A&h Sportswear, Inc Mainstream Swimsuits, Inc. v. Victoria's Secret Stores, Inc. Victoria's Secret Catalogue, Inc

OPINION OF THE COURT

I. Facts. .208

II. Procedural History . .209

III. The Direct Confusion Claim. O rH 03

A. The Lapp Test and the District Court’s Opinion H rH 03

B. The Test for Directly Competing Goods. (M rH 03

C. The District Court’s Methodology. lO rH 03

IV. Review of the District Court’s Analysis.216

A. Similarity of the Marks.216

1. Sight, Sound, Meaning.217

2. The Housemarks and the Disclaimer.218

3. The PTO’s Rejection of Victoria’s Secret’s Application.220

4. Summary.221

B. Strength of the Marks.221

1. Distinctiveness or Conceptual Strength.221

2. Commercial Strength of the Mark .224

3. Summary. 224

C. Product Similarity.224

D. Marketing and Advertising Channels .225

E. Sophistication of Consumers.225

F. The Intent of the Defendant.225

G. Actual Confusion.226

H. Combining the Factors.227

V. The Reverse Confusion Claim.227

A. Introduction.227

B. The Test for Reverse Confusion.229

1. The Factors that are the Same.229

2. Similarity of the Marks.229

3. Strength of the Marks.230

a. Commercial Strength.230

b. Distinctiveness or Conceptual Strength.231

*206 4. The Intent of the Defendant .232

5. Factors Relating to Actual Confusion.233

6. Other Relevant Facts .234

7. Summary of the Test for Reverse Confusion .234

C. The District Court’s Opinion.234

D. Guidance for Remand.236

1. Introduction .236

2. Similarity of the Marks.236

3. Strength of the Marks.236

4. Intent.237

E. Summary.237

VI. Conclusion.238

The critical question in this trademark infringement case, before us for the second time, is whether a typical consumer is likely to confuse MIRACLESUIT swimwear with THE MIRACLE BRA swimwear. 1 The former is a product of Plaintiff A & H Sportswear Company (“A & H”), which manufactures ten percent of all swimsuits made in the United States. The latter is a product of Defendant Victoria’s Secret, the lingerie leviathan that recently entered the swimwear market. A & H filed suit in the District Court for the Eastern District of Pennsylvania claiming that The Miracle Bra swimwear mark violates the Lanham Act because it is confusingly similar to the Miraclesuit swimwear mark, which A & H registered first. A & H contends that: (1) consumers are likely to wrongly associate The Miracle Bra with A & H (the direct confusion claim 2 ); or, in the alternative, (2) consumers are likely to think that Miraclesuit is a product of Victoria’s Secret (the reverse confusion claim).

During an extensive bench trial, A & H argued that Victoria’s Secret should be enjoined from using The Miracle Bra mark for swimwear. Finding a “possibility of confusion,” the District Court granted relief to A & H. Following an appeal to this Court that clarified that likelihood of eon-fusion (instead of possibility of confusion) was the correct standard, the District Court concluded that A & H had failed to show by a preponderance of the evidence that Victoria’s Secret’s The Miracle Bra swimwear mark created a likelihood of either direct or reverse confusion with the Miraclesuit product.

In Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983), this Court established a ten-factor test (the “Lapp” test) to determine the likelihood of confusion for direct confusion claims between goods that do not directly compete in the same market, but we have never decided what factors should be considered in the case of directly competing goods. The District Court therefore fashioned its own multi-factored test that approximates, but does not completely match, the Lapp test. In employing its test, the District Court acknowledged that the most important factor was the similarity of the marks, and determined that their overall commercial impressions were not similar.

The District Court placed particular emphasis on the fact that the The Miracle Bra mark typically appears alongside Victoria’s Secret’s housemark (the mark of the manufacturer), and that Victoria’s Secret uses a disclaimer with its mark that explicitly states that The Miracle Bra swimwear is unrelated to Miraclesuit or A *207 & H. The court also concluded that Victoria’s Secret’s intent, the paucity of credible incidents of actual confusion, and the sophistication of the consumers weighed in favor of Victoria’s Secret, while the competitive proximity of the products and the strength of the Miraclesuit mark weighed in favor of A & H. Taking all this into account, the District Court found no likelihood of direct confusion between the marks, rejected A & H’s direct confusion claim, and, on the assumption that the disclaimer would continue to be used in an effective manner, denied injunctive relief. Notwithstanding that likelihood of confusion is an issue of fact subject to deferential review, the District Court’s disposition of the direct confusion claim has given rise to a number of important issues in this appeal.

