1

The Honorable E. Richard Webber, United States District Judge for the Eastern

District of Missouri.

United States Court of Appeals

FOR THE EIGHTH CIRCUIT

___________

No. 09-2686

___________

Sensient Technologies Corporation; *

Sensient Flavors, LLC, *

*

Plaintiffs - Appellants, *

* Appeal from the United States

v. * District Court for the Eastern

* District of Missouri.

SensoryEffects Flavor Company, *

formerly known as SensoryFlavors, *

Inc.; Performance Chemicals & *

Ingredients Co.; Diehl Food *

Ingredients, Inc.; Highlander Partners, *

L.P., *

*

Defendants - Appellees, *

___________

Submitted: March 9, 2010

Filed: July 21, 2010

___________

Before BYE, ARNOLD, and COLLOTON, Circuit Judges.

___________

BYE, Circuit Judge.

Sensient Flavors appeals the district court's1

 grant of summary judgment in

favor of SensoryEffects Flavor Company, formerly known as SensoryFlavors. On
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appeal, Sensient Flavors contends the district court erred in concluding the

SensoryFlavors mark was not "used in commerce" as defined by the Lanham Act, 15

U.S.C. § 1127. Sensient Flavors also asserts the district court erroneously held the

SensoryEffects Flavor Company name was not likely to cause confusion to customers.

Finally, Sensient Flavors argues the district court erred by holding its mark was

"relatively weak" and not entitled to protection under the Missouri dilution statute.

We affirm the district court's grant of summary judgment.

I

Sensient Technologies Corporation ("Sensient") sells flavor delivery systems

to its customers. Since 2000, Sensient has continuously used the trade name Sensient

Flavors, among its other trademarks. The mark appears on communications from

Sensient Flavors, including advertising and marketing materials, business cards,

letterheads and invoices.

Charles Nicolais, a former employee of Sensient Flavors' sister company

Sensient Colors, Inc., left the company to start his own business called Performance

Chemicals and Ingredients, LLC ("PCI"). In May 2006, PCI purchased substantially

all of the assets of Diehl Food Ingredients, Inc. ("Diehl"). In November 2006, PCI

also purchased substantially all of the assets, equipment, trademarks and trade names

of SensoryEffects, a business engaged in development, manufacture, and sales of

lipid-based flavor delivery systems. The prior owners of SensoryEffects had filed an

application for the registration of the SensoryEffects name and graphic in July 2004,

which was formally registered by the United States Patent and Trademark Office

("PTO") on July 3, 2007. PCI further expanded its operations in February 2008 by

acquiring Givaudan Flavors, Inc., the dairy flavor systems business within Givaudan

Flavors Corporation. As part of the purchase agreement, PCI was not permitted to use

the Givaudan Flavors trade name for more than sixty days after the purchase.
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After the purchase of Givaudan Flavors, Nicolais undertook the responsibility

of choosing a new name and brand for the business. Ultimately, the company decided

to use the name SensoryFlavors, Inc., building on the SensoryEffects trademark

already in use. As part of this process, SensoryFlavors modified the existing

SensoryEffects mark to design the new SensoryFlavors mark. The company's

attorneys informed Nicolais the SensoryFlavors name was available for use and

registration based on a search of PTO records and corporate names. However, the

parties dispute the knowledge Nicolais maintained regarding the existence of the

Sensient Flavors name at the time he was choosing the new name. Although he was

previously employed by Sensient Colors, Nicolais asserts he never worked for

Sensient's flavor group and therefore he was not aware of the Sensient Flavors mark

before the lawsuit was filed. Thus, he contends the Sensient Flavors name did not

cross his mind while choosing the SensoryFlavors name. Sensient Flavors disputes

Nicolais's assertion, noting that a document drafted by one of PCI's employees prior

to the purchase of the Givaudan business unit lists Sensient Flavors as one of

SensoryFlavors' primary competitors.

On the day the Givaudan purchase was finalized, SensoryFlavors sent an

announcement to contacts in the food ingredients industry featuring the

SensoryFlavors mark. SensoryFlavors and Givaudan also sent a media release

announcing the acquisition, which included the SensoryFlavors mark. SensoryFlavors

asserts it only gave two presentations to customers after acquiring Givaudan Flavors

on February 13, 2008, both of which occurred prior to the instant suit. Moreover,

SensoryFlavors contends no sales were made under the new mark, no packages were

sent bearing labels with the new mark, and no goods were transported under the new

mark. SensoryFlavors also constructed the website www.sensoryflavors.com,

although it states the website was "under construction" at all times and was

immediately deactivated when Sensient filed the instant suit.
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Shortly after Sensient filed the instant suit on March 10, 2008, the district court

entered a temporary restraining order against the use of the SensoryFlavors name.

SensoryFlavors subsequently changed its name to SensoryEffects Flavor Company,

d/b/a SensoryEffects Flavor Systems ("SensoryEffects"), building on the prior

SensoryEffects name already registered with the PTO. The company has continued

to sell products and operate under this name since the change.

Sensient amended its complaint to include the new SensoryEffects name.

According to Sensient, the two companies are direct competitors because they both

sell flavor delivery systems to food and food ingredient companies, although their

product offerings differ slightly. The initial contact with customers arises primarily

through telephone calls, which leads to appointments and meetings where the

company is able to present its products and services. In this sense, the ultimate sale

of products is the result of an ongoing collaborative process. Sensient's complaint

contained six counts, including federal trademark infringement, unfair competition,

false advertising, common law trademark infringement and unfair competition, and

trademark infringement and dilution under Missouri law.

The district court granted summary judgment on all counts in favor of

SensoryEffects and dismissed the case. The court held a permanent injunction on the

SensoryFlavors mark was not warranted because the mark had not been "used in

commerce." The court also held the new SensoryEffects name was not likely to cause

confusion to customers and Sensient was not entitled to protection under Missouri's

trademark dilution statute. Sensient timely appeals the district court's order.

