FILED

United States Court of Appeals

Tenth Circuit

August 28, 2008

Elisabeth A. Shumaker

Clerk of Court

PUBLISH

UNITED STATES COURT OF APPEALS

TENTH CIRCUIT

THE JOHN ALLAN COMPANY,

Plaintiff - Appellant,

v. No. 07-3193

THE CRAIG ALLEN COMPANY

L.L.C.; CRAIG ALLEN TATRO;

ERIK DAVID LESCHUK,

Defendants - Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF KANSAS

(D.C. NO. 05-CV-1150-MLB)

Kenneth L. Bressler, Blank Rome LLP, New York, New York (Charles E. Millsap

and Lyndon W. Vix, Fleeson, Gooing, Coulson & Kitch, L.L.C., Wichita, Kansas,

with him on the briefs), for Plaintiff - Appellant.

Todd N. Tedesco, (James M. Armstrong with him on the brief), Wichita, Kansas,

for Defendants - Appellees.

Before MURPHY, HOLLOWAY, and O’BRIEN, Circuit Judges.

MURPHY, Circuit Judge.
-2-

I. Introduction

The John Allan Company initiated a trademark infringement lawsuit against

The Craig Allen Company pursuant to the Lanham Act, 15 U.S.C. §§ 1114 and

1125(a). The case was tried before the district court. It concluded the use of the

name “Craig Allen’s” for a grooming salon in Wichita, Kansas did not infringe on

the mark “John Allan’s.” Exercising jurisdiction pursuant to 28 U.S.C. § 1291 we

reverse and remand for further proceedings.

II. Background

In 1988, John Allan Meing opened a men’s grooming salon near Wall

Street in New York City. The salon, John Allan’s, was designed to provide salon

services for men in a club-like environment. Since that time, the company has

grown. At the time of the bench trial, The John Allan Company operated two

club locations and two smaller non-clubs in New York City. The salons are

furnished with leather chairs at styling stations as well as antique barber chairs

where patrons sit while receiving a hot towel treatment and shoe shine. The

salons are equipped with a pool table, bar, and, until recently, a cigar room. 

Patrons wear black smoking jackets while at John Allan’s, and the employees

wear black smocks, decorated with the salon’s logo. In addition to its salons, The

John Allan Company markets its grooming products nationwide. In 1996, it

registered the mark “John Allan’s & JA Circle Design” for “men’s and women’s
1

The John Allan Company owns a total of four federally registered service

marks, including the J.A. Circle Design and the mark “A Return to A Simpler

Time.” In addition to the J.A. Circle Design, The John Allan Company also used

an unregistered trademark consisting of the circular design, without the name of

the salon. Craig Allen’s also used a similar mark. The district court concluded

John Allan’s had a protectable mark and the defendants infringed on the mark. In

this opinion we refer to any mark including the circle design as the J.A. Circle

Design. 

2

On appeal, the defendants, at times, spell Leschuk’s first name “Erick.” 

The district court and the Notice of Appeal, however, refer to Defendant Leschuk

by the name “Erik” and we therefore use this spelling.

-3-

haircutting services, namely haircutting, manicures, facials, and massage services;

retail counter in the field of hair and skin products” (the “J.A. Circle Design”).1

The Craig Allen Company opened a men’s salon, “Craig Allen’s,” in

Wichita, Kansas after its owners visited John Allan’s in New York. The owners

of The Craig Allen Company, Craig Allen Tatro and Erik Leschuk,2

 settled on the

name “Craig Allen’s” after learning about John Allan’s. The duo hired a designer

to create a logo for Craig Allen’s and provided the designer with materials created

by The John Allan Company. Although the designer expressed concerns about

copying another mark, Tatro and Leschuk suggested they were working with John

Allan’s, and thus had permission to use a similar design. The result was a logo,

nearly identical to the trademarked J.A. Circle Design:
-4-

Further, Craig Allen’s shared many of the features of John Allan’s clubs,

including outside windows with frosted glass embossed with the Craig Allen

Circle Design logo (“C.A. Circle Design”) and the phrase “A Return to A Simpler

Time,” which also appeared on the frosted windows of John Allan’s clubs. Craig

Allen’s also provided black smoking jackets for its patrons to wear and was

furnished with leather chairs, antique barber chairs for hot towel treatments, a

bar, and a pool table.

