## F I L E D United States Court of Appeals Tenth Circuit 

### SEP 3 2002 

### PATRICK FISHER Clerk PUBLISH
UNITED STATES COURT OF APPEALS

TENTH CIRCUIT

SALLY BEAUTY COMPANY, INC., a Delaware corporation; MARIANNA IMPORTS, INC., a Nebraska corporation, Plaintiffs-Appellants/

Cross-Appellees,

v. Nos. 01-6049 and 01-6075 BEAUTYCO, INC., a Delaware corporation, Defendant-Appellee/

Cross-Appellant.

APPEALS FROM THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF OKLAHOMA

(D.C. NO. 99-CV-1372-C)

Craig S. Fochler, Wildman, Harrold, Allen & Dixon, Chicago, Illinois (Charles R. Mandly, Jr. and Nathan E. Ferguson, Wildman, Harrol d, Allen & Dixon, Chicago, Illinois; and Jill Robb Ackerman and Michael Sulliv an, Baird, Holm, McEachen, Pedersen, Hamann & Strasheim, Omaha, Nebraska, withhim on the briefs), for Plaintiffs-Appellants/Cross-Appellees. Joseph P. Titterington (G. Neal Rogers with him on the briefs), Dunlap, Codding & Rogers, P.C., Oklahoma City, Oklahoma, for Defend ant-Appellee/CrossAppellant.-2-

Before LUCERO , McKAY , and MURPHY , Circuit Judges.

MURPHY , Circuit Judge.

I. INTRODUCTION Sally Beauty Co., Inc. (“Sally Beauty”) and Mariann a Imports, Inc. (“Marianna”), collectively “Plaintiffs,” sued Beautyco, Inc. (“Beautyco”) for trademark infringement, trade dress infringement, and false advertising. Beautyco markets a line of hair care products underthe trade name GENERIX, which the Plaintiffs claim infringes the trademark and trade dress of their competing line of hair care products called Generic Value Products. The district court granted summary judgment to Beautyco on the P laintiffs’ claims. The court also granted summary judgment to the Plaintiffs on Beautyco’s counterclaims for violations of Oklahoma antitrust and unfair competi tion laws. Exercising jurisdiction under 28 U.S.C. § 1291, this court affirms in part , reverses in part , and remands

. II. BACKGROUND Plaintiff Sally Beauty owns and operates stores und er the name Sally Beauty Supply and sells hair care, skin care, and n ail care products. Plaintiff-3-

Marianna is a “filler” or contract manufacturer and packager of beauty supply products. Defendant Beautyco operates a chain of b eauty supply stores that competes with Sally Beauty Supply and sells beauty supplies to the general public and the salon trade. Sometime in 1989 or 1990, Sally Beauty began sellin g a line of hair care products called Generic Value Products, which SallyBeauty conceived as a lower-priced alternative to brand name salon produc ts. Generic Value Products contain ingredients, colors, and fragrances similarto their salon counterparts. Marianna helped design the packaging for Generic Va lue Products and manufactures the line for Sally Beauty. The partie s do not dispute that the trade dress at issue includes Sally Beauty’s white bullet -shaped bottle with a flat, black cap. In addition, the Generic Value Products mark appears in white lettering against a black rectangular field near the top of t he bottle. In the middle of the bottle, the product compares itself to a brand name salon product. On the back, there is a side-by-side listing of the ingredients in the Generic Value Products item and the name brand salon product. The Plaintiffs agreed with each other that Sally Be auty would own the trade dress for the Generic Value Products line and Marianna would own the trademark. Marianna applied for and received federal trademarkprotection for the Generic-4-

Value Products mark in 1998. Sally Beauty holds anexclusive license from Marianna to use the trademark. The mark consists of the words “Generic Value Produ cts” when associated with hair care products. Marianna’s mark is typed in capital letters in the principal trademark register, which means that the registration covers all design features and is not limited to any special form or lettering. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:58 (4th ed. & June 2002 database update) [hereinafter McCarthy on Trademarks ] (“‘Registrations with typed drawings are not limite d to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.’” (quoting Cunningham v. Laser Golf Corp. , 222 F.3d 943, 950 (Fed. Cir. 2000))). The registration explicitly disavows the right to use the words “generic” and “products” separate from the mark. S ince its introduction, Sally Beauty has sold millions of dollars of the Generic Value Products line. Beautyco was a customer of Marianna for many years. Around 1994, Marianna had discussions with Larry Rhodes, the former owner of Beautyco, to create a lower-priced alternative hair care line fo r Beautyco. Rhodes proposed a product line called GENERIX to be packaged in a bul let-shaped bottle with a black cap and a black-and-white design. Because Marianna believed that the packaging and name for the proposed GENERIX line to o closely resembled Sally-5-