I

The district court's grant of summary judgment is reviewed de novo, and we

apply the same standards as the district court. Frosty Treats Inc. v. Sony Computer

Ent. Am. Inc., 426 F.3d 1001, 1003 (8th Cir. 2005). Summary judgment is
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appropriate "if the pleadings, depositions, answers to interrogatories, and admissions

on file, together with the affidavits, if any, show that there is no genuine issue as to

any material fact and that the moving party is entitled to a judgment as a matter of

law." Fed. R. Civ. P. 56(c). A fact is material when it might affect the outcome of the

suit under governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

A. Whether the SensoryFlavors Name Was Used in Commerce

First, the parties dispute whether section 45 of the Lanham Act applies to

infringement cases. The Lanham Act imposes civil liability on "any person who. . .

without the consent of the registrant . . . use[s] in commerce any reproduction . . . or

colorable imitation of a registered mark." 15 U.S.C. § 1114(1)(a) (emphasis added).

Section 43(a) of the Act also imposes liability for "[a]ny person who, on or in

connection with any goods or services, or any container for goods, uses in commerce

any word, term, name, symbol, or device, or any combination thereof . . . which . . .

is likely to cause confusion . . . as to the origin, sponsorship, or approval of goods,

services, or commercial activities." 15 U.S.C. § 1125(a)(1)(A) (emphasis added).

Under section 45 of the Lanham Act, "use in commerce" is defined as follows:

The term "use in commerce" means the bona fide use of a mark in

the ordinary course of trade, and not made merely to reserve a right in a

mark. For purposes of this chapter, a mark shall be deemed to be in use

in commerce–

(1) on goods when–

(A) it is placed in any manner on the goods or their containers or the

displays associated therewith or on the tags or labels affixed thereto, or

if the nature of the goods makes such placement impracticable, then on

documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of

services and the services are rendered in commerce, or the services are

rendered in more than one State or in the United States and a foreign
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country and the person rendering the services is engaged in commerce

in connection with the services.

15 U.S.C. § 1127.

In its brief, Sensient argues the press release, announcement, and two

presentations provided by SensoryFlavors, in addition to its website, were sufficient

to establish a question of fact regarding "use in commerce" of the mark under section

45. At oral argument, however, Sensient contradicted its argument by asserting for

the first time that section 45 does not apply in infringement cases, and rather is limited

in its application to the registration of trademarks. Sensient bases its contention

largely on dicta provided by the Second Circuit Court of Appeals in Rescuecom Corp.

v. Google, Inc., 562 F.3d 123, 128-29 (2d Cir. 2009), which involved an infringement

dispute over search terms used by a popular Internet search engine. Rescuecom held

Google's display, offer, and sale of the plaintiff's mark to advertising customers was

sufficiently alleged as "use in commerce" to avoid dismissal under Rule 12(b)(6) of

the Federal Rules of Civil Procedure. 562 F.3d at 130-31.

After reaching its conclusion, the Rescuecom court attached a lengthy appendix

analyzing whether section 45 applies in the infringement context. The court first

noted the statute begins with a "guarded and tentative" limitation that the definitions

provided under the statute apply "unless the contrary is plainly apparent from the

context." Id. at 132 (quoting 15 U.S.C. § 1127). The court then analyzed the 1988

amendment to the statute providing that "use in commerce" means the "bona fide use

of a mark in the ordinary course of trade." Id. at 132-33. According to the court, the

amendment made clear that section 45's definition of "use in commerce" applies only

to the registration of marks, not to infringement cases, because it is "inconceivable

that the statute could have intended to exempt infringers from liability because they

acted in bad faith." Id. The court believed this reading of the statute was confirmed

by a Congressional report accompanying the 1988 amendment, which "explained that
2

The Rescuecom court believed the second approach was preferable in light of

prior Second Circuit case law that applied the second sentence of the "use in

commerce" definition relating to goods and services to infringement cases. While we

assume without holding the second sentence of the definition similarly applies in this

case, as discussed below, we note this circuit has also previously interpreted section

45 as requiring "use in commerce" as a prerequisite for infringement liability.

DaimlerChrysler AG v. Bloom, 315 F.3d 932, 936 (8th Cir. 2003). 

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the revised use in commerce definition is intended to apply to all aspects of the

trademark registration process, and that clearly, however, use of any type will

continue to be considered in an infringement action." Id. at 138 (citing S. Rep. 100-

515 100th Cong. at 45 (1988)) (internal quotation marks omitted).

Pursuant to the amended statutory language, Rescuecom envisioned two

possible interpretations of section 45 in infringement cases. The first interpretation

bars application of the entire definition of "use in commerce" in the infringement

context as a result of the new language in the first sentence relating to "bona fide use,"

as discussed above. Id. at 140. The second, and preferable interpretation would

continue to apply the remainder of the "use in commerce" definition relating to goods

and services in infringement cases, and simply disregard the "bona fide use" language

in such cases, which would be reserved for application only in the registration

context.2

 Id. Ultimately, the court noted its discussion was dicta that did not affect

the result in the case, and it urged Congress to further clarify the statute. Id. at 140-41.

In this case, we express no view as to whether section 45's "use in commerce"

definition continues to properly apply in infringement cases. Compare 4 McCarthy

on Trademarks and Unfair Competition § 23:11.50 (4th ed.) ("The Lanham Act § 45

narrowing definition of what constitutes 'use in commerce' is just a relaxed remnant

of trademark law's once-hyper-technical 'affixation' requirement. This statutory

anachronism certainly was never intended to limit the scope of 'uses' that would

constitute infringement") with Margreth Barrett, Trademarks and Digital
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Technologies: "Use" on the Net, 13 No. 11 J. Internet L. 1, 9 (2010) ("[T]he Lanham

Act's legislative history makes it clear that Congress intended this statutory definition

[of section 45] to apply in the infringement context and to carry forward the

1905/1920 Acts' general 'affixation or other close association' requirement.'").

