2010 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

7-9-2010

Sabinsa Corp v. Creative Compounds

Precedential or Non-Precedential: Precedential

Docket No. 08-3255

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Recommended Citation

"Sabinsa Corp v. Creative Compounds" (2010). 2010 Decisions. Paper 839.

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 PRECEDENTIAL

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT

__________

No. 08-3255

__________

SABINSA CORPORATION, 

 Appellant.

v.

CREATIVE COMPOUNDS, LLC

 

On Appeal from the United States District Court

for the District of New Jersey

(D. C. No. 2-04-cv-04239)

District Judge: Hon. Dennis M. Cavanaugh

 

Argued on May 13, 2009

Before: AMBRO and ROTH, Circuit Judges

 and FISCHER*, District Judge

 

*Judge Nora Barry Fischer, United States District

Judge for the Western District of Pennsylvania, sitting by

designation. 
2

(Opinion filed: July 9, 2010)

James H. Hulme, Esquire (Argued)

Arent, Fox, Kintner, Plotkin & Kahn, LLP

1050 Connecticut Avenue, N.W., Suite 500

Washington, DC 20036

Counsel for Appellant Sabinsa Corporation

Sean R. Kelly, Esquire

Saiber, LLC

One Gateway Center, 13 Floor th

Suite 300

Newark, NJ 07102-5311

Counsel for Appellant Sabinsa Corporation

Brian J. McMahon, Esquire 

Kevin McNulty, Esquire (Argued)

Gibbons, P. C. 

One Gateway Center

Newark, NJ 07102-5310

Counsel for Appellee Creative Compounds, LLC

 

 

 

O P I N I O N 

 
3

ROTH, Circuit Judge:

Sabinsa Corporation appeals the District Court’s

judgment in favor of Creative Compounds, LLC, on Sabinsa’s

trademark infringement and unfair competition claims. The

District Court found that there was no likelihood of confusion

between Sabinsa’s mark, ForsLean, and Creative Compounds’s

mark, Forsthin, both of which refer to Coleus forskohlii extract,

an ingredient used in weight management products. Because the

District Court erred in its findings on the Lapp factors and its

ultimate finding on likelihood of confusion, we will reverse the

judgment. Further, because the undisputed facts weigh heavily

in favor of Sabinsa so that any reasonable fact finder, weighing

the Lapp factors properly, would find that Sabinsa had

demonstrated a likelihood of confusion, we conclude that there

is no need to remand for a re-weighing by the District Court of

the Lapp factors. We therefore remand this case for entry of

judgment in favor of Sabinsa.

I. Background

The following facts are undisputed.

Forskohlin is an extract derived from the roots of the

plant Coleus forskohlii, a member of the mint family, found

primarily in India. It is manufactured by harvesting and drying

the Coleus forskohlii root and then extracting the forskohlin into

a highly-concentrated slurry. The slurry is then combined with

inactive ingredients to make various concentrations, which are

sold in powder form.
 The nutraceutical industry provides ingredients for suppliers,

1

manufacturers, and marketers of nutritional supplements.

4

Sabinsa, an ingredient supplier for nutraceutical1

manufacturers, was founded in 1988 by Dr. Muhammed Majeed,

a scientist with experience in the pharmaceutical industry. In

1996, Dr. Majeed began research into the potential use of

forskohlin to promote lean body mass. After completing a

clinical trial, Sabinsa filed an intent-to-use application for the

trademark, ForsLean, formed by combining “Fors” from

forskohlin with “Lean” for lean body mass. Sabinsa first

marketed ForsLean to nutraceutical manufacturers in 2000.

Sabinsa has also created pamphlets marketing ForsLean directly

to the public. ForsLean was Sabinsa’s highest revenuegenerating product for at least five years preceding the trial in

the District Court.

In 2003, a severe drought struck India and affected

Sabinsa’s supply of forskohlin. As a result, Sabinsa both

worked to keep its customers interested in ForsLean and spent

significant resources helping farmers in India cultivate Coleus

forskohlii to ensure a continued supply in the future. Forskohlin

was available again in the spring of 2004, in part due to

Sabinsa’s efforts. Sabinsa thereafter created the “ForsLean 

promise,” a commitment to its customers to ensure the supply of

forskohlin in the future.

Creative Compounds is also an ingredient supplier to the

nutraceutical industry although it operates with only seven
5

employees, none of whom is a scientist or Ph.D., and it conducts

no research and development. Creative Compounds began

selling forskohlin at the end of 2002. It did not, however, adopt

the trade name Forsthin for its product until the spring of 2004

– just as Sabinsa’s supply problems were coming to an end.