Beauty’s Generic Value Products, Marianna asked Beautyco to change the proposed packaging. Beautyco refused. Marianna di d not produce the line and Beautyco proceeded with production of the GENERIX l ine with another filler. Beautyco launched the GENERIX line in 1995 or 1996. The GENERIX shampoo product contains elements similar to the Ge neric Value Products line. Like the Sally Beauty trade dress, GENERIX uses pac kaging consisting of a white bullet-shaped bottle with black lettering and a flat, black top. As in the Generic Value Products line, the GENERIX trade dress also c ompares itself to a name brand salon product on the front of the bottle and contains an ingredient comparison chart on the back of the bottle. In 1996, Beautyco applied for federal trademark reg istration of its GENERIX mark. Marianna opposed the application. A fter settlement negotiations between the parties failed, the Plaint iffs filed suit, alleging federal and state law claims that Beautyco’s GENERIX produc ts infringed on Marianna’s Generic Value Products trademark, infringed on Sall y Beauty’s trade dress, and contained false advertising on their labels. Beautyco filed a counterclaim, alleging, inter alia , that the Plaintiffs’ lawsuit violated Oklahoma antitrust and unfair competition laws. Beautyco moved for summary judgment on the Plaintiffs’ claims and the Plaintiffs moved for sum mary judgment on Beautyco’s counterclaims. The district court granted Beautyco ’s motion for summary-6-

judgment on the Plaintiffs’ claims and Plaintiffs’ motion for summary judgment on Beautyco’s state antitrust and unfair competitio n counterclaims. The parties cross-appealed from the district court’s orders.
III. STANDARD OF REVIEW This court reviews the grant of summary judgment de novo , employing the same standard applied by the district court. King of the Mountain Sports, Inc. v. Chrysler Corp. , 185 F.3d 1084, 1089 (10th Cir. 1999). Summary judgment is appropriate if the pleadings, depositions, other di scovery materials, and affidavits demonstrate the absence of a genuine issue of mater ial fact and that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). The party seeking summary judgment bears the initial burden o f demonstrating an absence of a genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323 (1986). If the moving party does not bear the burd en of proof at trial on a dispositive issue, that party may make such a showi ng simply by indicating to the court a lack of evidence for the nonmovant on an es sential element of the nonmovant’s claim. Id. at 325. Once the moving party has properly supported its motion for summary judgment, the burden shifts to the nonmoving party to go beyond the pleadings and set forth specific facts s howing that there is a genuine issue for trial. Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co. , 22 F.3d 1527, 1529 (10th Cir. 1994). An issue is genuine “if the evidence is such that a-7-

reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986). We construe the eviden ce and the reasonable inferences drawn therefrom in the light most favorable to the

nonmovant. King of the Mountain Sports , 185 F.3d at 1089.
IV. PLAINTIFFS’ APPEAL A. Trademark Infringement Congress has defined a trademark as “any word, name , symbol, or device, or any combination thereof . . . to identify and di stinguish his or her goods, including a unique product, from those manufacturedor sold by others and to indicate the source of the goods, even if that sour ce is unknown.” 15 U.S.C. § 1127. Marianna brought a federal trademark infri ngement claim under 15 U.S.C. § 1114, which prohibits the unauthorized use of a counterfeit or imitation of the registered mark likely to cause confusion inthe marketplace concerning the source of the different products. See 15 U.S.C. § 1114(1)(a); First Sav. Bank, F.S.B. v. First Bank Sys., Inc. , 101 F.3d 645, 651 (10th Cir. 1996). In determining whether a likelihood of confusion exist s between two marks, this court considers the following nonexhaustive factors : (1) the degree of similarity between the marks; (2) the intent of the alleged in fringer in adopting its mark; (3) evidence of actual confusion; (4) similarity of pro ducts and manner of marketing; (5) the degree of care likely to be exercised by pu rchasers; and (6) the strength or-8-

weakness of the marks. See King of the Mountain Sports , 185 F.3d at 1089-90. These factors are interrelated and no one factor is dispositive. Id. at 1090. In this circuit, likelihood of confusion is a question of f act but one amenable to summary judgment in appropriate cases. See id. at 1089 (“Courts retain an important authority to monitor the outer limits of substantia l similarity within which a jury is permitted to make the factual determination whet her there is a likelihood of confusion.” (alteration and quotation omitted)). I f the nonmovant demonstrates a genuine issue of material fact regarding the likeli hood of confusion, however, summary judgment is not appropriate. See id

