2001 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

10-19-2001

Checkpoint Sys Inc v. Check Point Software

Precedential or Non-Precedential:

Docket 00-2373

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Recommended Citation

"Checkpoint Sys Inc v. Check Point Software" (2001). 2001 Decisions. Paper 244.

http://digitalcommons.law.villanova.edu/thirdcircuit_2001/244
Filed October 19, 2001 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No. 00-2373 

CHECKPOINT SYSTEMS, INC., 

 Appellant 

v. 

CHECK POINT SOFTWARE TECHNOLOGIES, INC. 

On Appeal from the United States District Court 

for the District of New Jersey 

D.C. Civil Action No. 96-cv-03153 

(Honorable Jerome B. Simandle) 

Argued April 5, 2001 

Before: SCIRICA, AMBRO and GIBSON,* 

Circuit Judges 

(Filed October 19, 2001) 

ROBERTA JACOBS-MEADWAY, 

 ESQUIRE (ARGUED) 

Akin, Gump, Strauss, Hauer & Feld 

One Commerce Square, Suite 2200 

2005 Market Street 

Philadelphia, Pennsylvania 19103 

 Attorney for Appellant 

_________________________________________________________________ 

* The Honorable John R. Gibson, United States Circuit Judge for the 

Eighth Judicial Circuit, sitting by designation. 
 BRUCE P. KELLER, ESQUIRE 

 (ARGUED) 

 Debevoise & Plimpton 

 919 Third Avenue 

 New York, New York 10022 

 Attorney for Appellee 

OPINION OF THE COURT 

SCIRICA, Circuit Judge. 

In this Lanham Act case, plaintiff Checkpoint Systems, 

Inc. alleges Check Point Software Technologies, Inc. 

infringed on its trademark and engaged in unfair 

competition in violation of 15 U.S.C. SS 1114, 1125(a). 

Finding no likelihood of confusion between Checkpoint 

Systems's and Check Point Software's marks, the District 

Court found no Lanham Act violation. We will affirm. 

I. 

A. 

Plaintiff Checkpoint Systems, Inc. has been 

manufacturing and distributing commercial electronic 

security control systems since 1967.1 Its devices are 

designed to track the physical location of goods and are 

sold to retailers to prevent merchandise theft. It is one of 

the two dominant manufacturers in the retail security 

products market. Since 1967 Checkpoint Systems has used 

the "CHECKPOINT" mark, which is registered with the

United States Trademark office.2 

_________________________________________________________________ 

1. Our recitation of the facts will be brief. A more detailed discussion 

may be found in the District Court opinion. Checkpoint Sys., Inc. v. 

Check Point Software Techs., Inc., 104 F. Supp. 2d 427 (D.N.J. 2000). 

2. Over thirty-three years of business, Checkpoint Systems has acquired 

several other companies and after each acquisition it has changed the 

marks of these companies to Checkpoint Systems. 

 2 
Checkpoint Systems primarily sells four types of security 

monitoring devices: (1) electronic article surveillance 

systems; (2) access control systems; (3) closed circuit 

television systems; and (4) radio frequency identification 

devices. Its principal and most successful products are 

electronic article surveillance systems designed to alert 

retailers when items are removed from confined areas. 

Primarily used to prevent theft of merchandise from stores 

and books from libraries, these systems consist of circuited 

tags, electronic sensors, and deactivation equipment. The 

systems work by placing circuited tags on merchandise 

which are deactivated at the time of sale. If the tags are not 

deactivated, an alarm sounds. Electronic article 

surveillance systems cost between $2000 and $5000, plus 

the cost of individual tags. A large retail chain, including 

many of Checkpoint Systems's current clients, may spend 

over $20 million a year on this technology. 

Checkpoint Systems also manufactures electronic access 

control systems in the form of security cards that permit 

selected personnel to have access to restricted areas. 

Checkpoint Systems intends to use these electronic access 

control systems to make "smart cards" that will enable logon access to computers and will facilitate monitoring of 

physical access to restricted areas. This product was in the 

development stage when this lawsuit commenced. 

Checkpoint Systems also sells closed circuit television 

systems that monitor activity within confined areas and 

transfer data to remote locations for employee audit and 

inventory management security teams. Although these

systems currently transfer data and images over traditional 

telephone lines, Checkpoint Systems intends to transfer 

this data over customers' computer networks. These closed 

circuit products can be integrated with other computer 

systems, including other security application programs. 

In 1997, Checkpoint Systems began developing radio 

frequency identification devices with the view to creating 

"intelligent tags" for merchandise to carry information on 

"merchandise history." This radio technology would permit 

greater information storage than currently available on 

traditional bar code technology. These systems cost from 

$80,000 to $140,000. 

 3 
The sale of electronic article surveillance systems to 

retail, industrial, institutional and government users 

comprises 90% of Checkpoint Systems's business. 

Revenues for article surveillance systems amounted to 

$365-380 million in 1999; revenues for access control 

systems were $15 million. Checkpoint Systems's electronic 

article surveillance systems have a 30% market share, but 

its systems dominate the drug store segment with a 70% 

market share. Its largest competitor is Sensormatic

Electronic Corporation, which has a 45% share of the 

overall market. 

Checkpoint Systems promotes its products primarily 

through its direct sales force, trade shows, direct mailings 

to security systems dealers and its internet website. It 

spends $8 million annually on advertising and marketing. 

The trade shows in which it advertises are targeted to 

security professionals and retailers. Checkpoint Systems 

concentrates its print advertising in two magazines: Security3 

and Today's Facility Manager. 

The "CHECKPOINT" trademark is displayed prominently

on all of Checkpoint Systems's products including all 

security tags, sensors, computer screens and access control 

cards. Checkpoint Systems is a public company whose

stock is traded on the New York Stock Exchange under the 

symbol "CKP." 

B. 

Defendant Check Point Software Technologies, Inc. writes 

computer programs that protect and manage access to

information. Check Point Software's principal product is 

"firewall" technology. Firewalls are computer systems that 

prevent unauthorized internal or external entry into 

computer networks. Check Point Software's firewall systems 

regulate data by acting as a screen between a business's 

private computer networks (intranets) and the wider

Internet. These systems are sophisticated software 

_________________________________________________________________ 

3. Security magazine is marketed to security industry specialists and 

contains information about security hardware, security management and 

training issues, and information security. 

 4 
applications that cost $2,999 for a single firewall and 

hundreds of thousands of dollars for more complicated 

systems. Check Point Software firewall products must be 

installed and maintained by computer network information 

specialists. 

At the time Check Point Software was founded in Israel 

in 1993, its founders were unaware of Checkpoint Systems. 

They adopted the "Check Point" mark because they believed 

their computer firewall technology, which limited access to 

data, resembled military check points that prevent access 

to restricted areas. 

Check Point Software is recognized as a leader in the 

firewall market with 40% of the worldwide market share. In 

1997, it expanded its product line beyond network security 

products to include "network management products." This 

software enables customers to design their own computer 

network security programs that can be integrated with 

Check Point Software programs. Check Point Software also 

sells "private networking software" which enables 

consumers to encrypt internal data so that outside users in 

the wider internet community will be unable to access this 

data when transmitted over unsecured public channels. 

In its promotional materials, Check Point Software 

markets itself as active in the corporate security industry. 

Its products are installed as a part of the overall network 

design or "architecture" of a business's computer system. 

They are not functional software applications that can be 

purchased by a consumer and installed at will. 

Check Point Software uses "Check Point" as its trade 

name. It has used this mark in several manifestations 

including, "CHECK POINT," "Checkpoint," and 

"CHECKPOINT." 

Check Point Software promotes its network security 

products through trade shows, direct advertising, 

educational seminars, and its web site. The trade shows 

and seminars in which it advertises are targeted to the 

Internet and computer network markets. These exhibitions 

do not include physical security manufacturers or their 

products. It also advertises in two widely circulated 

computer trade magazines, PC Week and Network World. 

 5 
Its computer security programs are sold predominately to 

institutional and corporate clients. Check Point Software's 

principal competitors are computer companies like Cisco 

Systems and Network Associates. Check Point Software is a 

public company whose stock is traded on the NASDAQ 

under the symbol "CHKP." 

C. 

In early 1996, Checkpoint Systems attempted to register 

the internet domain name www.checkpoint.com, but 

discovered it was registered by Check Point Software. After 

its request to discontinue use was rebuffed, Checkpoint 

Systems filed suit alleging trademark infringement and 

unfair competition under the Lanham Act. In a non-jury 

trial, the District Court held Check Point Software neither 

violated the Lanham Act nor infringed Checkpoint 

Systems's trademark. Examining likelihood of confusion, 

the District Court applied the factors enumerated in 

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

1983), finding that only one factor--the strong similarity 

between the parties' marks--favored plaintiff Checkpoint 

Systems. With respect to the other Lapp factors, the court 

found the litigants operated in different and non-competing 

segments of the broad corporate security industry and that 

the level of consumer care in making purchasing decisions 

counseled against a finding of likely confusion. After 

determining the parties employed different marketing 

techniques in different industries, the court found there 

was no evidence that the two markets are converging. The 

court also found the few instances of misdirected 

correspondence and "minor degree of investor confusion" 

along with the failure to prove the existence of a single 

instance of a mistaken purchasing decision based on mark 

confusion weighed heavily against finding a Lanham Act 

violation. Additionally, the District Court held there was 

insufficient evidence of reverse confusion.4 

_________________________________________________________________ 

4. As we discuss, 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." Fisons Horticulture, Inc. v. Vigro Indus., Inc., 30 

F.3d 

466, 474 (3d Cir. 1994) (citing Sands, Taylor & Wood Co. v. Quaker Oats 

Co., 978 F.2d 947 (7th Cir. 1992)). 

 6 
In this appeal, Checkpoint Systems contends the District 

Court improperly evaluated the Lapp factors in its 

likelihood of confusion analysis. In particular, Checkpoint 

Systems argues the District Court improperly required 

evidence of actual consumer confusion at the point of sale 

and disregarded evidence of initial interest and investor 

confusion. 

II. 

The District Court had jurisdiction over plaintiff 's 

Lanham Act claims under 28 U.S.C. SS 1331, 1338(a) and 

15 U.S.C. S 1051 et seq. We have jurisdiction over the final 

judgment of the District Court under 28 U.S.C. S 1291. We 

exercise plenary review over the District Court's legal 

conclusions concerning the Lanham Act. Express Servs., 

Inc. v. Careers Express Staffing Servs., 176 F.3d 183, 185 

(3d Cir. 1999), cert. denied, 531 U.S. 1052 (2000). We 

review factual findings on the likelihood of confusion for 

clear error. A&H Sportswear Inc. v. Victoria's Secret Stores, 

Inc., 237 F.3d 198, 210 (3d Cir. 2000). 

III. 

Checkpoint Systems alleges Check Point Software 

engaged in unfair competition and trademark infringement 

in violation SS 32 and 43(a) of the Lanham Act when it 

adopted the Checkpoint mark.5 To prove trademark 

_________________________________________________________________ 

5. Section 32 of the Lanham Act, 15 U.S.C. S 1114, provides: 

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

 (a) use in commerce any reproduction, counterfeit, copy, or 

colorable 

 imitation of a registered mark 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 . . . . 

Section 43(a) of the Lanham Act, 15 U.S.C. S 1125, provides: 

 (a)(1) Any person who, on or in connection with any goods or 

 services . . . uses in commerce any word, term, name, symbol, or 
 7 
infringement and unfair competition under the Lanham 

Act, Checkpoint Systems must prove: (1) it owns the

Checkpoint mark; (2) the mark is valid and legally 

protectable; and (3) Check Point Software's use of the mark 

to identify goods or services is likely to create confusion. 

Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, 

Inc., 214 F.3d 432, 437-38 (3d Cir. 2000). Neither party 

disputes the first two elements.6 The issue on appeal is 

whether Check Point Software's use of the "CHECKPOINT" 

mark is likely to create confusion as to the source of the 

parties' products.7 Lapp, 721 F.2d at 462 ("The law of 

trademark protects trademark owners in the exclusive use 

of their marks when use by another would be likely to 

cause confusion."). To prove likelihood of confusion, 

plaintiffs must show that "consumers viewing the mark 

would probably assume the product or service it represents 

_________________________________________________________________ 

 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 is likely to be damaged by such act. 

6. In Commerce Nat'l Ins. Servs., Inc., we held, "[I]f the mark at issue 

is 

federally registered and has become incontestable, then validity, legal 

protectability and ownership are proved." 214 F.3d at 438 (citing Ford 

Motor Co. v. Summit Motor Prods., 930 F.2d 277, 292 (3d Cir. 1991)). 

Checkpoint Systems's mark has been registered and continuously used 

for five consecutive years and there are no pending proceedings 

contesting Checkpoint Systems's ownership of the mark. The 

"Checkpoint" mark is therefore valid and incontestable. Fisons, 30 F.3d 

at 472 n.7. 

7. As we recently held in A&H Sportswear, the relevant inquiry is not 

whether consumer confusion is a "possibility," but whether confusion is 

"likely." 237 F.3d at 198; see also Opticians Ass'n of Am. v. Indep. 

Opticians of Am., 920 F.2d 187, 195 (3d Cir. 1990) ("Proof of actual 
confusion is not necessary; likelihood is all that need be shown."). 

 8 
is associated with the source of a different product or 

service identified by a similar mark." Scott Paper Co. v. 

Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 

1978). In Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 

(3d Cir. 1983), we set forth the relevant standards on 

likelihood of confusion in noncompeting goods cases, 8 

commonly known as the Lapp factors: 

 (1) [The] degree of similarity between the o wner's mark 

 and the alleged infringing mark; 

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

 (3) the price of the goods and other factors indic ative 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; 

 (5) the intent of the defendant in adopting the ma rk; 

 (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 functions; and 

 (10) other facts suggesting that the consuming pub lic 

 might expect the prior owner to manufacture a product 

 in the defendant's market or that he is likely to expand 

 into that market. 

None of these factors is determinative in the likelihood of 

confusion analysis and each factor must be weighed and 

_________________________________________________________________ 

8. The multi-factor test used to determine likelihood of confusion 

between noncompeting goods should also be applied in cases involving 

directly competing goods. A&H Sportswear, 237 F.3d at 207 ("[W]e 

conclude that the factors we have developed in the noncompeting goods 

context are helpful tools and should be used to aid in the determination 

of the likelihood of confusion in other cases."). 

 9 
balanced one against the other. Fisons, 30 F.3d at 473 

("[N]ot . . all factors must be given equal weight. The weight 

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

weighing for plaintiff or defendant, must be done on an 

individual fact-specific basis."); see also A&H Sportswear, 

237 F.3d at 215 ("[T]he Lapp test is a qualitative inquiry. 

Not all factors will be relevant in all cases; further, the 

different factors may properly be accorded different weights 

depending on the particular factual setting."). We stated, 

 [W]here the plaintiff and defendant deal in non- 

 competing 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. 

Fisons, 30 F.3d at 473. 

As noted, the District Court applied the appropriate Lapp 

factors to find there was no likelihood of confusion. We will 

address the District Court's application of each factor.9 

A. Similarity of Marks -- Lapp Factor (1) 

Although the degree of similarity between the owner's 

mark and the alleged infringing mark is but one factor in 

the multi-factor confusion analysis, we have recognized that 

when products directly compete, mark similarity"may be 

the most important of the ten factors in Lapp ." Fisons, 30 

F.3d at 476; see also A&H Sportswear, 237 F.3d at 216 

("The single most important factor in determining likelihood 

of confusion is mark similarity."). As we held in Versa 

Prods. Co. v. Bifold Co. (Mfg.), 50 F.3d 189, 202 (3d Cir. 

1995), "unless the allegedly infringing mark . . . is 

substantially similar to the protectable mark . . ., it is 

highly unlikely that consumers will confuse the product 

_________________________________________________________________ 

9. Our analysis follows a somewhat different sequence than that 

employed in Lapp. The sequence specified in Lapp is not necessary to the 

likelihood-of-confusion analysis, and we have found that a slightly 

different order better facilitates the analysis of the particular issues 

presented by this case. 

 10 
sources represented by the different marks.""[I]f the overall 

impression created by marks is essentially the same,`it is 

very probable that the marks are confusingly similar.' " 

Opticians Assn. of Am., 920 F.2d at 195 (quoting J. Thomas 

McCarthy, 2 McCarthy on Trademarks and Unfair 

Competition, S 23:7 (2d ed. 1984)). In applying this test, 

courts attempt to "move into the mind of the roving

consumer," A&H Sportswear, 237 F.3d at 216, and 

determine "whether the labels create the same overall 

impression when viewed separately." Fisons , 30 F.3d at 

476; see also Banff, Ltd. v. Federated Dep't Stores, Inc., 841 

F.2d 486, 492 (2d Cir. 1988). Courts must "compare the 

appearance, sound and meaning of the marks," Harlem

Wizards Entm't. Basketball, Inc. v. NBA Props., Inc. , 952 F. 

Supp. 1084, 1096 (D.N.J. 1997), to determine whether the 

"average consumer, on encountering one mark in isolated 

circumstances of marketplace and having only [a] general 

recollection of the other, would likely confuse or associate 

the two." Fisons, 30 F.3d at 477-78. 

Here, the District Court found Check Point Software's 

mark was very similar to Checkpoint Systems's mark. The 

court noted that "[w]hen the dominant portions of the two 

marks are the same and the overall impression created by 

the marks is essentially the same `it is very probable that 

the marks are confusingly similar.' " Checkpoint Sys., 104 

F. Supp. 2d at 457-58 (quoting Opticians Assn. of Am., 920 

F.2d at 195). The court found the dominant portion of each 

parties' trademark is the word "Checkpoint." Even though 

Check Point Software has at times used the mark in 

slightly different forms including, "Checkpoint," 

"CheckPoint," or "Check Point," the dominant features of its 

mark are still the words "check" and "point." Additionally 

because "Systems," "Software," "Technologies," and "Inc.," 

are generic or descriptive terms, the District Court found 

their addition to the dominant terms "check" and "point" 

would not lead the average consumer to disassociate the 

products. J. Thomas McCarthy, 3 McCarthy on Trademarks 

and Unfair Competition, S 23:50 (4th ed. 2000) ("The 

Trademark Board has said that the general rule is that a 

subsequent user may not avoid likely confusion by 

appropriating another's entire mark and adding descriptive 

or non-descriptive matter to it."). We agree. The District 

 11 
Court did not clearly err in finding the overall commercial 

impression of the parties' marks was confusingly similar. 

On appeal, Checkpoint Systems contends the District

Court ignored its finding of mark similarity when it 

ultimately determined there was no likelihood of confusion. 

But mark similarity is not necessarily determinative of 

likely confusion, particularly when the products do not 

directly compete. A&H Sportswear, 237 F.3d at 214 

("[W]hen the marks directly compete . . . the factor 

regarding the similarity of marks may increase in 

importance, but it does not eliminate the other factors 

entirely."); Fisons, 30 F.3d at 473 ("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."). Here, the District 

Court determined that in weighing all the Lapp factors, 

there was not a strong likelihood of confusion. We see no 

error. 

B. Strength of Mark -- Lapp Factor (2) 

Courts have recognized that 

 [a] strong trademark is . . . one that carries 

 widespread, immediate recognition that one producer 

 (even if unknown) is associated with the mark, and so 

 with the product. If a second comer adopts a mark 

 substantially identical to a strong mark, there is a 

 correspondingly high likelihood that consumers will 

 mistakenly associate the newcomer's product with the 

 owner of the strong mark. 

Versa Prods., 50 F.3d at 203. 

The strength of a mark is determined by (1) the 

distinctiveness or conceptual strength of the mark and (2) 

its commercial strength or marketplace recognition. Fisons, 

30 F.3d at 478-79. Under distinctiveness, we look at the 

inherent features of the mark. Trademarks protected under 

the Lanham Act are divided into four categories: 

 [1] arbitrary or fanciful marks [that] use terms that 

 neither describe nor suggest anything about the 

 product; they "bear no logical or suggestive relation to 

 12 
 the actual characteristics of the goods." [2] Suggestive 

 marks [that] require consumer "imagination, thought 

 or perception" to determine what the product is.[3] 

 Descriptive terms [that] "forthwith convey[ ] an 

 immediate idea of the ingredients, qualities or 

 characteristics of the goods" [and] [4] generic marks 

 . . . that "function as the common descriptive name of 

 a product class." 

A&H Sportswear, 237 F.3d at 221-22(quoting A.J. Canfield 

Co. v. Honickman, 808 F.2d 291, 296-97 (3d Cir. 1986)). 

In Ford Motor Co., we further explained the categorization 

of marks stating, 

 Arbitrary marks are "those words, symbols, pictures, 

 etc., which are in common linguistic use but which, 

 when used with the goods or services in issue, neither 

 suggest nor describe any ingredient, quality or 

 characteristic of those goods or services." . . . 

 Suggestive marks are virtually indistinguishable from 

 arbitrary marks, but have been defined as marks 

 which suggest a quality or ingredient of goods . . .. A 

 mark is considered descriptive if it describes the 

 "intended purpose, function, or use of the goods; of the 

 size of the goods, of the class of users of the goods, or 

 of the end effect upon the user." 

930 F.2d at 292 n.18 (quoting 1 McCarthy, Trademarks 

and Unfair Competition at S11:3-5, 20). 

While generic marks do not receive trademark protection, 

arbitrary, suggestive and descriptive marks with a 

demonstrated secondary meaning10 are entitled to 

_________________________________________________________________ 

10. But marks that are merely descriptive (without a secondary meaning) 

are generally weak and not entitled to strong protection. A mark is 

descriptive with a secondary meaning when the mark 

 "is interpreted by the consuming public to be not only an 

 identification of the product or services, but also a 

representation of 

 the origin of those products of services." In general [a secondary 

 meaning] is established through extensive advertising which creates 

 in the minds of consumers an association between the mark and the 

 provider of the services advertised under the mark. 

 13 
trademark protection.11 

The District Court found Checkpoint Systems's mark was 

either suggestive or descriptive with a secondary meaning 

within the electronic article surveillance market. We see no 

error. The mark is suggestive to the extent it requires 

consumer imagination to determine that Checkpoint 

Systems's security products serve as "check points" to 

prevent unauthorized access and theft of merchandise. But 

the mark is descriptive insofar as its products serve as 

checkpoints. That is, they occupy a point at which 

customers are checked for stolen merchandise or people are 

_________________________________________________________________ 

Commerce Nat'l Ins. Serv. Inc., 214 F.3d at 438 (quoting Scott Paper Co., 

589 F.2d at 1228); see also Ford Motor Co., 930 F.2d at 292 (listing a 

"non-exclusive list of factors which may be considered [in determining 

whether a mark has achieved a secondary meaning,] includ[ing] the 

extent of sales and advertising leading to buyer association, length of 

use, exclusivity of use, the fact of copying, customer surveys, customer 

testimony, the use of the mark in trade journals, the size of the 

company, the number of sales, the number of customers, and actual 

confusion."); Charles Jacquin Et Cie, Inc. v. Destileria Serralles, Inc., 

921 

F.2d 467, 476 (3d Cir. 1990) ("While consumer surveys are useful, and 

indeed the most direct method of demonstrating secondary meaning and 

likelihood of confusion, they are not essential where, as here, other 

evidence exists."). 

