1994 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

7-22-1994

Fison Horticulture, Inc. v. Vigoro Industries, Inc.

Precedential or Non-Precedential:

Docket 93-7224

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Recommended Citation

"Fison Horticulture, Inc. v. Vigoro Industries, Inc." (1994). 1994 Decisions. Paper 93.

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1 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

________________ 

Nos. 93-7224 & 93-7287 

________________ 

FISONS HORTICULTURE, INC., 

 Appellant in No. 93-7224 

v. 

VIGORO INDUSTRIES, INC., 

 Appellant in No. 93-7287 

_______________________________________________ 

On Appeal from the United States District Court 

for the District of Delaware 

(D.C. Civil Action No. 92-00066) 

___________________ 

Argued January 20, 1994 

Before: SCIRICA, LEWIS and GARTH, Circuit Judges

(Filed July 22, 1994) 

 JACK R. PIROZZOLO, ESQUIRE (Argued) 

 Willcox, Pirozzolo & McCarthy 

 50 Federal Street 

 Boston, Massachusetts 02110 

 DONALD F. PARSONS, JR., ESQUIRE 

 Morris, Nichols, Arsht & Tunnell 

 1201 North Market Street 

 P.O. Box 1347 

 Wilmington, Delaware 19899 

 Attorneys for Appellant/Cross-Appellee 

 Fisons Horticulture, Inc. 
2 

 BYRON L. GREGORY, ESQUIRE (Argued) 

 MICHELLE C. BURKE, ESQUIRE 

 McDermott, Will & Emery 

 227 West Monroe Street 

 Chicago, Illinois 60606 

 Attorneys for Appellee/Cross-Appellant 

 Vigoro Industries, Inc. 

__________________ 

OPINION OF THE COURT 

__________________ 

SCIRICA, Circuit Judge. 

 This is a trademark infringement case concerning 

products in the home lawn and garden market. The owner of the 

trademark "Fairway" for peat moss alleges another company 

infringed its right to the mark and competed unfairly by selling 

fertilizer under the name "Fairway Green." 

 Fisons Horticulture, Inc. ("Fisons"), a Canadian 

corporation with its principal place of business in Bellvue, 

Washington, brought this suit against Vigoro Industries, Inc., 

("Vigoro"), a Delaware corporation with its principal place of 

business in Fairview Heights, Illinois. Fisons, which markets 

peat moss under the registered trademark "Fairway", claims 

Vigoro's use of the brand name "Fairway Green" for fertilizer 

constitutes trademark infringement0 and unfair competition0under 

 

0Section 32 of the Lanham Act, 15 U.S.C. § 1114 (1988 & Supp. IV 

1992) protects registered trademarks and provides in part: 

(1) Any person who shall, without the consent of the 

registrant -- 

(a) use in commerce any reproduction, counterfeit, 

copy, or colorable imitation of a registered mark 
3 

the Lanham Act, 15 U.S.C. §§ 1051-1127 (1988 and Supp. IV 1992), 

infringement of a common law trademark, common law unfair 

competition, and violates the Delaware Deceptive Trade Practices 

Act, Del. Code Ann. tit. 6, §§ 2531-33 (1993). 

 After a bench trial, the district court entered 

judgment for Vigoro on Fisons' claims and for Fisons on Vigoro's 

cross-claim for attorneys' fees under 15 U.S.C. § 1114(1), as 

provided by 15 U.S.C. § 1117. Both parties appealed. For 

reasons that follow, we will reverse the district court's 

judgment for Vigoro on Fisons' Lanham Act claims, affirm its 

 

in connection with the sale, offering for sale, 

distribution, or advertising of any goods or 

services on or in connection with which such use 

is likely to cause confusion, . . . 

 . . . 

shall be liable in a civil action by the registrant for 

the remedies hereinafter provided. 

0Section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (1988 & Supp. 

IV 1992), which provides protection for both registered and 

unregistered marks, states in part: 

(a)(1) Any 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, or any false designation of 

origin, false or misleading description of fact, or 

false or misleading representation of fact, which -- 

(A) is likely to cause confusion, or to cause 

mistake, or to deceive as to the affiliation, 

connection, or association of such person with 

another person, or as to the origin, sponsorship, 

or approval of his or her goods, services, or 

commercial activities by another person, . . . 

 . . . 

shall be liable in a civil action by any person who 

believes that he or she is or is likely to be damaged 

by such act. 
4 

judgment for Fisons on attorneys' fees, and remand for a new 

trial. 

I. 

A. Fisons Horticulture, Inc. and Fairway Peat Moss 

 Fisons is a subsidiary of a British-owned company, 

Fisons, PLC, which has three divisions: pharmaceuticals, 

scientific equipment, and horticultural products. Its 

horticulture division has companies in the United Kingdom, 

France, and the Benelux Countries, as well as in North America. 

 Fisons markets Canadian sphagnum peat moss, a natural 

organic product used to improve soil texture and protect plants 

from temperature extremes, under the registered trademark 

"Fairway" in the United States. Fisons acquired the Fairway 

trademark in 1980 from the original owner, Western Peat Company, 

Ltd., which first used the trade name in 1959 and registered it 

in 1960. 

 Fairway is not the only name under which Fisons sells 

peat moss; it also uses the names "Sunshine" and "Parkland." 

Sunshine and Parkland together account for over 95% of its sales 

in the United States and Fairway accounts for the remainder.0

Fisons' three brands of peat moss account for about 25% of the 

U.S. peat moss market. From 1987 through 1991, Fisons sold over 

 

0It is not uncommon for one business to use multiple brand names 

for what is essentially the same product; the use of different 

brand names allows Fisons to sell peat moss to a lawn and garden 

store under a brand name not sold by a nearby competing discount 

outlet. 
5 

$500,000 of Fairway peat moss each year. Fisons sells Fairway 

peat moss primarily to homeowners for lawn and garden care 

through the traditional channels -- lawn and garden stores, 

hardware stores, home improvement centers, supermarkets, drug 

stores, and discount stores. Fisons does not advertise Fairway 

peat moss directly to consumers. Instead, it promotes its 

product to retailers, makes advertising copy available to them, 

and reimburses them for their advertising expenses.0 

 Besides selling peat moss, Fisons sells to the U.S. 

greenhouse market potting mixes; analyses of soil, water and 

tissue samples; and professional fertilizer. It also offers an 

extensive line of lawn and garden products in Canada. Fisons has 

been considering expanding its product line in the United States 

by acquiring regional fertilizer brands and unifying them as a 

national brand for the consumer fertilizer market. One of the 

proposed trademarks for the national fertilizer brand is Fairway. 

 Fairway peat moss is sold in a white plastic bag with 

the mark "Fairway" in large script in green letters above the 

words "peat moss" in block red letters. The bag has a central 

design of a golf course green surrounded by roses. A pin with a 

red triangular flag appears in the center of the green, and the 

word "sphagnum" is printed in white on the flag. On the back of 

the package, recommended uses are listed as "preparing new 

lawns," "top dressing old lawns," and "garden soil mix or mulch." 