Although Sensient cites the Rescuecom case in its opening brief, it confines its

argument to whether SensoryFlavors' limited uses of the mark meet the definition of

"use in commerce" under section 45. Prior to oral argument, Sensient failed to

develop any argument that section 45 did not apply to an infringement case such as

the instant matter. See Cubillos v. Holder, 565 F.3d 1054, 1058 n.7 (8th Cir. 2009)

(citation omitted) (deeming an argument waived where the petitioner referenced an

argument in his opening brief, but failed to develop the argument). To the contrary,

Sensient explicitly concedes in its reply brief that the statute applies to infringement

cases. See Appellant's Reply Brief at 1 ("The parties agree that the Lanham Act

requires that a trademark be used in commerce before a finding of infringement can

be made."). Under these circumstances, we assume without holding that section 45

applies to infringement cases and we will proceed to determine whether

SensoryFlavors' use of its mark meets the definition of "use in commerce." See

Flowers v. Norris, 585 F.3d 413, 416 n. 2 (8th Cir. 2009) (limiting review under a

statute based on petitioner's concessions in his reply brief).

Applying the language of the statute, SensoryFlavors' goods must have been

"sold or transported in commerce," among other requirements. 15 U.S.C. § 1127. As

noted above, Sensient attempts to satisfy this requirement by pointing to

SensoryFlavors' efforts to advertise and market its goods through two customer

presentations, a press release, an announcement, and a website.

Sensient's argument conflates the distinction between goods and services

provided under section 45. Rescuecom and the other cases Sensient relies upon

involved an alleged infringer's services, not goods, and therefore the courts applied
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the separate definition provided above for determining whether the services were

"used in commerce." Rescuecom, 562 F.3d at 129 ("According to the Complaint,

Google uses and sells Rescuecom's mark 'in the sale of Google's advertising services

rendered in commerce.'") (emphasis added). Even in cases applying the services

definition, many courts have held mere advertising is not enough to constitute "use in

commerce" because "a mark is used in commerce only if it accompanies services

rendered in commerce." Int'l Bancorp, LLC v. Societe des Bains de Mer et du Cercle

des Estrangers a Monaco, 329 F.3d 359, 364 (4th Cir. 2003).

Sensient fails to show evidence of any sale or transport of any goods bearing

the SensoryFlavors mark. While Sensient suggests Nicolais did not know for certain

that no sales resulted from the two presentations, this assertion is weak at best because

the two companies which received the presentations did not become customers of

SensoryEffects subsequent to the name change. Binkley v. Entergy Operations, Inc.,

602 F.3d 928, 931 (8th Cir. 2010) ("In order to survive a motion for summary

judgment, the non-moving party must be able to show sufficient probative evidence

that would permit a finding in his favor on more than mere speculation, conjecture,

or fantasy") (citation omitted). Because there is no evidence demonstrating any sale

or transport of goods under the SensoryFlavors name, Sensient fails to establish a

triable issue of fact as to whether the goods were "used in commerce," and we affirm

the district court's grant of summary judgment on the SensoryFlavors mark.
3

Sensient must show a likelihood of confusion as part of its Lanham Act claims

(Count I, Count II, and Count III), Everest Capital Ltd. v. Everest Funds Mgmt.,

L.L.C., 393 F.3d 755, 759 (8th Cir. 2005), its common law trademark infringement

and unfair competition claim, and its Missouri statutory trademark infringement claim

(Counts IV and V). WSM, Inc. v. Hilton, 724 F.2d 1320, 1331 (8th Cir. 1984);

R.S.Mo. 417.056(1).

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B. Whether the SensoryEffects Name is Likely to Cause Confusion

Sensient next challenges the district court's grant of summary judgment on the

SensoryEffects Flavor Systems mark. The district court held the SensoryEffects mark

was not likely to cause confusion to customers.3

The Eighth Circuit applies a six-factor test to determine whether there is a

likelihood of confusion, no part of which is dispositive standing alone:

(1) the strength of the owner's mark; (2) the similarity between the

owner's mark and the alleged infringer's mark; (3) the degree to which

the products compete with each other; (4) the alleged infringer's intent

to 'pass off' its goods as those of the trademark owner; (5) incidents of

actual confusion; and, (6) the type of product, its cost, and conditions of

purchase.

Frosty Treats, 426 F.3d at 1008. We do not apply any mathematical formula in

analyzing these factors; "rather, we use them at the summary judgment stage as a

guide to determine whether a reasonable jury could find a likelihood of confusion."

Id. We address each of these factors separately.

1. The Strength of the Owner's Mark 

In analyzing the first factor, we have recognized a "strong and distinctive

trademark is entitled to greater protection than a weak or commonplace one." Id.
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(citing SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)). Marks may

be characterized in four categories: generic, descriptive, suggestive, or arbitrary or

fanciful. Id. at 1004. On this spectrum, an arbitrary or fanciful mark is entitled to the

highest level of protection, while a generic mark is afforded no trademark protection.

Duluth News-Tribune, a Div. of Nw. Publ'n, Inc. v. Mesabi Pub. Co., 84 F.3d 1093,

1096 (8th Cir. 1996).

In this case, the district court determined Sensient was a fanciful word coined

to function as a trademark for the company. As a result, the court acknowledged

Sensient's mark was entitled to the broadest protection. However, the court also

concluded Sensient could not claim an exclusive right to the "Flavors" portion of the

Sensient Flavors name because "Flavors" is a generic term. Accordingly, the court

determined only the Sensient name was entitled to protection. On appeal, Sensient

agrees "Flavors" alone is not protectable, but it argues the Sensient Flavors mark must

be construed as a whole. SensoryEffects asserts courts have routinely refused to

protect generic portions of a trademark.

In making its determination, the district court noted SensoryEffects did not

object to its finding that the Sensient name was fanciful. Generally, we do not

consider arguments raised for the first time on appeal and a party may not assert

arguments not presented to the district court. Cole v. Intern. Union, United Auto.,

Aerospace & Agr. Implement Workers of Am., 533 F.3d 932, 936 (8th Cir. 2008). In

light of SensoryEffects' concession before the district court on this point, we need not

consider its arguments on appeal challenging the strength of Sensient Flavors' name.

