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Tse, Saiget, Watanabe and McClure Inc. v. Gentlecare Systems Inc.

filed: June 19, 1991.

TSE, SAIGET, WATANABE AND MCCLURE, INC., ABA GENTLE DENTAL, PLAINTIFF-APPELLEE,
v.
GENTLECARE SYSTEMS, INC.; GENTLECARE DENTAL CENTERS, ET AL, DEFENDANTS-APPELLANTS



Appeal from the United States District Court for the District of Oregon; Malcolm F. Marsh, District Judge, Presiding; DC No. CV-90-86-MA.

Canby, Kozinski, and Trott, Circuit Judges

MEMORANDUM

GentleCare Systems, Inc. ("GentleCare") appeals a preliminary injunction entered in favor of Tse, Saiget, Watanabe and McClure, Inc. ("Gentle Dental") in this trademark infringement action. We conclude that the district court did not abuse its discretion in entering the injunction, nor did it make errors of law or clearly erroneous findings of fact. Consequently, we affirm.

BACKGROUND

Gentle Dental is the owner, by assignment, of the registered trademark "Gentle Dental." Under that name, it has provided dental services in the Portland, Oregon metropolitan area since 1984, and had some eight offices there at the time of commencement of this suit. It has expended some $600,000 in advertising under the Gentle Dental name.

In 1989, GentleCare began offering dental services in the Portland area, and it advertised under the name "GentleCare Dental Centers." According to the district court, GentleCare expended $32,000 in such advertising.

In January 1990, Gentle Dental brought this action charging that GentleCare's use of the name " GentleCare Dental Centers" constituted unfair competition and infringement of its prior and registered trademark, "Gentle Dental." Gentle Dental moved for, and the district court granted, a preliminary injunction against the continued use of "GentleCare Dental Centers" as a trade name, requiring GentleCare to use, instead, the name "Dental Ben's Gentle Dentistry."

The district court based its grant of this preliminary injunction on its conclusion that Gentle Dental had shown a likelihood of success on the merits and the possibility of irreparable injury, as well as a balance of hardships tipping in its favor. The district court's conclusion that Gentle Dental was likely to succeed was based on its finding that "plaintiff has shown a likelihood of confusion between defendants' 'GentleCare Dental' mark and plaintiff's 'Gentle Dental' mark and that this confusion is probable and not simply a possibility." Opinion (CR 62) at 3. The district court's finding of likelihood of confusion was based on its application of the five-part test enunciated in Miss World (U.K.) Ltd. v. Mrs. America Pageants, 856 F.2d 1445, 1448 (9th Cir. 1988), and some of our other cases.

GentleCare charges that the district court made numerous errors of law and clearly erroneous findings of fact in applying that test, and that it also erred in finding a likelihood of irreparable injury and a balance of hardships tipping in favor of Gentle Dental. None of these charges succeed in the face of the deference we accord to the district court's findings of a likelihood of confusion, or to its discretion in granting or denying preliminary injunctions.

ANALYSIS

To prevail on its motion for preliminary injunction, Gentle Dental had to show either (1) a likelihood of success on the merits and the possibility of irreparable injury, or (2) the existence of serious questions going to the merits and the balance of hardships tipping in its favor. Miss World (U.K.) Ltd. v. Mrs. America Pageants, 856 F.2d 1445 (9th Cir. 1988). We will reverse the district court's grant of Gentle Dental's motion only if we conclude that the district court abused its discretion, applied an erroneous legal standard, or based the injunction on clearly erroneous findings of fact. Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987).

The primary focus of the district court's determination was Gentle Dental's likelihood of success on the merits. The district court's conclusion that success was likely was based on its finding of a "likelihood of confusion" between the two trademarks. We must uphold that finding unless it was clearly erroneous. Eclipse Associates Ltd. v. Data General Corp., 894 F.2d 1114 (9th Cir. 1990). We cannot review that ultimate finding by isolating the separate constituent parts and finding error when one component weighs against the court's decision. Rather, we recognize that such a determination involves numerous factors, and any decision the district court makes will be based on the aggregate weight of those factors. Eclipse, 894 F.2d at 1118. The clearly erroneous standard of review is designed to respect that multifaceted determination and avoid its duplication by us.

I. "Likelihood of Confusion"

In finding a likelihood of confusion, the district court weighed the five factors set out in Miss World:

(1) the strength of the registered service mark; (2) the relationship between the services identified by the competing service marks; (3) the similarity of the competing service marks; (4) the evidence of actual confusion; and (5) the junior user's intent in adopting its service mark.

Miss World, 856 F.2d at 1448. GentleCare contends that the district court went astray in assessing three of these factors: the strength of the "Gentle Dental" mark, the similiarities between the two marks, and the evidence of actual confusion.

a. The "strength" of the Gentle Dental mark.

The first factor that the district court analyzed in finding likelihood of confusion was the strength of the registered service mark. Opinion (CR 62) at 3. The strength of a mark rests on its distinctiveness, which in turn depends upon "the degree to which the public associates the mark with a particular source." Miss World, 856 F.2d at 1448. Inherent strength of marks varies "along a continuum stretching from arbitrary, inherently strong marks, to suggestive marks, to descriptive marks, to generic, inherently weak marks." Rodeo Collection, 812 F.2d at 1218. A ...


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