 

0But in 1990, a year in which Fisons had retail sales of Fairway 

peat moss in 17 states for a total of $684,316, only one retailer 

published an advertisement for Fairway; it sought reimbursement 

for $1,232.57. 
6 

The package notes that peat moss is used with fertilizer and that 

it "saves fertilizer". 

B. Vigoro Industries, Inc. and Fairway Green Fertilizer

 Vigoro Industries has been in the fertilizer business 

in the United States since 1890, and the Vigoro name has been 

used on products since 1924. It is a prominent name in the 

industry and it plans to compete with the market leader, O.M. 

Scott & Sons Co., across the full range of Scott products. Vigoro 

sells its products to consumers through garden centers, discount 

stores, hardware stores, seed and feed stores, home improvement 

centers and supermarkets and drug stores. 

 Before 1991, Vigoro offered standard quality fertilizer 

to consumers, but in 1991, it decided to offer to the upscale 

consumer market a new line of premium-quality fertilizers, 

containing the patented slow-release nitrogen ingredient it used 

in its premium golf course fertilizer. Vigoro hired an 

advertising agency to help select a name and promotional program 

for the new product. After a search disclosed that many proposed 

names were registered as trademarks by other companies, the 

agency recommended "Fairway Green."0

 

0One of the names explored for Vigoro's new line of fertilizers 

was "Golf Course Green," but the advertising agency's trademark 

attorney found that a subsidiary of Sandoz Pharmaceutical 

Corporation owned the named "Golf" for fertilizers and 

herbicides. The trademark appeared to be inactive, so Vigoro 

requested a royalty-free license to use "Golf Course Green." When 

it was refused, Vigoro decided not to use the name. Vigoro made 

no similar request of Fisons or any other owners of a "Fairway" 

trademark. 
7 

 The agency's trademark counsel stated in her 

recommendation that "Fairway" was registered as a trademark by 

several companies: 

 As we discussed, there is a possibility 

that one or more of the owners of "fairway" 

marks might contest Vigoro's right to use 

FAIRWAY GREEN. However, since there is no 

history of any of the prior users opposing 

each other's uses of "fairway," the risk 

should be acceptabl[y] low. 

 There is also a risk that the 

application will be assigned to an examiner 

who will take a strict position and site 

[sic] one or more of the prior "fairway" 

registrations as grounds for refusing to 

register your mark. Because so many 

"fairway" marks have been registered in the 

past I believe this risk is also low. 

Fisons Horticulture, Inc., v. Vigoro Indus., No. 92-66, slip op. 

at 3 (D. Del. Mar. 3, 1993). 

 There were several other registrations and applications 

including the word "Fairway," but few of them were in the same 

trademark category as Fisons' Fairway, that is, U.S. class 10, 

"Fertilizers." In that class, Western Peat, Fisons' predecessor, 

had registered "Fairway" for peat moss in 1960 and O.M. Scott had 

registered "Super Fairway" for agricultural and horticultural 

fertilizers in 1988. O. M. Scott marketed Super Fairway for 

commercial but not consumer use. After Vigoro applied for 

registration of "Fairway Green" for its fertilizers in May, 1991, 

Fisons contested both that application and O. M. Scott's prior 

registration and applied for its own registration of "Fairway" 

for fertilizer. 
8 

 In addition to these trademark registrations and 

applications in U.S. trademark class 10, approximately six 

companies had registered or were trying to register "Fairway" for 

one or more other products and services related to lawns and 

gardens: grass seed, lawn and garden machinery and equipment, and 

lawn services; but only three such registrations were completed 

and active at the time the survey was made. Others were pending 

or had been abandoned. Finally, there were unregistered uses of 

the name "Fairway" for goods and services relating to lawns and 

gardens, as shown by surveys of telephone books. 

 In May, 1991, Vigoro decided on the Fairway Green name. 

It filed its trademark application on May 20, 1991 and introduced 

the new product line at the National Hardware Show in August, 

1991. The Hardware Show was the first notice Fisons had of 

Vigoro's use of the name "Fairway Green." By June, 1992, Vigoro 

had spent over $500,000 on advertising and promotion and had sold 

approximately $1.3 million of Fairway Green products in 33 

states. Fisons protested Vigoro's attempt to register the 

trademark on September 26, 1991 and filed a suit in Delaware 

Chancery Court on January 10, 1992; Vigoro removed it to United 

States District Court. 

 Fairway Green fertilizer is sold in a heavy paper bag. 

The background color of the bag is green, red, purple or magenta, 

depending on which of four varieties of the fertilizer it 

contains. On the front of the bag is a large yellow rectangle 

that has in white on purple the words "Vigoro" at the top and 

"Premium Lawn Fertilizer" just below the middle. Between these 
9 

two, in larger green letters with yellow highlighting borders, 

are the words "Fairway Green." The word "Fairway" arches over 

the word "Green," and in the arch is a golf course green 

containing a golf ball, cup, and a pin with a red triangular 

flag. Behind the golf course green is a yellow setting sun with 

blue rays. On the package is the statement: "Keeps grass green 

longer with fewer clippings when compared with soluble 

fertilizers. Contains the controlled-release nitrogen used on 70 

of America's top 100 golf courses. Environmentally-oriented, 

formulated without nitrates." 

C. Purchase and Use of the Products 

 Fairway peat moss and Fairway Green fertilizer occupy 

the same segment of the lawn and garden products market, the 

"fertilizer/soil conditioner" segment. They are frequently used 

together to prepare the soil for planting, but the use of peat 

moss may cut down on the use of fertilizer, as noted on the 

Fairway peat moss package. The two products are both low-cost 

items,0 and there was testimony that consumers who use these 

products typically spend very little time deciding which product 

to buy. Peat moss and lawn and garden fertilizers are often 

displayed in the same area of stores, and both target homeowners 

who do their own lawn and garden work. A number of other 

companies selling lawn and garden products, including the market 

 

0A 4 cubic foot bag of Fairway peat moss has a retail price of 

approximately $8.00 - $15.00; a 20-25 pound bag of Fairway Green 

fertilizer has a retail price of approximately $8.00 - $15.00, 

with discounts and rebates. 
10 

leader, O.M. Scott, sell both peat moss and fertilizer; Vigoro 

sells bark mulch as well as fertilizer. 

II. 

 "The law of trademark protects trademark owners in the 

exclusive use of their marks when use by another would be likely 

to cause confusion." Interpace Corp. v. Lapp, Inc., 721 F.2d 

460, 462 (3d Cir. 1983); see, Ford Motor Co. v. Summit Motor 

Products, Inc., 930 F.2d 277, 291-93 (3d Cir.), cert. denied, 112 

S.Ct. 373 (1991), and authorities cited therein; Scott Paper Co. 

v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228-29 (3d Cir. 