Though there is no indication that Creative Compounds ever had

a problem with supply associated with the drought in India, it

heavily promoted “The Return of Coleus” as it introduced its

new Forsthin brand: “Not long ago, Coleus was one of the most

powerful options in stimulant-free weight loss. That was until

raw material shortages and low-quality extracts made

maintaining a Coleus formula a nightmare. Those days are

over.” Creative Compounds made very few sales of forskohlin

in 2002, 2003, and 2004, but sold more than 1000 kilograms in

2005, nearly 600 kilograms in 2006, and nearly 700 kilograms

in 2007.

Sabinsa sent a cease-and-desist letter to Creative

Compounds in the summer of 2004, soon after the latter began

using the name Forsthin. Within a week and without contacting

Sabinsa, Creative Compounds filed a declaratory judgment

action in the United States District Court for the District of

Missouri. Sabinsa then filed this suit, and the Missouri suit was

dismissed in favor of this one.

Sabinsa’s Complaint alleged five claims, all of which

required that it prove both its ownership of a valid and legally

protectable trademark and a likelihood of confusion caused by

Creative Compounds’s use of the mark Forsthin. E.T. Browne

Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 191 (3d Cir.
6

2008). Creative Compounds has conceded that Sabinsa owns

the ForsLean mark and that the mark is valid and legally

protectable. Therefore, the only issue for trial was “whether or

not Defendant’s use of the mark Forsthin is likely to create

confusion in the marketplace when compared to Plaintiff’s mark

Fors[L]ean.”

On June 16, 2008, after a bench trial, the District Court

read into the record an oral decision in favor of Creative

Compounds. Sabinsa appealed. We have jurisdiction pursuant

to 28 U.S.C. § 1291. 

II. Standard of Review

We exercise plenary review over the District Court’s

legal conclusions regarding the Lanham Act. See Checkpoint

Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270,

279 (3d Cir. 2001). Factual findings concerning the likelihood

of confusion are reviewed for clear error. See A & H

Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198,

210 (3d Cir. 2000). “Clear error exists when, giving all

deference to the opportunity of the trial judge to evaluate the

credibility of witnesses and to weigh the evidence, we are left

with a definite and firm conviction that a mistake has been

committed.” Id. at 194 (quotation marks and citation omitted).

Though “[l]ikelihood of confusion is a factual question[,] . . .

legal principles govern what evidence may, or must, be

considered by the District Court in reaching that conclusion, and

also what standards apply to its determination.” Id. at 210. 

Pursuant to Federal Rule of Civil Procedure 52, a trial
7

court must make clear factual findings to support its

conclusions. 9 Wright & Miller, Federal Practice & Procedure

§ 2574, at 690. Rule 52 is not satisfied “by the statement of the

ultimate fact without the subordinate factual foundations for it

which also must be the subject of specific findings.” O'Neill v.

United States, 411 F.2d 139, 146 (3d Cir. 1969). “If

[subordinate findings] did not enter into the process by which

the ultimate factual finding was made, then it was without any

supporting foundation.” H. Prang Trucking Co., Inc. v. Local

Union No. 469, 613 F.2d 1235, 1238 (3d Cir. 1980)(citation

omitted).

III. The District Court’s Likelihood of Confusion Analysis

“To prove likelihood of confusion, plaintiffs must show

that consumers viewing the mark would probably assume the

product or service it represents is associated with the source of

a different product or service identified by a similar mark.”

Checkpoint Sys., 269 F.3d at 280 (internal quotation marks

removed). In Interpace Corp. v. Lapp, Inc., we set forth the

factors which may indicate a likelihood of confusion: 

(1) the degree of similarity between the owner's mark and

the alleged infringing mark; 

(2) the strength of the owner’s mark; 

(3) the price of the goods and other factors indicative of

the care and attention expected of consumers when

making a purchase; 

(4) the length of time the defendant has used the mark

without evidence of actual confusion arising; 

(5) the intent of the defendant in adopting the mark; 
8

(6) the evidence of actual confusion; 

(7) whether the goods, though not competing, are

marketed through the same channels of trade and

advertised through the same media; 

(8) the extent to which the targets of the parties’ sales

efforts are the same; 

(9) the relationship of the goods in the minds of

consumers because of similarity of functions; and 

(10) other factors suggesting the consuming public might

expect the prior owner to manufacture a product in the

defendant’s market or that he is likely to expand into that

market. 