In 2005, attorneys representing The John Allan Company contacted The

Craig Allen Company concerning the alleged trademark infringement. Tatro and

Leschuck ultimately removed the C.A. Circle Design from everything in Craig

Allen’s as well as the protected slogans from the windows. They also created a

new logo:

The interior design and furnishings, however, were not changed. Nor did Craig

Allen’s change its name.

The John Allan Company sought injunctive relief for, inter alia, the

defendant’s use of the name “Craig Allen’s,” including the name “The Craig

Allen Company, LLC” and the original C.A. Circle Design. The district court
3

Here, the mark “John Allan’s” is unregistered, and thus The John Allan

Company was required to show the mark is protectable. Utah Lighthouse

Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1050 (10th

Cir. 2008). The district court found “John Allan’s” had acquired a secondary

meaning and was therefore a protectable mark. The Craig Allen Company does

not challenge this finding on appeal nor do we find any error in the district

court’s conclusion. 

-5-

concluded the C.A. Circle Design infringed on The John Allan Company’s J.A.

Circle Design. It declined, however, to enjoin Craig Allen’s use of the C.A.

Circle Design, finding it was unnecessary as the defendants had expended more

than $20,000 to change to its new logo. Unlike the logo, the court concluded the

use of the name “Craig Allen’s” did not infringe on the unregistered mark “John

Allan’s.”

On appeal, The John Allan Company argues the district court erred in (1)

finding the Craig Allen’s mark does not infringe on the John Allan’s mark; and

(2) failing to apply the “safe distance rule” to enjoin the use of the Craig Allen’s

mark based on the conclusion that the Craig Allen’s Circle Design infringed John

Allan’s Circle Design.

III. Alleged Infringement of “John Allan’s” Mark

The Lanham Act prohibits, in connection with any good or service, the

unauthorized use or misleading representation of “any word, term, name, symbol,

or device” in a way that “is likely to cause confusion, or to cause mistake, or to

deceive.” 15 U.S.C. § 1125(a)(1)(A).3

 “Confusion occurs when consumers make

an incorrect mental association between the involved commercial products or
-6-

their producers.” Jordache Enter. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th

Cir. 1987) (quotation omitted). Further, confusion results when a mark is likely

to deceive purchasers or users as to the source, endorsement, affiliation, or

sponsorship of a product. 15 U.S.C. § 1125(a)(1)(A); see also Amoco Oil Co. v.

Rainbow Snow, 748 F.2d 556, 559 (10th Cir. 1984). Whether the use of a mark

will result in a likelihood of confusion, and thus violate the Lanham Act, is a

question of fact we review for clear error. Heartsprings, Inc. v. Heartspring, Inc.,

143 F.3d 550, 553 (10th Cir. 1998). In an appeal from a bench trial, we review

the district court’s legal conclusions de novo. Keys Youth Servs., Inc. v. City of

Olathe, 248 F.3d 1267, 1274 (10th Cir. 2001).

To determine whether a likelihood of confusion exists, this court examines

six, non-exhaustive, factors: 

(1) the degree of similarity between the marks; (2) the intent of the

alleged infringer in adopting the mark; (3) evidence of actual

confusion; (4) similarity of products and manner of marketing; (5)

the degree of care likely to be exercised by purchasers; and (6) the

strength or weakness of the marks.

Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002). No one

factor is dispositive. Id. Nevertheless, “the final determination of likelihood of

confusion must be based on consideration of all relevant factors.” Heartsprings,

Inc., 143 F.3d at 554. “The party alleging infringement has the burden of proving

likelihood of confusion.” Utah Lighthouse Ministry, 527 F.3d at 1055. 
-7-

The John Allan Company argues the district court committed clear error in

light of evidence that actual confusion existed and of Craig Allen’s intent to copy

its marks. Specifically, it contends the district court committed clear error (1) by

failing to apply a rebuttable presumption based on evidence that the defendants

intended to confuse customers and (2) refusing to find a likelihood of confusion

based on evidence that consumers were confused. Although the district court

need not apply a rebuttable presumption based on a finding of intent to copy, it

did err by failing to consider evidence that consumers were confused by the two

names of the salons. The district court’s opinion also contains internal

inconsistencies complicating several of its findings and requiring a remand.

