71. At trial, witnesses testified to several instances of actual confusion between the parties' marks in issue. J. Russel Sacco -- an independent sales representative of the MIRACLESUIT product line for Arizona, California, Hawaii and Nevada -- witnessed incidents among professional buyers whom he considers more knowledgeable than the average consumer about the swimwear industry and its brands. Sacco, 10/24/95, p.83:13-20. These included: (1) A visit to Mr. Sacco's showroom (at which the MIRACLESUIT trademark is displayed on the front door) in February, 1995 by a professional swimwear buyer for the Armoire catalogue company who inquired whether he carried THE MIRACLE BRA swimsuit, which she had seen advertised in the New York Times. Mr. Sacco responded that he carried the MIRACLESUIT line of swimsuits and the buyer replied that that was the product she had been looking for. Sacco, 10/24/95, p.55:18 to p.56:16, Exhibit P-18S; (2) In May, 1995, during a television advertising campaign for THE MIRACLE BRA, a professional swimwear representative familiar with the MIRACLESUIT swimsuit line asked him whether the MIRACLESUIT company was involved with that campaign. Sacco, 10/24/95, p.56:25 to p.57:20; (3) During an airplane flight in August, 1995, a former professional swimwear buyer for Foley's department store in Texas asked Mr. Sacco whether MIRACLESUIT swimsuits incorporated an enhanced bra which she stated she had heard much about. Sacco, 10/24/95, p.58:10 to p.59:10; and (4) A woman from the Malibu Style company called Mr. Sacco in October, 1994 to make an appointment to view THE MIRACLE BRA line. Sacco, 10/24/95, p.59:13 to p.60:2.
72. Mainstream's receptionist at its New York City showroom where suits are sold to commercial buyers also witnessed incidents relating to confusion between the parties' products; these included a January 1995 telephone inquiry and a Spring 1995 walk-in inquiry concerning THE MIRACLE BRA swimsuits. Oginz, 10/26/95, p.111:15 to p.113:7, p.114:14 to p.115:19, p.116:22 to p.118:24. In November, 1994, Mr. Bruce Waldman discussed terminating A&H's public relations agency with one of that agency's principals. During the conversation she stated she thought that the MIRACLESUIT and THE MIRACLE BRA were both made by A&H. B. Waldman, 10/25/95, p.121:14 to p.123:13. In July, 1994, at a trade show in Florida, Mr. Mark Waldman inquired of buyers visiting the MIRACLESUIT showroom, whether they were already familiar with the MIRACLESUIT swimsuit. One buyer responded that it made a woman's bust look bigger. M. Waldman, 10/27/95, p.122:7 to p.123:15.
73. At least one television news program has referred to both the Miracle Bra and the Miracle Swimsuit in the same sentence ("First there was the Miracle Bra, then the Miracle Swimsuit now the Miracle Jeans..."). Exhibit P-44; B. Waldman, 10/25/95, p.117:10 to p.119:6. An article in Women's Wear Daily, appearing in February 1995, referred to "the introduction of the Miracle Swimsuit in the upcoming Victoria's Secret Catalog." Exhibit P-63; B. Waldman, 10/25/95, p.115:14 to p.116:9. Newspaper articles in general circulation have discussed both the MIRACLESUIT and MIRACLE BRA BIKINI, mentioning both names in the same article.
B. Waldman, 10/25/95, p.121:5-9; Exhibit P-48.
K. TIMING OF SUIT
74. A&H had been aware of Defendants' use of THE MIRACLE BRA for use with bras between February and May 1994 and of THE MIRACLE BRA for use with swimsuits for approximately one month when its Complaint was filed on December 8, 1994. This was also within about one month of the first appearance of THE MIRACLE BRA swimsuit in VS Catalogue's catalogue. B. Waldman, 10/25/95, p.126:9 to p.127:10; 10/27/95, p.56:5 to p.57:6, p.81:2-4; M. Waldman, 10/27/95, p.119:24 to p.120:11; Weiss Depo, Exhibit P-200, 08/07/95, p.51:12-23; Berkman Depo, Exhibit P-203, 09/13/95, p.58:8-19; Exhibit D-224, Int. No. 23. Soon after Mark Waldman first became aware of Defendants' use of THE MIRACLE BRA for bras in the spring of 1994 upon seeing it in VS Catalogue's catalogue, he called A&H's trademark attorney to discuss the matter. M. Waldman, 10/27/95, p.119:24 to p.120:11.
75. A&H refrained from immediately bringing suit against Defendants for use of THE MIRACLE BRA for use with bras for numerous reasons. These included: (1) VS Catalogue was a former customer and potentially an important future customer, although VS Catalogue had not purchased from A&H since purchasing MIRACLESUIT swimsuits in 1992. A&H has had the experience of developing good customers from retailers who have tried A&H swimsuits a second time after once discontinuing them; (2) A&H has not been a litigious company during its 50-year lifespan; (3) The expense of litigation; (4) The demands on A&H's principals' time; (5) The risk of a declaratory judgment action by Defendants; and (6) The uncertainty as to whether Defendants would persist in their use of MIRACLE marks, or whether the first appearance in the VS Catalogue of which A&H became aware, was an isolated instance. B. Waldman, 10/24/95, p.25:14 to p.25:20; 10/25/95, p.126:9 to p.128:12; 10/27/95, p.75:6-12; M. Waldman, 10/27/95, p.120:12 to p.121:23, p.159:10 to p.160:6, p.172:7-20; Exhibit P-49G.