1978). To prove trademark infringement, a plaintiff must show 

that: (1) the mark is valid and legally protectable; (2) the mark 

is owned by the plaintiff; and (3) the defendant's use of the 

mark to identify goods or services is likely to create confusion 

concerning the origin of the goods or services. Ford Motor Co., 

930 F.2d at 291 (citing Opticians Ass'n of America v. Independent 

Opticians of America, 920 F.2d 187, 192 (3d Cir. 1990)). 

 The first two requirements, validity and legal 

protectability, are proven where, as here, a mark was federally 

registered and has become "incontestible" under the Lanham Act, 

15 U.S.C. §§ 1058 and 1065.0 Ford Motor Co., 930 F.2d at 291 

(citing Opticians Ass'n, 920 F.2d at 194). If the mark has not 

 

0A trademark becomes incontestable after the owner files 

affidavits stating that the mark has been registered, that it has 

been in continuous use for five consecutive years, and that there 

is no pending proceeding and there has been no adverse decision 

concerning the registrant's ownership or right to registration. 
11 

been federally registered or, if registered, has not achieved 

incontestability, validity depends on proof of secondary meaning, 

unless the unregistered mark is inherently distinctive. Ford 

Motor Co., 930 F.2d at 291 (citing A.J. Canfield Co. v. 

Honickman, 808 F.2d 291, 296 (3d Cir. 1986)). The mark in this 

case is both registered and incontestible. 

 A plaintiff must also prove the third requirement, the 

likelihood of confusion, which exists "when the consumers viewing 

the mark would probably assume that the product or service it 

represents is associated with the source of a different product 

or service identified by a similar mark." Dranoff-Perlstein 

Assoc. v. Sklar, 967 F.2d 852, 862 (3d Cir. 1992) (internal 

quotations omitted). "Proof of actual confusion is not 

necessary; likelihood of confusion is all that need be shown." 

Ford Motor Co., 930 F.2d at 292 (internal citations omitted).0 

The showing of proof plaintiff must make for this requirement 

depends on whether the goods or services offered by the trademark 

 

0Some actions brought under the Lanham Act require proof of 

actual confusion and others do not. In an action brought under 

sections 32 and 43(a) of the Lanham Act for trademark 

infringement, 15 U.S.C. §§ 1114(1) and 1125(a)(1)(A), plaintiff 

need not provide proof of actual confusion; he need only show 

likelihood of confusion. Ford Motor Co., 930 F.2d at 292. In an 

action brought under another part of section 43(a) of the Lanham 

Act for false advertising, 15 U.S.C. § 1125(a)(1)(B), plaintiff 

need not prove the challenged advertising misled the public if he 

can show it was literally false. However, if his claim is not 

that the advertising was false but that it was misleading, he 

must prove the public was actually misled or confused by it. 

Johnson & Johnson-Merck Consumer Pharmaceuticals Co. v. RhonePoulenc Rorer Pharmaceuticals, 19 F.3d 125, 129-30 (3d Cir. 

1994); Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc., 

902 F.2d 222, 228-29 (3d Cir. 1990). 
12 

owner and the alleged infringer are in direct competition. "Where 

the trademark owner and the alleged infringer deal in competing 

goods or services, the court need rarely look beyond the mark 

itself." Lapp, 721 F.2d at 462 (citations omitted). The court 

focuses on the marks to determine whether they are "confusingly 

similar." Country Floors, Inc. v. Gepner, 930 F.2d 1056, 1063 

(3d Cir. 1991). Where the goods or services are not competing, 

the similarity of the marks is only one of a number of factors 

the court must examine to determine likelihood of confusion. 

To determine likelihood of confusion where 

the plaintiff and defendant deal in noncompeting goods or services, the court must 

look beyond the trademark to the nature of 

the products themselves, and to the context 

in which they are marketed and sold. The 

closer the relationship between the products, 

and the more similar their sales contexts, 

the greater the likelihood of confusion. Once 

a trademark owner demonstrates the likelihood 

of confusion, it is entitled to injunctive 

relief. 

Lapp, 721 F.2d at 462 (citations omitted). 

 Likelihood of confusion is also the test for actions 

brought under section 43(a) of the Lanham Act, 15 U.S.C. 

§1125(a)(1)(A) for unfair competition to prevent false 

representations as to the source or origin of goods or services 

by a mark confusingly similar to one already in use. See, e.g., 

Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 

F.2d 186, 192 (5th Cir. Unit A Sept. 1981) (factors relevant to 

unfair competition claim under 15 U.S.C. § 1125 "essentially the 

same" as those relevant to trademark infringement claim under 15 

U.S.C. § 1114). 
13 

A. Likelihood of Confusion Under the Lanham Act.

 We have adopted a ten-factor test to determine 

likelihood of confusion in the market place as to a product's 

source in cases of alleged trademark infringement and unfair 

competition by a producer of a non-competing product. DranoffPerlstein, 967 F.2d at 862-63 (3d Cir. 1992); Ford Motor Co., 930 

F.2d at 293; Lapp, 721 F.2d at 463; Scott Paper, 589 F.2d at 

1229. They are: 

 (1) 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; 

 (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 the similarity of function; and 
14 

 (10) other facts suggesting that 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. 

 In Lapp, we applied these factors to decide an issue of 

trademark protection where two parties used the same trademark on 

non-competing products. The Lapp Division of plaintiff Interpace 

Corporation ("Lapp-Interpace") made and sold ceramic insulators 

under the "Lapp" trademark. The trademark was registered in 

1953. Defendant, Lapp, Inc., the U.S. marketing arm of a German 

corporation, had distributed wire, cable and related electrical 

hardware in the U.S. under the names "Lapp" and "Lapp Cable" 

since 1977 but had never applied for federal registration of its 

mark. Lapp-Interpace sued under the Lanham Act to enjoin Lapp, 

Inc., from using the "Lapp" name on its products. The district 

court had dismissed the complaint because of its reading of Scott 

Paper. We reversed, holding that Scott Paper mandated judgment 

for the plaintiff. Lapp, 721 F.2d at 462. 

 The district court made factual findings in every 

relevant area of inquiry, but it did not formally apply the Scott 

Paper factors. Lapp, 721 F.2d at 463. We applied them and found 

they weighed in favor of the plaintiff. While the parties' 

sales efforts at that time were not directed to the same targets, 

there was evidence that they would likely clash in the future; 

defendant, which had previously sold wire and cable for use in 

electrical components shipped to Europe and conforming to 

European specifications, had begun to manufacture wire and cable 
15 

that met United Stated specifications. We noted "[t]his 

development considerably increase[d] the overlap in the parties' 

actual and potential customer pool," id. at 464, and determined 

plaintiff's ceramic insulators and defendant's wire and cable 

were closely related functionally. Both were basic electrical 

components and were often used together. 

