because

text: of

text: Pennie

text: Edmonds

text: s

text: involvement

text: in

text: searching

text: marks

text: for

text: defendants

text: and

text: because

text: of

text: the

text: factual

text: dispute

text: about

text: whether

text: plaintiff

text: s

text: counsel

text: searched

text: the

text: VIRGIN

text: mark

text: for

text: defendants

text: defendants

text: sought

text: in

text: the

text: district

text: court

text: to

text: have

text: Pennie

text: Edmonds

text: disqualified

text: from

text: representing

text: plaintiff

text: The

text: district

text: court

text: denied

text: this

text: motion

text: on

text: March