721 F.2d at 463. “None of these factors is determinative in the

likelihood of confusion analysis and each factor must be

weighed and balanced one against the other.” Checkpoint Sys.,

269 F.3d at 280. In reviewing a district court’s analysis of the

Lapp factors, we can reverse the court’s conclusions if the

relevant factors are not properly set forth and not properly

weighed. See Kos Pharmaceuticals v. Andrx Corporation, 369

F. 3d 700, 711-12 (3d Cir. 2004).

In Kos, a trademark case involving the marks

“ADVICOR” and “ALTOCOR,” we reversed a district court’s

likelihood of confusion decision because it had erred in its

analysis of mark similarity, overemphasized customer

sophistication, applied the wrong standards regarding intent, and

ignored several other relevant Lapp factors. Id. at 711–12. The

same district judge made similar errors here. In finding that

there was no likelihood of confusion between ForsLean and

Forsthin, the District Court engaged in detailed analysis of only
9

three of the relevant Lapp factors and failed to discuss much of

the evidence presented by Sabinsa. The District Court then

asserted, “This Court is not going to comment on all of the

testimony offered at trial. Suffice it to say, I am satisfied that

the testimony taken as a whole amply supports the Court’s

decision.” However, while it is true that a district court may

find that “certain of the Lapp factors are inapplicable or

unhelpful in a particular case,” the court must still “explain its

choice not to employ those factors.” See A & H Sportswear, 237

F3d at 214 n.8. Here, the District Court failed to explain

whether it viewed these remaining factors as neutral or

irrelevant or how it weighed and balanced the combined factors.

Further, its reasoning concerning the three factors it chose to

analyze is flawed.

Typically, when a district court fails adequately to

support its findings, we merely remand for a re-weighing of the

applicable factors. Where the facts are largely undisputed,

however, “‘we need not remand’ if application of the correct

standard could support only one conclusion.” Kos, 369 F.3d at

712 (quoting Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40

F.3d 1431, 1451 (3d Cir. 1994)); see also Lapp, 721 F.2d at 460

(reversing and directing entry of judgment). Such a remand

would be a waste of judicial resources. In Kos, for example, we

observed, “Regardless of how the factual disputes might be

resolved, any reasonable factfinder weighing the Lapp factors in

accordance with the correct legalstandards would hold [in favor

of Kos].” Kos, 369 F.3d at 725. Accordingly, as we did in that

case, we will review the findings of the District Court, along

with the evidence presented by the parties, to determine

whether, in light of the controlling legal principles, the facts
10

and/or the failures in the District Court’s analysis compel a

result as a matter of law.

IV. The Individual Lapp Factors

A. Similarity of Marks (Lapp Factor One)

“The single most important factor in determining

likelihood of confusion is mark similarity.” A & H Sportswear,

237 F.3d at 216. Marks are confusingly similar “if ordinary

consumers would likely conclude that [the two products] share

a common source, affiliation, connection or sponsorship.”

Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 477

(3d Cir. 1994). The proper test is not a side-by-side comparison

but, rather, “whether the labels create the same overall

impression when viewed separately.” Kos, 369 F.3d at 713.

Overall impression is created by the sight, sound, and meaning

of the mark. See A & H Sportswear, 237 F.3d at 217. “‘The

degree of similarity . . . needed to prove likely confusion will

vary with the difference in the goods . . .. Where the goods . . .

are directly competitive, the degree of similarity required to

prove a likelihood of confusion is less than in the case of

dissimilar products.’” Kos, 369 F.3d at 713 (quoting 3 J.

Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION § 23:20.1 (4th ed. 2003)).

The District Court found that this factor favors Creative

Compounds, asserting that, beyond the shared letters “fors,”

ForsLean and Forsthin have “no other similarity.” The court’s

reasoning, however, contains clear errors. First, for its visual

analysis, the District Court focused on minute differences in the
 Even the District Court’s comparison of the logos appears 2

misguided. The “ordinary customer” is supposed to have “only

general recollection” of one mark when encountering the

second. See Fisons Horticulture, 30 F.3d at 477–78. By that

standard, the two logos seem strikingly similar: Each contains

the respective product name, with the second syllable set off,

placed in front of foliage to symbolize the Coleus forskohlii

plant. Alone, however, this likely would not merit vacatur,

given the deference owed to the District Court’s findings.