11. In A&H Sportswear, we recently held, 

 Although the conceptual strength of a mark is often associated with 

 the particular category of "distinctiveness" into which a mark 

falls 

 (i.e., arbitrary, suggestive, or descriptive), that is not the only 

 measure of conceptual strength. This is because the classification 

 system's primary purpose is to determine whether the mark is 

 protectable as a trademark in the first place--that is, to 

determine 

 whether consumers are likely to perceive the mark as a signifier of 

 origin, rather than as a mere identification of the type of 

product. 

 The classification of a mark as arbitrary, suggestive, or 

descriptive 

 is [also] . . . used to determine the degree of protection a mark 

 should receive once protectability has been established. These two 

 inquiries--whether a mark is, in fact, a trademark, versus how 

 much protection the mark should receive--are often identical, but 

 they do not have to be. 

237 F.3d at 222. 
 14 
checked for authorization to access restricted areas. In 

either event, the mark has achieved a strong secondary 

meaning in the physical article security market. Checkpoint 

Systems has spent millions of dollars in advertising its 

physical article security systems and the mark has 

achieved high recognition among consumers in this market. 

The District Court was therefore correct in stating, 

"Checkpoint [Systems] has used its name and mark in

connection with its electronic article surveillance products 

for more than thirty years continuously, extensively, and in 

a substantially exclusive manner, and that long use

renders the mark strong within the physical surveillance 

field." Checkpoint Sys., 104 F. Supp. 2d at 458. 

The mark has not, however, attained a strong secondary 

meaning in other segments of the corporate security

market, particularly in the information technology market. 

There is no evidence that Checkpoint Systems spent a 

substantial amount of resources in advertising in this 

market, nor is there any evidence that Checkpoint Systems 

has achieved mark recognition in this segment of the 

industry.12 Because Checkpoint Systems's descriptive mark 

has not attained a secondary meaning within the 

information technology market, it is not conceptually strong 

within this sector of the corporate security market. The 

District Court found that Checkpoint Systems's mark"may 

be strong, but that strength does not appear to extend 

beyond its own subfield of physical security with respect to 

electronic article surveillance." 104 F. Supp. 2d at 460. 

This finding is adequately supported in the record.

Although Checkpoint Systems manufactured other 

products aside from physical article surveillance systems, 

the court found these products constituted a very small 

portion of its business. Its mark was not readily 

recognizable by consumers outside the electronic article 

surveillance market and there is "no evidence that any 

witness from the information security field had ever heard 

of [Checkpoint Systems]." Id. 

_________________________________________________________________ 

12. As the District Court noted, Checkpoint Systems "did not present 

any evidence of a customer survey indicating [its] marks' strength, and 

thus there is no direct evidence probative of customer views." 104 F. 

Supp. 2d at 460. ` 

 15 
Plaintiffs claim the District Court erred in its commercial 

strength analysis because it undervalued the overwhelming 

strength of the Checkpoint Systems mark in the article 

surveillance market. But the District Court held, properly 

in our view, that courts must look at the strength of the 

mark in the industry in which infringement is alleged. See, 

e.g., Homeowners Group, Inc., 931 F.2d at 1107-08 ("[A 

mark] may . . . have high recognition which is limited to a 

particular product or market segment."); Mead Data Cent., 

Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 

(2d Cir. 1989) (luxury car maker could not demonstrate 

that its powerful mark extended to the completely unrelated 

market of legal research tools); IDV N. Am., Inc. v. S&M 

Brands, Inc., 26 F. Supp. 2d 815, 824 (E.D.Va. 1998) ("A 

mark may be strong in the market in which it is used but 

weak in another market in which it is not used."). Here, the 

alleged infringement extends beyond the physical article 

security field into other, broader segments of the security 

industry, including computer security. The District Court 

did not clearly err in finding that Checkpoint Systems's 

mark's strength was limited to the physical article security 

market. Because the mark was not strong in the network 

access security market, it was not entitled to heightened 

protection within that market. 

C. Factors Indicative of the Care and Sophistication of 

Purchasers -- Lapp Factor (3) 

When consumers exercise heightened care in evaluating 

the relevant products before making purchasing decisions, 

courts have found there is not a strong likelihood of 

confusion. Where the relevant products are expensive, or 

the buyer class consists of sophisticated or professional 

purchasers, courts have generally not found Lanham Act 

violations. Versa Prods., 50 F.3d at 204 ("Inexpensive goods 

require consumers to exercise less care in their selection 

than expensive ones. The more important the use of the 

product, the more care that must be exercised in its 

selection."). As a leading treatise notes, 

 Obviously, the price level of the goods or services is an 

 important factor in determining the amount of care the 

 reasonably prudent buyer will use. If the goods or 

 16 
 services are relatively expensive, more care is taken 

 and buyers are less likely to be confused as to source 

 or affiliation. 

3 McCarthy on Trademarks, S 23:95; see also Astra Pharm. 

Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 

1206-07 (1st Cir. 1983) (expensive health care equipment 

elevated concern of purchasers). Similarly, 

 [w]here the relevant buyer class is composed solely of 

 professional, or commercial purchasers, it is 

 reasonable to set a higher standard of care than exists 

 for consumers. Many cases state that where the 

 relevant buyer class is composed of professionals or 

 commercial buyers familiar with the field, they are 

 sophisticated enough not to be confused by trademarks 

 that are closely similar. That is, it is assumed that 

 such professional buyers are less likely to be confused 

 than the ordinary consumer. 

3 McCarthy on Trademarks, S 23:101; see also Ford Motor 

Co., 930 F.2d at 293 ("Professional buyers, or consumers of 

very expensive goods, will be held to a higher standard of 

care."); Perini Corp. v. Perini Constr., Inc. , 915 F.2d 121, 128 

(4th Cir. 1990) ("[I]n a market with extremely sophisticated 

buyers, the likelihood of consumer confusion cannot be 

presumed on the basis of the similarity in trade name 

alone."); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 

173-74 (5th Cir. 1986) (business purchasers of expensive 

products not likely to confuse goods with similar marks). 

When the purchasing class is mixed, courts normally do 

not hold the general class to a high standard of care. Ford 

Motor Co., 930 F.2d at 293 ("When the buyer class is 

mixed, the standard of care to be exercised by the 

reasonably prudent purchaser will be equal to that of the 

least sophisticated consumer in the class."). If there is 

evidence that both average consumers and specialized 

commercial purchasers buy goods, there is a lower 

standard of care because of the lack of sophistication of 

some of the relevant purchasers. Id. ("Where the buyer 

class `consists of both professional buyers and consumers 

then the issue will center on the consumers, for confusion 

within the lowest stratum of reasonably prudent buyers 

 17 
may give rise to liability even if professional buyers in the 

market are not confused.' ") (quoting Worthington Foods, 

Inc. v. Kellogg Co., 732 F. Supp. 1417, 1488 (S.D. Ohio 

1990)). 

Evaluating the care and sophistication exercised by

consumers of Checkpoint Systems's and Check Point 

Software's products, the District Court found, 

 [B]oth plaintiff 's products and defendant's products 

 are expensive. The purchasers of these respective 

 products are, for the most part, highly sophisticated, 

 and the sale process is lengthy . . . . Plaintiff 's and 

 defendant's products are not impulse purchases, but 

 rather are subject to long sales efforts and careful 

 customer decision making. 

Checkpoint Sys., 104 F. Supp. 2d at 460. 

We agree. The consumers of Checkpoint Systems's and

Check Point Software's products place great importance on, 

and take great care in, purchasing these products. 

Checkpoint Systems's consumers exercise a heightened 

standard of care in their purchasing decisions because they 

need to ensure the article surveillance equipment can be 

quickly and easily repaired and is readily available for new 

merchandise. Similarly, purchasers of Check Point 

Software's firewall technology are highly technical computer 

and information specialists that must ensure the software 

is compatible with other programs.13 Because the security 

provided is integral to loss prevention in the one case, and 

confidentiality of communications in the other, the

products here are essential to the customers' business 

needs. Because of the respective products' importance to 

their buyers' security needs and their high cost, consumers 

take care in making purchasing decisions and are not likely 

to be confused by the parties' similar marks. 

Checkpoint Systems contends that not all the relevant 

consumers are sophisticated purchasers and that many 

_________________________________________________________________ 

13. Although in its marketing materials Check Point Software states that 

its firewall technology is "designed to be easily installed, configured, 

and 

managed," maintaining this equipment requires specialized expertise 

beyond the knowledge of mere technically proficient computer users. 

 18 
"mom and pop stores," which exercise a lower standard of 

care, purchase both parties' products. The District Court 

acknowledged these smaller commercial purchasers were 

part of the relevant consumer class and adjusted its 

evaluation of consumer sophistication accordingly. Because 

the systems are expensive and require on-going 

maintenance, the court found these smaller commercial 

consumers view the purchase of both parties' products as 

an important investment decision. The court also noted 

that many small businesses turn to outside experts to 

assist in the purchase of complicated computer and article 

surveillance systems. Additionally, only computer 

specialists with significant training can install and make 

informed purchasing decisions about Check Point 

Software's complicated firewall technology. Furthermore, 

expert witnesses testified that smaller "mom and pop 

stores" would likely not have need for the complicated 

security software manufactured by Check Point Software. 

The District Court properly evaluated the care exercised 

by consumers of these products in making purchasing

decisions. The evidence supports the finding that the 

purchase of both parties' products involve a significant 

investment and even smaller commercial consumers 

exercise a heightened degree of care in evaluating the 

products and making purchasing decisions. We see no clear 

error. 

D. Intent of the Defendant in Adopting the Mark-- 

Lapp Factor (5) 

While evidence of a party's intentional use of another 

party's mark to cause confusion is not a prerequisite to 

proving a Lanham Act violation, see generally Lois 

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

867, 875 (2d Cir. 1986), courts have recognized that 

evidence of "intentional, willful and admitted adoption of a 

mark closely similar to the existing marks" weighs strongly 

in favor of finding the likelihood of confusion. National 

Football League Props., Inc. v. New Jersey Giants, Inc., 637 

F. Supp. 507, 518 (D.N.J. 1986). Here, the District Court 

found, "[t]here is no evidence or even inference that 

defendant chose its name with plaintiff 's name or products 

 19 
in mind." Checkpoint Sys., 104 F. Supp. 2d at 465. We 

agree. 

E. Relationship of goods in the minds of consumers 

because of the similarity of product functions -- 

Lapp Factor (7) 

Under this prong, courts examine whether buyers and

users of each parties' goods are likely to encounter the 

goods of the other, creating an assumption of common 

source affiliation or sponsorship. Fisons, 30 F.3d at 481 

("The question is whether the consumer might . . . 

reasonably conclude that one company would offer both of 

these related products."). The test is whether the goods are 

similar enough that a customer would assume they were 

offered by the same source. Wynn Oil Co. v. Thomas, 839 

F.2d 1183, 1187 (6th Cir. 1988). 

Checkpoint Systems contends that both parties operate 

in the overlapping business of corporate security. While 

each serves a different branch of this broad industry (i.e., 

Checkpoint Systems primarily focuses on physical security 

while Check Point Software focuses on information and 

computer security), each is a smaller piece in the overall 

corporate security industry. Checkpoint Systems contends 

that in the increasingly technical and sophisticated 

business world, a reasonable business consumer might 

believe that Checkpoint Systems, who had developed a 

niche in physical article security, had expanded into the 

computer technology market. See Dreamwerks Prod. Group, 

Inc. v. SKG Studio, 142 F.3d 1127, 1131 (9th Cir. 1998) 

("[R]elatedness of each company's prime directive isn't 

relevant. Rather, we must focus on [plaintiff 's] customers 

and ask whether they are likely to associate the[plaintiff 's 

products] with [the defendant]."). Checkpoint Systems 

argues the increasing awareness among security 

professionals of both physical and computer information 

security systems has led professionals to be cognizant of 

both companies' products. 