A & H first contends that multi-factored tests, like the one used by the District Court, are inapplicable to competing goods, and that with directly competing goods a court should examine only the similarity of the marks. We disagree. Though a court need not look beyond the marks when goods are directly competing and the marks virtually identical, we conclude that the factors we have developed in the noncompeting goods context are helpful tools and should be used to aid in the determination of the likelihood of confusion in other cases. Our jurisprudence does not preclude this result, and the District Court did not err in taking other considerations into account.

Alternatively, A & H submits that the District Court erred as a matter of law by not following precisely the ten-factor Lapp test that we have previously developed to determine likelihood of confusion. It argues that by not considering certain factors that would clearly have weighed in favor of A & H, the District Court distorted the likelihood of confusion standard. We reject this argument for two reasons. First, we have developed the ten-factor Lapp test only as a guide. Although all of the factors can be useful, the Lanham Act does not require that they be followed precisely so long as the relevant comparisons suggested by the test are made. More importantly, although the District Court arguably used a creative test, all of the Lapp factors are integrated, in one way or another, into the court’s analysis. Therefore, even if the Lapp test were mandatory, A & H could not show prejudice.

A & H also argues that, regardless of the test to be used, the District Court clearly erred in resting its finding that there was no likelihood of confusion on Victoria Secret’s disclaimer. A & H asserts that it constitutes legal error even to consider such a disclaimer, but we disagree, seeing no reason to forbid courts from considering this kind of distinguishing feature. In this case, the District Court properly weighed the disclaimer. We also reject A & H’s assertion that the District Court erred in failing to give weight to the refusal of a Patent and Trademark Office (“PTO”) examining attorney to register The Miracle Bra mark for swimwear because of its similarity to Miraclesuit. Where, as here, the PTO examining attorney did not consider all the relevant factors, and lacked significant information that was available to the District Court, his determination need not be given weight. In fact, one legal error that we do find weighs in Victoria’s Secret’s favor: The District Court erred by relying almost entirely on its classification of A & H’s mark as “suggestive to arbitrary” in its determination that Miraclesuit was a conceptually strong mark deserving of a high degree of protection. In sum, we conclude that neither the District Court’s fact-finding nor its balancing of factors warrants reversal, and hence we will affirm its judgment on the direct confusion claim.

As for the reverse confusion claim, A & H challenges the District Court’s treatment as inadequate, and inconsistent with the method laid out in our leading reverse confusion case, Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466 (3d *208 Cir.1994). Fisons adopted the doctrine of reverse confusion, and used the Lapp factors to assess the likelihood of such confusion, with a few minor modifications. The District Court interpreted our precedents to require a two-step inquiry, engaging the Lapp factors only after an initial assessment that the disparity in commercial strength reached a high threshold. Because the threshold degree of commercial disparity that the court believed was required was not met, the court did not even examine whether there existed a likelihood of confusion.

After reviewing Fisons and our precedent, we are persuaded that the District Court erred in fashioning a two-step inquiry, and in failing to consider the Lapp factors as they apply to reverse confusion claims. We will demonstrate that the application of some of the factors changes in the reverse confusion context, and we conclude that, on the record before us, the judgment must be vacated with respect to the reverse confusion claim and the case remanded for further proceedings.

I. Facts 3

The Miraclesuit bathing suit is made by A & H, which manufactures ten percent of all swimwear in the United States. The Miraclesuit is distributed by Swim Shaper, a division of Mainstream Swimsuits. The Miraclesuit is advertised as having a slimming effect on the wearer without using uncomfortable girdle-like binds. Its material purportedly smooths out middle body bulges and works with a flattering design to confuse the eye such that the wearer is advised, in advertising and in tags that generally accompany the product, that she will “[l]ook ten pounds fighter in 10 seconds[:] The ten seconds it takes to slip it on.” Miraclesuits also include tags indicating that they are Swim Shaper products.