11

products’ logos while ignoring evidence that both marks are

often used in plain text without the surrounding graphics. The 2

District Court devoted only one sentence to a visual comparison

of the words ForsLean and Forsthin apart from their logos and

that sentence only contrasted the words “thin” and “lean” rather

than the “overall impression.” However, looked at as a whole,

ForsLean and Forsthin share all but three letters, have the same

dominant syllable and end letter, and have the same number of

syllables. Under these circumstances, the District Court clearly

erred in finding that the words are not visually similar. See Kos,

369 F.3d at 713 (because ADVICOR and ALTOCOR are

“[b]oth . . . seven-letter, three-syllable words that begin and end

with the same letters and the same sounds . . . the district court

clearly erred in failing to recognize that this factor weighs in

[the senior user’s] favor”). 

Likewise, in analyzing the “connotative differences”

between ForsLean and Forsthin, the District Court ignored

evidence and failed to make sufficient subordinate findings.

The court stated that it “accepts Defendant’s arguments that a
12

different commercial impression is made by the word ‘lean’

versus ‘thin’” and that “[t]hin would convey to the consumer .

. . weight loss, whereas lean would convey a lean body type.”

As an initial matter, again the District Court erred by comparing

“lean” and “thin” rather than ForsLean and Forsthin. See Fisons

Horticulture, 30 F.3d at 477–78. More centrally, the District

Court’s finding is contrary to undisputed evidence at trial, none

of which was cited in its opinion: Creative Compounds uses

“thin” and “lean” interchangeably in its other weight loss

products, Creative Compounds’s sales manager and one of its

customers conceded at trial that “lean” invokes “weight loss”

and that Sabinsa promotes ForsLean to end users as a “weight

management” product. Indeed, during the trial, the District

Court took “judicial notice that there are products out there,

when they use the word ‘lean,’ that are weight loss products.”

Its ultimate finding that the words “thin” and “lean” “would

convey” different mental impressions to consumers is

impossible to reconcile with this earlier recognition that the

terms are interchangeable to consumers. 

In sum, the District Court clearly erred in failing to find

that this factor favors Sabinsa.

B. Strength of Mark (Lapp Factor Two)

To determine the strength of the mark, courts look to (1)

the inherent features of the mark contributing to its

distinctiveness or conceptual strength and (2) the factual

evidence of the mark’s commercial strength or of marketplace

recognition of the mark. See A & H Sportswear, 237 F.3d at

221.
13

Courts classify the distinctiveness or conceptual strength

of a mark as either (1) generic, like “Diet Chocolate Fudge

Soda”; (2) descriptive, like “Security Center”; (3) suggestive,

like “Coppertone”; or (4) arbitrary or fanciful, like “Kodak.” Id.

Arbitrary or fanciful marks use terms that neither describe nor

suggest anything about the product. Id. Suggestive marks

require consumer “imagination, thought, or perception” to

determine what the product is. Id. Descriptive marks “forthwith

convey[] an immediate idea of the ingredients, qualities or

characteristics of the goods.” Id. Generic marks “function as

the common descriptive name of a product class.” Id.

The District Court acknowledged that the “Fors” in

ForsLean and Forsthin “is apparently an abbreviation of the

generic term of the product, Coleus forskohlii.” It then

concluded that “[fors] is not a mere arbitrary term, but, rather,

a prefix used by each party combined with either the word ‘lean’

or ‘thin.’” Never, however, did the court assign a classification

for the ForsLean mark; rather, in evaluating the mark’s strength,

the court merely stated: 

Defendant argues that Plaintiff’s mark is

conceptually weak because it is highly suggestive.

Sabinsa argues that its mark is commercially

strong based on its advertising efforts, press

mentions and its receipt of two industry awards

regarding its product. However, testimony at trial

reflected the parties’ sophisticated target

customers were aware of both parties’ marks and

that there is no confusion. This factor does not

support Plaintiff’s position.
14

This analysis amounts to legal error, and it culminated in a

clearly erroneous finding.

First, it does not follow that because Sabinsa and then

Creative Compounds used “fors” as an abbreviation for Coleus

forskohlii, the term is conceptually weak. As Sabinsa points out,

the “V” in V-8 stands for “vegetable” and the “8” stands for the

fact that the juice has eight vegetables, but V-8 is still an

arbitrary term. See Fisons Horticulture, 30 F.3d at 478 n.17

(citing Standard Brands, Inc. v. Smidler, 151 F.2d 34, 36 (2d

Cir. 1945) (“The letter V by itself no more signifies ‘vegetable’

than it does any other word of which it is the initial letter . . . .