Checkpoint Systems also contends it has developed 

integrated circuit technology in its radio frequency and 

closed circuit television products that allow consumers to 

 20 
link Checkpoint Systems hardware with their computer 

systems. It argues these physical security products employ 

secure information lines similar to the firewall products 

that Check Point Software manufactures.14 On the basis of 

these products, it contends its physical security products 

overlap with computer and information security products 

making consumers likely to associate Checkpoint Systems's 

mark with Check Point Software's mark.15 

But the District Court found the parties 

 operate in separate and distinct segments of the overall 

 field of corporate security. Plaintiff 's sphere includes 

 physical security and control of flow of corporate goods 

 and people . . . . Defendant's sphere includes electronic 

 information security on computer networks at the point 

 of connection to the Internet and within the customer's 

 intranet. Their products are not substitutes for each 

 other. . . . [Their products] are advertised in different 

 magazines and are promoted in entirely different trade 

 shows. 

Checkpoint Sys., 104 F. Supp. 2d at 466. The court 

continued, 

_________________________________________________________________ 

14. Checkpoint Systems contends its business has expanded beyond 

article surveillance into "electronic access control" products that help 

limit access to physical areas where computer software is located. It also 

points to its smart card technology that links computer networking to 

physical security. 

15. Checkpoint Systems also argues that Check Point Software's firewall 

systems can be linked with other security systems, including some of the 

article surveillance products that Checkpoint Systems manufactures. It 

contends this integration technology is evidence that the computer 

software industry is moving into the area of physical security by allowing 

integration with physical security products. But the mere fact that 

software technology can be integrated with other technology, including 

but not limited to physical security technology, is not necessarily proof 

that the manufacturer of software technology is moving into broader 

security realms. By developing technology that can be integrated with 

other products, Check Point Software allows consumers to choose among 

various "speciality" programs that it wants to include in its system. It 

does not necessarily mean that Check Point Software has itself moved 

into the market of these "speciality" security programs. 

 21 
 That there is no overlap in the places these parties 

 market their products tends to diminish the chance 

 that someone who is a specialist in network security 

 will even come across an advertisement for plaintiff, 

 and vice versa. 

Id. 

The District Court did not clearly err. The "relatedness" 

analysis is intensely factual. Goods may fall under the 

same general product category but operate in distinct 

niches. When two products are part of distinct sectors of a 

broad product category, they can be sufficiently unrelated 

that consumers are not likely to assume the products 

originate from the same mark. See, e.g., Commerce Nat'l 

Ins. Servs., Inc., 214 F.3d at 441 (holding marks held by 

company operating in banking industry and company 

operating in insurance industry did not create consumer 

confusion because the two companies were involved in 

distinct highly regulated industries); Astra Pharm. Prods., 

718 F.2d at 1207 (finding no product similarity in medical 

technology sold to different departments in hospital 

because " `the hospital community' is not a homogeneous 

whole, but is composed of separate departments with

diverse purchasing requirements, which, in effect, 

constitute different markets for the parties' respective 

products."); Harlem Wizards, 952 F. Supp. at 1095 (finding 

no product similarity between professional competitive 

basketball team and "show basketball" team). 16 

The District Court held that Checkpoint Systems's 

products are simply different from Check Point Software's 

products. While Checkpoint Systems's access control, 

closed circuit television and radio frequency products may 

employ similar technology, their purpose is physical article 

_________________________________________________________________ 

16. Products sold and marketed in the computer and information 

technology industry can be sufficiently distinct that they do not lead to 

likely consumer confusion. See, e.g., Hasbro, Inc. v. Clue Computing, 

Inc., 

232 F.3d 1 (1st Cir. 2000) (per curiam) (computer game and computer 

consulting service not similar); but see Lambda Elecs. Corp. v. Lambda 

Tech., Inc., 515 F. Supp. 915, 926 (S.D.N.Y. 1981) (finding "moderate 

product proximity" between computer software and computer hardware 

because both products are "intended to function in computers"). 

 22 
surveillance or personal access. On the other hand, Check 

Point Software's firewall technology is not intended to 

prevent theft of merchandise or limit physical access. Its 

purpose is to prevent third parties from accessing 

information from unsecure computer lines. Because the 

products serve different functions, and there is only 

"minimal overlap" in the product technology, it is unlikely 

consumers would be confused by the similar marks. 17 

Fisons, 30 F.3d at 481. The District Court did not clearly 

err in its application of the product similarity prong of the 

confusion analysis. See, e.g., Nutri/System, Inc. v. Con-Stan 

Indus., 809 F.2d 601, 606 (9th Cir. 1987) (weight loss 

centers and weight loss counseling differed in methods, 

customer groups and facilities); Plus Prods. v. Plus Disc. 

Foods, Inc., 722 F.2d 999, 1008 (2d Cir. 1983) (bargain food 

and health food were not so similar as to create likelihood 

of confusion). 

F. The extent to which the parties' goods are 

marketed through the same channels of trade -- Lapp

Factor (9) 

Courts have recognized that "the greater the similarity in 

advertising and marketing campaigns, the greater the 

likelihood of confusion." Acxiom Corp. v. Axiom, Inc., 27 F. 

Supp. 2d 478, 502 (D. Del. 1998). Applying this factor, 

courts must examine the trade exhibitions, publications 

and other media the parties use in marketing their 

products as well as the manner in which the parties use 

their sales forces to sell their products to consumers. This 

is a fact intensive inquiry. Id. 

_________________________________________________________________ 

17. Simply because large corporations may purchase both Checkpoint 

Systems's physical article security systems and Check Point Software's 

computer security products does not necessarily prove that the same 

security professionals within these corporations have knowledge of these 

different technologies and are responsible for purchasing them. Electronic 

Design & Sales, Inc. v. Electronic Data Sys. Corp. , 954 F.2d 713, 717-18 

(Fed. Cir. 1992) (overlap must exist among individual purchasers). 

Here, there is no evidence that a single security expert has sufficient 

knowledge in both the physical security and information security realms 

that he purchases both of these products for his corporation. 

 23 
Here, the District Court found the parties "products are 

advertised in different magazines and are promoted in 

entirely different trade shows." Checkpoint Sys., 104 F. 

Supp. 2d at 466. Checkpoint Systems advertises in trade 

shows and trade publications that are marketed to physical 

and retail security specialists.18 Check Point Software 

advertises in publications and at trade shows that are 

marketed to computer information specialists. As the 

District Court found, 

 There is no evidence that plaintiff 's products and 

 defendant's products were offered at the same time in 

 any magazine, trade show, or distribution network. .. . 

 That there is no overlap in the places these parties 

 market their products tends to diminish the chance 

 that someone who is a specialist in network security 

 will even come across an advertisement for plaintiff, 

 and vice versa. 

Id. 

Additionally, Check Point Software's products are only 

sold to consumers through its "specialized value added 

resellers." These "resellers" do not sell physical article 

security systems. On the other hand, consumers can 

purchase Checkpoint Systems's physical security products 

from its direct mailings and product catalogues or through 

its direct sales force. For these reasons, the District Court 

concluded, "[T]he parties do not market their products 

through the same trade channels or markets, and . . . their 

target customers generally belong to distinctly different 

groups." Id. at 467. We see no clear error. 

G. The extent to which targets of the parties' sales 

efforts are the same -- Lapp Factor (8) 

We have recognized that when parties target their sales 

efforts to the same consumers, there is a stronger 

_________________________________________________________________ 

18. While Checkpoint Systems also advertises in security magazines that 

sometimes contain advertisements about computer information security 

(i.e., Security magazine), these magazines are predominantly marketed to 

physical security professionals, and not to information technology 

specialists. 

 24 
likelihood of confusion. Lapp, 721 F.2d at 463-64. This 

analysis too is intensely factual. 

The District Court found the parties market their 

products to different users. Checkpoint Systems markets 

its products to physical security consumers. Check Point 

Software markets its products to MIS professionals. Even 

though many companies often purchase both types of 

products, most rely on information specialists to make 

purchasing decisions about network security systems, 

especially since Check Point Software's firewall systems 

must be installed as part of the overall architecture of a 

business's total computer system. But information 

specialists are not essential to make purchasing decisions 

about physical article security systems. 

On the basis of this finding, the court concluded there is 

not a strong likelihood that users and consumers of the 

parties' products were likely to come across advertisements 

about the other party's products. The court stated,"That 

there is no overlap in the places these parties market their 

products tends to diminish the chance that someone who is 

a specialist in network security will even come across an 

advertisement for plaintiff, and vice versa." Checkpoint Sys., 

104 F. Supp. 2d at 466. The court did not clearly err in its 

determination. 

H. Evidence of Converging markets -- Lapp Factor (10) 

We have held that evidence that the markets in which the 

parties sell their goods are converging is "pivotal in noncompeting products cases." Lapp, 721 F.2d at 463. "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 . . . 

that the trademark owner will soon enter the defendant's 

field, this . . . factor weighs heavily in favor of injunctive 

relief." Id. (internal citation omitted). Under this factor we 

look not only to evidence that a plaintiff has actually moved 

into the defendant's market, but also to "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." Id. 

 25 
at 463. Evaluating this factor, courts look to evidence that 

other companies sell products in both markets, as well as 

evidence that the products at issue are so closely related 

that the consuming public might find it natural for one 

company to do so. Here, the District Court found the 

physical article security market in which Checkpoint 

Systems sold its products was not converging with the 

computer information security market in which Check Point 

Software sold its firewall products. Nor would consumers 

expect that Checkpoint Systems would naturally expand 

into the network information security market. The court 

stated, "[T]he weight of the evidence indicates that, if 

anything, the fields are diverging as network security 

becomes more and more specialized, and the 

interrelatedness of Internet and intranets becomes more 

complex." Checkpoint Sys., 104 F. Supp. 2d at 452. The 

court noted that some of Checkpoint Systems's competitors 

in the physical article security field had attempted to move 

into the information security field. But these competitors 

had been largely unsuccessful in expanding into this field 

thereby 

 undermin[ing] . . . the idea that network security may 

 be within the zone of natural expansion for companies 

 that once had their focus on physical security . . .. 

 Network security . . . is a highly specialized field 

 dominated by companies such as [Check Point 

 Software] which are experts in the intricacies of 

 electronic networks and the techniques of electronic 

 intrusion. Nothing in the record indicates that plaintiff 

 had the requisite expertise or the interest in achieving 

 entry into [Check Point Software's] field. 

Id. at 467 n.17. 

Checkpoint Systems disputes this finding contending

that modern security specialists look to purchase network 

security systems that work hand in hand with physical 

security systems. It argues these specialists recognize that 

computer security products are worthless if not physically 

secure. Consumers, they claim, are likely to assume that a 

company that sells products in the physical security 

market is likely to expand into the network security market 

to provide businesses with complete security packages. But 

 26 
the District Court found that the increasingly complex 

market for network security systems requires expertise to 

understand evolving technology. Because of the highly 

specialized and technical nature of network security 

systems, consumers would not likely assume that a 

company that has operated for over 30 years in the distinct 

physical security market would have the expertise to move 

into the complicated network security market. Indeed 

Checkpoint Systems's own security expert witness testified 

that he would turn to a network security professional to 

assist in the purchase of this type of equipment because 

the knowledge required to make an informed purchasing 

decision was highly technical and specialized. Thus, 

although consumers may require security products from 

both the physical security market and the information 

security market, it is reasonable to assume they would turn 

to different companies to purchase these products. 

Additionally, there is little evidence that either party 

currently operates in both the physical security and 

network security markets. On appeal, Checkpoint Systems 

points to several of its products, including its physical 

access control systems, its "smart card" technology, its 

radio frequency identification devices, and its closed circuit 

television systems as examples of products that operate in 

both the physical security and network information security 

markets. It contends these products employ similar secure 

network lines to Check Point Software's network security 

technology in order to provide physical article security. But 

even though its products employ some overlapping 

computer technology, Checkpoint Systems's products are 

intended to provide physical article and access security and 

are sold to consumers looking to purchase physical security 

products. Check Point Software's products are sold to 

consumers looking to purchase network information 

security products. The District Court's finding is supported 

by the evidence. We see no clear error. 