Miraclesuits, which sell for between $50 and $100, come in both single pieces and bikinis. Many are equipped with push-up bras, shaping or underwire bras, or simple, unshaped bras. They are typically sold to trade buyers for department store sales and national mail-order catalogues, and, on two occasions, they were featured in the Victoria’s Secret catalogue. A & H received a trademark registration for the mark Miraclesuit in the fall of 1992. The District Court found that A & H has spent over $1.2 million to advertise the Miracle-suit in magazines and trade papers, and has received the equivalent of $1.5 million of advertising in “free publicity,” i.e., publicity in trade magazines, consumer columns, and the general press. The advertising and publicity campaign has been a success, and Miraclesuits constitute approximately ten percent of all of A & H’s sales.

While A & H is busy selling skinny waists and midriffs, Victoria’s Secret, the nation’s premier lingerie seller, has focused on instant enlargements of the bust. 4 In 1993, Victoria’s Secret released The Miracle Bra, a padded push-up bra. Victoria’s Secret filed an application to register its The Miracle Bra trademark, and unleashed an avalanche of advertising and publicity, ultimately spending over $13 million on The Miracle Bra products. The campaign succeeded, and sales of The Mir *209 acle Bra products have topped $140 million since they were first introduced.

In 1994, Victoria’s Secret’s trademark application for The Miracle Bra mark on lingerie was approved. Later that year, Victoria’s Secret moved The Miracle Bra mark into swimwear, and The Miracle Bra swimsuit and The Miracle Bra bikini started appearing in Victoria’s Secret cata-logues. (The Miracle Bra lingerie and swimwear are sold only in Victoria’s Secret stores and catalogues.). The cost of The Miracle Bra swimwear varies, but it is typically in the neighborhood of $70, and The Miracle Bra and Victoria’s Secret tags are prominently featured on all swimwear. This product also succeeded: The total sales of The Miracle Bra swimsuits reached $28 million by summer 1997. The last critical fact regarding this swimwear is that, as a result of this litigation, Victoria’s Secret has committed itself to using the following disclaimer with all promotion, advertising, and sales of The Miracle Bra: “The Miracle Bra Swimwear Collection is exclusive to Victoria’s Secret and is not associated with Miraclesuit by Swimsha-per.”

In 1995, after this litigation began, Victoria’s Secret applied to the PTO for a trademark for The Miracle Bra for swimsuits, bathing suits, and bikinis. Because it had previously conducted a search for The Miracle Bra as applied to lingerie, which had led it to the conclusion that The Miracle Bra did not threaten to infringe on other trademarks, Victoria’s Secret had not conducted a separate trademark search of The Miracle Bra trademark as it applied to swimwear. However, the PTO examining attorney denied Victoria’s Secret’s application due to its similarity to Miraclesuit because he determined that: (1) “Miracle” was the dominant feature of each mark; and (2) the product lines overlap. The denial was not appealed.

II. Procedural History

In December 1994, A & H filed a complaint against Victoria’s Secret, alleging direct and reverse trademark infringement, unfair competition, dilution, and unjust enrichment. The District Court held a bench trial on liability in the fall of 1995, and a damages and relief trial in 1996. The court found that Victoria’s Secret’s use of The Miracle Bra on its lingerie created no likelihood of confusion with A & H’s Miraclesuit. See A & H Sportswear Co. v. Victoria’s Secret Stores, Inc., 926 F.Supp. 1233, 1264 (E.D.Pa.1996) (“A & H I”). However, with regard to- Victoria’s Secret’s use of The Miracle Bra mark on swimwear, the District Court found a “possibility of confusion” with A & H’s Miracle-suit swimwear. See id. at 1269. Based upon this finding, it ordered Victoria’s Secret not to use The Miracle Bra tag with swimwear unless it was accompanied by the disclaimer: “The Miracle Bra (TM) swimwear collection is exclusive to Victoria’s Secret and not associated with Mira-clesuit (R) by Swim Shaper (R).” A & H Sportswear Co. v. Victoria’s Secret Stores, Inc., 967 F.Supp. 1457, 1482 (E.D.Pa.1997) (“A & H II"). The District Court also ordered that royalties on past and future sales of The Miracle Bra swimsuits be paid to A & H. See id. at 1483. Both parties appealed. Although the District Court granted a stay of its order pending appeal, Victoria’s Secret has continued to use the disclaimer voluntarily and has represented to us at oral argument that it will continue to do so regardless of the outcome of this litigation.