 We concluded customers would find it natural for the 

manufacturer of Lapp ceramic insulators and pole hardware to 

expand into wire and cable, and Lapp-Interpace introduced 

evidence it planned to do just that. We noted: 

The likelihood-of-expansion factor is pivotal 

in non-competing products cases such as this. 

One of the chief reasons for granting a 

trademark owner protection in a market not 

his own is to protect his right someday to 

enter that market. When it appears extremely 

likely, as it does here, that the trademark 

owner will soon enter the defendant's field, 

this final factor weighs heavily in favor of 

injunctive relief. 

Id. (citation omitted). We noted the purpose of the ten-factor 

analysis was to determine likelihood of confusion in those cases 

where the trademark owner had not yet entered the defendant's 

market. The factors are of importance here, where the markets 

for peat moss and fertilizer overlap slightly, but are not in 

direct competition. The two products are often used together. 

Fisons has not yet entered the consumer fertilizer market, but 

claims it has plans to do so and introduced evidence to that 

effect. 

B. Reverse Confusion
16 

 Plaintiffs under the Lanham Act also rely on "reverse 

confusion" or "dilution" of trademark theories that have been 

adopted by a number of other courts of appeal.0 Ordinarily, one 

expects that the new or junior user of the mark will use to its 

advantage the reputation and good will of the senior user by 

adopting a similar or identical mark. Reverse confusion occurs 

when a larger, more powerful company uses the trademark of a 

smaller, less powerful senior owner and thereby causes likely 

confusion as to the source of the senior user's goods or 

services. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 

F.2d 947 (7th Cir. 1992) (Quaker Oats Co.'s use of "Thirst-Aid" 

in advertising for Gatorade was trademark infringement of 

"Thirst-Aid" registered trademark owned and formerly used by 

small Vermont company); Banff, Ltd. v. Federated Dep't Stores, 

Inc., 841 F.2d 486 (2d Cir. 1988) (marketer of women's clothing 

with unregistered trademark "Bee Wear" could enjoin Bloomingdales 

from using term "B-Wear" in its stores and on its clothes); 

Ameritech, Inc. v. American Information Technologies Corp., 811 

F.2d 960 (6th Cir. 1987) (use by defendant holding company for 

five midwestern Bell telephone companies of unregistered trade 

name and mark of plaintiff, a small Ohio corporation that 

reclaimed industrial oils, might cause consumers to assume 

plaintiff was subsidiary of defendant); Capital Films Corp. v. 

Charles Fries Productions, Inc., 628 F.2d 387 (5th Cir. 1980) 

 

0While we have not previously adopted these theories, in Lapp, we 

spoke of protecting the market for expansion by a senior user of 

a trademark, one of the considerations in reverse confusion. See

Lapp, 721 F.2d at 464. 
17 

(reverse confusion doctrine could be applied where defendants, 

including American Broadcasting Company, planned to produce movie 

on Lee Harvey Oswald bearing same title as movie produced by 

small production company); Big O Tire Dealers, Inc., v. Goodyear 

Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977) (reverse 

confusion occurs where "infringer's use of plaintiff's mark 

results in confusion as to origin of plaintiff's product"). In 

reverse confusion, 

the junior user saturates the market with a 

similar trademark and overwhelms the senior 

user. The public comes to assume the senior 

user's products are really the junior user's 

or that the former has become somehow 

connected to the latter. The result is that 

the senior user loses the value of the 

trademark -- its product identity, corporate 

identity, control over its goodwill and 

reputation, and ability to move into new 

markets. 

Ameritech, 811 F.2d at 964. 

 Without the recognition of reverse confusion, smaller 

senior users would have little protection against larger, more 

powerful companies who want to use identical or confusingly 

similar trademarks. 

 The logical consequence of [failing to 

recognize reverse confusion] would be the 

immunization from unfair competition 

liability of a company with a well 

established trade name and with the economic 

power to advertise extensively for a product 

name taken from a competitor. If the law is 

to limit recovery to passing off, anyone with 

adequate size and resources can adopt any 

trademark and develop a new meaning for that 

trademark as identification of the second 

user's products. 
18 

Big O Tire Dealers, 561 F.2d at 1372 (quoting Big O Tire Dealers 

v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219, 1236 (D. Colo. 

1976)). 

 Although we have not yet adopted the doctrine of 

reverse confusion in a trademark case, we do so here and endorse 

the statement of the United States Court of Appeals for the 

Second Circuit: 

The objectives of [the Lanham] Act -- to 

protect an owner's interest in its trademark 

by keeping the public free from confusion as 

to the source of goods and ensuring fair 

competition -- are as important in a case of 

reverse confusion as in typical trademark 

infringement. Were reverse confusion not a 

sufficient basis to obtain Lanham Act 

protection, a larger company could with 

impunity infringe the senior mark of a 

smaller one. Consequently, we hold that 

reverse confusion . . . is actionable under 

§43(a) of the Lanham Act. 

Banff, 841 F.2d at 490-91 (citation omitted). 

III. 

 On appeal, Fisons contends the district court 

misapplied the relevant law in finding there was little 

likelihood of confusion.0 We have jurisdiction under 28 U.S.C. § 

1291. 

 

0We review the district court's findings of fact for clear error, 

Sheet Metal Workers Int'l Assn., Local 19 v. 2300 Group, Inc., 

949 F.2d 1274, 1278 (3d Cir. 1991), and exercise plenary review 

over its interpretation, application and conclusions of law. 

Tudor Dev. Group v. United States Fidelity & Gaur. Co., 968 F.2d 

357, 359 (3d Cir. 1992). We review the cross-appeal of a denial 

of attorneys' fees under the Lanham Act for abuse of discretion. 

Standard Terry Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 782 

(3d Cir. 1986). 
19 

 In this case, the mark is registered and incontestible, 

so plaintiff had to show only likelihood of confusion to be 

entitled to relief. Because the goods in question are not in 

direct competition, the district court applied the ten-factor 

test of Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 

1983). The district court found "purchasers of ordinary 

intelligence" were unlikely to confuse the Fisons' Fairway 

trademark with Vigoro's Fairway Green mark. On appeal, Fisons 

contends the court misapplied the Lapp factors and should have 

applied the law of reverse confusion. 

 In its analysis of the likelihood of confusion, the 

district court combined some of the ten factors set out in Ford 

Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 293 (3d 

Cir. 1991) and Lapp and omitted others. We follow its outline 

and note the corresponding Lapp factors in parentheses. 

A. Channels of Trade and Evidence of Actual Confusion (Lapp

factors (6), (4), (7), (8) and (3)). 

 The district court stated: 

 These two products, fertilizer and peat 

moss, are sold in similar channels of trade, 

including retail home and garden supply 

stores, and they are directed to the same or 

similar purchasers, homeowners who do their 

own lawn and garden care. With Vigoro 

placing its product in the market in August 

of 1992, and having implemented an extensive 

plan for promotion and advertising in that 

market, one would have expected that, if 

there were a substantial risk of actual 

confusion in the market place, the plaintiff 

would have come forward at the trial in July 
20 

of 1991 with some evidence of that actual 

confusion. It did not. 

Fisons Horticulture, slip op. at 8. Although acknowledging the 

channels of trade (Lapp factor (7)) and the target audience (Lapp

factor (8)) were the same or similar, the district court did not 

weigh these similarities in Fisons' favor. Instead, it appeared 

to assume that because of these similarities, plaintiff should 

have been able to collect and present evidence of actual 

confusion (Lapp factor 6)) if there had been any risk or 

likelihood of confusion. Because plaintiff did not present such 

evidence, the court apparently failed to count the similarities 

in channels of trade and target audience in Fisons' favor. The 

district court misapplied the law here. In Lapp, we did not 

discount the strength of plaintiff's case in one area because of 

weakness in another; we weighed each factor separately.0 More 

importantly, while evidence of actual confusion would strengthen 

plaintiff's case, it is not essential. As we stated in Lapp, 

"Once a trademark owner demonstrates likelihood of confusion, it 

is entitled to injunctive relief." Lapp, 721 F.2d at 462. 

 Furthermore, the district court's conclusion that any 

evidence of actual confusion (Lapp factor (6)) would have 

appeared in the time the two products were on the market (Lapp

 

0This is not to say that all factors must be given equal weight. 

The weight given to each factor in the overall picture, as well 

as its weighing for plaintiff or defendant, must be done on an 

individual fact-specific basis. Not all of the factors are 

present in every case. We have emphasized the importance of 

similarity of the marks in likelihood of confusion, Ford Motor 

Co., 930 F.2d at 293, but we have not ranked the factors 

otherwise. 
21 

factor (4)) may not be warranted in this case. The district 

court stated that Vigoro had placed its product in the market in 

August, 1991, a year before the start of the trial, but that 

finding was in error. August, 1991 was the date of the trade 

show when Vigoro first displayed its new product, not the date of 

distribution to retail outlets or even to distributors. The 

fertilizer was not shipped to distributors until January 1992 and 

probably was not offered to consumers until a month or more after 

that. The test is the likelihood of confusion from the 

perspective of ordinary consumers, not from the perspective of 

people in the trade. See Ford Motor Co., 930 F.2d at 297. By 

the start of trial, the product had been available to consumers 

for less than six months. 

 When parties have used similar marks for a sufficient 

period of time without evidence of consumer confusion about the 

source of the products, there is an inference that future 

consumers will not be confused either. See e.g. Scott Paper, 589 

F.2d at 1230 (finding no likelihood of confusion in part because 

"defendant's mark had been utilized . . . for over forty years 

without any evidence of actual confusion."). In this case, the 

district court will have to reevaluate Lapp factor (4) in light 

of the fact that Vigoro's produce was not available to consumers 

until the winter or spring of 1992. In addition, the court 

should take into account that the products were ones consumers 
22 

spend little time and care in selecting; in the case of such 

products, confusion as to their origin may pass unnoticed.0

B. Similarity of the Two Marks (Lapp factor (1)). 

 As we have said, degree of similarity of the marks may 

be the most important of the ten factors in Lapp. Ford Motor 

Co., 930 F.2d at 293. In considering this factor, the district 

court noted the obvious similarities in Fisons' and Vigoro's 

marks. "Both include the word fairway. Both attempt to 

associate the product with golf, and both do so by using a 

package design that has a golf course green, a pin on the green 

and a red triangular flag on the pin [as opposed to the 

rectangular flag generally found on golf courses]." Fisons 

Horticulture, slip op. at 8. The court, however, declined to 

find these similarities confusing. It stated: 

 

0Because the products at issue represent a small investment for 

the consumer, this may not be a case in which actual confusion 

would readily manifest itself to a manufacturer. The products 

are not likely to malfunction. If the consumer thinks Fairway 

peat moss and Fairway Green fertilizer are produced by the same 

company, the manufacturers may not know. "Purchasers are unlikely 

to bother to inform the trademark owner when they are confused 

about an inexpensive product." Beer Nuts v. Clover Club Foods 

Co., 805 F.2d 920, 928 (10th Cir. 1986); see also Union Carbide 

Corp. v. Ever-Ready, Inc., 531 F.2d 366, 383 (7th Cir.), cert.

denied, 429 U.S. 830 (1976). 

 The court did not discuss Lapp factor (3), the price of 

the goods and other factors indicative of the care and attention 

expected of ordinary consumers when making a purchase. The 

greater the care and attention, the less the likelihood of 

confusion. Although the district court made no finding on this 

factor, there was uncontested evidence in the record that 

consumers spend little time and attention deciding which of the 

low-cost products to buy in this market. 
23 

[W]hile the two marks incorporate the word 

[fairway]0, they do so in ways that suggest 

somewhat different things. Fairway suggests 

a thing or a place, a golf course fairway. 

Fairway Green suggests a color, the color of 

a golf course fairway (although including a 

drawing of a golf course green on the package 

may lead one to associate Fairway Green with 

the green on a golf course). The names alone 

do not, therefore suggest a risk of 

confusion. 

Id. at 8-9 (footnote added). The court went on to note that 

while there were some similarities in the packaging, the 

differences in design, color, and materials were so substantial 

they tended to differentiate the products and sellers.0 Id. at 

9. 

 The fact that there may be some differences in what the 

two names suggest is not alone enough to conclude the names are 

not confusingly similar. Vigoro's use of Fisons' entire 

trademark, "Fairway," in an arc over a descriptive word, "green," 

suggests a likelihood of confusing similarity. "[A] subsequent 

user may not avoid likely confusion by appropriating another's 

entire mark and adding descriptive or non-descriptive matter to 

it." J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair 

Competition, § 23:15[8] at 23-102 (3d ed. 1992). Vigoro contends 

that courts have not recognized such a rule explicitly, but this 

court and others have recognized it implicitly. In Lapp, we 

 

0The district court's opinion used the word "green" here, but it 

must have meant "fairway," because both marks contain only one 

common word, "fairway." 

0Fisons pointed out the similarities in the pictures of golf 

course greens on the packages, but made no claim for trade dress 

infringement. However, similarity in trade dress is "highly 

probative" of likelihood of confusion. Ford Motor Co., 930 F.2d 

at 297. 
24 

found the trademarks "Lapp" and "Lapp Cable" identical for all 

practical purposes. 721 F.2d at 463. See also Tree Tavern 

Products, Inc. v. Conagra, Inc., 640 F.Supp. 1263, 1270 (D. Del. 

1986) ("[S]imilarity between the marks 'Side Dish' and 'Banquet 

Side Dish for One' is obvious"); Country Floors, Inc. v. Gepner, 

930 F.2d 1056 (3d Cir. 1991) (where dominant portions of two 

marks, "Country Floors" and "Country Tiles," are the same, 

confusion is likely). Here, the similarity of marks resembles 

that in Lapp. As Fisons correctly noted, trademark infringement 

does not require exact copying of the trademark as the owner uses 

it. "The marks need not be identical, only confusingly similar." 

Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., 963 F.2d 

628, 636 (3d Cir. 1992) (quoting Country Floors, 930 F.2d at 

1063). They are confusingly similar if ordinary consumers would 

likely conclude that Fairway peat moss and Fairway Green 

fertilizer share a common source, affiliation, connection or 

sponsorship. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 

F.2d 947, 957 (7th Cir. 1992); see also International Kennel 

Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1089 (7th Cir. 

1988); M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 449 (4th Cir. 

1986). 

 In analyzing the appearance of the products, as in 

analyzing their names, the district court did not seem to focus 

on the overall impression. As the United States Court of Appeals 

for the Second Circuit stated, the test for determining the 

similarity of the marks is "whether the labels create the 'same 

overall impression' when viewed separately." Banff, Ltd. v. 
25 

Federated Dep't Stores, Inc., 841 F.2d 486, 492 (2d Cir. 1988) 

(citations omitted). See American Auto. Ass'n. v. AAA Ins. 

Agency, Inc., 618 F. Supp. 787, 792 (W.D.Tex. 1985) (In 

determining whether two marks are confusingly similar, 

appropriate test is not side-by-side comparison of marks, the 

emphasizing differences in detail, but whether average consumer, 

on encountering one mark in isolated circumstances of marketplace 

and having only general recollection of the other, would likely 

confuse or associate the two.) In Ford Motor Co., 930 F.2d at 

293, we stated: 

 Perhaps the most important of these [10] 

factors is the first on the Scott Paper list: 

the degree of similarity between the two 

marks. We recently held that "if the overall 

impression created by marks is essentially 

the same, 'it is very probable that the marks 

are confusingly similar.'" 

Id. at 293. 

 We conclude the district court misapprehended the legal 

standard when it undertook a detailed analysis of the differences 

in the marks rather than focusing on the overall impression 

created by them. 
26 

C. Strength of the Fairway Mark (Lapp factor (2)). 

 The district court credited Fisons' evidence of 

strength of its mark: that the mark was incontestible within the 

meaning of the Lanham Act, 15 U.S.C. §§ 1058, 1065,0 that it was 

a strongly suggestive mark bordering on being arbitrary, and that 

it had been in use for thirty years. However, the court 

concluded: 

 This list of examples of the strength of 

the Fisons mark is not particularly 

compelling evidence of risk of confusion. 

Fisons has not, for example, shown that its 

FAIRWAY mark is uncommon, or contains an 

unusual use of the word; nor has it shown 

that it has built up the strength of the mark 

over the years with a substantial economic 

investment that can be confirmed by evidence 

of a depth of consumer awareness of the mark 

and its product. Fisons' failure to offer 

this evidence undermines its argument that 

FAIRWAY is, in fact, a strong mark. 

Fisons Horticulture, slip op. at 10. Fisons contends the 

district court applied incorrect standards in ignoring its 

evidence of strength and using other tests for the strength of 

its mark. Fisons argues its mark qualifies for protection 

because of its distinctiveness. Trademark law recognizes 

categories of marks based on their levels of inherent 

distinctiveness. From least to most distinctive, they are: (1) 

generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) 

fanciful.0 Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753, 

 

0For the meaning of "incontestible" under the Lanham Act, see, 

supra, n. 7. 

0Sometimes, only four categories are used, with arbitrary and 

fanciful grouped together. See e.g. Dranoff-Perlstein Assoc. v. 

Sklar, 967 F.2d 852, 855 (3d Cir. 1992). 
27 

2757 (1992). The latter three categories are deemed "inherently 

distinctive" and are entitled to protection. Id. The word 

"green" is so common that it has no trademark significance when 

applied to lawn and garden products, but there was expert 

testimony, which the district court accepted, that the term 

"Fairway" was either suggestive or arbitrary.0 It could 

therefore qualify for protection. 

 The district court focused on Fisons' failure to show 

that its mark, "Fairway," was uncommon or contained an unusual 

use of the word. The fact that a word is common does not 

necessarily make it weak or unworthy of protection as a 

trademark; the district court's focus on an unusual use of the 

word is closer to mark. As the United States Court of Appeals 

for the Sixth Circuit stated, "The significant factor is not 

whether the word itself is common, but whether the way the word 

is used in a particular context is unique enough to warrant 

trademark protection." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 

1190 n.4 (6th Cir. 1988). The words "shell," "camel" and "apple" 

are not uncommon, but they are arbitrary when applied to 

gasoline, cigarettes and computers. 1 McCarthy on Trademarks, 

 

0Arbitrary trademarks are ones that do not describe any quality 

or characteristic of the goods or services for which they are 

used. The mark "V-8" on juice made from eight different 

vegetables was held to be arbitrary. Standard Brands, Inc. v. 

Smidler, 151 F.2d 34 (2d Cir. 1945). As a result of advertising, 

consumers came to associate the mark with such a drink, but 

without advertising, no one could have reasonably expected 

consumers to associate V-8 with a vegetable juice cocktail. Id.; 

see also 1 McCarthy on Trademarks § 11.04[1]. 
28 

§11:26[3].0 Similarly, the term "Fairway," is not uncommon, but 

when applied to peat moss, Fisons' expert stated it ranked 

between arbitrary and suggestive on the scale of distinctiveness. 

Fisons therefore presented evidence that its use of the common 

term was unusual enough that it could qualify for trademark 

protection. 

 Distinctiveness on the scale of trademarks is one 

measure of a mark's strength. See, e.g., Nutri/System Inc. v. 

Con-Stan Industries, Inc., 809 F.2d 601, 605 (9th Cir. 1987). 

Commercial strength, or marketplace recognition of the mark, is 

another. See e.g. Ford Motor Co., 930 F.2d at 297. Vigoro 

contends the registration and use of "Fairway" as a trademark by 

third parties for related products and services undermines 

Fisons' claim of the strength of its mark. O.M. Scott registered 

a trademark, "Super Fairway," for commercial fertilizer in 1989, 

and six other companies have active or pending registrations of 

marks using the term "Fairway" for grass seed, lawn and garden 

machinery and equipment, and lawn services. While other 

registrations and uses of Fairway for related products and 

services would make the mark less strong if they were in the same 

market, their use in different markets and for products and 

services that are not closely related does not necessarily 

undermine Fisons' claim of strength. 

 

0McCarthy refers to the conclusion that a common word is 

automatically "weak" as a trademark as the 'Common Word' fallacy. 

1 McCarthy on Trademarks § 11.26[3]. 
29 

 The district court found Fisons had not demonstrated it 

had built up consumer awareness of the mark and its product 

through substantial investment and concluded Fisons' failure to 

offer evidence of commercial strength "undermines its argument 

that FAIRWAY is, in fact, a strong mark." Fisons Horticulture, 

slip op. at 10. If this were a case of forward confusion, rather 

than reverse confusion, the district court would be correct in 

giving considerable weight to evidence of commercial strength, or 

its absence. 