I. Evidence of actual confusion and the length of time 

the defendant has used the mark without evidence of

actual confusion -- Lapp Factors (4),(6) 

Evidence of actual confusion is not required to prove 

likelihood of confusion. Versa Prods., 50 F.3d at 205; 

 27 
Fisons, 30 F.3d at 476 ("[W]hile evidence of actual

confusion would strengthen plaintiff 's case, it is not 

essential."). We have recognized that it is difficult to find 

evidence of actual confusion because many instances are 

unreported. For this reason, evidence of actual confusion 

may be highly probative of the likelihood of confusion. 

Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 

670 F.2d 642, 648 n.5 (6th Cir. 1982); see also Tisch 

Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 612 (7th 

Cir. 1965) ("[S]ince reliable evidence of actual confusion is 

difficult to obtain in trademark and unfair competition 

cases, any such evidence is substantial evidence of

likelihood of confusion."). "If a defendant's product has 

been sold for an appreciable period of time without evidence 

of actual confusion, one can infer that continued marketing 

will not lead to consumer confusion in the future. The 

longer the challenged product has been in use, the stronger 

this inference will be." Versa Prods., 50 F.3d at 205. 

Here the District Court found, "Though there is some 

evidence in the record of temporary initial confusion 

between the companies, by experts, the media, investors 

and consumers, there is no evidence of actual customer 

confusion in connection with the purchase of defendant's 

products." Checkpoint Sys., 104 F. Supp. 2d at 447. The 

court continued stating, 

 [N]o customer or potential customer for defendant's 

 products has believed, to any meaningful degree, that 

 the products originated with the plaintiff. Conversely, 

 of the few customers of plaintiff, or other persons in 

 the media, who momentarily thought plaintiff might 

 have entered the firewall business, not one took any 

 meaningful action while under that mistaken belief. 

Id. at 450. The court concluded, 

 Here, there is some evidence of initial confusion by the 

 media and investors when defendant first gained 

 success in the stock market, but that confusion has 

 dissipated, rather than grown, over the years, such 

 that there appears to have been none in the last few 

 years. Moreover, the significance of such initial 

 confusion by the media and investors, like initial 

 28 
 confusion by consumers, lies only in assessing whether 

 it supports the conclusion that confusion in consumer 

 purchasing decision is likely. 

Id. at 464.19 

On appeal Checkpoint Systems argues the District Court 

erred because it limited its actual confusion inquiry to 

evaluating evidence of consumer confusion at the point of 

sale rather than according weight to evidence of investor 

confusion and other initial interest confusion. It contends 

the Lanham Act affords protection against other types of 

confusion, including initial interest confusion, investor 

confusion and post-sale confusion. 

Several courts of appeals have found initial interest 

confusion and post-sale confusion actionable under the 

Lanham Act. We agree and hold initial interest confusion is 

actionable under the Lanham Act. We also hold the District 

Court properly evaluated the evidence of initial interest 

confusion and did not clearly err in finding this evidence 

did not weigh heavily in favor of finding likely confusion. 

We first turn to a discussion of the relevance of initial 

interest to Lanham Act claims. 

1. 

A leading treatise on trademark infringement states: 

 [Trademark infringement] can be based upon confusion 

 that creates initial customer interest, even though no 

 actual sale is finally completed as a result of the 

 confusion. 

 * * * 

 [For example,] the likelihood that a potential purchaser 

 of a specialized computer program may be drawn to the 

 junior user, thinking it was the senior user, is 

 actionable "confusion" even if over the course of several 

_________________________________________________________________ 

19. The court also stated that "plaintiff has not demonstrated that the 

incidents of temporary confusion or other confusion in spheres unrelated 

to purchasing activity is a harbinger of likelihood of confusion in 

purchasing decisions." Checkpoint Sys., 104 F. Supp. 2d at 462. 

 29 
 months of the purchasing decision-making process, the 

 buyer's confusion is dissipated. Such a senior user 

 who is the opposer may suffer injury if a potential 

 purchaser is initially confused between the parties' 

 respective marks in that the opposer may be precluded 

 from further consideration by a potential purchaser in 

 reaching his or her buying decision. 

3 McCarthy on Trademarks and Unfair Competition,S 23:6 

(internal quotations and footnotes omitted). Several courts 

of appeals, including the Second, Seventh, and Ninth 

Circuits have found initial interest confusion actionable 

under the Lanham Act. In Mobil Oil Corp. v. Pegasus

Petroleum Corp., 818 F.2d 254 (2d Cir. 1987), the United 

States Court of Appeals for the Second Circuit found 

actionable initial interest confusion when it enjoined the 

defendant from using the trade name Pegasus because the 

name was confusingly similar to the plaintiff 's"flying 

horse" mark. The court noted that in the oil industry, 

companies often attract potential consumers by making 

"cold calls" to determine interest in purchasing products. 

The court also noted that on the basis of the similar name 

and mark, it was likely that "Pegasus Petroleum would gain 

crucial credibility during the initial phases of a deal. For 

example, an oil trader 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. Because the similar marks could 

ultimately affect a consumer's consideration of the

defendant's product as well as affect the plaintiff 's goodwill 

with its customers, the court found actionable confusion 

under the Lanham Act. Id. at 260 ("[P]otential purchasers 

would be misled into an initial interest in Pegasus

Petroleum. Such initial confusion works a sufficient 

trademark injury."); see also Lois Sportswear , 799 F.2d at 

867; Grotrian, Helfferich, Schulz, Th. Steinweg Nachf v. 

Steinway and Sons, 365 F. Supp. 707, 717 (S.D.N.Y. 1973) 

("Misled into an initial interest, a potential Steinway buyer 

may satisfy himself that the less expensive GrotrianSteinweg is at least as good, if not better, than a Steinway. 

Deception and confusion thus work to appropriate 

[Steinway's] good will."), aff 'd , 523 F.2d 1331 (2d Cir. 

1975). 

 30 
Similarly in Brookfield Communications, Inc. v. West 

Coast Entertainment Corp., 174 F.3d 1036, 1057 (9th Cir. 

1999), the United States Courts of Appeals for the Ninth 

Circuit recognized that initial interest confusion is 

actionable under the Lanham Act. In Brookfield 

Communications, plaintiffs alleged that defendant West 

Coast Entertainment's use of the web site 

www.moviebuff.com infringed on its "MovieBuff " mark. 

Brookfield used the "MovieBuff " mark on computer 

software that it sold to industry professionals. This software 

contained a searchable database of entertainment related 

data, including information about film release schedules, 

box office receipts, films in development and other

entertainment news. West Coast's "moviebuff.com" website 

was a free searchable entertainment database that assisted 

its consumers in making educated decisions about the 

rental and purchase of movies. The website also sold movie 

and other entertainment accessories. The court found 

actionable confusion under the Lanham Act reasoning: 

 People surfing the Web for information on "MovieBuff " 

 may confuse "MovieBuff " with the searchable

 entertainment database at "moviebuff.com" and simply 

 assume that they have reached Brookfield's website. 

 . . . Alternatively, they may incorrectly believe that 

 West Coast licensed "MovieBuff " from Brookfield . . . or 

 that Brookfield otherwise sponsored West Coast's 

 database. Other consumers may simply believe that 

 West Coast bought out Brookfield or that they are 

 related companies. 

 Yet other forms of confusion are likely to ensue. 

 Consumers may wrongly assume that the "MovieBuff " 

 database they were searching for is no longer offered, 

 having been replaced by West Coast's entertainment 

 database, and thus simply use the services at West 

 Coast's web ste. And even where people realize, 

 immediately upon accessing "moviebuff.com," that they 

 have reached a site operated by West Coast and wholly 

 unrelated to Brookfield, West Coast will still have 

 gained a customer by appropriating the goodwill that 

 Brookfield has developed in its "MovieBuff " mark. A 

 consumer who was originally looking for Brookfield's 

 31 
 products or services may be perfectly content with 

 West Coast's database (especially as it is offered free of 

 charge); but he reached West Coast's site because of its 

 use of Brookfield's mark as its second-level domain 

 name, which is a misappropriation of Brookfield's 

 goodwill by West. 

Id. at 1057 (internal citations omitted); see also Interstellar 

Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1110 (9th 

Cir. 1999) ("We recognize a brand of confusion called `initial 

interest' confusion, which permits a finding of a likelihood 

of confusion although the consumer quickly becomes aware 

of the source's actual identity and no purchase is made as 

a result of the confusion."), cert. denied , 528 U.S. 1155 

(2000); but see Bryce J. Maynard, Note, The Initial Interest 

Confusion Doctrine and Trademark Infringement on the 

Internet, 57 Wash & Lee L. Rev. 1303 (urging caution in 

finding actionable initial interest confusion on the Internet). 

In Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th 

Cir. 1998), the United States Court of Appeals for the Fifth 

Circuit also recognized initial interest confusion. The court 

there found the plaintiff assignees of the rights of the estate 

of Elvis Presley were entitled to injunctive relief against the 

defendant bar owner's use of the name "The Velvet Elvis" 

because it was likely to create confusion. In finding initial 

interest confusion the court reasoned, 

 The witnesses all testified that, upon entering and 

 looking around the [defendants'] bar, they had no 

 doubt that [plaintiff was] not affiliated with it in any 

 way. Despite the confusion being dissipated, this 

 initial-interest confusion is beneficial to the Defendants 

 because it brings patrons in the door; indeed, it 

 brought at least one of the [plaintiff 's] witnesses into 

 the bar. Once in the door, the confusion has succeeded 

 because some of the patrons may stay, despite 

 realizing that the bar has no relationship with 

 [plaintiff]. This initial-interest confusion is even more 

 significant because the Defendants' bar sometimes 

 charges a cover charge for entry, which allows the 

 Defendants to benefit from initial-interest confusion 

 before it can be dissipated by entry into the bar. 

 32 
Id. at 204. 

The United States Court of Appeals for the Seventh 

Circuit has equated initial interest confusion to a"bait and 

switch scheme." In Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 

F.3d 376, 382 (7th Cir. 1996), the court stated, 

 [T]he Lanham Act forbids a competitor from luring 

 potential customers away from a producer by initially 

 passing off its goods as those of the producer's, even if 

 confusion as to the source of the goods is dispelled by 

 the time any sales are consummated. This "bait and 

 switch" of producers, also known as "initial interest" 

 confusion, will affect the buying decisions of 

 consumers in the market for the goods, effectively 

 allowing the competitor to get its foot in the door by 

 confusing consumers. 

Id. (internal citation omitted); see also Eli Lilly & Co. v. 

Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000) 

("[Initial interest] confusion, which is actionable under the 

Lanham Act, occurs when a consumer is lured to a product 

by its similarity to a known mark, even though the 

consumer realizes the true identity and origin of the 

product before consummating a purchase."). 

We join these circuits in holding that initial interest 

confusion is probative of a Lanham Act violation. 20 Without 

initial interest protection, an infringer could use an 

established mark to create confusion as to a product's 

source thereby receiving a "free ride on the goodwill" of the 

established mark. Mobil Oil Corp., 818 F.2d at 260 

(likelihood that "potential purchasers would be misled into 

an initial interest" justifies finding of infringement). 

Confining actionable confusion under the Lanham Act to 

confusion present at the time of purchase would 

_________________________________________________________________ 

20. We note that several District Courts in our circuit have found initial 

interest confusion probative of a Lanham Act violation. See, e.g., 

Sunquest Info. Sys., Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 

680, 

695 (W.D. Pa. 2000) ("Although the Third Circuit has not directly 

addressed the issue of initial interest confusion, the doctrine has been 

embraced by numerous courts, including a number of district courts in 

this Circuit."); Acxiom, 27 F. Supp. 2d at 497 ("The court finds that 

there 

is a likelihood of pre-sale confusion."). 