During the prior appeal, we heard the case en banc to consider the viability of the “possibility of confusion” standard originally used by the District Court. We rejected that standard, and remanded the case to the District Court to apply the traditional “likelihood of confusion” standard to the swimsuits’ marks. See A & H Sportswear Inc. v. Victoria’s Secret Stores, Inc., 166 F.3d 197, 206 (3d Cir.1999) (“A & H III”). The bulk of the en banc opinion is devoted to explaining the rejection of the “possibility of confusion” standard. However, we also commented on what has be *210 come a central question in the current appeal, namely, whether the likelihood of confusion analysis differs for competing, as opposed to noncompeting, goods:

[T]he standard to be applied when goods that are the subject of a trademark infringement claim are directly competing, as is the situation with [Miraclesuit and The Miracle Bra swimwear], is different than that applied when the goods are not competing. The ten-factor test for likelihood of confusion between marks that are not competing, derived from Scott Paper Co. [v. Scott’s Liquid Gold, Inc.], 589 F.2d [1225,] 1229 [(3d Cir. 1978) ], is not required when the goods directly compete. In fact, we have said that “where the trademark owner and the alleged infringer deal in competing goods or services, the court need rarely look beyond the mark itself’.

Id. at 202 (quoting Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir. 1983)). We also suggested that the District Court should, on remand, consider whether this case implicated the reverse confusion doctrine, noting the possibility that the later-entering mark of the junior user-in this case the larger, more powerful company (Victoria’s Secret)-might be overwhelming the mark of the prior, or senior, user (A & H), the phenomenon typifying reverse confusion.

Following our mandate, the District Court applied the “likelihood of confusion” test and found that there was no likelihood of direct confusion and no grounds for consideration of reverse confusion. It therefore denied the request for injunctive relief. See A & H Sportswear Co. v. Victoria’s Secret Stores, Inc., 57 F.Supp.2d 155, 178-79 (E.D.Pa.1999) (“A & H IV”). A & H appeals. We review the District Court’s factual determinations for clear error, but we give plenary review to its legal conclusions. See A & H III, 166 F.3d at 202-03. Likelihood of confusion is a factual question, see id., but legal principles govern what evidence may, or must, be considered by the District Court in reaching that conclusion, and also what standards apply to its determination. We review the denial of the request for injunc-tive relief for abuse of discretion. See Warner-Lambert Co. v. Breathasure, Inc., 204 F.3d 87, 89 n. 1 (3d Cir.2000).

III. The Direct Confusion Claim

We measure federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15 U.S.C. § 1125(a)(1)(A), by identical standards. See A&H III, 166 F.3d at 202. 5 To prove either form of Lanham Act violation, a plaintiff must démonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion. See Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 437 (3d Cir.2000). The plaintiff bears the bur *211 den of proof. See American Home Prods. Corp. v. Barr Labs., Inc., 834 F.2d 368, 371 (3d Cir.1987). It is undisputed that A & H owns Miraclesuit, and that it is a valid and legally protectable mark. Therefore, the questions in this case involve the delineation and application of standards for the evaluation of likelihood of confusion.

A. The Lapp Test and the District Court’s Opinion

A likelihood of confusion exists when “consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark.” Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 862 (3d Cir.1992) (quotation marks omitted). In Inteipace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir.1983), we stated that when the goods involved in a trademark infringement action directly compete with each other, a court “need rarely look beyond the mark itself’ to determine the likelihood of confusion. Id. at 462. For noncompeting goods, we developed a non-exhaustive list of factors to consider in determining whether there is a likelihood of confusion between marks:

(1) the degree of similarity between the owner’s mark and the alleged infringing mark;

(2) the strength of the owner’s mark;

(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) the length of time the defendant has used the mark without evidence of actual confusion arising;

(5) the intent of the defendant in adopting the mark;

(6) the evidence of actual confusion;

(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties’ sales efforts are the same;

(9) the relationship of the goods in the minds of consumers because of the similarity of function;

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market, or that he is likely to expand into that market.

Id. at 463 (citing Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir.1978)). Throughout the opinion we will refer to these factors as the “Lapp” factors.