. 1. Similarity of Marks The degree of similarity between marks rests on sig ht, sound, and meaning. Id. This court must determine whether the allegedly i nfringing mark will confuse the public when singly presented, rather than when presented side by side with the protected trademark. Id. In so doing, similarities are weighed more heavil y than differences, particularly when the competing marks are used in virtually identical products packaged in a similar manner. Beer Nuts, Inc. v. Clover Club Foods Co. , 805 F.2d 920, 925 (10th Cir. 1986) [hereinafter Beer Nuts II ]. The district court concluded that the similarity of marks weighed in favor of Marianna. “Generic Value Products,” however, is not visually similar to “GENERIX.” Marianna’s mark consists of three words , while Beautyco’s1 Beautyco contends that because Marianna disclaimed the terms “generic”

and “products” in its trademark, the only part of M arianna’s mark which ought to be considered in a likelihood of confusion analysis is “Value” or “Value Products.” In this circuit, however, “the disclaim ed material still forms a part of the marks and cannot be ignored in determining like lihood of confusion.” Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co. , 22 F.3d 1527, 1531 (10th Cir. 1994) (quotation omitted). We thus consider Marian na’s mark in its entirety. -9- consists of only one. Although both marks begin wi th the same six letters, this similarity is not enough to outweigh the visual differences in the marks. 1 Cf. id.
at 926. The sound of the marks is also different. “Generic Value Products” does not sound similar to “GENERIX.” In considering thi s subfactor, the district court erred by shortening “Generic Value Products” to simply “Generic” in comparing aural similarities between the marks. The districtcourt cited no authority which would permit the shortening of the trademark for th e likelihood of confusion analysis. Marianna relies on Giant Food, Inc. v. Nation’s Foodservice, Inc. , in support, but that case involved marks consisting of pictorial designs with clearly dominant visual elements. See 710 F.2d 1565, 1567, 1570-71 (Fed. Cir. 1983). In this case, however, the Generic Value Products m ark consists of words alone and no one word takes precedence over the others. In contrast, the meanings of “Generic Value Product s” and “GENERIX” are similar. Although “GENERIX” has no inherent meanin g, Beautyco admits in its motion for summary judgment that the use of the wor d is obviously intended to-10-

convey the idea that its product is inexpensive. B eautyco further concedes that Sally Beauty’s use of “Generic” conveys the same id ea. Taken as a whole, Generic Value Products conveys the same meaning as GENERIX. On balance, the similarity in meaning between the m arks favors Marianna, but the differences in both sight and sound favor B eautyco. Although similarities are to be weighed more heavily than differences, th e differences in this case are significant enough to lead us to conclude that this factor weighs in favor of Beautyco. 2. Intent to Copy Proof that a defendant chose a mark with the intentof copying the plaintiff’s mark may, standing alone, justify an in ference of likelihood of confusion. Beer Nuts, Inc. v. Clover Club Foods Co. , 711 F.2d 934, 941 (10th Cir. 1983) [hereinafter Beer Nuts I ]. “The proper focus under this factor is whether defendant had the intent to derive benefit from the reputation or goodwill of plaintiff.” King of the Mountain Sports , 185 F.3d at 1091 (quotation omitted). “One who adopts a mark similar to another already e stablished in the marketplace does so at his peril, because the court presumes th at he can accomplish his purpose: that is, that the public will be deceived . All doubts must be resolved against him.” Beer Nuts I , 711 F.2d at 941 (citations and quotation omitted)

.-11-

In support of the assertion that Beautyco intention ally copied Marianna’s mark, Marianna cites to a June 1994 fax written by Beautyco’s supplier Charles Coleman to another filler stating that Beautyco “wa nts to knock-off Sally’s Generic line.” Coleman explained in his depositionthat this statement meant that Beautyco wanted to copy both the product and the pa ckaging of the Generic Value Products line. Marianna also cites to the depositi on of Sid Lande, a manufacturer’s representative who worked with Marianna on the Generic Value Products line. Lande testified in a deposition that Rhodes said he wanted the GENERIX line to “look like what Sally’s doing. . . . [Rhodes] wanted to make it look very similar to what Sally was marketing.” Al though it is not precisely clear whether Beautyco specifically wanted to copy the Generic Value Products mark , as opposed to the line’s trade dress , a reasonable inference is that Beautyco wanted to copy the whole of the Generic Value Produ cts line. Any doubts about this factor must be resolved against Beautyco. Beer Nuts I , 711 F.2d at 941. Viewing the Coleman fax and the Coleman and Lande d eposition testimony in the light most favorable to Marianna, a reasonable jurycould find that Beautyco intended to copy the Generic Value Products trademark. This factor therefore weighs in favor of Marianna.-12-

3. Actual Confusion Although not necessary to prevail on a trademark in fringement claim, evidence of actual confusion in the marketplace maybe the best indication of likelihood of confusion. See King of the Mountain Sports , 185 F.3d at 1092. Such evidence may be introduced through surveys, al though their evidentiary value depends on the methodology and questions asked. See Universal Money
Ctrs. , 22 F.3d at 1534 n.3. Evidence of actual confusio n does not create a genuine issue of fact regarding likelihood of confusion if it is de minimis