 33 
undervalue the importance of a company's goodwill with its 

customers. 

Congress recognized the relevance of initial interest 

confusion and its effect on a company's goodwill when it 

amended the Lanham Act in 1962. In its original form, the 

Lanham Act only applied where the use of similar marks 

was "likely to cause confusion or mistake or to deceive 

purchasers as to the source of origin of such goods or 

services." Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th 

Cir. 1991) (quoting 1946 Lanham Act.) (emphasis added). In 

1962 Congress deleted the term "purchasers," affording 

Lanham Act protection where a mark is "likely to cause 

confusion or mistake or to deceive." Id. Several courts have 

found the amendment expanded the reach of the Lanham 

Act beyond mere purchasers to recognize pre-sale confusion 

as well as post-sale confusion. See, e.g., id. ("Since 

Congress intended to protect the reputation of the 

manufacturer as well as to protect purchasers, the Act's 

protection is not limited to confusion at the point of sale."); 

Koppers Co. v. Krupp-Koppers GmbH, 517 F. Supp. 836, 

843-44 (W.D. Pa. 1981) (holding Congress intended to 

broaden the scope of protections with the 1962 Amendment 

to the Lanham Act); see also 3 McCarthy on Trademarks & 

Unfair Competition, S 23.7 ("In 1962, Congress struck out 

language in the Lanham Act which required confusion, 

mistake or deception of `purchasers as to the source of 

origin of such goods and services.' Several courts have 

noted this expansion of the test of infringement and held 

that it supports a finding of infringement when even nonpurchasers are deceived."). We agree with the view that 

Congress's amendment of the Lanham Act in 1962 

expanded trademark protection to include instances in 

which a mark creates initial interest confusion. 21

_________________________________________________________________ 

21. The Federal Circuit has interpreted the 1962 amendment to the 

Lanham Act differently. In Elec. Design & Sales, Inc., the court stated, 

 The legislative history states that the word "purchasers" was 

deleted 

 because "the provision actually relates to potential purchasers as 

 well as to actual purchasers." Therefore, we do not construe this 

 deletion to suggest, much less compel, that purchaser confusion is 

 no longer the primary focus of the inquiry. Instead, we believe 

that, 

 34 
Check Point Software notes that some circuits have only 

found "initial interest" confusion probative of likely 

confusion when the products at issue are direct 

competitors or where there is a strong interrelatedness 

between the products.22 It claims these circuits have 

recognized that initial interest confusion is probative of a 

Lanham Act violation when the defendant attempts to use 

the plaintiff 's more recognizable mark to "get a foot in the 

door" with potential customers. But if the initial interest 

confusion does not ultimately result in a purchasing 

decision, this factor counsels against finding the likelihood 

of confusion under the Lanham Act.23 

_________________________________________________________________ 

 at least in the case of goods and services that are sold, the 

inquiry 

 generally will turn on whether actual or potential"purchasers" are 

 confused. 

954 F.2d at 716 (quoting S. Rep. No. 2107, at 4 (1962), reprinted in 1962 

U.S.C.C.A.N. 2844, 2847). 

22. Other courts appear to have adopted a facts and circumstances 

approach to evaluating initial interest confusion. BigStar Entm't, Inc. v. 

Next Big Star, Inc., 105 F. Supp. 2d 185, 211 (S.D.N.Y. 2000) (declining 

to apply initial interest confusion in the context of an internet case 

involving non-competitors whose web addresses were not identical); 

Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1120 (D.Minn. 

2000) ("Initial interest confusion" exist[s] when the defendant stood to 

materially or financially gain from said initial confusion by trading in 

on 

the value of plaintiff 's mark to initially attract customers."). 

23. The disagreement over the use of initial interest confusion is 

highlighted in Esercizio, 944 F.2d at 1249-50. While the majority of the 

court found initial interest confusion generally probative of a Lanham 

Act violation, the dissent noted, 

 To be sure, some courts have expanded the application of the 

 likelihood of confusion test to include individuals other than 

point- 

 of-sale purchasers. These courts have included potential purchasers 

 who may contemplate a purchase in the future, reasoning that in 

 the pre-sale context an "observer would identify the [product] with 

 the [original manufacturer], and the [original manufacturer]'s 

 reputation would suffer damage if the [product] appeared to be of 

 poor quality." 

 In applying the test in this manner, these courts appear to 

recognize 

 that the deception of a consumer under these circumstances could 
 35 
Some courts have looked at the relatedness of the 

relevant products in evaluating whether initial interest 

confusion is probative of likely confusion. See Hasbro, Inc., 

232 F.3d at 2 ("Certainly in a case involving such disparate 

products and services as this, the court's refusal to enter 

the `initial interest confusion' thicket is well taken given the 

unlikelihood of `legally significant' confusion."); Brookfield 

Communications, 174 F.3d at 1056 (when products are

unrelated "the likelihood of confusion would probably be 

remote."). Other courts look at evidence that the defendant 

intentionally adopted the plaintiff 's mark to create 

confusion among consumers making purchasing decisions. 

See, e.g., Dorr-Oliver, 94 F.3d at 382-83. Still other courts 

view the level of care consumers exercise in their 

purchasing decisions to determine whether initial interest 

confusion has dissipated prior to a purchasing decision. 

See, e.g., Brookfield Communications, 174 F.3d at 1057 

(finding initial interest confusion actionable because "[I]n 

the Internet context, . . . entering a web site takes little 

effort--usually one click from a linked site or a search 

engine's list; thus, Web surfers are more likely to be 

confused as to the ownership of a web site than traditional 

patrons of a brick-and-mortar store would be of a store's 

ownership."); Rust Env't & Infrastructure, Inc. v. Teunissen, 

131 F.3d 1210, 1217 (7th Cir. 1997) (initial interest 

confusion unlikely with sophisticated consumers). Safeway 

Stores, Inc. v. Safeway Disc. Drugs, 675 F.2d 1160, 1167 

(11th Cir. 1982) ("Short-lived confusion or confusion of 

individuals casually acquainted with a business is worthy 

of little weight."). 

Product relatedness and level of care exercised by 

consumers are relevant factors in determining initial 

interest confusion. When products are similar, a firm is 

_________________________________________________________________ 

 dissuade such a consumer from choosing to buy a particular 

 product, thereby foreclosing the possibility of point-of-sale 

confusion 

 but nevertheless injuring the consumer based on this confusion. . . 

. 

 Hence, even when expanding the scope of this test, these courts did 

 not lose sight of the focus of [the inquiry]: the potential 

purchaser. 

944 F.2d at 1249-50 (Kennedy J., dissenting) (quoting Polo Fashions, Inc. 

v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987)). 

 36 
more likely to benefit from the goodwill of a firm with an 

established mark. And when consumers do not exercise a 

high level of care in making their decisions, it is more likely 

that their initial confusion will result in a benefit to the 

alleged infringer from the use of the goodwill of the other 

firm. Conversely, in the absence of these factors, some 

initial confusion will not likely facilitate free riding on the 

goodwill of another mark, or otherwise harm the user 

claiming infringement. Where confusion has little or no 

meaningful effect in the marketplace, it is of little or no 

consequence in our analysis. Nonetheless, we decline to 

issue a blanket rule limiting the probative value of initial 

interest. Its significance will vary, and must be determined 

on a case-by-case basis. As with all cases involving the 

likelihood of confusion under the Lanham Act, courts 

should employ all the relevant Lapp factors and weigh each 

factor to determine whether in the totality of the 

circumstances marketplace confusion is likely. See A&H 

Sportswear, 237 F3d at 215; Fisons, 30 F.3d at 476 n.11. 

2. 

We now turn to whether the District Court properly 

evaluated the evidence of actual confusion, including 

Checkpoint Systems's evidence of initial interest confusion. 

It is undisputed that Checkpoint Systems presented no 

evidence of actual consumer confusion in the form of 

mistaken purchasing decisions. But it presented the

following evidence of initial interest confusion: (1) e-mails 

that Checkpoint Systems received inquiring about firewall 

products; (2) customer inquiries to Checkpoint Systems 

employees, including its CEO, that expressed an interest in 

purchasing firewalls; (3) service calls made to Checkpoint 

Systems that were intended for Check Point Software; (4) 

misdirected calls to Checkpoint Systems's receptionist that 

were intended for Check Point Software; and (5) reports in 

the media that confused Checkpoint Systems and Check 

Point Software. The District Court found this evidence 

insufficient to support a finding of likely confusion 

reasoning, 

 [A]ny evidence by the plaintiff of initial interest 

 confusion by consumers and initial confusion by some 

 37 
 reporters or other observers, is de minimis and weak, 

 and the record is completely devoid of any evidence of 

 an actual mistaken purchase or attempt to purchase 

 one company's products believing they originated with 

 the other company. Especially when viewed in light of 

 the parties' co-existence for over five years, this lack of 

 evidence of any confusion in purchasing decisions of 

 either company's products falls strongly in defendant's 

 favor. 

Checkpoint Sys., 104 F. Supp. 2d at 464-65. 

On appeal Checkpoint Systems claims the District Court 

erred as a matter of law by requiring it to produce evidence 

of actual consumer confusion in the form of mistaken 

purchasing decisions. It also contends the court erred in 

discounting its evidence of initial interest confusion as de 

minimis. See Tisch Hotels, Inc., 350 F.2d at 612. 

But the District Court properly evaluated the evidence of 

initial interest confusion within context of the relevant Lapp 

factors stating, 

 This Court does not read [the relevant case law] as 

 holding that the initial interest confusion doctrine is 

 never applicable if the parties are not competitors. 

 However, Hasbro, and numerous other cases, correctly 

 emphasize the importance of the parties' competition or 

 strong interrelatedness. 

 A review of the cases which have applied the initial 

 interest doctrine indicates that the parties are either 

 direct competitors, or strongly interrelated such that it 

 could be expected that plaintiff would expand into 

 defendant's market. Other cases have also pointed out 

 that one element of the applicability of the initial 

 interest confusion doctrine is an intent by the 

 defendant to deceive. 

Checkpoint Sys., 104 F. Supp. 2d at 462 (citations omitted). 

The court concluded, 

 [W]hile evidence of temporary initial interest confusion 

 is not completely irrelevant, such evidence is entitled to 

 less weight than it might be in a case where the parties 

 compete or are strongly interrelated, or where there is 

 38 
 evidence or even an inference that defendant was 

 trying to trade on plaintiff 's goodwill. These factors are 

 utterly absent here. Moreover, the evidence of initial 

 interest confusion in this case is de minimis. 

Id. at 462-63. 

This is the proper analysis. Checkpoint Systems's and 

Check Point Software's products are unrelated and are sold 

in different markets to consumers who exercise a 

heightened degree of care in making purchasing decisions. 

The markets for the parties' products are not converging, 

nor is there evidence that Check Point Software 

intentionally adopted the Check Point mark to create 

confusion.24 Given these factors, the District Court did not 

clearly err in finding no likelihood of confusion. 

Nor did the District Court err in finding the evidence of 

initial interest confusion was de minimis. At oral argument, 

Checkpoint Systems averred that at most there was 

evidence of twenty instances of initial interest confusion 

over the period of time the parties operated in the United 

States. Some of this confusion consisted of misdirected 

calls and therefore it is uncertain whether the consumers 

were confused by the parties' similar names or whether 

_________________________________________________________________ 

24. Checkpoint Systems's contention that the District Court disregarded 

its initial interest evidence is erroneous. The District Court examined 

this evidence stating, 

 The Court acknowledges that evidence of any confusion at all, by 

 investors, purchasers, or the media, may still affect this Court's 

 determination of whether there is a likelihood of confusion by 

 purchasers, for if there is evidence that, for example, the media, 

 whose words purchasers read, is confused about the names of these 

 companies, then it is more likely that purchaser will be confused 

as 

 well. 

