1

 The Honorable Karen E. Schreier, United States District Judge for the District

of South Dakota.

United States Court of Appeals

FOR THE EIGHTH CIRCUIT

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No. 03-3410

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Gateway, Inc., a corporation, * 

* 

Appellee, * 

* Appeal from the United States

v. * District Court for the

* District of South Dakota.

Companion Products, Inc., * 

a corporation, * 

* 

Appellant. *

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Submitted: June 14, 2004

Filed: September 13, 2004

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Before SMITH, BEAM, and COLLOTON, Circuit Judges.

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SMITH, Circuit Judge.

Companion Products, Inc. ("CPI") appeals from a final judgment entered in the

district court1

 in favor of Gateway, Inc. ("Gateway"), on Gateway's claims of unfair

competition and trademark infringement. For reversal, CPI argues that the district

court erred in (1) granting Gateway's motion in limine, (2) finding that Gateway's

trademark registration was not limited to cow spots in the shape of a box, (3) finding

that CPI's product created a likelihood of consumer confusion, and (4) finding that
2

 CPI advertises and sells its Stretch Pets through flyers, catalogs, the Internet,

magazines, independent sales representatives, and phone calls to various retailers.

CPI has used the phrase "Welcome to Stretch Pet Country" in some of its

advertisements. In retail stores, "Stretch Pets" and "Companion Products" are

prominently displayed on each box. 

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Gateway's mark was entitled to protection under Section 43(a) of the Lanham Act, 15

U.S.C. § 1125 for its trade dress. For the reasons discussed below, we affirm the

judgment of the district court. 

I. Background

Gateway is a corporation, founded in 1985, based in North Sioux City, South

Dakota, that sells computers, computer products, computer peripherals, and computer

accessories throughout the world. By 1988, Gateway began its first national

advertising campaign using black-and-white cows and black-and-white cow spots.

By 1991, black-and-white cows and spots became Gateway's company symbol.

Gateway used "Welcome to Gateway Country" and "Gateway Country" as its theme

and in association with its stores. In 1992, Gateway registered a black-and-white

cow-spots design in association with computers and computer peripherals as its

trademark. 

CPI, a Colorado company, sells stuffed animals trademarked as "Stretch Pets."

Stretch Pets have an animal's head and an elastic body that can wrap around the edges

of computer monitors, computer cases, or televisions. CPI produces sixteen Stretch

Pets using a variety of animals, including a polar bear, moose, cow, several dogs, and

a penguin. Each Stretch Pet has a tag hanging from its ear and a tag sewn into its

seam that contains the trademark "Stretch Pets" and the name "Companion

Products."2

One of CPI's top-selling products is a black-and-white cow that CPI identifies

as "Cody Cow." CPI began selling Cody Cow in 1999. CPI has sold approximately
3

 The trademark registration certificate depicts a 3-D box with black-and-white

cow spots with the accompanying statements:

For: Computers and Computer Peripherals in class 9 (U.S. CL. 26)

First use in 4-1-1991; In Commerce 4-1-1991. 

The matter shown by dotted lines on the drawing is not part of the mark and

serves only to show the relative position of the mark on the goods.

The mark consists of a stylized design representing cow spots, consisting of

black amorphous shapes on a white background.

Gateway's Registration No. 1,725,231.

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45,000 Stretch Pets and approximately 7,000 of those are Cody Cow. Cody Cow's

design and marketing is the catalyst for this case.

Interestingly, Cody Cow's creation is related to Gateway's use of black-andwhite cow spots in its advertising. Because Gateway uses black-and-white cow spots

in its advertising, CPI's president, Dennis Byer, proposed creating a product for

Gateway. Byer considered Gateway an attractive potential customer. Byer produced

a document featuring Cody Cow, with a black-and-white cow-spotted design,

wrapped around a computer monitor that displayed the wording "an idea for

Gateway." On June 1, 1999, CPI sent a sample of the Cody Cow character and a letter

to Gateway stating that "our initial sample was a black and white cow designed with

Gateway in mind." For its second sample, CPI used a stuffed, black-and-white spotted

cow that Byer had bought from a nearby Gateway Country store. Gateway rejected

CPI's offer and informed Byer that Gateway had a registered trademark3

 for its blackand-white cow spot design as it related to computers. 