 But in a case of reverse confusion, the evidence of 

commercial strength is different from what we expect in a case of 

forward confusion, where the junior user tries to palm off his 

goods as those of the senior user. In forward confusion, the 

junior user trades on the senior user's good name; it is 

therefore saved much of the expense of advertising to create 

market recognition of its mark. In reverse confusion, the junior 

user is typically a wealthier, more powerful company who can 

overwhelm the market with advertising. An aggressive junior user 

may thereby achieve greater commercial strength in a short period 

of time than the senior user has after years of marketing its 

product. See, e.g., Big O Tire Dealers, Inc. v. Goodyear Tire & 

Rubber Co., 561 F.2d 1365, 1367-68 (10th Cir. 1977) (in one year, 

defendant Goodyear spent over $9,690,000 in massive, nationwide 

promotional campaign using "Bigfoot" trademark of plaintiff, a 

small tire-buying organization with total net worth of $200,000). 

"The result is that the senior user loses the value of the 

trademark -- its product identity, corporate identity, control 
30 

over its goodwill and reputation, and ability to move into new 

markets." Ameritech, Inc. v. American Information Technologies 

Corp., 811 F.2d 960, 964 (6th Cir. 1987). In one year, Vigoro 

spent over $500,000 on advertising its new product, Fairway 

Green. That is approximately the amount of Fisons' total yearly 

sales of Fairway peat moss. 

 Fisons' Fairway mark was strong on the scale of 

trademarks and in active use when Vigoro started using the 

Fairway Green mark, but it was commercially weak. The district 

court, in treating this case like one of forward confusion, put 

great emphasis on the lack of commercial strength of Fisons' mark 

and virtually none on its distinctiveness. In reverse confusion, 

the mark of the senior user is typically weaker commercially than 

that of the junior user. On remand, the strength of Fisons' mark 

will have to be reevaluated in light of our adoption of reverse 

confusion and its distinctiveness as well as its commercial 

strength will have to be considered. 

D. Vigoro's Intent in Adopting the Mark (Lapp factor (5)). 

 The district court had the following to say about 

Vigoro's intent: 

The relevant intent inquiry in a likelihood 

of confusion case is "whether the defendant 

adopted a mark with the intent of promoting 

confusion and appropriating the prior user's 

good will." W.W.W. Pharmaceutical Co., Inc. 

v. The Gillette Co., 23 U.S.P.Q.2d 1609, 1619 

(S.D.N.Y. 1992), aff'd, 1993 U.S. App. LEXIS 

1051 (2d Cir. 1993). There is no proof that 

Vigoro adopted the name Fairway green in an 

attempt to benefit from the general good will 

developed by Fisons in its FAIRWAY mark. 
31 

Fisons Horticulture, slip op. at 10. 

 While the inquiry the district court identifies as the 

"relevant intent inquiry" is important, it is appropriate to 

cases of forward confusion, not reverse confusion. In the latter 

type of case, the junior user does not seek to trade on the good 

will and name of the senior user; instead he overwhelms it. 

 The intent inquiry appropriate to this case is more 

like one we identified in Lapp in relying on the district court's 

finding that Lapp, "while it may have acted innocently, was 

careless in not conducting a thorough name search for American 

uses of the name." Lapp, 721 F.2d at 463. The questions the 

district court should consider here are whether Vigoro conducted 

an adequate name search for other companies marketing similar 

goods under trademarks including the name "Fairway," and whether 

it followed through with its investigation when it found there 

were such companies. Did Vigoro consider the likelihood of 

confusion with other companies' marks and products (as opposed to 

considering the likelihood that someone would contest its new 

mark)? Did it attempt to contact companies using a similar mark, 

such as Fisons? Was Vigoro careless in its evaluation of the 

likelihood of confusion? 
32 

E. Fisons' Plans to Enter the Market (Lapp factor (10)). 

 The district court found: 

 Fisons currently sells fertilizer in 

Canada. At the trial it offered some 

evidence that it had plans to expand that 

business into the United States. There was 

not sufficient evidence on this point to 

suggest that this possibility should be a 

factor in an analysis of a risk of possible 

likelihood of confusion. 

Fisons Horticulture, slip op. at 10. As this factor appears in 

Lapp, it includes "other facts suggesting that the consuming 

public might expect the prior owner to manufacture a product in 

the defendant's market, or that it is likely to expand into that 

market." 721 F.2d at 463-64. The district court considered only 

evidence of planned expansion, the second part of the test. Such 

a narrow view is not warranted. 

 Under Lapp, the court looks not only at the likelihood 

of expansion, but also at facts "suggesting the consuming public 

might expect the prior owner to manufacture a product in the 

defendant's market." 721 F.2d at 463. In a case of reverse 

confusion, it may also consider facts suggesting the consuming 

public might expect the junior owner to manufacture a product in 

the senior user's market. One fact suggesting this possibility 

is that other companies market both products. Fisons presented 

evidence that the market leader, O.M. Scott, sold both peat moss 

and fertilizer under the same brand name, Hyponex. In addition, 

three other lawn and garden companies in this country, Kellog, 

Gandini and Fertiloam sell both peat moss and fertilizer under 

the same brand name. Therefore, the public is used to seeing 
33 

both fertilizer and peat moss marketed under the same name by the 

same company. 

 Second, the products are closely related and are used 

together in preparing lawns and gardens. Even if other companies 

did not market both products, the consuming public might find it 

natural for one company to do so. See, e.g., International 

Kennel Club, 846 F.2d at 1089 (fact that parties' products are 

the kind the public might very well attribute to the same source 

provides additional evidence of likelihood of confusion). 

 Finally, there is Fisons' evidence of planned 

expansion. In Lapp, we stated: 

One of the chief reasons for granting a 

trademark owner protection in a market not 

his own is to protect his right someday to 

enter that market. 2 J.T. McCarthy, 

Trademarks and Unfair Competition § 24:5 

(1973). When it appears extremely likely, as 

it does here, that the trademark owner will 

soon enter the defendant's field, this . . . 

factor weighs heavily in favor of injunctive 

relief. 

Lapp, 721 F.2d at 464. In Lapp, where the evidence showed 

expansion to be extremely likely, the factor weighed heavily in 

plaintiff's favor. If there is evidence of expansion, but it is 

less strong, it will weigh less heavily in plaintiff's favor. 