 * * * 

 Though that evidence is relevant, here it is minimal, especially 

when 

 contrasted against the glaring absence of evidence of any actual 

 confusion in purchasing decisions in the time that the parties have 

 co-existed, and the incentives to ferret out such confusion during 

 the long pendency of this dispute. . . . 

Checkpoint Sys., 104 F. Supp. 2d at 463-64. 

 39 
directory assistance erred in connecting consumers with 

the parties. Duluth News-Tribune v. Mesabi Publ'g Co., 84 

F.3d 1093, 1098 (8th Cir. 1996) (misdirected 

communications are not evidence of confusion where the 

sender knows which party he or she wished to send his 

communication but erred in the delivery of the message). 

Furthermore, the District Court properly took into account 

the potential bias of Checkpoint Systems's employees who 

testified they had been approached by consumers 

interested in Check Point Software's firewall products as 

well as Checkpoint Systems's expert security witnesses who 

testified they erroneously believed that Check Point 

Software was affiliated with Checkpoint Systems. A&H 

Sportswear, 237 F.3d at 227; Reed-Union Corp. v. Turtle 

Wax, Inc., 77 F.3d 909, 911-12 (7th Cir. 1996) (fact finder's 

credibility judgments about confusion testimony are

virtually never clearly erroneous). 

We agree with the District Court that this limited initial 

interest confusion (i.e., the handful of e-mails and other 

anecdotal evidence of mistaken consumer inquiries) was de 

minimis when viewed in light of the length of time the 

parties operated together in the United States25 without 

significant evidence of confusion. Versa Prods. , 50 F.3d at 

205 ("If a defendant's product has been sold for an

appreciable period of time without evidence of actual 

confusion, one can infer that continued marketing will not 

lead to consumer confusion in the future. The longer the 

challenged product has been in use, the stronger this 

inference will be."); Universal Money Ctrs. v. AT&T, 22 F.3d 

1527, 1535 (10th Cir. 1994) (a few instances of confusion 

over a long period of time are insufficient to support a 

finding of confusion); Barre-National, Inc. v. Barr Labs., Inc., 

773 F. Supp. 735, 744 (D.N.J. 1991) ("Use of similar marks 

_________________________________________________________________ 

25. Check Point Software has sold its products in the United States since 

late 1994. While its products were not widely circulated until late 1996, 

its products were co-branded with Sun MicroSystems products from 

1995-1996 in order to promote the Check Point Software mark. 

Therefore the District Court did not err when it stated "when viewed in 

light of the parties' co-existence for over five years, this lack of 

[actual 

confusion] evidence . . . falls strongly in defendant's favor." Checkpoint 

Sys., 104 F. Supp. 2d at 465. 

 40 
for a substantial period of time with no confusion among 

consumers may create a presumption that there is little 

likelihood of confusion."). Nor were the isolated instances of 

confusion in the media probative of likely confusion. 

Centaur Communications, Ltd. v. A/S/M Communications, 

Inc., 830 F.2d 1217, 1227 (2d Cir. 1987) (newspaper misattributions were isolated incidents not probative of actual 

confusion). Given the size of these companies, and the large 

number of e-mails, customer inquiries, and other 

communications they receive on a daily basis, these

isolated instances of initial interest confusion counsel 

against a finding of likely confusion. A&H Sportswear, 237 

F. 3d at 227 ("isolated" instances of confusion insufficient 

to support finding of likely confusion); Scott Paper Co., 589 

F.2d at 1231 (nineteen misdirected letters over four years 

weighed against finding of confusion); Nippondenso Co. v. 

Denso Distribs., Civ. No. 86-3982, 1987 WL 10703 at *5 

(E.D. Pa. May 11, 1987) ("The weight attributed to 

instances of actual confusion depends to some extent upon 

the circumstances of the case, including the volume of 

sales of the goods involved. If isolated instances of actual 

confusion result from the sale of a substantial number of 

goods, the weight given to the evidence of actual confusion 

is markedly reduced.") (citing Scott Paper Co., 589 F. 2d at 

1225). The District Court did not clearly err. 

3. 

On appeal, Checkpoint Systems contends the District

Court erred in evaluating evidence of investor confusion. 

While a handful of district courts have found evidence of 

investor confusion probative of a Lanham Act violation, see, 

e.g., Acxiom Corp. v. Axiom, Inc., 27 F. Supp. 2d 478 (D. 

Del. 1998); Koppers Co. v. Krupp-Koppers GmbH , 517 F. 

Supp. 836 (W.D. Pa. 1981), no appellate court has yet so 

held. 

In Acxiom, the district court held that"investor confusion 

may be considered by the trial court as part of its

application of the Lapp factors." 27 F. Supp. 2d at 501. In 

support of its likelihood of confusion claim, plaintiff in that 

case presented evidence of two investors and a potential 

investor who testified that they were confused by the 

 41 
similar names. The court held this evidence counseled in 

favor of finding likely confusion. It reached this conclusion 

on the basis of its view that the 1962 amendment to the 

Lanham Act evinced "a clear congressional intent to `outlaw 

the use of trademarks which are likely to cause confusion, 

mistake, or deception of any kind, not merely of purchasers 

nor simply as to source of origin.' " Id. at 501 (quoting 

Koppers, 517 F. Supp. at 843-45). 

Checkpoint Systems contends investor confusion is 

probative of the likelihood of confusion and the District 

Court erred in discounting this evidence. But given the 

parties limited briefing on this issue as well as the scant 

evidence of investor confusion here,26 we will reserve 

decision on this issue. We make a few observations 

nonetheless. Arguably, the 1962 amendments to the 

Lanham Act extended actionable confusion beyond 

purchasers to other instances affecting a party's business 

or goodwill. Investor confusion may well threaten a party's 

business or goodwill if it would likely deter or inhibit a 

company's ability to attract investors and raise capital. 

Here it seems unlikely that investors would be confused 

by the parties' similar marks or somewhat similar stock 

symbols ("CKP" and "CHKP" for Checkpoint Systems and 

Check Point Software, respectively). Many investors are 

sophisticated parties who exercise a high degree of care in 

making investment decisions. Also, the parties' shares are 

traded on different exchanges (Checkpoint Systems's stock 

is traded on the New York Stock Exchange and Check Point 

Software's stock is traded on the NASDAQ). Given the 

paucity of evidence of investor confusion here, it is 

_________________________________________________________________ 

26. Checkpoint Systems presented the following evidence of investor 

confusion: (1) financial reports and analyses that confused Checkpoint 

Systems's and Check Point Software's stock symbols; and (2) two 

investors and one potential investor who were initially confused by 

mistaken media reports about the parties' stocks. But these investors 

averred that they quickly realized their mistake and did not make any 

investment decision based on their mistake. Their confusion was an 

isolated example of confusion when compared to the large number of 

investors in both companies. Homeowners Group, Inc., 932 F.2d at 1110 

(existence of only a "handful" of instances of confusion leads to 

inference 

that confusion is unlikely). 

 42 
unnecessary to resolve the issue here, and we believe it is 

prudent to reserve judgment at this time.27 Cf. Hoover Co. 

v. Citicorp Venture Capital Ltd., 674 F. Supp. 460, 461 

(S.D.N.Y. 1987) (finding no Lanham Act violation where 

there was "only scant evidence of investor confusion in 

connection with a single advertisement for a securities 

offering."). 

J. Totality of Lapp Factors 

The District did not err in its factual findings nor in its 

application of the individual Lapp factors to those findings. 

Furthermore, the District Court's conclusion that the 

combination of the Lapp factors do not establish 

substantial likelihood of confusion in the marketplace is 

consistent with its findings. Even though mark similarity-- 

a factor favorable to Checkpoint Systems--is ordinarily the 

most important element in the multi-factor Lapp analysis, 

it is not necessarily determinative, especially where, as 

here, the markets for competing marks are highly distinct. 

Because Checkpoint Systems's and Check Point Software's 

products are not related, and are marketed to different 

consumers through different channels, the evidence 

demonstrates it is unlikely the relevant consumers, who 

exercise a high degree of care in purchasing and selecting 

among these products, were likely to be confused by the 

marks. Additionally, there is no evidence that Check Point 

Software intended to use its mark to gain a competitive 

advantage. Also, the evidence supports the District Court's 

finding that the markets are unlikely to converge in the 

future. The minimal evidence of actual initial interest 

confusion is insufficient to override this conclusion. 

_________________________________________________________________ 

27. We note that the District Court did not completely disregard the 

evidence of investor confusion Checkpoint Systems presented stating, 

 The Court acknowledges that evidence of any confusion at all, by 

 investors, purchasers, or the media, may still affect this Court's 

 determination of whether there is a likelihood of confusion . . . 

 * * * 

 Though that evidence is relevant, here it is minimal. . . . 

Checkpoint Sys., 104 F. Supp. 2d at 463-64. 

 43 
Because the District Court did not clearly err in its 

application of the Lapp factors--individually and in 

combination--we will affirm its holding there was no 

likelihood of (direct) marketplace confusion. See A&H 

Sportswear, 237 F.3d at 237 ("The question of likelihood of 

confusion is ultimately one of fact, and [the appellate court] 

cannot roll up [its] sleeves and engage in the balancing 

[itself]."). 

IV. 

A. 

On appeal, Checkpoint Systems challenges the District 

Court's analysis of its "reverse confusion" claim, contending 

the mark of Check Point Software (the junior user) has 

become so strong in the relevant market that the 

consuming public might assume that Check Point Software 

is actually the source of the products of Checkpoint 

Systems (the senior user). 

In Fisons, 30 F.3d at 475, we expressly recognized a 

cause of action for reverse confusion, stating, 

 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 and services. 

30 F.3d at 474 (citing Sands, Taylor & Wood Co. , 978 F.2d 

at 947).28 

_________________________________________________________________ 

28. In a reverse confusion situation, 

 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, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir. 

1987). 

 44 
Courts have recognized that "failure to recognize reverse 

confusion would essentially immunize from unfair 

competition liability companies that have well established 

trade names and the financial ability to advertise a senior 

mark taken from smaller, less powerful competitors." 

Harlem Wizards, 952 F. Supp. at 1091-92 (citing Big O Tire 

Dealers, Inc., v. Goodyear Tire & Rubber Co., 561 F.2d 

1365, 1372 (10th Cir. 1977); see also Dreamwerks , 142 

F.3d at 1130. "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." 

Fisons, 30 F.3d at 475. 

In a direct confusion case, the consuming public may 

assume that the established, senior user is the source of 

the junior user's goods. In a reverse confusion case, the 

consuming public may assume the converse; that is, that 

the junior, but more powerful, mark user is the source of 

the senior user's products. The harm to the senior user is 

not just that its goodwill is appropriated, but that the value 

of its mark is diminished. The fundamental issue in both 

cases, however, is essentially the same: whether the 

consuming public is likely to be confused about the source 

of products of the respective mark users. 

In A&H Sportswear, we held that in a typical reverse 

confusion case, courts should employ the same Lapp 

factors in assessing likelihood of confusion.29 But in a 

reverse confusion case, some of the Lapp factors must be 

analyzed differently.30 The strength of the parties' marks, 

_________________________________________________________________ 

29. In reaching that conclusion, we rejected the notion that courts 

should apply a threshold test to determine whether a junior user has 

used its economic power to saturate the market in reverse confusion 

cases. The proper inquiry is to apply all of the relevant Lapp factors. 

A&H Sportswear, 237 F.3d at 208. 