Similarly, Sensient's argument questioning whether the district court properly

analyzed its mark is largely irrelevant because the court ultimately found in favor of

Sensient on the first factor. More importantly, the district court proceeded to compare

the composite Sensient Flavors mark to the SensoryEffects mark later in its analysis,

as demonstrated below. See, e.g., Sensient Tech. Corp. v. SensoryEffects Flavor Co.,
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636 F.Supp.2d 891, 900 (E.D. Mo. 2009) ("SensoryEffects Flavor Systems sounds

different than Sensient Flavors."). Thus, the district court did not err in concluding

the first factor favors Sensient.

2. The Similarity of the Owner's Mark and the Alleged Infringer's Mark

Under the second step, we must consider the similarity between the Sensient

Flavors and SensoryEffects Flavor Systems marks. Frosty Treats, 426 F.3d at 1008.

"Rather than consider the similarities between the component parts of the marks, we

must evaluate the impression that each mark in its entirety is likely to have on a

purchaser exercising the attention usually given by purchasers of such products."

Duluth News-Tribune, 84 F.3d at 1097. "The use of identical, even dominant, words

in common does not automatically mean that two marks are similar." Gen. Mills, Inc.

v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987). "We may consider the marks'

visual, aural, and definitional attributes and compare the trade dress of the products

in determining whether the total effect conveyed by the two marks is confusingly

similar." Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 830 (8th Cir. 1999) (citing

Gen. Mills, 824 F.2d at 627).

The district court analyzed the evidence submitted by the parties related to the

sophistication of the customer base and the collaborative process by which the

products in the industry are sold. As a result of the sophisticated customers and the

long, interactive purchasing process, the court determined it was highly unlikely

buyers would confuse the marks, and thus the likelihood of confusion was diminished.

The court also noted there was a distinct auditory difference between the marks.

The court rejected Sensient's "initial interest confusion" argument, in which it

contended SensoryEffects was able to use Sensient's name to gain access to customers

and begin the collaborative process leading to sales, even if the customer's initial

confusion over the two companies' names dissipates during the process. The court
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noted this theory has never been adopted by the Eighth Circuit, and even if it was,

Sensient would still lose because it failed to show any evidence of customers

experiencing such a phenomenon. Not only did SensoryEffects Flavor Systems have

a distinct auditory difference from Sensient Flavors, the court held, but Sensient failed

to introduce evidence showing SensoryEffects attempted to lure away Sensient's

customer base by passing off its products as Sensient's.

On appeal, Sensient contends the district court correctly recited the "sight,

sound, and meaning" test to determine the similarity between the marks, see id., but

it erroneously considered the purchasing conditions and evidence of actual confusion

in assessing the similarity of the marks. Sensient asserts the court must independently

determine whether the marks appear and sound similar and evoke a similar meaning,

and then separately consider whether the purchasing conditions make those

similarities more or less critical. Sensient also urges this court to formally adopt the

"initial interest confusion" doctrine.

We first consider the sight, sound, and meaning argument. We have continually

held the use of identical dominant words does not automatically equate to similarity

between marks. See Frosty Treats, Inc., 426 F.3d at 1008-09 (distinguishing the

words "frosty treats" in the defendant's product from the plaintiff's "Frosty Treats"

mark where the mark and trade dress were visually distinct); Luigino's, 170 F.3d at

830-31 (concluding "Lean Cuisine" and "Lean 'N Tasty" are not confusingly similar);

Duluth News-Tribune, 84 F.3d at 1097 (determining "Duluth News-Tribune" and

"Saturday Daily News & Tribune" were distinct, despite the aural similarity between

the two marks); Gen. Mills, 824 F.2d at 627 (holding the district court did not err in

finding no confusing similarity between "Oatmeal Raisin Crisp" and "Apple Raisin

Crisp" because the marks were different enough to avoid customer confusion). In this

case, while each mark uses the word "flavors" and begins with the "sens" prefix, these

features are components of longer product names with different auditory and visual

depictions. See Everest Capital Ltd., 393 F.3d at 761 ("Though each mark uses the
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dominant word 'Everest,' that word is part of longer product names that employ

different fonts and graphics.").

First, there are significant visual differences between the marks. Sensient's

mark consists of blue capital lettering with a yellow wave slightly above the lettering.

The SensoryEffects mark, on the other hand, utilizes bold black lettering in different

typeface on two lines, with a multicolor swirl symbol to the left of the first line.

Based on these visual distinctions, the marks are sufficiently differentiated to prevent

customer confusion. See Luigino's, 170 F.3d at 831 ("The use of different colors and

typefaces, as well as the prominent display of the house marks convey perceptible

distinctions between the products.").

In its reply brief, Sensient contends the visual appearance of the marks is

irrelevant because the point of contact between the companies and the customers

generally occurs via telephone, and thus the auditory similarities should be given

priority. Sensient's suggestion to place particular emphasis on the verbal effect of the

marks is not without merit. See 4 McCarthy § 23:22 (4th ed.) ("Similarity of sound

may be particularly important when the goods are of the type frequently purchased by

verbal order."). However, we agree with the district court that the composite marks

maintain a distinct auditory difference. See Duluth News-Tribune, 84 F.3d at 1097

("Although the [Duluth News-Tribune and Saturday Daily News & Tribune] marks

are aurally similar, when pronounced in their entirety the word 'Saturday' and the

ampersand in defendants' paper make the two distinguishable.").

While Sensient correctly notes the purchasing conditions, confusion among

customers, and similarity between the marks are three separate factors considered by

the court in its analysis, our precedent is clear that we evaluate the impression the

entire mark is likely to have "on a purchaser exercising the attention usually given by

purchasers of such products." Id. See also Luigino's, 170 F.3d at 830-31 (analyzing

whether an ordinary consumer would be likely to be confused between the two
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marks). The parties agree the ordinary customer of their products is sophisticated and

any particular sale is the result of a long, collaborative process. Taking into

consideration the sophistication of the customers and the nature of the purchasing

process, the district court correctly determined the ordinary consumer would not find

the marks confusingly similar under the "sight, sound, and meaning" test.