F. Relationship of the Goods (Lapp factor (9)). 

 The district court did not consider this factor, "the 

relationship of the goods in the minds of consumers because of 

the similarity of function." Fisons' peat moss and Vigoro's 

fertilizer are both sold as soil conditioners and meant to be 
34 

used for the same purpose: to improve the soil for planting. The 

question is whether the consumer might therefore reasonably 

conclude that one company would offer both of these related 

products. In Scott Paper, 589 F.2d at 1230, we noted other cases 

in which the relationship of the products was close enough to 

lead to the likelihood of confusion and the relationship of those 

products: Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 

1167, 1173 (2d Cir. 1976) (women's scarves and apparel with 

women's cosmetics and fragrances); James Burrough Ltd. v. Sign of 

Beefeater, Inc., 540 F.2d 266, 275 (7th cir. 1976) (liquor with 

restaurant selling liquor); Union Carbide Corp. v. Ever-Ready, 

Inc., 531 F.2d 366, 381-82 (7th Cir.), cert. denied, 429 U.S. 830 

(1976) (batteries and lamps with light bulbs and lamps); Alfred 

Dunhill of London, Inc. v. Kasser Distillers Products Corp., 350 

F. Supp. 1341 (E.D. Pa. 1972), aff'd without opinion, 480 F.2d 

917 (3d cir. 1973) (pipe tobacco and bar accessories with scotch 

whisky). See Scott Paper, 589 F.2d at 1230. 

 In Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th 

Cir. 1988), the court analyzed this factor under the category, 

"Relatedness of the Goods." It assessed the relatedness of the 

car care products one company sold to consumers and the bulk car 

wax for use in car washes and the car washing service another 

company sold under an essentially similar trademark. The court 

noted the test was whether the goods were similar enough that a 

consumer could assume they were offered by the same source. The 

court concluded, "A consumer who was used to buying CLASSIC 

products to wash his or her car could easily assume that the 
35 

makers of CLASSIC products had expanded into the car wash 

business." 839 F.2d at 1187. 

 In this case, the question is whether a consumer who 

bought Fisons' peat moss could reasonably assume that the company 

had expanded its offerings to include fertilizer or, as would be 

more likely in this case of reverse confusion, whether a consumer 

who bought or saw the advertising for Fairway Green fertilizer 

could reasonably assume that the same source also offered the 

Fairway peat moss it saw in the stores. 

G. Weighing the Factors

 Of the ten factors set out in Ford Motor Co. and Lapp

for determining the likelihood of confusion, the district court 

misapplied some and did not consider others. On remand, it 

should consider each of the factors and weigh each in a manner 

consistent with this opinion and with the other case law. 

H. State Law Claims

 The district court concluded that Fisons' Lanham Act 

claims failed because there was no likelihood of confusion and, 

therefore, its state law claims failed as well. Because the 

court will reconsider the likelihood of confusion on remand, it 

should also reconsider Fisons' state law claims. 

IV. 

 For reasons stated above, we will reverse the judgment 

of the district court as to Fisons' claims under the Lanham Act 

and remand for a new trial on those claims and the state law 
36 

claims.0 We will affirm the judgment of the district court 

denying Vigoro's claim for attorneys' fees as a prevailing party 

under the Lanham Act. 

Fisons Horticulture v. Vigoro Industries

No. 93-7224 and 93-7287 

GARTH, Circuit Judge, concurring in part and dissenting in part: 

 The majority opinion has convincingly analyzed this 

appeal under Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 

F.2d 1225 (3d Cir. 1978) and Interpace Corp. v. Lapp, 721 F.2d 

460 (3d Cir. 1983). While I am in wholehearted agreement with 

the majority that we must reverse the district court's ruling on 

the merits,0 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, I would reverse the decision of the 

district court, enter judgment in favor of Fisons on its Lanham 

Act claims, and remand with instructions that the district court 

fashion the appropriate relief, and consider Fisons' state 

claims. 

 

0We recognize that an extensive record has already been developed 

in this case. We will leave it to the sound discretion of the 

district court to determine whether any additional evidence is 

appropriate. 

0 I also agree with the majority that we must affirm the 

district court's denial of Vigoro's request for attorneys' fees 

inasmuch as Vigoro is no longer the prevailing party under 15 

U.S.C. § 1117. 
37 

I 

 The majority's able opinion not only details the 

analysis required in Lanham Act cases, but also applies that 

analysis to the record before us on appeal. Typically, having 

found error in the district court's application of the Lapp

analysis, we would reverse and remand to the district court with 

instructions to take actions consistent with the foregoing 

opinion. 

 Nevertheless, I see little need to do so in the present 

case. Judge Scirica's majority opinion already has performed the 

Scott Paper/Lapp analysis and the requisite balancing. That 

analysis can lead to only one conclusion: that the district court 

erred in ruling for Vigoro on the merits of Fisons' Lanham Act 

claims. 

 Although we have held that a district court's finding 

of similarity does not necessarily compel a conclusion that two 

marks are confusingly similar, Merchant & Evans, Inc. v. 

Roosevelt Building Products Co., Inc., 963 F.2d 628, 636 (3d Cir. 

1992); Country Floors, Inc. v. Gepner, 930 F.2d 1056, 1065 (3d 

Cir. 1991), we also have held that "[p]erhaps the most important 

of [the] factors is the first on the Scott Paper list: the degree 

of similarity between the two marks." Ford Motor Co. v. Summit 

Motor Products, Inc., 930 F.2d 277, 293 (3d Cir. 1991). In 

Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 

187, 195 (3d Cir. 1990), we held that, "if the overall impression 

created by the marks is essentially the same, 'it is very 
38 

probable that the marks are confusingly similar.'" (Citation 

omitted). 

 As the majority recognizes, in analyzing the appearance 

of the products at issue here, the district court failed to focus 

on their overall impression. Maj. Op. typescript at 25. One 

need only look at the marks themselves to conclude that they are 

so similar that one can only wonder how an ordinary consumer of 

the goods could be anything but confused by the parties' 

indistinguishable use of the FAIRWAY mark. The packaging of the 

products, the prominent use of the word "Fairway," and the 

inclusion of a triangular flag rising from a tee centered on a 

golfing green, are, for all intents and purposes, virtually 

identical as to both products. Under Ford Motor Co. and 

Opticians Association of America, this similarity all but creates 

a presumption of the requisite likelihood of confusion. 

 Consequently, I see no point in ordering the district 

court to revisit this trademark controversy in its entirety, and 

compelling the parties to spend additional time, money, and 

efforts on re-litigating the Scott Paper/Lapp factors, when the 

conclusion to which the district court must come has been 

outlined so effectively in the majority's opinion. 

II 

 Accordingly, I would reverse the district court's order 

and remand with the direction that the district court enter 

judgment for Fisons on its Lanham Act claims. On remand, then, 

the district court would have to do no more than fashion the 
39 

appropriate relief (i.e., frame an injunction, assess damages, 

impose or not impose attorneys' fees, costs, interest, etc.) and 

resolve Fisons' state law claims, which the district court failed 

to address adequately in its initial decision. Because the 

majority would dispose of this appeal in a manner which I believe 

is wasteful of judicial resources, I dissent from so much of the 

majority's opinion as would remand to the district court for 

retrial of Fisons' Lanham Act claims.