. Id. at 1535. Marianna cites to a survey conducted by its expert, George Mantis. The survey reports that out of 180 participants, twelve individuals, or 6.7 percent of the sample, believed that GENERIX and Generic Value Products were manufactured by the same company based solely on si milarities in their names. The participants, however, were not shown the trade marks separately from the packaging and bottles. Mantis admitted that the su rvey was not designed to test confusion over the trademarks separate from the tra de dress. He further conceded that his survey does not support the conclusion “th at Generix as a trademark is confusingly similar or likely to cause confusion to [sic] Generic Value Products.” Even if Marianna’s expert testimony could be construed as evidence of a likelihood of confusion between the trademarks only , we conclude that such-13-

evidence is de minimis . This factor is thus neutral. This court has stated, however, that the “absence of [actual confusion] does not necessarily support a finding of no likelihood of confusion, especially when the produ cts involved are inexpensive.” Beer Nuts II , 805 F.2d at 928. 4. Similarity of Products and Manner of Marketing “The greater the similarity between the products . . ., the greater the likelihood of confusion.” Universal Money Ctrs. , 22 F.3d at 1532. This court has previously analyzed this factor by separately consi dering (1) the similarity of products and (2) the similarity in the manner of marketing the products. See id. at 1532-33. Here, Beautyco concedes the first factor, that both Generic Value Products and GENERIX are cheaper versions of salon brand hair care products. “Confusing similarity is most likely when the produ cts themselves are very similar.” Beer Nuts I , 711 F.2d at 941. In analyzing the similarity in the manner of market ing, this court has previously considered whether the parties were comp etitors in consumer markets. See Heartsprings, Inc. v. Heartspring, Inc. , 143 F.3d 550, 556-57 (10th Cir. 1998); First Sav. Bank , 101 F.3d at 656. Beautyco concedes that it and S ally Beauty sell their products at their respective reta il stores and that its primary competitor in the beauty salon products business is Sally Beauty. Similar hair care product lines were thus reaching consumers thr ough similar commercial-14-

channels to the same retail market, the beauty supply trade. Cf. Heartsprings , 143 F.3d at 557 (concluding that evidence indicating th at parties “operate[d] in distinctly different markets, [sold] distinctly dif ferent products, and contact[ed], for the most part, very different people in their m arketing efforts” reduced the likelihood of confusion). A consumer who bought ei ther party’s products, which are similar in nature and packaging, thus did so incompeting retail outlets. Beautyco does not allege that there are differences in the parties’ advertising strategies, which could reduce the likelihood of confusion. See Universal Money
Ctrs. , 22 F.3d at 1532. Although the district court recognized these “signi ficant similarit[ies]” in the products and marketing, it explained that the p roducts do not compete in the same retail outlets and thus there is little risk o f confusion. This court has recognized that “[t]he possibility of confusion is greatest when products reach the public by the same retail outlets.” Beer Nuts I , 711 F.2d at 941. None of our cases, however, require that the allegedly infringi ng product be available on the same shelves as the plaintiff’s product. Accord Paco Rabanne Parfums, S.A. v. Norco Enters., Inc. , 680 F.2d 891, 893 (2d Cir. 1982) (explaining that , in the context of preliminary injunctions, “it is well est ablished that products need not be sold side by side for a plaintiff to show that there is a likelihood of confusion”). As already discussed, the parties hadsimilar and competing-15-

products marketed to consumers through similar comm ercial channels. Accordingly, this factor weighs in favor of Mariann a. 5. Degree of Care Exercised by Consumers A consumer exercising a high degree of care in sele cting a product reduces the likelihood of confusion. Heartsprings , 143 F.3d at 557. This court has explained that “buyers typically exercise little ca re in the selection of inexpensive items that may be purchased on impulse.” Beer Nuts II , 805 F.2d at 926 (quotation omitted). Accordingly, items purchased on impulse are more likely to be confused than expensive items, which are typically chosen carefully. See id. The relevant inquiry focuses on the consumer’s degr ee of care exercised at the time of purchase. See Universal Money Ctrs. , 22 F.3d at 1533. When Beautyco’s Rhodes was asked whether GENERIX pr oducts were impulse sales, he testified: “Well, I’d say probab ly the majority of the time the customer wasn’t coming in for them. You know, that ’s kind of what I call an impulse. If the customer wasn’t driven to it, thenit kind of becomes, oh, I think I’ll try that. That’s impulse.” Rhodes indicated that GENERIX products are impulse items and thus typically purchased with a l ow degree of consumer care. Contrary to this testimony, however, the district c ourt concluded that this factor weighed in favor of Beautyco. Because the products were sold only in the parties’ respective stores, the district court reas oned, a consumer who “uses-16-