As much is true of the figure 8 . . . .”)). There was no evidence

presented that “fors” is a generic term for forskohlin.

Accordingly, to the extent that the District Court meant to imply

that the parties’ use of “fors” as an abbreviation makes ForsLean

a generic or descriptive term, this is not the law.

Second, beyond its brief discussion of the abbreviation

“fors,” the District Court did not analyze either the conceptual

or commercial strength of ForsLean. Instead, as set forth above,

it described the parties’ arguments and then reiterated its finding

that there had been no confusion between the two companies

among its “sophisticated customers.” Actual confusion and the

sophistication of a party’s customers, however, are different

prongs of the Lapp test and were “impermissibly conflated” by

the District Court. See Kos, 369 F.3d at 722. Creative

Compounds argues that the District Court merely found that the

lack of confusion among the parties’ customers “trump[ed]” the

parties’ arguments concerning the conceptual and commercial

strength of ForsLean and that the “strength of the mark is a less
15

significant ‘confusion’ factor when the buyers know the actual

source of each product.” This argument mischaracterizes the

court’s analysis. If the court had meant to find that the strength

factor was in Sabinsa’s favor but less important than other

factors, it could have said so. Instead, the District Court found

that the strength of the ForsLean mark “does not support

Plaintiff’s position.” This was clear error.

Once again, because the facts underlying the strength

analysis are manifest and undisputed, we will review the facts

and law to determine whether they compel a particular result.

Sabinsa argues that ForsLean is arbitrary or suggestive, while

Creative Compounds argues that it is a descriptive mark because

it combines a description of the product (“fors”) with its

intended application (“lean”). While “lean” is certainly a

generic term, “fors” is not yet one. The parties to this case are

the only two that use “fors” as an abbreviation for forskohlin,

and while ForsLean is not a term that was created completely

out of whole cloth, it certainly requires consumer “imagination,

thought, or perception” to determine the nature of the product.

 See A & H Sportswear, 237 F.3d at 222. It would, thus, appear

that ForsLean is a suggestive mark. Moreover, it was

undisputed that the ForsLean mark is commercially strong.

Accordingly, this factor favors Sabinsa as a matter of law.

C. Purchasers’ Care and Sophistication (Lapp Factor

Three)

“When consumers exercise heightened care in evaluating

the relevant products before making purchasing decisions,

courts have found there is not a strong likelihood of confusion.
16

Where the relevant products are expensive, or the buyer class

consists of sophisticated or professional purchasers, courts have

generally not found Lanham Act violations.” Checkpoint Sys.,

269 F.3d at 284. However, where the group of buyers is a

combination of professionals and ordinary consumers, the class

as a whole is not held to the higher standard of care. Id. at 285.

Under the heading “[p]rice and customer sophistication,”

the District Court found that “the product is expensive and the

customers are sophisticated purchasers who purchase the

product after careful thought and analysis. . . . Usually, the

customers are repeat customers. These customers exercise a

high level of care, and, therefore, eliminates [sic] the likelihood

of confusion.” The District Court also noted that “these

products are not sold over the counter” and that “both parties’

customers regularly ask technical questions about the scientific

and safety merits of the product prior to purchase.” The court

thus concluded that this factor favors Creative Compounds. The

court further weighed this factor heavily in its ultimate

conclusion that there is no likelihood of confusion.

The District Court’s reasoning inappropriately treats the

products’ direct buyers—here, the manufacturers of

nutraceuticals—as the only relevant consumers. In Kos, we

criticized the parties and the district court for treating medical

professionals as the only relevant consumers of pharmaceuticals,

noting that “drugs are increasingly marketed directly to potential

patients through, for example, ‘ask-your-doctor-about-Brand-X’

style advertising.” See Kos, 369 F.3d at 715–16. Here, Sabinsa

presented evidence—completely disregarded by the District

Court—that it directly markets ForsLean through just this type
17

of advertising, distributing pamphlets to retail outlets for

distribution to the public. The appropriate “standard of care to

be exercised,” therefore, should have been “equal to that of the

least sophisticated consumer in the class”—the general

consumer reading a ForsLean pamphlet who then chooses a

nutraceutical containing forskohlin. See Checkpoint Sys., 269

F.3d at 285 (quoting Ford Motor Co. v. Summit Motor Prods.,

Inc., 930 F.3d 277, 293 (3d Cir. 1991)); cf. Morgenstern Chem.

Co. v. G. D. Searle & Co., 253 F.2d 390, 392 (3d Cir. 1958)

(recognizing that “physicians and pharmacists . . . are carefully

trained to detect differences in the characteristics of

pharmaceutical products,” but holding that this “does not open

the door to the adoption by manufacturers of medicines of trademarks or names which would be confusingly similar to anyone

not exercising such great care”). The District Court thus

committed legal error when it concluded that this factor weighs

heavily in favor of Creative Compounds. 

Once again, the facts are undisputed. Though the price

of forskohlin to suppliers is relatively high, the neutraceuticals

that contain forskohlin are clearly affordable to most interested

consumers. Further, the sales process is as quick as a trip to the

check-out counter. In addition, nutraceuticals, unlike

pharmaceuticals, require no consultation with a professional and

may often be impulse purchases. Moreover, there was no

showing that consumers of nutraceuticals are highly

sophisticated. Accordingly, this factor weighs in favor of

Sabinsa.

D. Length of Time Without Confusion (Lapp Factor

Four)/Evidence of Actual Confusion (Lapp Factor Six)
18

Evidence of actual confusion is frequently difficult to

find. See Checkpoint Sys., 269 F.3d at 291. As a result, we

have determined that actual confusion is not necessary to

demonstrate a likelihood of success. See Fisons Horticulture,

30 F.3d at 472. Evidence of actual confusion is nevertheless

highly probative of a likelihood of confusion. See Checkpoint

Sys., 269 F.3d at 291. It was undisputed that ForsLean and

Forsthin had co-existed for approximately three-and-a-half years

at the time of trial without any evidence of actual confusion.

Moreover, Sabinsa failed to submit survey evidence concerning

actual confusion. Accordingly, the District Court did not err in

concluding that these factors favor Creative Compounds.

E. Intent of the Defendant in Adopting the Mark

(Lapp Factor Five)

Evidence of a defendant’s intent is not a prerequisite for

finding a Lanham Act violation; such evidence, however,

weighs heavily in favor of finding a likelihood of confusion.

See Id. at 286. In evaluating this factor, courts must look at

whether the defendant chose the mark to intentionally confuse

consumers, and thereby capitalize on the senior user’s goodwill,

and whether the defendant gave adequate care to investigating

its proposed mark. See Kos., 369 F.3d at 721. “[A] defendant’s

mere intent to copy, without more, is not sufficiently probative

of the defendant’s success in causing confusion to weigh such

a finding in the plaintiff’s favor; rather, defendant’s intent will

indicate a likelihood of confusion only if an intent to confuse

consumers is demonstrated via purposeful manipulation of the

junior mark to resemble the senior’s.” A & H Sportswear, 237

F.3d at 225–26.
19

The District Court did not mention specific evidence

regarding Creative Compounds’s good or bad intent; rather, the

court found that “there is nothing in the record to suggest that

Creative Compounds attempted to pass off its goods as

Sabinsa’s. In fact, the evidence is to the contrary: Creative

Compounds has made efforts to distinguish itself and its

Forsthin product from Sabinsa.” The record belies these

conclusions. In fact, far from there being “nothing in the record

to suggest” bad intent, there was ample evidence that Creative

Compounds attempted to pass off its product as Sabinsa’s.

Creative Compounds’ personnel offered inconsistent testimony

concerning their trademark searches prior to the company’s

adopting the Forsthin mark. There was also evidence that

Creative Compounds’s President and CEO falsely claimed to

have conducted research that expanded on Sabinsa’s discoveries

regarding forskohlin. In addition, the timing of Creative

Compounds’s adoption of the Forsthin mark and its pamphlet

touting the “return of Coleus”—both of which coincided with

ForsLean renewing its supply of forskohlin following the

drought in India and issuing a “ForsLean promise” to its

customers regarding continued supply—would support an

inference that Creative Compounds intended to trade on

Sabinsa’s goodwill and confuse customers as to the source of its

product. Indeed, the fact that Creative Compounds chose “fors,”

not “coleus,” or “cole,” or “col,” as the first syllable of its brand

name, while also promoting the “return of Coleus,” would 

suggest that the adoption of the “Forsthin” brand name was

aimed at “ForsLean.” 

The District Court was, of course, permitted to credit or

discredit certain pieces of testimony and weigh them
20

accordingly. But in stating that there was “nothing in the record

to suggest” Creative Compounds’s bad intent, the District Court

failed even to acknowledge the existence of contradictory

evidence. Accordingly, its conclusory finding that this factor

favors Creative Compounds is clearly erroneous.