A. The District Court’s Internally Inconsistent Findings

In its assessment of the six factors, the district court found three factors

weighed in the favor of The John Allan Company: the similarity of the marks,

albeit only slightly weighing in the plaintiff’s favor; the intent to copy; and the

strength of the mark. It found two factors were neutral, weighing in favor of

neither the plaintiff nor the defendants: the similarity of products and manner of

marketing; and the degree of care exercised by consumers. Finally, it found The

John Allan Company had not presented any evidence of actual confusion, and that

weighed in favor of the defendants, The Craig Allen Company. It then concluded,

however:
-8-

After reviewing all of the applicable factors, the court

finds that a likelihood of confusion does not exist between the

mark John Allan’s and Craig Allen’s. While there is some

similarity and John Allan’s does have a protectable mark, the

other factors are neutral or weigh in favor of the defendants. 

The court is reluctant to find that the use of Tatro’s middle

name, and a common one at that, violates the plaintiff’s mark

without a stronger showing by plaintiff. See Sardi’s Rest.

Corp. v. Sardie, 755 F.2d 719, 725 (9th Cir. 1985); Brennan’s,

Inc. [v. Brennan’s Restaurant, L.L.C.], 360 F.3d [125], 131-32

[(2d Cir. 2004)].

This conclusion is inconsistent with the court’s previous findings that three

factors weighed in favor of The John Allan Company, while only one factor, the

absence of actual confusion, weighed in favor of The Craig Allen Company. 

Initially, the court found that the defendants “purposefully used the mark

Craig Allen’s to take advantage of plaintiff’s goodwill” and therefore concluded

that The Craig Allen Company intended to copy the mark “John Allan’s.” It

stated, “[t]he fact that Craig Allen’s was named after one of the partners, Craig

Allen Tatro, seems too coincidental given defendants’ purposeful copying of

plaintiff’s registered marks and other features of plaintiff’s salons.” The district

court then proceeded to ignore this finding in resolving that Tatro’s use of his

own name, without more, was insufficient to establish a trademark violation. 

“Evidence that the alleged infringer chose a mark with the intent to copy, rather

than randomly or by accident, typically supports an inference of likelihood of

confusion.” Utah Lighthouse Ministry, 527 F.3d at 1055. The focus is on

whether the defendant sought “to derive benefit from the reputation or goodwill
4

Evidence of intent to copy does not create a rebuttable presumption of

likelihood of confusion, thereby shifting the burden to the defendant, as The John

Allan Company argues. Instead, the intent of the alleged infringer remains but

one factor in our analysis. A finding that the infringer intended to copy may lead

to an inference of confusion, even a strong inference, but the inference is a

permissive one. See Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 973 (10th

Cir. 2002) (“Proof that a defendant chose a mark with the intent of copying the

plaintiff’s mark may, standing alone, justify an inference of likelihood of

confusion.” (emphasis added)); Jordache Enter. Inc. v. Hogg Wyld, Ltd., 828 F.2d

1482, 1485 (10th Cir. 1987) (“A conscious choice of a mark similar to a mark

already in the marketplace usually supports a finding of likelihood of confusion

. . . .” (emphasis added)); Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d

920, 927 (10th Cir. 1986) (explaining “deliberate adoption of a similar mark may

lead to an inference of intent to pass off goods as those of another which in turn

supports a finding of likelihood of confusion” (emphasis added)).

-9-

of the plaintiff.” Universal Money Ctrs., Inc. v. AT&T, 22 F.3d 1527, 1532 (10th

Cir. 1994) (quotation omitted). In refusing to enjoin the use of the name Craig

Allen’s, the district court wholly ignored its prior finding that The Craig Allen

company sought to benefit from the reputation and goodwill of John Allan’s.4

Although this court will not set aside findings of fact unless clearly

erroneous, internally inconsistent findings constitute clear error. See Mendiola v.

United States, 994 F.2d 409, 410 (7th Cir. 1993) (“Findings are clearly erroneous

if the trial court’s interpretation of the facts is implausible, illogical, internally

inconsistent, or contradicted by documentary or other extrinsic evidence.”). Thus,

further proceedings in the district court are necessary. Mor-Cor Packaging

Prods., Inc. v. Innovative Packaging Corp., 328 F.3d 331, 336 (7th Cir. 2003)

(remanding on basis of internally inconsistent findings in the district court).
-10-

The district court appears to have given substantial weight to the fact

“Allen” is Craig Tatro’s middle name. Courts are generally reluctant to enjoin an

individual from using their own name. See E. & J. Gallo Winery v. Gallo Cattle

Co., 967 F.2d 1280, 1288 (9th Cir. 1992). This reluctance, however, “does not

extend to cases where there has been an attempt to confuse the public.” Id.