30. In A&H Sportswear, we noted that the application of the following 

Lapp factors is typically the same in both types of claims: (1) 

sophistication and attentiveness of consumers; (2) the degree to which 

the channels of trade and advertisement overlap; (3) the similarity of the 

targets of the parties' sales efforts; and (4) the similarity of the 

products 

themselves. We also noted that absent the presence of housemarks and 

disclaimers, the similarity of marks factor should generally be examined 

 45 
the intent in adopting the marks,31 and the evidence of 

actual confusion are analyzed differently from the method 

employed in a typical direct confusion case. A&H 

Sportswear, 237 F.3d at 236. On appeal, Checkpoint 

Systems argues the District Court did not follow the 

analysis of actual confusion and strength of mark outlined 

in A&H Sportswear.32 

_________________________________________________________________ 

in a similar fashion in both direct and reverse confusion cases. As 

discussed at length, the District Court properly applied these factors and 

found that there was no likelihood of confusion. A&H Sportswear, 237 

F.3d at 236 ("[T]he factors concerning the market, sales, and function 

similarity . . . need not be reexamined for the reverse confusion claim 

because the District Court has already discussed them in connection 

with direct confusion and there is typically no difference in the analysis 

of these factors for reverse and direct confusion claims."). We see no 

error. 

31. Neither party disputes the District Court's analysis of the intent of 

the parties in adopting the marks. 

32. Additionally, plaintiff argues the District Court improperly held that 

a claim for reverse confusion is only actionable when the parties' 

products directly compete. But the District Court did not state this 

proposition. Rather, the court stated 

 reverse confusion threatens harm when the junior user `overwhelms' 

 the marketplace such that the senior user begins to lose its 

identity 

 and profile. This concern is of greatest force with competing or 

 related products. In the present case, involving non-competing, 

 unrelated products, such "overwhelming" has not even remotely 

 occurred. 

Checkpoint Sys., 104 F. Supp. 2d at 461. 

The proper inquiry in a reverse confusion claim is whether consumers 

will assume the senior user's goods are associated with the junior user. 

Just as in a direct confusion claim, the relatedness of the parties' 

products is integral to the finding of likely confusion. If two products 

are 

unrelated, there is little reason to assume confusion since most 

consumers would not assume that a single company would market two 

completely unrelated products. On the other hand, when the goods are 

related, a customer might reasonably assume the junior user with a 

strong market presence would sell both products. Fisons, 30 F.3d at 481 

("The question is whether the consumer might therefore reasonably 

conclude that one company would offer both of these related products."). 

 46 
B. 

In a typical direct confusion claim, the stronger the 

senior user's mark, the greater the likelihood of confusion 

caused by a junior user's use of a similar mark. But in a 

reverse confusion situation, the senior user's claim may be 

strengthened by a showing that the junior user's mark is 

commercially relatively strong. The greater relative strength 

of the junior mark allows the junior user to "overwhelm" 

the marketplace, diminishing the value of the senior user's 

mark. While analysis of the strength of the senior user's 

mark is relevant, the more important inquiry focuses on the 

junior user's mark. "[T]he lack of commercial strength of 

the smaller senior user's mark is to be given less weight in 

the analysis because it is the strength of the larger, junior 

user's mark which results in reverse confusion.' " A&H 

Sportswear, 237 F.3d at 231 (quoting Commerce Nat'l Ins. 

Servs., Inc., 214 F.3d at 444). Courts should look at the 

commercial strength of the junior user's mark to determine 

whether its advertising and marketing has resulted in a 

"saturation in the public awareness of the junior user's 

mark." Id., 237 F.3d at 231. 

Checkpoint Systems contends the District Court 

improperly evaluated the strength of the marks. Because 

the court found its mark weak in the electronic access 

_________________________________________________________________ 

The District Court recognized that consumers of Check Point 

Software's highly sophisticated technical computer security systems 

would have no reason to believe that Checkpoint Systems's physical 

article surveillance system was manufactured by Check Point Software. 

Because the "computer information" niche that Check Point Software 

operated in was unique and technical there is no reason to believe a 

consumer would assume that Check Point Software had expanded into 

the market for a different type of security product. The same is true of 

Checkpoint Systems's customers. Because of the complicated technology 

involved in the "computer information" niche, these customers would not 

assume that Checkpoint Systems had moved into this market. The court 

properly recognized that even though the relevant case law does not 

require directly competing goods in order to find reverse confusion, 

product relatedness is a very important factor to finding that a consumer 

might confuse the source of products. See, e.g. , id.; Scott Paper, 589 

F.2d at 1230. We see no error. 

 47 
control products (the product most similar to Check Point 

Software's firewall technology),33 and by inference that 

Check Point Software's mark was relatively strong in that 

market, plaintiffs claim the court should have found 

actionable reverse confusion. In other words, as a stronger 

junior user in the network information security market, 

Check Point Software's mark allegedly overwhelmed 

Checkpoint Systems's senior, but weaker mark in the

relevant market. 

Unlike its other findings, the District Court did not 

scrutinize the reverse confusion claim, perhaps because it 

was not extensively argued. It did not expressly analyze the 

relative strengths of the marks for purposes of this claim, 

nor did it directly examine the strength of Check Point 

Software's mark. As noted, it is the strength of the junior 

user's mark that is crucial in establishing a reverse 

confusion claim, because it is the strength of its mark that 

might lead consumers to mistakenly identify "Checkpoint"- 

labeled products with Check Point Software. A&H 

Sportswear, 237 F.3d at 231). In its limited discussion of 

the reverse discrimination claim, the court stated,

 [R]everse confusion threatens harm when the junior 

 user "overwhelms" the marketplace such that the 

 senior user begins to lose its identity and profile. This 

 concern is of greatest force with competing or related 

 products. In the present case, involving non-competing, 

 unrelated products, such "overwhelming" has not even 

 remotely occurred. 

Checkpoint Sys., 104 F. Supp. 2d at 461. 

Had the District Court the benefit of our recent opinion 

in A&H Sportswear , it doubtless would have been guided 

by our analysis. But its failure to do so does not require 

reversal. In light of its Lapp-factors findings, a focused 

analysis under A&H Sportswear could not have changed 

the court's conclusion of no reverse confusion. 

The District Court properly noted that reverse confusion 

is most likely in cases involving competing or related 

_________________________________________________________________ 

33. The court found that its mark was strong in the physical article 

surveillance market. 

 48 
products. When products are related, consumers may be 

likely to assume they are produced by the same company. 

But when not related, the likelihood of confusion 

diminishes dramatically. Given the strong distinctiveness of 

the respective markets as found by the District Court, any 

confusion would appear unlikely. For this reason, a focused 

analysis of the strength of Check Point Software's mark 

would not affect the court's conclusion. 

To establish a claim of reverse confusion, there must be 

evidence that consumers of Checkpoint Systems's products 

were likely to assume that Check Point Software was the 

source of those products. See Dreamwerks, 142 F.3d at 

1130 ("The question . . . is whether consumers doing 

business with the senior user might mistakenly believe that 

they are dealing with the junior user."). But as noted, the 

court found the decision makers who purchased 

Checkpoint Systems's products were not likely to be the 

target audience of Check Point Software's advertising or 

marketing. See Checkpoint Sys., 104 F. Supp. 2d at 466 

("That there is no overlap in the places these parties market 

their products tends to diminish the chance that someone 

who is a specialist in network security will even come 

across an advertisement for plaintiff, and vice versa."). And 

even if purchasers received such marketing materials, the 

high level of care with which they ordinarily made their 

purchasing decisions substantially lessened the likelihood 

of confusion. Put another way, the strength of Check 

Point's Software's mark within the corporate information 

security market would not likely affect the consumers 

within Checkpoint Systems's market, given the level of 

distinctiveness of the relevant markets found by the District 

Court. 

In light of these findings, the strength of Check Point 

Software's mark could have a determinative effect on the 

outcome of the reverse confusion analysis, if at all, only if 

extremely powerful. Only then could it "overwhelm" the 

marketplace diminishing the value of Checkpoint Systems's 

mark. Although the District Court did not analyze this 

factor, it was correct in finding that, "[i]n the present case, 

involving non-competing, unrelated products, such 

`overwhelming' has not even remotely occurred." Checkpoint 

Sys., 104 F. Supp. 2d at 461. 

 49 
As we held in Fisons, the court's application of the Lapp 

factors is not mechanical; rather it must weigh each factor 

against the others. 30 F.3d at 473. When the reviewing 

court determines that almost all the relevant factors favor 

one party, it may discount one factor. See, e.g. , Jet, Inc. v. 

Sewage Aeration Sys., 165 F.3d 419, 423 (6th Cir. 1999) 

(finding no reversible error when the district court erred in 

its application of the "converging markets" factor but 

correctly applied other factors); Freedom Sav. and Loan 

Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir. 1985) 

(finding no reversible error where District Court erred in its 

application of the "similarity of products or services" factor 

but correctly applied other factors). We see no legal error 

here. 

C. 

Checkpoint Systems also contends the District Court

erred in its evaluation of the evidence of actual confusion in 

its reverse confusion claim. In A&H Sportswear , we stated 

that in most trademark cases, parties allege both direct and 

reverse confusion since "the manifestation of consumer 

confusion as `direct' or `reverse' may merely be a function of 

the context in which the consumer first encountered the 

mark. Isolated instances of `direct' confusion may occur in 

a reverse confusion case, and vice-versa." 237 F.3d at 233. 

We declined "to create a strict bar to the use of`direct' 

confusion evidence in a `reverse' confusion case, or vice 

versa." Id.34 Under this view, evidence that the public 

thought Check Point Software was the origin of Checkpoint 

Systems's products is just as probative of likely confusion 

as evidence that the public thought Checkpoint Systems 

was the origin of Check Point Software's products. 35 Here, 

_________________________________________________________________ 

34. We noted that "as a matter of intuition" one might assume evidence 

that the public thought that the senior user was the origin of the junior 

users products would support a direct confusion claim while evidence 

that the public thought the junior user was the source of the senior 

user's product would support a reverse confusion claim. But we stated, 

"In our view, if we were to create a rigid division between `direct' and 

`reverse' confusion evidence, we would run the risk of denying recovery 

to meritorious plaintiffs." A&H Sportswear , 237 F.3d at 233. 

35. However, we noted in A&H Sportswear that "evidence working in the 

same direction as the claim is preferred, and `misfitting' evidence must 

 50 
the District Court properly examined the evidence of actual 

confusion36 and found it to be de minimis. We see no error. 

Finally, Checkpoint Systems contends the District Court 

erred in requiring evidence of actual confusion of 

purchasers at the point of sale to prove its reverse 

confusion claim. But as we have discussed, plaintiffs have 

mischaracterized the court's analysis. The court factored 

Checkpoint Systems's evidence of initial interest and 

investor confusion into its confusion analysis but found the 

evidence insubstantial. We see no clear error. 

V. 

For the foregoing reasons, we will affirm the judgment of 

the District Court. 

A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

_________________________________________________________________ 

be treated carefully, for large amounts of one type of confusion in a 

claim for a different type may in fact work against the plaintiff." 237 

F.3d 

at 233. Here the court found minimal evidence supporting both 

Checkpoint Systems's direct and reverse confusion claims. 

36. The District Court stated: 

 Though plaintiff did have incentive and ability to find [instances 

of 

 actual] confusion if it occurred, by asking its sales persons, 

 distributors, and customers, [Checkpoint Systems] did not offer any 

 testimony of a confused purchaser at trial, showing an absence of 

 reverse confusion (i.e., where a [Checkpoint Systems] customer 

 seeks to purchase a [Checkpoint Systems] product because the 

 customer believes it originated from [Check Point Software]). 

 Similarly, plaintiff located no [Check Point Software] customers 

who 

 indicated they became interested in a [Check Point Software] 

 product because they thought it originated from[Checkpoint 

 Systems]. 

Checkpoint Sys., 104 F. Supp. 2d at 464 (internal citations omitted). 

 51