enough care to shop at a specialty store would [] a lso use enough care to remember which specialty store carries its product. ” Beautyco, however, does not cite to anything in the record to support this conc lusion on appeal. Moreover, Rhodes’ testimony that “the majority of the time th e customer wasn’t coming in for [GENERIX products]” belies the district court’s conclusion. Viewing this evidence in the light most favorable to the nonmova nt, this factor weighs in favor of Marianna. 6. Strength of the “Generic Value Products” Mark The stronger the mark, the greater the likelihood t hat encroachment on the mark will cause confusion. See King of the Mountain Sports , 185 F.3d at 1093. The categories of trademarks in ascending order of relative strength are: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Heartsprings , 143 F.3d at 555 (citing Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 768 (1992)). A generic mark refers to a general class of goods, such as “cola,” of which an individual article is but a member. Beer Nuts I , 711 F.2d at 939. Such marks do not indicate the particular sou rce of an item and are not entitled to any trademark protection. Id. A descriptive mark identifies a characteristic or quality of an article or service, such as its color, odor, function, dimensions, or ingredients. Id. A descriptive mark may receive protection “only when it has acquired a secondary meaning by becomin g distinctive of the-17-

applicant’s goods in commerce.” Id. at 940 (quotation omitted). Suggestive marks “suggest[] rather than describe[] a character istic of the product and require[] the consumer to use imagination and perce ption to determine the product’s nature.” First Sav. Bank , 101 F.3d at 655. Arbitrary marks use common words, symbols, and pictures that do not sug gest or describe any quality or characteristic of the goods or services. King of the Mountain Sports , 185 F.3d at 1093. Finally, fanciful marks are words invente d or selected for the sole purpose of functioning as a trademark. Id. Suggestive, fanciful, and arbitrary marks are considered inherently distinctive and ent itled to trademark protection.
See Two Pesos , 505 U.S. at 768. In this case, the Patent and Trademark Office (PTO) granted Marianna’s application to register the “Generic Value Products ” mark without requiring proof of secondary meaning. Beautyco does not challenge Marianna’s argument that the PTO action creates a rebuttable presumption that th e mark is inherently distinctive. See generally GTE Corp. v. Williams , 904 F.2d 536, 538 (10th Cir. 1990) (citing cases). Beautyco has also failed to cite any evidence that Marianna’s mark is generic or descriptive. Rather, Beautyco’s only argument is that the Generic Value Products line’s prominent us e of the word “generic” in its packaging and advertising signals that the mark its elf is generic. Merely because a producer manufactures goods which feature the wor d “generic,” however, does2 In their complaint, Marianna also asserted a tradem ark infringement claim

under Oklahoma common law. The district court conc luded that its resolution of (continued...) -18- not render the trademark itself generic. Beautyco mistakenly asserts that Marianna’s mark identifies only a general class of goods, but the “Generic Value Products” mark does not, by its terms, describe hai r care products. Marianna is entitled to a presumption that the Generic Value Pr oducts mark is inherently distinctive, one that Beautyco does not rebut. Thi s factor therefore weighs in favor of Marianna. 7. Summary Judgment Inappropriate Beautyco’s intent to copy, standing alone, may be e nough to preclude summary judgment in its favor. See Beer Nuts I , 711 F.2d at 941. When this court weighs the similarities in products and marke ting, the low degree of consumer care, and the relative strength of the Gen eric Value Products mark into the balance of factors, we conclude that a reasonab le jury could return a verdict for Marianna. Although the dissimilarities betweenthe marks favor Beautyco, that factor alone is not dispositive. “It is certa inly not necessary to use an exact copy of another’s mark for a reasonable buyer to be likely to be confused.” McCarthy on Trademarks § 23.20. Because Marianna has demonstrated a genu ine issue of material fact on the likelihood of confusi on, the district court erred in granting summary judgment to Beautyco. 22 (...continued)

the federal trademark claim also disposed of the st ate claim. Beautyco does not contest this conclusion on appeal or offer any othe r basis for this court to affirm the district court. Accordingly, this court conclu des that the district court’s judgment on Marianna’s state trademark claim must a lso be reversed and remanded. -19- B. Trade Dress Infringement The trade dress of a product is its overall image a nd appearance, and may include features such as size, shape, color or colo r combinations, texture, graphics, and even particular sales techniques. Two Pesos , 505 U.S. at 764 n.1 (quotation omitted). Under § 43(a) of the Lanham A ct, a plaintiff has a cause of action against any person whose use of a word, symb ol, or device is likely to cause confusion regarding the source or origin of the plaintiff’s goods. See 15 U.S.C. § 1125(a)(1)(A); Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, 209 (2000). Protection may extend to a single feature or a combination of features in a trade dress. See Vornado Air Circulation Sys., Inc. v. Duracraft Corp. , 58 F.3d 1498, 1502 (10th Cir. 1995). In order to demonstrate trade dress infringement for product packaging, the plaintiff m ust demonstrate (1) that its trade dress is inherently distinctive or has become distinctive through secondary meaning; and (2) likelihood of confusion. See id. at 1502-03. In addition, the party asserting trade dress infringement bears the burden of demonstrating that3 Beautyco did not assert before the district court that there was no genuine