(upholding injunction on use of mark “Gallo” on retail cheese packages where

defendant intended to capitalize on reputation and selling power of Gallo

Winery). Because the district court found The Craig Allen Company chose the

name Craig Allen’s “to take advantage of plaintiff’s goodwill,” its reluctance was

misplaced. As the Second Circuit explained:

[I]f an individual enters a particular line of trade for no apparent

reason other than to use a conveniently confusing surname to his

advantage, the injunction is likely to be unlimited. 

If, however, the second comer owns the company himself and

evinces a genuine interest in establishing an enterprise in which his

own skill or knowledge can be made known to the public, that argues

in favor of allowing him to use his own name in some restricted

fashion. 

Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731, 735 (2d Cir. 1978)

(citations and footnote omitted). Notably, the two cases upon which the district

court relied were factually inapposite: both cases included findings that the junior

user acted in good faith and had not attempted to appropriate the name to take
5

The Craig Allen Company admits Tatro “had no previous experience in the

men’s grooming industry” and does not suggest it is entitled to use the name

“Allen” based on Tatro’s reputation.

-11-

advantage of the senior user’s reputation or goodwill. See Brennan’s Inc., 360

F.3d at 130; Sardi’s Rest. Corp., 755 F.2d at 722.5

 

The Craig Allen Company fails to cite to any precedent where a junior user

was permitted to use his given name in spite of an intent to benefit from the

reputation and goodwill of the senior user. On remand, the district court must

properly weigh the use of Tatro’s first and middle name, with its finding that The

Craig Allen Company’s adoption of the name “Allen” “seems too coincidental

given defendants’ purposeful copying of plaintiff’s registered marks and other

features of plaintiff’s salons.” Part of this process will require consideration of

Tatro’s historical failure to use the name “Allen” in a personal or professional

capacity. Cf. Brennan’s Inc., 360 F.3d at 131-32.

B. Actual Confusion

The district court also erred in its findings related to actual confusion. It

found that The John Allan Company “failed to establish actual confusion as to the

John Allan’s Mark.” The appellant argues that the district court ignored evidence

of actual confusion and this finding is therefore clear error. “Actual confusion in

the marketplace is often considered the best of evidence of likelihood of

confusion.” Universal Money Ctrs., 22 F.3d at 1534. A plaintiff, however, “need

not set forth evidence of actual confusion to prevail in a trademark infringement
-12-

action.” King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084,

1092 (10th Cir. 1999). A court may disregard as de minimis isolated instances of

actual confusion. Id. 

The John Allan Company presented evidence from two witnesses who

testified about the confusion between the salons’ names. Although one witness,

Steve Alvarez, appears to have been primarily confused by the logo, he also

testified the name Allan’s/Allen’s was a source of his confusion:

Q: What role in that mental process of formulating those

associations did the fact that both businesses were using the

second name Allan’s/Allen’s in their business play in you

arriving at [the conclusion that Craig Allen’s was associated

with or a franchise of The John Allan Company]?

A: After the logo, it was the second indicator that they were

connected.

Q: How did the fact that both of these businesses decided to use

the name Allan’s/Allen’s as the second name of their business

affect you when you first saw a written depiction of this new

Wichita business?

A: I was excited that something as neat as in New York was

coming to Wichita; that it was a great opportunity.

A second witness, Chad Green, testified he was confused by the similarity

of the name Allan’s/Allen’s. He testified:

Q: Did you have any impression of John Allan’s when you went

in the first time to have your full service?

A: I thought it was very similar to Craig Allen’s as far as the look

and feel inside. 
-13-

It looked classy; leather chairs, the same as Craig

Allen’s; a bar, the same as Craig Allen’s; a pool table,

the same as Crag Allen’s; et cetera.

Q: Did you speak to anybody at John Allan’s about Craig Allen’s?

A: Yes.

Q: Do you recall that conversation?

A: It was a very short conversation. It was with my stylist.

Q: Do you recall what you said to her?

. . . .

A: I said, “This place is a lot like Craig Allen’s. Is it owned by

the same person?” She said, “No.”

. . . .

Q: When you asked the stylist whether John Allan’s and Craig

Allen’s were owned by the same people, what led you to

believe that they were owned by the same people?

A: The name was the first thing that came to mind. I thought

maybe it was a chain, maybe they were brothers, something

like that.

Here, the district court limited its inquiry and did not consider the potential

for confusion created by an appearance that the two salons had a common

sponsorship or affiliation. Amoco Oil Co., 748 F.2d at 559; see also First Sav.

Bank F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 652 (10th Cir. 1996)

(explaining “the ultimate question is whether” the use of a mark is “likely to

cause consumers to believe there is an affiliation” between the parties). The
-14-

district court misapplied federal law by solely focusing its analysis on whether the

evidence established “that the companies were the same.” Green’s testimony

clearly established he was confused as to affiliation, which is probative of actual

confusion under our precedent. Alvarez’s testimony also indicated the use of the

name Allan’s/Allen’s confused him as to whether the two salons had a common

sponsorship or affiliation. Although this evidence may be de minimis, we leave

this determination for the district court to make in the first instance, on remand. 

Likelihood of confusion is a question of fact and it is therefore within the district

court’s province to determine how this evidence factors into its findings. See

Heartsprings, Inc., 143 F.3d at 553.

IV. Injunctive Relief

The John Allan Company also challenges the district court’s refusal to

enjoin The Craig Allen Company’s use of the mark “Craig Allen’s” based on its

findings that Craig Allen’s Circle Design infringed on John Allan’s Circle

Design. We review a district court’s decision to issue or deny a permanent

injunction for an abuse of discretion. Harolds Stores, Inc. v. Dillard Dept.

Stores, Inc., 82 F.3d 1533, 1555 (10th Cir. 1996). “A district court abuses its

discretion when it issues an arbitrary, capricious, whimsical, or manifestly

unreasonable judgment.” Prairie Band Potawatomi Nation v. Wagnon, 476 F.3d

818, 822 (10th Cir. 2007) (quotation omitted). Pursuant to the Lanham Act, the

district court has the “power to grant injunctions, according to the principles of
-15-

equity and upon such terms as the court may deem reasonable, to prevent . . . a

violation [of the Act].” 15 U.S.C. § 1116(a). 

The John Allan Company invokes the “safe distance rule,” which was

created to protect against defendants, found to have infringed upon a trademark

from 

preserv[ing] . . . good will acquired through fraud. The due

protection of [trademark] and similar rights requires that a

competitive business, once convicted of unfair competition in a given

particular, should thereafter be required to keep a safe distance away

from the margin line—even if that requirement involves a handicap

as compared with those who have not disqualified themselves.

Taubman Co. v. Webfeats, 319 F.3d 770, 779 (6th Cir. 2003) (quotation omitted). 

Like the original infringement itself, the safe distance rule is “founded on a

likelihood of confusion standard.” Id. Where confusion lingers, the infringer

must “not only [] secure a new non-infringing name (or other infringing

characteristic) for his product, but [choose] one so far removed from any

characteristic of the plaintiff so as to put the public on notice that the two are not

related.” Id.

In this case, the district court concluded The Craig Allen Company

infringed on three of John Allan’s protected marks: the J.A. Circle Design (both

the logo by itself and the logo with John Allan’s name) and the mark “A Return to

A Simpler Time.” The district court declined to enjoin The Craig Allen Company

from using these marks, however, because it found “[d]efendants ceased using
-16-

these marks approximately two years ago and expended more than $20,000 to

effect the changes.” It therefore concluded it was “highly unlikely . . . defendants

will return to using the plaintiffs marks.” The John Allan Company does not

appeal this determination. Nor does it argue The Craig Allen Company is

continuing to use these offending marks with only minor modifications. Instead,

it suggests the district court had a legal obligation to apply the safe distance rule

to enjoin the defendant’s use of the name “Craig Allen’s” even if it found there

was no likelihood of confusion with respect to the name. 

The John Allan Company misperceives the safe distance rule. Even if the

rule is applicable, it does not create a legal duty under which The Craig Allen

Company is obligated to act. See Badger Meter, Inc v. Grinnell Corp., 13 F.3d

1145, 1155-56 (7th Cir. 1994) (explaining the safe distance rule “addresses the

evidentiary issues of how carefully a district court must scrutinize new trade dress

of a prior infringer, not . . . the issue of the infringer’s legal duty to the first

user”). Although a district court may require a prior infringer to choose a mark

that avoids all possibilities of confusion, it is “not required as a matter of law to

do so.” Id. at 1156. The district court was well within its discretion to deny The

Craig Allen Company injunctive relief on these grounds. On remand, however,

should the district court determine the mark “Craig Allen’s” creates a likelihood

of confusion with “John Allan’s,” the court should revisit the issue of whether

injunctive relief is necessary.
-17-

V. Conclusion

For the foregoing reasons, this court reverses the judgment of the district

court and remands for further proceedings consistent with this opinion.