Sensient further argues the district court erred in its application of the "initial

interest confusion" doctrine. According to Sensient, most courts now recognize the

doctrine, which arises when confusion creates an initial customer interest, even though

no actual sale may be finally completed due to the confusion. 4 McCarthy § 23:6 (4th

ed.). Sensient contends the doctrine "may be applied to a purchasing process that is

drawn out over a period of time," such as the collaborative buying process at issue

here. Id. However, those courts acknowledging the doctrine recognize that "[e]ven

if the marks are almost identical, initial interest confusion is not assumed and must be

proven by the evidence." Id.

We decline Sensient's invitation to adopt the "initial interest confusion" doctrine

in this case because, even if the doctrine applied generally in this circuit, it would not

apply in this case. Under the doctrine, courts look to factors such as product

relatedness and the level of care exercised by customers to determine whether initial

interest confusion exists. Checkpoint Sys., Inc. v. Check Point Software Techs., Inc.,

269 F.3d 270, 296 (3d Cir. 2001). Here, although the products are similar, the parties

agree the customers are sophisticated and exercise a relatively high degree of care in

making their purchasing decisions. This sophistication makes it less likely customers

will experience initial confusion, ultimately resulting in a benefit to the alleged

infringer. Id. at 296-97. As a result, the district court correctly rejected the

application of the doctrine under these facts. In sum, the district court did not err in

concluding the second factor weighs in favor of SensoryEffects.
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3. The Degree of Competition Between the Products

The third factor analyzes the degree of competition between products. Frosty

Treats, 426 F.3d at 1008. If the two companies' products are closely related,

confusion among customers is more likely. Davis v. Walt Disney Co., 430 F.3d 901,

904 (8th Cir. 2005). The district court determined the companies' product markets

differ slightly, but it ultimately held this factor weighed in favor of Sensient because

the parties are direct competitors selling flavor delivery systems to food and food

ingredient companies. Neither party disputes this holding on appeal, and accordingly

we conclude the district court was correct in its determination under the third factor,

which favors Sensient.

4. The Alleged Infringer's Intent to Pass Off its Goods as the Trademark

Owner's

The fourth factor analyzes whether the alleged infringer intended to pass off its

goods as the trademark owner's goods. Frosty Treats, 426 F.3d at 1008. While proof

of bad intent is not required for success in an infringement or unfair competition

claim, "the absence of such intent is a factor to be considered." Id. "Knowledge of

another's product and an intent to compete with that product is not . . . equivalent to

an intent by a new entrant to a market to mislead and to cause consumer confusion."

Luigino's, 170 F.3d at 831.

In considering this factor, the district court first acknowledged the temporary

restraining order it previously entered against SensoryFlavors, in which it noted

Nicolais's selection of the SensoryFlavors name after he was previously employed by

Sensient created a strong inference of his intent to confuse the public. However, the

court concluded the evidence produced after additional discovery did not support this

inference because Nicolais worked for a separate division while he was employed by

Sensient, and even if he maintained knowledge of the Sensient Flavors name, his
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knowledge did not equate with an intent to mislead. Rather, the court determined

SensoryEffects selected its name in order to capitalize its already-established mark

and the goodwill established under the Givaudan Flavors name.

Sensient asserts the court ignored evidence demonstrating SensoryEffects was

aware Sensient was a direct competitor prior to purchasing Givaudan Flavors and it

intentionally selected similar marks. Instead, Sensient argues the court relied on the

self-serving affidavit of Nicolais, who claimed he was unaware of the Sensient Flavors

mark. Sensient also argues SensoryEffects was obligated to move further away from

the Sensient Flavors name after the temporary restraining order was entered, such that

inserting "Effects" was insufficient to meet its obligation.

In determining whether SensoryEffects intended to pass off its goods as those

of Sensient's, we believe the analysis in Luigino's is instructive. In Luigino's, the

owners of the "Lean Cuisine" mark alleged that Luigino's intentionally adopted a

similar mark, "Lean 'N Tasty," to capitalize on the goodwill established under the

"Lean Cuisine" mark. Id. The evidence before the court demonstrated that Luigino's

rejected a consultant's advice to avoid the "Lean 'N Tasty" mark and it believed the

low-fat "Lean 'N Tasty" entrees might be comparable to "Lean Cuisine" entrees. Id.

Despite this evidence, this court determined there was no evidence Luigino's intended

to capitalize on the strong "Lean Cuisine" mark. Id. The court explained that

Luigino's chose the name "Lean 'N Tasty" because it wanted to avoid the word "light,"

it believed the word "low-fat" was overused, and because it did not agree with the

consultant's recommendation to avoid the word "lean." Id. According to the court,

the reference to "Lean Cuisine" only evinced an intent to compete with the product,

not an intent to infringe on the mark. Id. As a result, the court held there was no

genuine issue of material fact regarding predatory intent. Id.

Similarly, in General Mills, Inc., this court declined to find predatory intent on

the part of the owner of the "Oatmeal Raisin Crisp" mark, despite the owner's intent
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to compete with the "Apple Raisin Crisp" mark. 824 F.2d at 627. "Oatmeal Raisin

Crisp" went so far as to send promotional fliers to distributors encouraging them to

replace "Apple Raisin Crisp" with its product. Id. However, the court again

concluded that knowledge of another's product and an intent to compete with that

product does not equate to predatory intent. Id.

We believe the intent alleged by Sensient in this case is similar to the

allegations in Luigino's and General Mills, Inc. While the parties strongly dispute the

extent of Nicolais's knowledge of the Sensient Flavors name, our precedent

demonstrates any knowledge maintained by Nicolais is not dispositive of the inquiry

because knowledge of another's product and an intent to compete does not correspond

with an intent to mislead. Id. Sensient alleges the inference to be drawn from the

evidence is that Nicolais had an intent to confuse customers by using a name similar

to Sensient Flavors; however, there is no support in the record for this assertion other

than speculation.

Rather, the facts of this case are similar to Duluth News-Tribune, where the

court recognized the allegedly infringing name "Saturday Daily News & Tribune" was

a logical merger of the names "Daily News" and "Daily Tribune." 84 F.3d at 1097.