Sabinsa argues that the District Court failed to apply the

proper standards governing intent and that Creative

Compounds’s behavior in choosing a mark so similar to

ForsLean should at least be considered reckless, rendering it

sufficient to weigh this factor in Sabinsa’s favor. In Kos, we

held that the defendant’s adoption of the ALTOCOR mark, after

Kos had successfully used the ADVICOR mark for similar

goods and with notice of its objections, was sufficient to weigh

this factor in favor of Kos. See 369 F.3d at 721–22. Because

the District Court in the instant case ignored whole swaths of

evidence and failed to make any subordinate findings regarding

intent, however, it is impossible to determine whether it

appropriately comprehended the standard. Moreover, in contrast

to the ADVICOR mark, both “ForsLean” and “Forsthin” bear

some relationship to the underlying product; Creative

Compounds’s adoption of its mark, alone, therefore cannot be

considered enough to weigh the intent factor for Sabinsa.

Accordingly, unlike the other factors, the intent factor involves

disputed factual issues, and we are unable to hold that it favors

either party as a matter of law.

F. Whether the Goods are Marketed Through the

Same Channels of Trade and Advertised in the Same Media

(Lapp Factor Seven)/Extent to Which Targets of the Parties’

Sales Efforts are the Same (Lapp Factor Eight)
21

“The greater the similarity in advertising and marketing

campaigns, the greater the likelihood of confusion.” Checkpoint

Sys., 269 F.3d at 288-89 (citation omitted). A court should

consider the trade exhibitions, publications, and other media the

parties use in marketing their products. See id at 489. Similarly,

when the parties target their sales efforts to the same group of

consumers, there is a greater likelihood of confusion between

the two marks. See id. 

The District Court did not key its oral findings to these

factors, but nonetheless noted that the parties were

“competitors.” In any event, it is undisputed that the parties sell

the same product through the same channels of trade and the

same forms of advertising to the same target group of customers.

Accordingly, these factors weigh in favor of Sabinsa as a matter

of law.

G. Relationship of the Goods in the Minds of

Consumers (Lapp Factor Nine)

When ruling on this factor, a court should look at “how

similar, or closely related, the products are.” Kos., 369 F.3d at

723. If the products “fall under the same general product

category but operate in distinct niches,” they will probably not

be closely related. Checkpoint Sys., 269 F.3d at 288 (holding

that the District Court did not clearly err in finding that parties’

products were unrelated even though both fell under the broader

category of “corporate security” where the plaintiff focused on

physical security and the defendant focused on information and

computer security). “The question is whether the consumer

might . . . reasonably conclude that one company would offer
22

both of these related products.” Fisons Horticulture, 30 F.3d at

481. 

The District Court made no findings as to this factor, but

it is undisputed that the products are physically identical.

Creative Compounds argues, as it did with respect to mark

similarity, that Forsthin is a “weight loss” product while

ForsLean is a “lean body mass” product. This argument is

misplaced because the products are physically identical and both

are marketed as weight management products. Creative

Compounds further argues that buyers purchase the products

directly from their sources and that “they are necessarily aware”

that ForsLean and Forsthin are sold by separate companies.

Customer sophistication, however, is Lapp factor three. Lapp

factor nine focuses not on consumer sophistication but on the

products themselves, since the determination is whether

consumers may see them as related. See Kos, 369 F.3d at 723.

Using that standard, this factor clearly weighs in favor of

Sabinsa. See Fisons, 30 F.3d at 481 (citing cases where the

relationship of goods was close enough to find likelihood of

confusion, including: women’s scarves and apparel with

women’s cosmetics and fragrances; liquor with restaurant

selling liquor; batteries and lamps with light bulbs and lamps;

and pipe tobacco and bar accessories with scotch whisky). 

H. Other Facts Suggesting the Public Might Expect

the Prior Owner to Manufacture Both Products (Lapp

Factor Ten)

In making this final determination under the Lapp test,

courts should “look at the nature of the products or the relevant
23

market, the practices of other companies in the relevant fields,

any other circumstances that bear on whether consumers might

reasonably expect both products to have the same source.” Kos,

369 F.3d at 724. The District Court made no findings not

encompassed by the other factors, and neither party argues that

any relevant evidence exists. Accordingly, this factor is neutral.