A. EXAMINING ATTORNEY'S DECISION
Plaintiffs filed this action in December, 1994, approximately one month after they became aware of Defendant's extension of their THE MIRACLE BRA trademark into swimwear. Following a February 1995 refusal to register, Defendants' requested that the application process of its THE MIRACLE BRA Bikini be suspended. We therefore have not had the benefit of a final decision by the Patent and Trademark Office to guide our decision here.
However, although no final adjudication has occurred, an initial determination of issues central to this case was made by an examining attorney at the PTO during consideration of Defendants' application. While not binding on us here, we nonetheless believe the examining attorney's decision deserves our full consideration. We are guided by the well established rule of Morgan v. Daniels, 153 U.S. 120, 38 L. Ed. 657, 14 S. Ct. 772 (1894) which held:
Where the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon the question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction...If doubtful the decision of the Patent Office must control.
Id., at 125. The rule of Morgan v. Daniels, has more recently been reaffirmed in the Third Circuit and elsewhere. See Radio Corp. of America v. International Stand E. Corp., 232 F.2d 726, 729 (3d Cir. 1956) (acknowledging strict injunction laid down by Morgan v. Daniels, that the patent office's finding is not to be disturbed unless there is "thorough conviction" that a mistake has been made); S. & S. Corrugated Paper Mach. Co. v. George W. Swift, Inc., 176 F.2d 358, 360 (3d Cir. 1949); Standard Oil Co. v. Montedison, 664 F.2d 356, 362 (3d Cir. 1981), cert. denied, 456 U.S. 915 (1982); Stamicarbon, N.V. v. Chemical Const. Corp., 544 F.2d 645, 647 (2nd Cir. 1976); Miles Shoes, Inc. v. R.H. Macy & Co., Inc., 199 F.2d 602, 603 (2nd Cir. 1952), cert. denied, 345 U.S. 909, 97 L. Ed. 1345, 73 S. Ct. 650 (1953); Carling Brewing Company, Inc. v. Philip Morris, Inc., 277 F. Supp. 326, 333 (N.D.Ga. 1967). Contra, John Morrell & Co. v. Doyle, 97 F.2d 232, 235 (7th Cir. 1938), cert. denied 305 U.S. 643, 83 L. Ed. 415, 59 S. Ct. 146 (1938).
It is true that the case before us is one of alleged trademark infringement in violation of §§ 32 and 43 of the Lanham Act, 15 U.S.C. § 1051 et seq., and not -- as was the case in Morgan v. Daniels -- a question of patent priority. Nonetheless, the principle laid down in Morgan is equally applicable to trade marks. Century Distilling Co. v. Continental Distilling Co., 106 F.2d 486, 489 (3d Cir. 1939), cert. denied, 309 U.S. 662, 84 L. Ed. 1010, 60 S. Ct. 581 (1940) (citing United States ex rel. Baldwin Co. v. Robertson Co. v. Robertson, 265 U.S. 168, 44 S. Ct. 508, 68 L. Ed. 962 (1924)).
While we are therefore mindful of giving proper consideration to the PTO's examining attorney's decision, we are also aware of the preliminary nature of that determination, and appraise it in that context. See U.S. Treasury v. Synthetic Plastics Co., 52 C.C.P.A. 967, 341 F.2d 157 (CCPA 1965) (the term "decision" when used in context of review by Court of Customs and Patent Appeals, means "a dispositive decision in which a right has been adjudicated"). In our consideration of this case, we have not come to believe Defendants' actions with respect to Plaintiffs' MIRACLESUIT were willfully tortious. Rather, we surmise that these actions at most amounted to a "decision to take the risk of coming very close to infringement, for the sake of a trade name defendant evidently believed would be more valuable to it than any of the available alternatives." Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 315 F. Supp. 45, 52 (S.D.N.Y. 1970), aff'd, 437 F.2d 566 (citations omitted). "While a preliminary Patent Office determination is not binding upon either this court or a trademark applicant, it is entitled to "substantial weight" on the part of both." Id. We turn now to the examiner's decision.
In the office action dated February 27, 1995, the examining attorney concluded that there was a likelihood of confusion between Defendants' THE MIRACLE BRA Bikini and Plaintiffs' MIRACLESUIT for swimwear, and refused registration. Exhibit P-115, at 1. In reaching that conclusion, the examining attorney conducted a two-step analysis. First, she looked at the marks themselves for similarities in appearance, sound connotation and commercial impression. Id., citing In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). Second, the examining attorney compared the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. Exhibit P-115 at 1, citing In re August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (TTAB 1978); Guardian Products Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (TTAB 1978).
In comparing THE MIRACLE BRA and MIRACLESUIT marks, The examining attorney appropriately considered the marks in their entireties recognizing that greater weight is given to a dominant feature in determining whether there is a likelihood of confusion. Exhibit P-115, at 2, citing In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 U.S.P.Q. (BNA) 693 (CCPA 1976); In re J.M. Originals Inc., 6 U.S.P.Q.2D (BNA) 1393 (TTAB 1988). Following her review, the examining attorney concluded:
The registrant's mark is MIRACLESUIT. The SUIT portion of the mark is descriptive of the type of clothing, in this case, swimsuits. The dominant part of the registered mark is MIRACLE. The dominant part of the applicant's mark is MIRACLE. These dominant parts are identical. When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the point of difference." Esso Standard Oil Co. v. Sun Oil Co., 97 U.S. App. D.C. 154, 229 F.2d 37, 108 U.S.P.Q. (BNA) 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 U.S.P.Q. (BNA) 517, 100 L. Ed. 1491, 76 S. Ct. 1027 (1956).
In the second stage of her analysis, the examining attorney compared the MIRACLESUIT and THE MIRACLE BRA product classifications and determined: