Brookfield Communications, Inc. v. West Coast Entertainment Corporation

We must venture into cyberspace to determine whether federal trademark and unfair competition laws prohibit a video rental store chain from using an entertainment-industry information provider’s trademark in the domain name of its web site and in its web site’s metatags.

I

Brookfield Communications, Inc. (“Brookfield”) appeals the district court’s denial of its motion for a preliminary injunction prohibiting West Coast Entertainment Corporation (“West Coast”) from using in commerce terms confusingly similar to Brookfield’s trademark, “MovieBuff.” Brookfield gathers and sells information about the entertainment industry. Founded in 1987 for the purpose of creating and marketing software and services for professionals in the entertainment industry, Brookfield initially offered software applications featuring information such as recent film submissions, industry credits, professional contacts, and future projects. These offerings targeted major Hollywood film studios, independent production companies, agents, actors, directors, and producers.

Brookfield expanded into the broader consumer market with computer software featuring a searchable database containing entertainment-industry related information marketed under the “MovieBuff’ mark around December 1993. 1 Brookfield’s “MovieBuff software now targets smaller companies and individual consumers who are not interested in purchasing Brook-field’s professional level alternative, The Studio System, and includes comprehensive, searchable, entertainment-industry databases and related software applications containing information such as movie credits, box office receipts, films in development, film release schedules, entertainment news, and listings of executives, agents, actors, and directors. This “Mov-ieBuff’ software comes in three versions— (1) the MovieBuff Pro Bundle, (2) the Mov-ieBuff Pro, and (3) MovieBuff — and is sold through various retail stores, such as Borders, Virgin Megastores, Nobody Beats *1042 the Wiz, The Writer’s Computer Store, Book City, and Samuel French Bookstores.

Sometime in 1996, Brookfield attempted to register the World Wide Web (“the Web”) domain name “moviebuff.com” with Network Solutions, Inc. (“Network Solutions”), 2 but was informed that the requested domain name had already been registered by West Coast. Brookfield subsequently registered “brookfield-comm.com” in May 1996 and “moviebuffon-line.com” in September 1996. 3 Sometime in 1996 or 1997, Brookfield began using its web sites to sell its “MovieBuff’ computer software and to offer an Internet-based searchable database marketed under the “MovieBuff’ mark. Brookfield sells its “MovieBuff’ computer software through its “brookfieldcomm.com” and “moviebuf-fonline.com” web sites and offers subscribers online access to the MovieBuff database itself at its “inhollywood.com” web site.

On August 19, 1997, Brookfield applied to the Patent and Trademark Office (PTO) for federal registration of “MovieBuff’ as a mark to designate both goods and services. Its trademark application describes its product as “computer software providing data and information in the field of the motion picture and television industries.” Its service mark application describes its service as “providing multiple-user access to an on-line network database offering data and information in the field of the motion picture and television industries.” Both federal trademark registrations issued on September 29, 1998. Brookfield had previously obtained a California state trademark registration for the mark “Mov-ieBuff’ covering “computer software” in 1994.

In October 1998, Brookfield learned that West Coast — one of the nation’s largest video rental store chains with over 500 stores — -intended to launch a web site at “moviebuff.com” containing, inter alia, a searchable entertainment database similar to “MovieBuff.” West Coast had registered “moviebuff.com” with Network Solutions on February 6, 1996 and claims that it chose the domain name because the term “Movie Buff’ is part of its service mark, “The Movie Buffs Movie Store,” on which a federal registration issued in 1991 covering “retail store services featuring video cassettes and video game cartridges” and “rental of video cassettes and video game cartridges.” West Coast notes further that, since at least 1988, it has also used various phrases including the term “Movie Buff’ to promote goods and services available at its video stores in Massachusetts, including “The Movie Buffs Gift Guide”; “The Movie Buffs Gift Store”; “Calling All Movie Buffs!”; “Good News Movie Buffs!”; “Movie Buffs, Show Your Stuff!”; “the Perfect Stocking Staffer for the Movie Buff!”; “A Movie Buffs Top Ten”; “The Movie Buff Discovery Program”; “Movie Buff Picks”; “Movie Buff Series”; “Movie Buff Selection Program”; and “Movie Buff Film Series.”

On November 10, Brookfield delivered to West Coast a cease-and-desist letter alleging that West Coast’s planned use of the “moviebuff.com” would violate Brook-field’s trademark rights; as a “courtesy” Brookfield attached a copy of a complaint that it threatened to file if West Coast did not desist.

The next day, West Coast issued a press release announcing the imminent launch of its web site full of “movie reviews, Hollywood news and gossip, provocative commentary, and coverage of the independent film scene and films in production.” The press release declared that the site would feature “an extensive database, which aids consumers in making educated decisions *1043 about the rental and purchase of’ movies and would also allow customers to purchase movies, accessories, and other entertainment-related merchandise on the web site.

Brookfield fired back immediately with a visit to the United States District Court for the Central District of California, and this lawsuit was born. In its first amended complaint filed on November 18, 1998, Brookfield alleged principally that West Coast’s proposed offering of online services at “moviebuff.com” would constitute trademark infringement and unfair competition in violation of sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a). 4 Soon thereafter, Brookfield applied ex parte for a temporary restraining order (“TRO”) enjoining West Coast “[f]rom using ... in any manner ... the mark MOVIEBUFF, or any other term or terms likely to cause confusion therewith, including moviebuff.com, as West Coast’s domain name, ... as the name of West Coast’s website service, in buried code or metatags on their home page or web pages, or in connection with the retrieval of data or information on other goods or services.”

On November 27, West Coast filed an opposition brief in which it argued' first that Brookfield could not prevent West Coast from using “moviebuff.com” in commerce because West Coast was the senior user. West Coast claimed that it was the first user of “MovieBuff’ because it had used its federally registered trademark, “The Movie Buffs Movie Store,” 5 since 1986 in advertisements, promotions, and letterhead in connection with retail services featuring videocassettes and video game cartridges. Alternatively, West Coast claimed seniority on the basis that it had garnered common-law rights in the domain name by using “moviebuff.com” before Brookfield began offering its “Mov-ieBuff’ Internet-based' searchable database on the Web. In addition to asserting seniority, West Coast contended that its planned use of “moviebuff.com” would not cause a likelihood of confusion with Brook-field’s trademark “MovieBuff” and thus would not violate the Lanham Act.

The district court heard arguments on the TRO motion on November 30. Later that day, the district court issued an order construing Brookfield’s TRO motion as a motion for a preliminary injunction and denying it. The district court concluded that West Coast was the senior user of the mark “MovieBuff’ for both of the reasons asserted by West Coast. The court also determined that Brookfield had not established a likelihood of confusion.

Brookfield responded by filing a notice of appeal from the denial of preliminary injunction followed by a motion in the district court for injunction pending appeal, which motion the district court denied. On January 16, 1999, West Coast launched its web site at “moviebuff.com.” Fearing that West Coast’s fully operational web site would cause it irreparable injury, Brookfield filed an emergency motion for injunction pending appeal with this court a few days later. On February 24, we granted Brookfield’s motion and entered an order enjoining West Coast “from using, or facilitating the use of, in any manner, including advertising and promotion, the mark MOVIEBUFF, or any other term or terms likely to cause confusion therewith, including @moviebuffcom or moviebuff.com, as the name of West Coast’s web site service, in buried code or metatags on its home page or web pages, or in connection with the retrieval of data or information on other goods or services.” The injunction was to take effect upon the posting of a $25,000 bond in the district court by Brookfield. We scheduled oral *1044 argument on an expedited basis for March 10.

West Coast thereupon filed a motion for reconsideration and modification — seeking a stay of the injunction pending appeal and an increase in the bond requirement to $400,000 — which we denied. After oral argument on March 10, we ordered that our previously issued injunction remain in effect pending the issuance of this opinion.

II

To resolve the legal issues before us, we must first understand the basics of the Internet and the World Wide Web. Because we will be delving into technical corners of the Internet — dealing with features such as domain names and meta-tags — we explain in some detail what all these things are and provide a general overview of the relevant technology.

The Internet is a global network of interconnected computers which allows individuals and organizations around the world to communicate and to share information with one another. The Web, a collection of information resources contained in documents located on individual computers around the world, is the most widely used and fastest-growing part of the Internet except perhaps for electronic mail (“email”). See United States v. Microsoft, 147 F.3d 935, 939 (D.C.Cir.1998). With the Web becoming an important mechanism for commerce, see Reno v. ACLU, 521 U.S. 844, 117 S.Ct. 2329, 2334, 138 L.Ed.2d 874 (1997) (citing an estimate that over 200 million people will use the Internet in 1999), companies are racing to stake out their place in cyberspace. Prevalent on the Web are multimedia “web pages”— computer data files written in Hypertext Markup Language (“HTML”)' — -which contain information such as text, pictures, sounds, audio and video recordings, and links to other web pages. See id. at 2335; Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1318 (9th Cir.1998).

Each web page has a corresponding domain address, which is an identifier somewhat analogous to a telephone number or street address. Domain names consist of a second-level domain — simply a term or series of terms (e.g., westcoastvideo)- — followed by a top-level domain, many of which describe the nature of the enterprise. Top-level domains include “.com” (commercial), “.edu” (educational), “.org” (non-profit and miscellaneous organizations), “.gov” (government), “.net” (networking provider), and “.mil” (military). See Panavision, 141 F.3d at 1318. Commercial entities generally use the “.com” top-level domain, which also serves as a catchall top-level domain. See id. To obtain a domain name, an individual or entity files an application with Network Solutions listing the domain name the applicant wants. Because each web page must have an unique domain name, Network Solution checks to see whether the requested domain name has already been assigned to someone else. If so, the applicant must choose a different domain name. Other than requiring an applicant to make certain representations, Network Solutions does not make an independent determination about a registrant’s right to use a particular domain name. See id. at 1318-19.

Using a Web browser, such as Netscape’s Navigator or Microsoft’s Internet Explorer, a cyber “surfer” may navigate the Web- — -searching for, communicating with, and retrieving information from various web sites. See id.; Microsoft, 147 F.3d at 939—40, 950. A specific web site is most easily located by using its domain name. See Panavision, 141 F.3d at 1327. Upon entering a domain name into the web browser, the corresponding web site will quickly appear on the computer screen. Sometimes, however, a Web surfer will not know the domain name of the site he is looking for, whereupon he has two principal options: trying to guess the domain name or seeking the assistance of an Internet “search engine.”

Oftentimes, an Internet user will begin by hazarding a guess at the domain name, especially if there is an obvious domain *1045 name to try. Web users often assume, as a rule of thumb, that the domain name of a particular company will be the company name followed by “.com.” See id.; Playboy Enterprises v. Universal Tel-A-Talk, Inc., No. 96-6961, 1998 WL 767440, at *2 (E.D.Pa. Nov.3, 1998); Cardservice Int'l, Inc. v. McGee, 950 F.Supp. 737, 741 (E.D.Va.1997), aff'd by, 129 F.3d 1258 (4th Cir.1997). For example, one looking for Kraft Foods, Inc. might try “kraft-foods.com,” and indeed this web site contains information on Kraft’s many food products. Sometimes, a trademark is better known than the company itself, in which case a Web surfer may assume that the domain address will be “ ‘trademark’.com.” See Panavision, 141 F.3d at 1327; Beverly v. Network Solutions, Inc., No. 98-0337, 1998 WL 320829, at *1 (N.D.Cal. June 12, 1998) (“Companies attempt to make the search for their web site as easy as possible. They do so by using a corporate name, trademark or service mark as their web site address.”). One interested in today’s news would do well visiting “usatoday.com,” which features, as one would expect, breaking stories from Gannett’s USA Today. Guessing domain names, however, is not a risk-free activity. The Web surfer who assumes that “ ‘X’.com” will always correspond to the web site of company X or trademark X will, however, sometimes be misled. One looking for the latest information on Pana-vision, International, L.P., would sensibly try “panavision.com.” Until recently, that Web surfer would have instead found a web site owned by Dennis Toeppen featuring photographs of the City of Pana, Illinois. See Panavision, 141 F.3d at 1319. Having registered several domain names that logically would have corresponded to the web sites of major companies such as Panavision, Delta Airlines, Neiman Marcus, Lufthansa, Toeppen sought to sell “panavision.com” to Panavision, which gives one a taste of some of the trademark issues that have arisen in cyberspace. See id.; see also, e.g., Cardservice, 950 F.Supp. at 740-42.

A Web surfer’s second option when he does not know the domain name is to utilize an Internet search engine, such as Yahoo, Altavista, or Lycos. See ACLU v. Reno, 31 F.Supp.2d 473, 484 (E.D.Pa.1999); Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp.2d 488, 499 (E.D.Va.1999). When a keyword is entered, the search engine processes it through a self-created index of web sites to generate a (sometimes long) list relating to the entered keyword. Each search engine uses its own algorithm to arrange indexed materials in sequence, so the list of web sites that any particular set of keywords will bring up may differ depending on the search engine used. See Niton Corp. v. Radiation Monitoring Devices, Inc., 27 F.Supp.2d 102, 104 (D.Mass.1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1231-32 (N.D.Ill.1996); Shea v. Reno, 930 F.Supp. 916, 929 (S.D.N.Y.1996), aff'd, — U.S. -, 117 S.Ct. 2501, 138 L.Ed.2d 1006 (1997). Search engines look for keywords in places such as domain names, actual text on the web page, and metatags. Metatags are HTML code intended to describe the contents of the web site. There are different types of meta-tags, but those of principal concern to us are the “description” and “keyword” meta-tags. The description metatags are intended to describe the web site; the keyword metatags, at least in theory, contain keywords relating to the contents of the web site. The more often a term appears in the metatags and in the text of the web page, the more likely it is that the web page will be “hit” in a search for that keyword and the higher on the list of “hits” the web page will appear. See Niton, 27 F.Supp.2d at 104.

With this basic understanding of the Internet and the Web, we may now analyze the legal issues before us.

Ill

We review the district court’s denial of preliminary injunctive relief for an abuse of discretion. See, e.g., Foti v. City *1046 of Menlo Park, 146 F.3d 629, 634-35 (9th Cir.1998). Under this standard, reversal is appropriate only if the district court based its decision on clearly erroneous findings of fact or erroneous legal principles. See FDIC v. Garner, 125 F.3d 1272, 1276 (9th Cir.1997), cert. denied, — U.S. -, 118 S.Ct. 1299, 140 L.Ed.2d 466 (1998). “A district court would necessarily abuse its discretion if it based its ruling on an erroneous view of the law,” Cooter & Gell v. Hartman Corp., 496 U.S. 384, 405, 110 S.Ct. 2447, 110 L.Ed.2d 359 (1990), so we review the underlying legal issues injunction de novo, see, e.g., Barahona Gomez v. Reno, 167 F.3d 1228, 1234 (9th Cir.1999); S.O.C., Inc. v. County of Clark, 152 F.3d 1136, 1142 (9th Cir.1998), amended by, 160 F.3d 541 (9th Cir.1998); Foti, 146 F.3d at 635; Garner, 125 F.3d at 1276; San Antonio Community Hosp. v. Southern Cal. Dist. Council of Carpenters, 125 F.3d 1230, 1234 (9th Cir.1997).

“A plaintiff is entitled to a preliminary injunction in a trademark case when he demonstrates either (1) a combination of probable success on the merits and the possibility of irreparable injury or (2) the existence of serious questions going to the merits and that the balance of hardships tips sharply in his favor.” Sardi’s Restaurant Corp. v. Sardie, 755 F.2d 719, 723 (9th Cir.1985). To establish a trademark infringement claim under section 32 of the Lanham Act or an unfair competition claim under section 43(a) of the Lan-ham Act, Brookfield must establish that West Coast is using a mark confusingly similar to a valid, protectable trademark of Brookfield’s. 6 See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979). The district court denied Brookfield’s motion for preliminary injunctive relief because it concluded that Brookfield had failed to establish that it was the senior user of the “MovieBuff ’ mark or that West Coast’s use of the “moviebuff.com” domain name created a likelihood of confusion.

We review each of the district court’s conclusions in turn. 7

IV

To resolve whether West Coast’s use of “moviebuff.com” constitutes trademark infringement or unfair competition, 8 *1047 we must first determine whether Brook-field has a valid, protectable trademark interest in the “MovieBuff’ mark. Brook-field’s registration of the mark on the Principal Register in the Patent and Trademark Office constitutes prima facie evidence of the validity of the registered mark and of Brookfield’s exclusive right to use the mark on the goods and services specified in the registration. See 15 U.S.C. §§ 1057(b); 1115(a). Nevertheless, West Coast can rebut this presumption by showing that it used the mark in commerce first, since a fundamental tenet of trademark law is that ownership of an inherently distinctive mark such as “Mov-ieBuff’ 9 is governed by priority of use. See Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) (“It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.”), cert. denied, 521 U.S. 1103, 117 S.Ct. 2478, 138 L.Ed.2d 987 (1997). The first to use a mark is deemed the “senior” user and has the right to enjoin “junior” users from using confusingly similar marks in the same industry and 'market or within the senior user’s natural zone of expansion. See Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 842-43 (5th Cir.1990); Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1023 (11th Cir.1989); New West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1200-01 (9th Cir.1979).

It is. uncontested that Brookfield began selling “MovieBuff’ software in 1993 and that West Coast did not use “movie-buff.com” until 1996. According to West Coast, however, the fact that it has used “The Movie Buffs Movie Store” as a trademark since 1986 makes it the first user for purposes of trademark priority. In the alternative, West Coast claims priority on the basis that it used “movie-buff.com” in commerce before Brookfield began offering its “MovieBuff’ searchable database on the Internet. We analyze these contentions in turn.

A

Conceding that the first time that it actually used “moviebuff.com” was in 1996, West Coast argues that its earlier use of “The Movie Buffs Movie Store” constitutes use of “moviebuff.com.” 10 West Coast has not provided any Ninth Circuit precedent approving of this constructive use theory, but neither has Brookfield pointed us to any case law rejecting it. We are not without guidance, however, as our sister circuits have explicitly recognized the ability of a trademark owner to claim priority in a mark based on the first use date of a similar, but technically distinct, mark — but only in the exceptionally narrow instance where “the previously used mark is ‘the legal equivalent of the mark in question or indistinguishable *1048 therefrom’ such that consumers ‘consider both as the same mark.’ ” Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623 (6th Cir.1998) (quoting Van Dyne-Crotty, Inc. v. Wear-Guard, Corp., 926 F.2d 1156, 1159 (Fed.Cir.1991)); accord Van Dyne-Crotty, 926 F.2d at 1159. This constructive use theory is known as “tacking,” as the trademark holder essentially seeks to “tack” his first use date in the earlier mark onto the subsequent mark. See generally 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 17:25-27 (4th ed.1998) [hereafter “McCarthy”].

We agree that tacking should be allowed if two marks are so similar that consumers generally would regard them as essentially the same. Where such is the case, the new mark serves the same identifieatory function as the old mark. Giving the trademark owner the same rights in the new mark as he has in the old helps to protect source-identifying trademarks from appropriation by competitors and thus furthers the trademark law’s objective of reducing the costs that customers incur in shopping and making purchasing decisions. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995); Falcon Rice Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d 336, 348 (5th Cir.1984).

Without tacking, a trademark owner’s priority in his mark would be reduced each time he made the slightest alteration to the mark, which would discourage him from altering the mark in response to changing consumer preferences, evolving aesthetic developments, or new advertising and marketing styles. In Hess’s of Allentown, Inc. v. National Bellas Hess, Inc., for example, a department store (“Allentown”) with trademark rights in the terms “Hess Brothers” and “Hess” dating from 1899 began promoting itself in 1952 instead as “Hess’s,” largely because customers and employees commonly referred to the store as “Hess’s” rather than “Hess Brothers” or “Hess.” See 169 U.S.P.Q. 673, 674-75, 1971 WL 16482 (T.T.A.B.1971). Another department store (“Bellas”) first used “Hess” in its mark around 1932. In light of the fact that Allentown first used “Hess’s” after Bellas commenced using “Hess,” Bellas would have priority on the basis of the actual first use dates of those two marks. Even though Allentown had acquired over a half-century’s worth of goodwill in the essentially identical marks “Hess” and “Hess Brothers,” Allentown no longer had trademark rights in those terms because it had ceased using those marks when it adopted “Hess’s.” Nevertheless, the Trademark Board allowed the owner of “Hess’s” to tack his first use date of “Hess Brothers” and “Hess” onto “Hess’s” since those terms were viewed as identical by the public. See id. at 677.

The standard for “tacking,” however, is exceedingly strict: “The marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.” Van Dyne-Crotty, 926 F.2d at 1159 (emphasis added) (citations and quotation marks omitted). In other words, “the previously used mark must be the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark.” Id. (emphasis added); see also Data Concepts, 150 F.3d at 623 (adopting the Van Dyne-Crotty test). This standard is considerably higher than the standard for “likelihood of confusion,” which we discuss infra.

The Federal Circuit, for example, concluded that priority in “CLOTHES THAT WORK. FOR THE WORK YOU DO” could not be tacked onto “CLOTHES THAT WORK.” See Van Dyne-Crotty, 926 F.2d at 1160 (holding that the shorter phrase.was not the legal equivalent of the longer mark). The Sixth Circuit held that “DCI” and “dci” were too dissimilar to support tacking. See Data Concepts, 150 F.3d at 623-24. And the Trademark Board has rejected tacking in a case involving “American Mobilphone” with a star *1049 and stripe design and “American Mobil-phone Paging” with the identical design, see American Paging, Inc. v. American Mobilphone, Inc., 13 U.S.P.Q.2d 2036, 1989 WL 274416 (T.T.A.B.1989), aff'd, 923 F.2d 869, 17 U.S.P.Q.2d 1726 (Fed.Cir.1990), as well as in a case involving “PRO-CUTS” and “PRO-KUT,” see Pro-Cuts v. Schilz-Price Enterprises, 27 U.S.P.Q.2d 1224, 1227, 1993 WL 266611 (T.T.A.B.1993).

In contrast to cases such as Van Dyne-Crotty and American Paging, which were close questions, the present case is clear cut: “The Movie Buffs Movie Store” and “moviebuff.com” are very different, in that the latter contains three fewer words, drops the possessive, omits a space, and adds “.com” to the end. Because West Coast failed to make the slightest showing that consumers view these terms as identical, we must conclude that West Coast cannot tack its priority in “The Movie Buffs Movie Store” onto “moviebuff.com.” As the Federal Circuit explained, “it would be clearly contrary to well-established principles of trademark law to sanction the tacking of a mark with a narrow commercial impression onto one with a broader commercial impression.” Van Dyne-Crotty, 926 F.2d at 1160 (noting that prior use of “SHAPE UP” could not be tacked onto “EGO,” that prior use of “ALTER EGO” could not be tacked onto “EGO,” and that prior use of “Marco Polo” could not be tacked onto “Polo”).