V. Weighing the Lapp Factors

The most important factors, mark similarity and mark

strength, favor Sabinsa. ForsLean and Forsthin are similar in

appearance and meaning, and ForsLean is entitled to broad

protection because it is a strong mark both conceptually and

commercially. Moreover, ForsLean and Forsthin are physically

identical, they are marketed to the same customers in the same

ways, and the products’ ultimate consumers do not exercise a

particularly high level of care and sophistication when

purchasing nutraceuticals. Accordingly, factors one, two, three,

seven, eight, and nine favor Sabinsa as a matter of law. In

contrast, since the District Court’s findings regarding lack of

actual confusion are supported by the record, factors four and

six favor Creative Compounds.

There is a factual dispute concerning Creative

Compounds’s intent in creating its mark. Even assuming that

the District Court would completely discredit the evidence of

bad intent, however, it would be clear error to allow the factors

in favor of Creative Compounds to outweigh Sabinsa’s strong

showing on mark similarity and the remaining factors. We have

repeatedly held that neither intent nor actual confusion are

prerequisites to a finding of likelihood of confusion. See
24

Checkpoint Sys., 269 F.3d at 286, 291. As the Court of Appeals

for the Second Circuit has observed, “intent is largely irrelevant

in determining if consumers likely will be confused as to source.

The history of advertising suggests that consumer reactions

usually are unrelated to manufacturer intentions.” Lois

Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867,

875 (2d Cir. 1986). Likewise, we have recognized that evidence

of actual confusion is often difficult to find because many

instances go unreported. Checkpoint Sys., 269 F.3d at 291.

As we did in Kos, we have carefully considered whether

to direct the District Court on remand to re-weigh the

Lapp factors in light of the proper legal standards. We conclude

once again “that doing so would serve no useful purpose . . .

[and] waste judicial resources.” See Kos, 369 F.3d at 725. The

undisputed facts weigh heavily in favor of Sabinsa as a matter

of law, and any reasonable factfinder weighing the Lapp factors

in accordance with the correct legal standards would hold that

Sabinsa had demonstrated a likelihood of confusion. See id.; cf.

Fisons, 30 F.3d at 482 (Garth concurring) (“I can see no purpose

in remanding for retrial of Fisons’ Lanham Act claims when it

is so evident that the marks at issue here are confusingly

 similar.”). Accordingly, we see no reason to remand for further

analysis on likelihood of confusion.

VI. Conclusion

For the foregoing reasons, we will reverse the judgment

in favor of Creative Compounds and remand this case for entry
25

of judgment in favor of Sabinsa and for other proceedings not

inconsistent with this opinion.
Sabinsa Corp. v. Creative Compounds LLC

No. 08-3255

 

AMBRO, Circuit Judge, concurring

I join Judge Roth’s excellent opinion in full, and write separately only to

emphasize two unusual features of this case. First, Sabinsa offered no evidence of actual

confusion, a factor that we have previously described as “highly probative” in this

context. Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270, 291 (3d Cir.

2001). This is especially concerning here, where Sabinsa could have easily conducted a

survey of customers to assess actual confusion in the relevant market. Given this, we

could reasonably infer that Sabinsa expected that any survey results would undermine its

case. Nonetheless, “[e]vidence of actual confusion is not required,” and Judge Roth’s

Lapp analysis convinces me that, “while evidence of actual confusion would strengthen

plaintiff’s case, it is not essential.” Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30

F.3d 466, 476 (3d Cir. 1994).

Second, the District Court concluded that the “consumers who purchase[d] these

products [we]re sophisticated users in the business of marketing and/or manufacturing

dietary supplements.” Indeed, the record suggests that the parties’ primary targets were

the manufacturers of retail items and not either retailers or retail consumers. Because

manufacturing requires a base level of expertise and attention to ingredients, in the minerun case such purchasers are expected to be sophisticated enough to distinguish between

brands—even when the relevant brands have names as similar as “Forsthin” and
2

“ForsLean.” As we have previously explained, “[w]hen consumers exercise heightened

care in evaluating the relevant products before making purchasing decisions, courts have

found there is not a strong likelihood of confusion.” Checkpoint, 269 F.3d at 284. Yet

Judge Roth’s opinion again persuades me that other factors in the Lapp analysis,

including mark strength and mark similarity, outweigh concerns about the sophistication

and care of the target audience. Furthermore, there is evidence in the record that weakens

the District Court’s analysis (or at least the weight it attributed to this factor), including

evidence that manufacturers in this specific industry vary considerably in overall

sophistication and care.