issue of material fact on functionality. Beautyco therefore waived on appeal its argument that Sally Beauty’s trade dress is nonfunc tional. See Walker v. Mather (In re Walker) , 959 F.2d 894, 896 (10th Cir. 1992). -20- the trade dress is not functional. 15 U.S.C. § 1125(a)(3); Samara Bros. , 529 U.S.
at 210. 3 1. Distinctiveness and Secondary Meaning A trade dress is inherently distinctive if its “intrinsic nature serves to identify a particular source.” Two Pesos , 505 U.S. at 768. Such trade dresses “almost automatically tell a customer that they refer to a brand and imm ediately signal a brand or a product source.” Samara Bros. , 529 U.S. at 212-13 (citation, quotations, and alteration omitted). Like trademar ks, the inherent distinctiveness of a trade dress is categorized along the generic-d escriptive-suggestive-arbitraryfanciful spectrum. See Two Pesos , 505 U.S. at 768. A trade dress which is not inherently distinctive, however, may acquire distin ctiveness through secondary meaning. Id. at 769. In other words, over time customers may a ssociate the primary significance of a dress feature with the so urce of the product rather than the product itself. See Qualitex Co. v. Jacobson Prods. Co. , 514 U.S. 159, 163 (1995). When a trade dress has become distinctive of a product’s source, courts have permitted protection under § 43(a) of the Lanham Act. See Two Pesos , 505
U.S. at 769.-21-

Viewing the evidence in the light most favorable to Sally Beauty, this court concludes that a genuine issue of material fact exi sts whether Sally Beauty’s trade dress is descriptive. A trade dress is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Abercrombie & Fitch Co. v. Hunting World, Inc. , 537 F.2d 4, 11 (2d Cir. 1976). Sally Beauty’s trade dress includes the mark “Generic Value Produc ts,” a product comparison to a salon brand product, and side-by-side ingredients listing for the product and the comparable salon brand product. Taken together, a reasonable jury could conclude that these elements immediately convey the qualities and characteristics of the product, i.e. , Generic Value Products is a comparable alternativ e to salon brand products. Indeed, the trade dress includes atextual element called “The Generic Story,” which states that Generic Value Pro ducts are “as good as the ‘higher priced’ quality NAME BRANDS” but available at “‘Popular Prices.’” A descriptive trade dress, however, is not entitledto trade dress protection unless it has acquired secondary meaning in the marketplace. See Two Pesos , 505 U.S. at 769. Whether a trade dress has acquired se condary meaning is a question of fact and thus generally should not be decided atthe summary judgment stage.
See Marker Int’l v. deBruler , 844 F.2d 763, 764 (10th Cir. 1988). A trade dres s acquires secondary meaning when “its primary signif icance in the minds of potential consumers is no longer as an indicator of something about the product-22-

itself but as an indicator of its source or brand.” Vornado Air Circulation Sys. , 58 F.3d at 1502; see also Two Pesos , 505 U.S. at 766 n.4. “The ultimate inquiry is whether in the consumer’s mind the mark denotes a s ingle thing coming from a single source. That single source, however, need n ot be known by name by
consumers.” Stuart Hall Co. v. Ampad Corp. , 51 F.3d 780, 789 (8th Cir. 1995) (quotations and citations omitted). Sally Beauty relies on three categories of evidence which it argues establish secondary meaning: (1) a history of successful sal es; (2) evidence of intentional copying by Beautyco; and (3) long use of the Sally Beauty trade dress. This court has previously considered proof of intentional copy ing as relevant to whether a trademark has acquired secondary meaning. See Marker Int’l , 844 F.2d at 764. Other circuits have considered the sales volume of the product featuring the trade dress in a likelihood of confusion analysis. See Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc. , 280 F.3d 619, 640 n.14 (6th Cir. 2002); Checkpoint Sys., Inc. v. Check Point Software Techs., Inc ., 269 F.3d 270, 283 n.10 (3d Cir. 2001). The parties do not dispute that the Plaintiffs have sold millions of dollars of Generic Value Products featuring the Sally Beauty trade dress. Standing alone, sales volume may not be indicative of secondary meaning because it could be related to factors other than source identification. See Herman Miller, Inc. v.4 Sally Beauty also relies on its long use of the tra de dress as additional