Since tacking does not apply, we must therefore conclude that Brookfield is the senior user because it marketed “Movie-Buff’ products well before West Coast began using “moviebuff.com” in commerce: West Coast’s use of “The Movie Buffs Movie Store” is simply irrelevant. Our priority determination is consistent with the decisions of our sister circuits in Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 356, 362-63 (11th Cir.1997), modified by, 122 F.3d 1379 (11th Cir.1997) (per curiam), and J. Wiss & Sons Co. v. W.E. Bassett Co., 59 C.C.P.A. 1269, 462 F.2d 567, 568-69 (C.C.P.A.1972). Like the present case, J. W'iss & Sons is a three-competing-trademark situation in which one company owned a single mark with a first use date in between the first use dates of the two marks owned by the other company. In that case, the intervening mark (“Trim”) was found to be confusingly similar with the later mark (“Trim-Line”), but not with the earlier mark (“Quick-Trim”); similarly here, the intervening mark (“MovieBuff’) is purported to be confusingly similar with the later mark “moviebuff.com,” see infra Part V, but is not confusingly similar with the earlier used mark “The Movie Buffs Movie Store,” see infra p. 1050. The Court of Customs and Patent Appeals (now the Court of Appeals for the Federal Circuit) concluded that priority depended upon which of the two confusingly similar marks was used first — disregarding the first use date of the earlier used mark since it was not confusingly similar with the others. It thus awarded priority to the holder of the intervening mark, as we do similarly here.

Longhorn Steaks, involving the same basic three-competing-trademark situation, is particularly instructive. The defendant owned the mark “Lone Star Steaks” with a first use date between the plaintiffs earlier used mark “Lone Star Cafe” and its later used mark “Lone Star Steakhouse & Saloon.” In its initial opinion, the Eleventh Circuit awarded priority to the holder of “Lone Star Steaks” on the basis that “Lone Star Steaks” was used before “Lone Star Steakhouse & Saloon.” See Longhorn Steaks, 106 F.3d at 362-63. The Eleventh Circuit, however, later modified its opinion, stating that the conclusion reached in its initial opinion would be correct only if defendant’s “Lone Star Steaks” was not confusingly similar to plaintiffs earlier used mark, “Lone Star Cafe.” See Longhorn Steaks, 122 F.3d 1379 (11th Cir.1997). 11

*1050 West Coast makes a halfhearted claim that “MovieBuff’ is confusingly similar to its earlier used mark “The Movie Buffs Movie Store.” If this were so, West Coast would undoubtedly be the senior user. See id. “Of course, if the symbol or device is already in general use, employed in such a manner that its adoption as an index of source or origin would only produce confusion and mislead the public, it is not susceptible of adoption as a trademark.” Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415, 36 S.Ct. 357, 60 L.Ed. 713 (1916). West Coast, however, essentially conceded that “MovieBuff’ and “The Movie Buffs Movie Store” are not confusingly similar when it stated in its pre-argument papers that it does not allege actual confusion between “MovieBuff’ and West Coast’s federally registered mark. We cannot think of more persuasive evidence that there is no likelihood of confusion between these two marks than the fact that they have been simultaneously used for five years without causing any consumers to be confused as to who makes what. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360, 1361 (7th Cir.1995) (“Vining sold several hundred thousand of the allegedly infringing brooms, yet there is no evidence that any consumer ever made such an error; if confusion were likely, one would expect at least one person out of this vast multitude to be confused .... ”). The failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove; difficulties in gathering evidence of actual confusion make its absence generally unnoteworthy. See Eclipse Associates Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1118-19 (9th Cir.1990); Sleekcraft, 599 F.2d at 353. West Coast, however, did not state that it could not prove actual confusion; rather