Here, the prior owners of SensoryEffects filed an application for registration of the

SensoryEffects name and graphic in July 2004, which was formally registered by the

PTO on July 3, 2007. After PCI acquired Givaudan Flavors, it was not permitted to

use the Givaudan Flavors name for more than sixty days after the purchase. As a

result, the company decided to combine the SensoryEffects and Givaudan Flavors

names to form SensoryFlavors. After this lawsuit was filed, the company changed its

name to SensoryEffects Flavor Systems, incorporating the full SensoryEffects name

that was already registered with the PTO. Under these circumstances, the district

court was not incorrect in concluding the SensoryEffects Flavor Systems name was

a logical combination of the previously-established SensoryEffects and Givaudan
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Flavors names. After a careful review of the record, we conclude no reasonable jury

could find in favor of Sensient on the fourth factor. 

5. Incidents of Actual Confusion

Under the fifth factor, we examine the incidents of actual confusion. Frosty

Treats, 426 F.3d at 1008. Although such incidents are proof of the likelihood of

confusion, the plaintiff is not required to bring forth incidents of actual confusion to

succeed in an infringement case. SquirtCo., 628 F.2d at 1091. In analyzing this

factor, weight is given to "the number and extent of instances of actual confusion."

Duluth News-Tribune, 84 F.3d at 1098.

The district court held Sensient failed to produce any evidence of actual

confusion, which it noted was telling since the SensoryEffects name had been in use

at the time for approximately one year. As a result, the court concluded the fifth

factor weighed in favor of SensoryEffects.

Sensient contends it presented evidence detailing some customers' misguided

beliefs in phone calls and correspondence where the customers thought

SensoryFlavors was, in one way or another, Sensient Flavors. SensoryEffects

responds Kenneth Iwanusa, National Sales Manager for Sensient Flavors, testified he

knew of no lost sales, no injury to Sensient's reputation, and no incidents in which

SensoryEffects benefitted from any confusion between the two companies.

As an initial matter, it is questionable whether the statements contained in

Sensient's interrogatory responses purportedly establishing the customers' confusion

are admissible. See id. ("In evaluating the evidence at the summary judgment stage,

we consider only those responses that are supported by admissible evidence."). We

need not answer this question, however, because assuming the statements are

admissible, it is clear "even several isolated incidents of actual confusion that occur
-20-

initially upon the creation of a potentially confusing mark are insufficient to establish

a genuine issue of material fact as to the likelihood of confusion." Id. Instead, we

"look to whether an appreciable number of ordinary purchasers are likely to be so

misled." Id. at 1099. This is not the case here, because the incidents described by

Sensient show only negligible confusion after SensoryFlavors was completing its

transition with Givaudan Flavors, which is insufficient to meet the burden under the

fifth factor.

More importantly, the district court correctly noted the alleged incidents of

confusion all related to the SensoryFlavors name, not the SensoryEffects name at issue

here. Sensient concedes this fact on appeal, but notes there still may be a likelihood

of confusion. Sensient's suggestion is without any support in the record, and as a

result, no reasonable factfinder could determine the fifth factor favors Sensient.

Therefore, the district court did not err in concluding the fifth factor favors

SensoryEffects.

6. The Type of Product, Its Cost, and Conditions of Purchase

Finally, the sixth factor examines the conditions of purchase and the degree of

care expected of customers. Frosty Treats, 426 F.3d at 1008. "In considering this

factor, we must stand in the shoes of the ordinary purchaser, buying under the

normally prevalent conditions of the market and giving the attention such purchasers

usually give in buying that class of goods." Luigino's, 170 F.3d at 831. This factor

is "more important in confusion-of-source cases where the degree of care that the

purchaser exercises in purchasing a product can eliminate the confusion that might

otherwise exist." Frosty Treats, Inc., 426 F.3d at 1010.

In this case, the district court concluded it was well-established the parties sell

their products to sophisticated customers after a collaborative process. As a result of

this process, the court held the likelihood of confusion was diminished, and this factor
-21-

favored SensoryEffects. The parties do not dispute the conditions of purchase on

appeal, as each concedes they are competitors with sophisticated customers. As noted

in the analysis above, this factor is important in this case because it tends to mitigate

any potential confusion. Id. As a result of the parties' agreement, this factor could not

form the basis for a verdict in favor of Sensient, and the district court did not err in

concluding this factor weighs in favor of SensoryEffects.

Appropriateness of Summary Judgment

Our evaluation of the foregoing factors leads us to conclude no reasonable jury

could find a likelihood of confusion between Sensient's mark and the SensoryEffects

Flavor Company mark. "As courts have repeatedly noted, the ‘core element’ of

trademark infringement law is whether an alleged trademark infringer's use of a mark

creates a likelihood that the consuming public will be confused as to who makes what

product." Davis, 430 F.3d at 905 (citation and internal quotation marks omitted).

Under the circumstances, SensoryEffects's use of its mark does not create a likelihood

that the sophisticated customer base will be confused as to who makes what product.

As a result, we affirm the district court's grant of summary judgment.

C. Missouri's Anti-Dilution Statute

The district court also granted summary judgment in favor of SensoryEffects

on Count Six of Sensient's complaint alleging trademark dilution under Missouri law.

The statute provides for injunctive relief where there exists a "[l]ikelihood of injury

to business reputation or of dilution of the distinctive quality of a mark . . .

notwithstanding the absence of competition between the parties or the absence of

confusion as to the source of goods or services." Mo. Rev. Stat. § 417.061(1). "The

gravamen of a dilution complaint is that the defendant's continuing use of a mark

similar to the plaintiff's mark will inexorably have an adverse effect upon the value

of the plaintiff's mark, and that the plaintiff's mark will eventually be deprived of all
-22-

distinctiveness." Frosty Treats, Inc., 426 F.3d at 1011 (citation omitted). To prevail

under the statute, Sensient "must show its mark or trademark was valid at common

law, that its mark is distinctive, and that defendants' use of its name created a

likelihood of dilution of the distinctive quality of plaintiff's mark." Cmty. of Christ

Copyright Corp. v. Devon Park Restoration, 683 F.Supp.2d 1006, 1017 (W.D. Mo.

2010).

The district court began its analysis by noting, as discussed above, Sensient is

a fanciful mark. The court proceeded to consider evidence of third party usage of

similar marks on similar goods. According to the court, SensoryEffects introduced

evidence showing another competitor in the market does business under the name

"Sensus Flavors," while another corporation uses the name "Symrise." The court

concluded, while the Sensient mark is fanciful, these third party uses demonstrate the

mark is relatively weak. The court determined Sensient failed to introduce evidence

showing its mark is distinctive, and as a result the mark was not entitled to protection

under the dilution statute.

Sensient asserts it was not required to introduce evidence showing its mark was

distinctive because its mark was already established as fanciful. Sensient points to its

open and continuous use of the mark since 2000 on its business cards, advertising and

marketing materials, and website. Sensient also contends the court erred because

nothing in the statute or case law requires courts to consider third party usage as part

of the dilution determination, especially where the mark at issue is fanciful. Even if

this inquiry were required, Sensient argues, the court's finding its mark was "relatively

weak" was not supported by the evidence in the record.

As an initial matter, we acknowledge this case is distinguishable from Steak n

Shake Co. v. Burger King Corp., 323 F.Supp.2d 983 (E.D. Mo. 2004), which the

district court cited in support for its holding. In Steak n Shake Co., the "steakburger"

mark was a generic term not entitled to protection, in contrast to the "Sensient" mark,
-23-

which the district court already determined was a strong mark, as we also concluded

above. 323 F.Supp.2d at 994-95.

Regardless of this distinction, Sensient is unable to prevail on its trademark

dilution claim. Inherent in a dilution action under Missouri law is a showing of

similarity between the marks, which results in the dilution. See Frosty Treats, Inc.,

426 F.3d at 1011 ("Plaintiffs' Missouri-law dilution claim fails because the marks and

trade dress at issue are so dissimilar that it would be clearly erroneous to hold that

there was a likelihood of dilution."). See also Luigino's, Inc., 170 F.3d at 832 ("To

support an action for dilution by blurring, the marks must at least be similar enough

that a significant segment of the target group of customers sees the two marks as

essentially the same."). As discussed above, the Sensient Flavors and SensoryEffects

Flavor Systems marks are not sufficiently similar under the "sight, sound, and

meaning" test. While the "sight, sound, and meaning" test determined similarity for

purposes of assessing whether a likelihood of confusion existed, the same dissimilarity

prevents a finding of dilution under Missouri law. See Luigino's, 170 F.3d at 832-33

(holding the marks were dissimilar under the "sight, sound, and meaning" test such

that dilution did not occur because the customers did not see the marks as essentially

the same); Astra Pharm. Prod., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201,

1210 (1st Cir. 1983) ("We have already noted that, while the Beckman analyzer and

Astra products may be in the same broad health care field, there is sufficient

dissimilarity to prevent confusion. For the same reasons, there is sufficient

dissimilarity to prevent dilution."). As a result, Sensient's dilution claim under

Missouri law fails because the marks are not sufficiently similar, and therefore there

is no likelihood of dilution between the marks.

For the foregoing reasons, we affirm the judgment of the district court.
4

I concur in the judgment affirming the district court’s decision on the claims

relating to the SensoryFlavors mark. Ante, at 5-9. I also concur in the judgment

affirming the dismissal of Sensient’s claim under the Missouri anti-dilution statute,

Mo. Rev. Stat. § 417.061(1), because this is a dispute between competitors who sell

similar goods. See Luigino’s, Inc. v . Stouffer Corp., 170 F.3d 827, 833 (8th Cir.

1999); Viacom, Inc. v. Ingram Enters., Inc., 141 F.3d 886, 891 n.9 (8th Cir. 1998); 4

J. McCarthy, Trademarks and Unfair Competition § 24:74 (4th ed. 2010).

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COLLOTON, Circuit Judge, concurring in the judgment in part and dissenting in part.

Applying the multiple factors identified in circuit precedent as bearing on the

likelihood of confusion in a trademark infringement or unfair competition case, see

Frosty Treats, Inc. v. Sony Computer Entm’t Am., Inc., 426 F.3d 1001, 1008 (8th Cir.

2005), I conclude that there are genuine issues of material fact that preclude summary

judgment on that ground. Because the district court dismissed claims advanced by

Sensient Technologies Corporation (“Sensient”) under the Lanham Act (Counts 1-3),

the Missouri common law (Count 4), and Mo. Rev. Stat. § 417.056(1) (Count 5),

based on its conclusion that there is no likelihood of confusion as a matter of law, I

would reverse the district court’s judgment in part and remand for further

proceedings.4

I agree with the court that a reasonable jury could find that Sensient has a

fanciful trademark in the name Sensient Flavors that is entitled to the highest level of

protection, and that Sensient Flavors and SensoryEffects Flavor Company are direct

competitors who sell flavor delivery systems to food companies. I disagree, however,

that no reasonable jury could find that other factors in the analysis favor Sensient.

On the question whether the alleged infringer intends to pass off its good as the

trademark owner’s goods, the circumstances of this case support a reasonable

inference in favor of Sensient. The president of the alleged infringer, Charles

Nicolais, is a former president of Sensient Colors, Inc., a sister company of Sensient
-25-

Flavors. Shortly after Nicolais moved from Sensient to the defendant, the new

company selected the name “SensoryFlavors” to compete with “Sensient Flavors.”

This led the district court to find a “strong inference of Defendant’s intent to confuse

the public.” R. Doc. 21, at 7. After the district court preliminarily enjoined the

defendant from using the name “SensoryFlavors,” the company retreated to the name

“SensientEffects Flavor Company,” rejecting the suggestion of a company vice

president to omit the word “Flavor” from the official name and parent logo.

Appellants’ App. 275-76. Nicolais denied in an affidavit that he was aware that the

brand or trademark “Sensient Flavors” even existed, but Sensient discovered from the

defendant an internal document dated February 2008 that listed “Sensient Flavors” as

a “primary competitor” of the newly-named “SensoryFlavors, Inc.” Id. at 270. The

credibility of Mr. Nicolais is obviously a disputed issue for a jury.

Intent is proved by circumstantial evidence, and from these circumstances, a

reasonable jury could find that the defendant, having been rebuffed in its efforts to use

the name SensoryFlavors to generate confusion with Sensient Flavors, still intended

to confuse the public by shifting to the name of SensientEffects Flavor Company. To

be sure, we have said that “[k]nowledge of another’s product and an intent to compete

with that product” is not the same as intent to cause consumer confusion, Gen. Mills,

Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987), but this is not a garden-variety

“intent to compete” case. Sensient’s contention is that the defendant knew of the

“Sensient Flavors” mark and intentionally selected a very similar mark – first,

SensoryFlavors and then SensientEffects Flavor Company – in order to benefit from

confusion that would arise from the similarity of names. Particularly given the initial

effort by a former Sensient executive to use the name SensoryFlavors, a jury

reasonably could infer that the defendant’s choice of the fallback name was still

motivated in part by an intent to confuse consumers. See Beer Nuts, Inc. v. Clover

Club Foods Co., 805 F.2d 920, 927 (10th Cir. 1986) (“[D]eliberate adoption of a

similar mark may lead to an inference of intent to pass off goods as those of another,”

and “[t]he inference of intent is especially strong when the parties have had a prior
-26-

relationship.”). The permissible inferences about the defendant’s intent weigh

strongly against summary judgment. See Eli Lilly & Co. v. Natural Answers, Inc., 233

F.3d 456, 465 (7th Cir. 2000) (“The fact that one actively pursues an objective greatly

increases the chances that the objective will be achieved,” and “[f]or this reason, a

defendant’s intent is an important factor, and can be weighed more heavily than other

factors.”) (internal quotations and citations omitted); Mobil Oil Corp. v. Pegasus

Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987) (“Intentional copying gives rise

to a presumption of a likelihood of confusion.”).

On the question of similarity of the owner’s mark and the alleged infringer’s

mark, a reasonable jury also could find in favor of Sensient Flavors. The evidence

shows that the products at issue are marketed by telephone, so it is the similarity of

sound (not trade dress or logo) that is relevant. Sensient argues that SensoryEffects

is likely to cause “initial interest confusion” when it uses a similar-sounding name to

market its products to customers in “cold” telephone calls. The doctrine of “initial

interest confusion” – “infringement based upon confusion that creates initial customer

interest, even though no actual sale is finally completed as a result of the confusion”

– is widely accepted, see 4 J. McCarthy, Trademarks and Unfair Competition § 23:6

(4th ed. 2010), and SensoryEffects offers no convincing reason why this court should

not adopt it. In that context, the aural similarity of SENSient Flavors and

SENSoryEffects Flavor (with “Company” as an immaterial add-on) is sufficient for

a jury to weigh this factor in favor of the plaintiff. Of course, “the use of identical

dominant words does not automatically equate to similarity between marks,” ante, at

13 (emphasis added), but unlike the authorities cited by the court, Frosty Treats, Inc.,

426 F.3d at 1008-09; Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 831 (8th Cir.

1999); Duluth News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 1096 (8th Cir.

1996); Gen. Mills, Inc., 824 F.2d at 627, visual distinctions in trade dress do not

ameliorate the harm caused by confusingly similar names where auditory similarity

is the key issue. Cf. ante, at 14 (“Sensient’s suggestion to place particular emphasis

on the verbal effect of the marks is not without merit.”).
-27-

That a company’s customers are sophisticated does not establish as a matter of

law that there is no likelihood of confusion. If the sophisticated oil traders in Mobil

Oil Corp., 818 F.2d 254, “might listen to a cold phone call from Pegasus Petroleum

. . . when otherwise he might not, because of the possibility that Pegasus Petroleum

is related to Mobil,” id. at 259, even though the possible relationship between those

entities required inferences based on knowledge of both Mobil’s mark and Greek

mythology, then a reasonable jury could reach a similar conclusion here. A

sophisticated purchaser of flavor delivery systems might take a cold call from a fasttalking salesperson attempting to pitch a customer on behalf of “SENSoryeffects Flavor

Company” when the buyer is familiar with, or accustomed to dealing with, “SENSient

Flavors [Company].” Whether or not a sophisticated customer eventually would sort

out the difference, the doctrine of initial interest confusion prevents an infringer from

using another’s mark to gain “crucial credibility during the initial phases of a deal.”

Id. (emphasis added).

The court relies on Checkpoint Systems, Inc. v. Check Point Software

Technologies, Inc., 269 F.3d 270 (3d Cir. 2001), for the proposition that careful and

sophisticated customers make initial interest confusion less likely, ante, at 15, but

Checkpoint Systems considered findings made by a district court after a trial, and held

that the district court’s finding of no likelihood of confusion was not clearly

erroneous. Id. at 298. Checkpoint Systems did not hold that customer sophistication

justified summary judgment against claims of initial interest confusion. The court’s

discussion of initial interest resolved that “[i]ts significance will vary, and must be

determined on a case-by-case basis.” Id. at 297.

Given the issues of fact surrounding several elements of the analysis, the

absence of evidence of actual confusion on this record does not justify summary

judgment. The other factors – the strength of the Sensient Flavors mark, the high

degree of direct competition, the auditory similarity of the marks in a market

characterized by telephone sales, and the evidence of intent to confuse – are sufficient
-28-

to support a finding that the defendant’s mark is likely to confuse. See Eli Lilly, 233

F.3d at 465-66 (holding that although there was no evidence of actual confusion, “the

other factors – especially the similarity of the marks, the strength of the [plaintiff’s]

mark, and [the defendant’s] intent to confuse – strongly support[ed] the district court’s

ultimate conclusion” to grant a preliminary injunction under the Lanham Act). The

court makes a reasonable argument that there is no likelihood of confusion, and a jury

may reach that conclusion after evaluating credibility and weighing the evidence, but

the record does not demonstrate as a matter of law that the court’s determination is the

only reasonable outcome. 

For these reasons, I would reverse the grant of summary judgment on Counts

1-5 and remand for further proceedings.

______________________________