The following year, a Gateway employee purchased a Cody Cow Stretch Pet

from CPI's website. Based upon its belief that Cody Cow infringed Gateway's
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trademark, Gateway sent a cease and desist letter to CPI on December 8, 2000. The

letter gave notice of Gateway's trademark and warned CPI that if sales of Cody Cow

did not cease, Gateway would file suit. Nonetheless, CPI continued production and

marketing of Cody Cow. On February 7, 2001, counsel for CPI informed Gateway

that Cody Cow did not infringe on Gateway's trademark rights and that it would

continue to sell Cody Cow. 

Gateway filed suit on April 27, 2001. After resolution of summary judgment

motions from both sides, the case proceeded to trial in February 2003 using an

advisory jury pursuant to Rule 39(c). The advisory jury returned a verdict in favor of

CPI on the issues of trademark infringement, trade dress infringement, and dilution.

After reviewing post-trial briefs, the district court agreed with the advisory jury that

Gateway failed to prove dilution of its trademark. However, the court concluded that

Gateway had established that CPI infringed Gateway's black-and-white cow spots

design and its unregistered trade dress in connection with computers. The district

court then enjoined CPI from further infringement. This appeal followed. 

II. Discussion

The district court granted Gateway judgment under the Lanham Act on its

claim for trademark infringement and on its claim for trade dress infringement.

Because we find no error in the district court's grant of injunctive relief on the basis

of trade dress infringement, we need not address its arguments with respect to

trademark infringement. Consequently, we also need not address CPI's argument

regarding the district court's grant of Gateway's motion in limine as it pertained

specifically to evidence related to the trademark claim.

A. Trade Dress Infringement

CPI urges that the district court erred in finding Gateway's mark to be

nonfunctional, and thus protected as trade dress. Specifically, CPI contends that
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Gateway's trademark is a functional or ornamental feature of their computer products,

and thus Gateway's product is unable to be protected as a trade dress or a trademark.

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1), creates a federal

cause of action for trade dress infringement. Insty*Bit, Inc. v. Poly-Tech Industries,

Inc., 95 F.3d 663, 667 (8th Cir. 1996). "Trade dress is the total image of a product,

the overall impression created, not the individual features." Aromatique, Inc., v. Gold

Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994) (citing Woodsmith Publishing Co. v.

Meredith Corp., 904 F.2d 1244, 1247 (8th Cir. 1990)). 

In order for Gateway to establish a claim for trade dress infringement, it must

demonstrate that its trade dress is: (1) inherently distinctive or acquired

distinctiveness through secondary meaning; (2) nonfunctional; and (3) its imitation

would result in a likelihood of confusion in consumers' minds as to the source of the

product. See Insty*Bit, Inc., 95 F.3d at 667 (citing Two Pesos, Inc. v. Taco Cabana,

Inc., 505 U.S. 763, 769 (1992)). We review this question of fact under a clearly

erroneous standard. Prufrock Ltd. v. Lasater, 781 F.2d 129, 132–133 (8th Cir. 1986).

"A finding is clearly erroneous when although there is evidence to support it, the

reviewing court on the entire evidence is left with the definite and firm conviction

that a mistake has been committed." Prufrock Ltd., Inc., 781 F.2d at 133 (internal

quotations omitted).

First, we agree with the district court that the evidence produced at trial

established that Gateway's trade dress acquired distinctiveness through secondary

meaning. Secondary meaning occurs when "in the minds of the public, the primary

significance of a [mark] is to identify the source of the product rather than the product

itself." Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000).

Gateway produced expert testimony showing that the general public associates blackand-white cow spots in relation to computers with Gateway. 
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Second, with respect to the next criterion, CPI contends that Gateway's trade

dress is primarily functional, and therefore not entitled to protection under the

Lanham Act. In order to be protected, Gateway's trade dress must be nonfunctional.

Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164 (1995). Trade dress is

considered functional if it performs some function other than identifying the

computers and computer related products that Gateway produces. Our test for

determining trade dress functionality provides:

If the particular feature is an important ingredient in the commercial

success of the product, the interests in free competition permits its

imitation in the absence of a patent or copyright. On the other hand,

where the feature or, more aptly, design, is a mere arbitrary

embellishment, a form of dress for the goods primarily adopted for

purposes of identification and individuality and, hence, unrelated to

basic consumer demands in connection with the product, imitation may

be forbidden where the requisite showing of secondary meaning is

made. Under such circumstances, since effective competition may be

undertaken without imitation, the law grants protection.

Prufrock Ltd., Inc., 781 F.2d at 132–133 (citing Truck Equipment Service Co. v.

Fruehauf Corp. (TESCO), 536 F.2d 1210, 1217–1218 (8th Cir. 1976)). In short,

Gateway's trade dress is nonfunctional "if it is an arbitrary embellishment primarily

adopted for purposes of identification and individuality. But if the trade dress is an

important ingredient in the commercial success of the product, it is clearly

functional." Id. at 133. Trade dress may also be considered functional if it puts a

competitor at a significant non-reputation-related disadvantage. Qualitex, 514 U.S.

at 165. See also Home Builders Ass'n v. L&L Exhibition Mgmt., 226 F.3d 944, 948

(8th Cir. 2000). 

Gateway's trade dress clearly reflects characteristics that are nonfunctional.

Black-and-white cow spots are an arbitrary embellishment that serve only to

distinguish Gateway computers from computers produced by other manufacturers.
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The purely decorative nature of the design plays no part whatsoever in the

performance of Gateway's computers. Surely, no consumer believes that the presence

of this design affects the operation of electronic components and peripherals

associated with Gateway. Gateway's competitors in the field of computers and their

peripherals are not hindered in the least from producing comparable or superior

products dressed in some other manner than black-and-white cow spots.

 Gateway's trade dress does not prevent CPI from using other colors and

designs for their computer-decorative products. They are not placed at a disadvantage

to other makers of such products because those companies may not use Gateway's

protected trade dress either. CPI produced testimony that collectors of cows prefer

cows that have black-and-white spots and that Cody Cow was manufactured for sale

to cow collectors. However, the district court made credibility findings regarding

Byer's true motives for the production and sale of Cody Cow. Specifically, the court

discredited Byer's testimony and found that the product was actually created with

Gateway in mind. In sum, CPI may make and sell a collectible cow but it may not sell

one like Cody Cow that is specifically identified with Gateway's trademark. 

We are satisfied that the evidence presented at trial describes a nonfunctional

trade dress. Gateway's witnesses testified that in relation to computers, consumers

associated stylized black-and-white cow spots with Gateway. We hold that the district

court's finding that Gateway's trade dress is nonfunctional is not clearly erroneous.

Lastly, we address whether Cody Cow creates a likelihood of confusion with

Gateway's trade dress. To prevail under the Lanham Act, Gateway had to demonstrate

that CPI's use of Cody Cow would likely cause confusion among an appreciable

number of consumers. 15 U.S.C. § 1125(a)(1). In determining whether a likelihood

of confusion exists, numerous factors must be considered, including: (1) the strength

of the trademark; (2) the similarity between the parties' marks; (3) the competitive

proximity of the parties' products; (4) the alleged infringer's intent to confuse; (5)
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evidence of actual confusion; (6) the degree of care reasonably expected of potential

customers. Duluth News-Tribune, a Div. of Northwest Publ'ns, Inc. v. Mesabi Pub.

Co., 84 F.3d 1093, 1096 (8th Cir. 1996). No single factor is dispositive; rather, the

factors serve as a guide to determine whether there is a likelihood of confusion.

SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). "Likelihood of

confusion is a finding of fact, and therefore, the district court's finding will be upheld

unless it is clearly erroneous." WSM, Inc. v. Hilton, 724 F.2d 1320, 1329 (8th Cir.

1984). 

The district court applied the factors to the evidence in this case and concluded

that CPI's Cody Cow is likely to be confused with Gateway's computer products. We

agree. In the field of computer products, black-and-white cow spots are clearly

identified with Gateway. Gateway's extensive, ten-year advertising campaign to raise

the public's recognition of Gateway's mark resulted in consumers associating the

black-and-white cow spots with Gateway's computer products. From 1991 through

2001, Gateway spent over $1.3 billion worldwide and over $1 billion in the United

States on advertising and promotional items. Gateway Country stores across the

nation are painted in a black-and-white cow spotted pattern. Gateway imprints its

trademark on a variety of computer accessories and promotional products, including

mouse pads and supports, CD binders and sleeves, and screen savers. It sells these

products through its catalogs and stores. Gateway ships its computer products in

black-and-white cow spotted boxes. The spots on Cody Cow–while not identical to

Gateway's cow spots–are nonetheless quite similar. 

The district court also made specific findings regarding CPI's intent to confuse.

Also noted above, the court questioned the credibility of Byer's testimony. Byer

denied that Cody Cow was created for Gateway, even though evidence demonstrated

that he had approached Gateway with the idea of the black-and-white spotted cow

Stretch Pet before marketing it through CPI. Byer went so far as to send a letter to

Gateway indicating that CPI had purchased a Gateway plush cow from a "Gateway
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Country" retail store to create the initial sample of Cody Cow. The record shows that

CPI intended for Cody Cow to mirror a Gateway plush cow. Also, Byer testified that

he thought it would be beneficial to use A & A Plush, the company that manufactured

Gateway's plush cows, to create Cody Cow. When Gateway rejected Byer's desire to

include Cody Cow in Gateway's collection of merchandise, and informed Byer that

Gateway held trademark rights to black-and-white cow spots, Byer did not

discontinue sales. 

Gateway produced adequate evidence of actual confusion. Gateway conducted

a nationwide survey to determine actual confusion. Philip Johnson testified that

approximately 39% of the people surveyed erroneously believed that Gateway

manufactured or sponsored Cody Cow. This confusion rate substantially exceeds a

rate we have previously found sufficient evidence of actual confusion. Humble Oil

& Refining Co. v. American Oil Co., 405 F.2d 803, 817 (8th Cir. 1969) (percentage

ranged from 11% to 49%). Johnson testified that in his experience, this represents a

high level of confusion. Jamie Hackett, an employee of Gateway until 2001, stated

that the black-and-white cow spots on Cody Cow looked similar to the black-andwhite cow spots used and trademarked by Gateway. Also, a retail seller of Cody Cow

testified that the spots on Cody Cow were similar to the spots used by Gateway.

It is clear from the district court's opinion that the court concluded that CPI and

Gateway are in close competitive proximity. The court found that both parties attract

people who own computers and who purchase computer accessories. Both sell

products in stores and on web sites related to computer goods. CPI's products often

appear next to other novelty computer accessories that are similar to Gateway's

products. These findings were adequately supported in the record.

Finally, the court considered the degree of care reasonably expected of

potential customers. The court found that because Cody Cow sells for less than $20,

consumers would not spend substantial time considering their purchase. Consumers
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typically exercise little care in the selection of inexpensive items that may be

purchased on impulse. Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 926

(10th Cir. 1986). Relying on the high degree of similarity between Cody Cow's blackand-white cow spots and Gateway's trade dress, the court concluded that consumers

would infer that Gateway is affiliated with CPI's product and would not gather

information sufficient to dispel the confusion. 

The district court concluded that there was a likelihood of confusion by the

consuming public. After evaluating the record before us, we conclude that the district

court's findings are not clearly erroneous and should be affirmed. 

For all of the above reasons, the judgment of the district court is affirmed.

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