evidence of secondary meaning. This court has expl ained, however, that “[t]o acquire secondary meaning, a descriptive mark must have been used so long and so exclusivelyby one producer with reference to his goods” that it has acquired distinctiveness. J.M. Huber Corp. v. Lowery Wellheads, Inc. , 778 F.2d 1467, 1470 (10th Cir. 1985) (emphasis added) (quotation o mitted); see also 15 U.S.C. § 1052(f) (permitting Patent and Trademark Office t o accept “proof of substantially exclusive and continuous use” of mark as prima facie evidence of secondary meaning in application for trademark regi stration (emphasis added)). Sally Beauty offered no evidence below or on appeal that its use of trade dress was substantially exclusive. -23- Palazzetti Imports & Exports, Inc. , 270 F.3d 298, 313-14 (6th Cir. 2001). Sales volume, however, may indicate secondary meaning whe n presented in conjunction with other evidence. See id. Here, Sally Beauty also cites to record evidence which indicates that Beautyco intentionally copied some aspect of the Generic Value Products line. See Section IV.A.2, supra . Viewing this evidence in the light most favorable to Sally Beauty, we conclude t hat a genuine issue of material fact exists whether Sally Beauty’s trade dress has acquired distinctiveness. 4
2. Likelihood of Confusion The factors underlying a likelihood of confusion an alysis in a trademark infringement claim apply equally to trade dress infringement claims. See Brunswick Corp. v. Spinit Reel Co. , 832 F.2d 513, 521 (10th Cir. 1987). In the trade dress context, the relevant inquiry is “wheth er there is a likelihood of confusion resulting from the total image and impres sion created by the defendant’s product or package on the eye and mind of an ordinary purchaser.”-24-

McCarthy on Trademarks § 8:15. In this case, equally applicable to Sally Beauty’s trade dress infringement claim is our disc ussion in the trademark context on (1) Beautyco’s intent to copy; (2) similarity of products and manner of marketing; and (3) degree of consumer care. See Section IV.A., supra . We address here only the remaining factors of (4) the degree of similarity between the parties’ trade dresses; (5) strength of the Sally B eauty trade dress; and (6) evidence of actual confusion. a) Similarity of Trade Dresses Viewing the parties’ trade dresses singly, an ordin ary consumer would be struck by the high degree of similarity between the m. Both trade dresses consist of white, bullet-shaped bottles with flat, black to ps. Near the top of the bottles, both dresses have black-and-white trade marks whichfeature either the word “Generic” or the word “GENERIX” prominently. In th e middle of the bottles, each product compares itself to a salon brand produ ct. The back of both bottles list its product’s ingredients side-by-side with th ose of a salon brand product. The overall color scheme of the two dresses consistof black and white; no other color is used in either dress. Although the dresse s are not identical, they are remarkably similar. This factor therefore weighs h eavily in favor of Sally Beauty.-25-

b) Strength of Sally Beauty’s Trade Dress As discussed earlier, a genuine issue of material f act exists that Sally Beauty’s trade dress is descriptive and has acquired secondary meaning. See Section IV.B.1, supra. This court has previously indicated that descript ive marks can weigh against a likelihood of confusion when th ere exist dissimilarities between the two marks. See First Sav. Bank , 101 F.3d at 655 (concluding that bank’s use of the words “First Bank” in its service mark is “weakly descriptive” and not confusingly similar when considering the marked differences between its service mark and competing bank’s service mark). A lthough dissimilarities exist between the Generic Value Products dress and the GENERIX dress, they are not as significant as the differences between the marks in First Savings Bank

. Cf. id. at 653. Nevertheless, we conclude that the relativ e weakness of Sally Beauty’s trade dress weighs against a finding of a likelihoo d of confusion. c) Actual Confusion In the trade dress context, evidence of actual conf usion is not necessary for a finding of likelihood of confusion but “may be th e strongest evidence to support such a determination.” Brunswick Corp. , 832 F.2d at 521. Sally Beauty points to the survey conducted by its expert, George Mantis, which reports that 51 out of 180 participants, or twenty-six percent of particip ants after adjusting for error, believed that GENERIX was manufactured by Sally Beauty based solely on the-26-

products’ packaging or appearances. The survey con cludes that “[a] significant number of respondents provide ‘package/appearance’ related reasons as a basis for their mistaken belief that Generix is put out b y the same company that puts out Generic Value Products. . . . Even after adjus ting for ‘noise,’ confusion remains high[,] accounting for more than one out of four respondents.” Beautyco’s survey is strong evidence of actual conf usion between Sally Beauty’s and Beautyco’s trade dresses. Accordingly, this fa ctor weighs heavily in favor of Sally Beauty. d) Conclusion on Likelihood of Confusion Based on the strong similarities between the trade dresses, evidence of actual confusion, deposition testimony indicating B eautyco intended to copy the Generic Value Products line, similarity in the prod ucts and manner of marketing, and the low degree of consumer care, Sally Beauty h as demonstrated a genuine issue of material fact on the likelihood of confusi on. That a genuine issue of material fact exists on whether Sally Beauty’s trad e dress is descriptive does not change our conclusion.5 In their complaint, Sally Beauty also asserted a tr ade dress infringement

claim under the Oklahoma Deceptive Trade Practices Act, Okla. Stat. tit. 78 §§ 51-55. The district court concluded that its re solution of the federal trade dress claim also disposed of the state claim. Beca use we conclude that the district court’s grant of summary judgment to Beautyco on th e federal trade dress claim must be reversed, the state trade dress infringement claim must be reversed and remanded as well. -27- 3. Summary Judgment Inappropriate Because Sally Beauty has demonstrated a genuine iss ue of material fact on the distinctiveness of Sally Beauty’s trade dress and likelihood of confusion, the district court erred in granting summary judgment for Beautyco. 5 C. False Advertising The district court granted summary judgment to Beautyco on the Plaintiffs’ false advertising claims under the Lanham Act, the Oklahoma Deceptive Trade Practices Act, and Oklahoma’s common law of unfair competition. See 15 U.S.C. § 1125(a); Okla. Stat. tit. 78, §§ 51-55. The Plai ntiffs alleged in their complaint that Beautyco’s use of the words “generic version o f” on its GENERIX packaging gives a false or misleading impression that GENERIXproducts contain the exact same ingredients as their salon brand counterpart. In order to succeed on a false advertising claim under § 43(a) of the Lanham Act, the plaintiff must demonstrate: (1) that defendant made material false or misleadin g representations of fact in connection with the commercial advertisi ng or promotion of its product; (2) in commerce; (3) that are eithe r likely to cause6 Under the Oklahoma Deceptive Trade Practices Act, prima facie evidence

of a deceptive trade practice exists when a party “ knowingly makes a false representation as to the characteristics, ingredients, uses, benefits or quantities of goods or services.” Okla. Stat. tit. 78, § 53(a)(5 ). Because we conclude that no genuine issue exists on whether Beautyco’s representation is false, the district court properly granted summary judgment on Plaintif fs’ false advertising claims under the Oklahoma statute. The Plaintiffs have fa iled to make any argument or cite any cases in support of their common law false advertising claim, and thus the claim is deemed waived. -28- confusion or mistake as to (a) the origin, associat ion or approval of the product with or by another, or (b) the characte ristics of the goods or services; and (4) injure the plaintiff. Cottrell, Ltd. v. Biotrol Int’l, Inc. , 191 F.3d 1248, 1252 (10th Cir. 1999) (citations omitted). The district court concluded, inter alia , that the Plaintiffs failed to demonstrate a genuine issue of material fact as to whether Beautyco’s use of “generic version of” on its GENERIX products was materially false or misleading. Although the Plaintiffs challenge the district court’s conclusions on other elements of the false advertising claim, theymake no arguments that Beautyco’s product labeling is false or misleading. Because the Plaintiffs have failed to submit any evidence of the falsity of Bea utyco’s labeling, the district court did not err in granting summary judgment. 6
V. DEFENDANT’S CROSS-APPEAL Beautyco counterclaims that the Plaintiffs brought suit not to redress a legitimate grievance, but to force Beautyco to defe nd costly litigation as a means to advance the Plaintiffs’ commercial interests. S pecifically, Beautyco claims-29-

that the Plaintiffs’ suit violates Oklahoma’s law o f unfair competition; the Oklahoma Antitrust Reform Act, Okla. Stat. tit. 79, §§ 201-212; and the Oklahoma Deceptive Trade Practices Act, Okla. Stat. tit. 78, §§ 51-55. The Plaintiffs argue that they are immune from these claims under the NoerrPennington doctrine or the Petition Clause of the Constitution. See United Mine Workers v. Pennington , 381 U.S. 657 (1965); E. R.R. Presidents Conference v. Noerr Motor Freight, Inc. , 365 U.S. 127 (1961); U.S. Const. amend. I. We need not address whether the Plaintiffs are immu ne from liability under the Noerr-Pennington doctrine, nor do we need to reach the underlying m erits of Beautyco’s state claims. Beautyco concedes that if the Plaintiffs prevail on appeal, the Plaintiffs should also prevail on Beautyco’s counterclaims. We determined in Sections IV.A. and B., supra , that the Plaintiffs’ trademark and trade dress infringement claims survive summary jud gment. The district court thus properly granted the Plaintiffs’ summary judgm ent motion on Beautyco’s counterclaims.
VI. CONCLUSION Because the Plaintiffs have demonstrated a genuine issue of material fact on the likelihood of confusion between the marks, we REVERSE the district court’s grant of summary judgment for Beautyco on M arianna’s trademark infringement claim and REMAND for further proceedings. We also REVERSE-30-

the grant of summary judgment to Beautyco on Sally Beauty’s trade dress infringement claim and REMAND for further proceedings. This court
AFFIRMS the grant of summary judgment to Beautyco on the f alse advertising claims. The grant of summary judgment for Plaintif fs on Beautyco’s counterclaims is also AFFIRMED

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