The District Court recognized that we have not “explicitly elucidated what kind of factors should be considered in the case of directly competing goods.” A & HIV, 57 F.Supp.2d at 163. It chose not to use the Lapp test, but instead developed its own test, drawing on many of the same factors:

(1) strength of the plaintiffs mark;

(2) similarity between the marks;

(3) similarity of the products and the degree to which they directly compete with each other;

(4) marketing or advertising channels used;

(5) sophistication of consumers;

(6) defendant’s intent in selecting the mark; and

(7) incidents of actual confusion.

Id. A & H contends that the District Court erred in three ways in applying these factors. First, it argues that when goods are directly competing, a district court need only examine the similarity of the marks. Second, it submits that inasmuch as the District Court fashioned its own test, the Lapp factors it omitted would have tipped the balance in favor of finding a likelihood of confusion. Third, it contends that on any test the similarity of the marks creates a likelihood of confusion.

*212 B. The Test for Directly Competing Goods

We have not previously settled upon a method that district courts should use to examine whether there exists a likelihood of confusion between directly competing goods. Uncertainty on this point in the district courts within the circuit, as demonstrated in the margin, counsels that we clarify this area of law. 6

The multi-factored test rescribed above was developed to determine likelihood of confusion for noncompeting goods. See Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 202 (3d Cir.1995). This genesis is apparent in the substance of the test: factor (7) directs a court to look at the markets of the goods “though not competing”; factor (9) directs that the court examine the “similarity of function”; and factor (10) directs that the court look at “other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market, or that he is likely to expand into that market.” These factors are not apposite for directly competing goods: By definition, the goods are competing, their function is the same, and the senior and junior user are already in each other’s markets.

Nonetheless, despite the test’s etiology, the raison d’etre of the Lapp factors and the purpose of their development was to aid in the navigation of the difficult course of determining a “likelihood of confusion.” A district court should not be foreclosed from using any factors that it deems helpful in analyzing whether a likelihood of confusion exists between given products, whether or not they directly compete. Lapp’s suggestion that, for competing goods, the court “need rarely look beyond the mark itself,” Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir.1983), may be an exercise in unjustified optimism; cases are often not easy, and courts will frequently need help in sorting out the likelihood of confusion. District courts within this circuit, as well as other appellate courts, have found that consideration of the Lapp factors (or their analogs from other circuits) can be quite useful for determining likelihood of confusion even when the goods compete directly. See, e.g., Barre-National, Inc. v. Barr Labs., Inc., 773 F.Supp. 735, 742 (D.N.J.1991); Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486, 490 (2d Cir.1988).

Further, we recognize that many of the Lapp factors that are specifically applicable only to noncompeting goods are often used by courts to determine, in the first instance, whether goods are or are not directly competing. This makes the plaintiffs proposed prohibition on the examination of evidence beyond the marks themselves somewhat illusory. For instance, in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979), the Court of Appeals for the Ninth Circuit concluded that two lines of recreational boats were not directly competitive because they were marketed to different consumers and were de *213 signed for different uses. See id. at 348. This inquiry approximates Lapp factors (8) and (9), which look to the different functions of the products and the different target customers. Similarly, in Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358 (6th Cir.1984), the court affirmed a district court’s conclusion that the parties were direct competitors based on an examination of the similarity of the parties’ customer base, geographical trading area, and products, see id. at 362, factors which approximate Lapp factors (7), (8), and (9). Indeed, in A & H I, the District Court first applied the Lapp test in analyzing A & H’s infringement claim regarding the use of The Miracle Bra mark on lingerie, and then observed that much of the same analysis could be used to determine whether The Miracle Bra swimsuit and the Miracle-suit shared the same market. See id. at 1266. 7

The above observations lead us to conclude that the Lapp factors should be used both for competing and for noncompeting goods. As for those factors that specifically refer to noncompeting goods, we believe that, rather than force courts first to inquire as to whether or not the goods are directly competitive simply for the purpose of determining if those factors apply — and, presumably, applying Lapp factors to make this initial determination — factors (7), (9), and (10) of the Lapp test must be adapted to make them applicable whether the products directly compete or not.

In holding that the Lapp test is to be employed when examining both competing and noncompeting goods, we acknowledge that we have at times suggested that the method for comparing competing goods is different from that for noncompeting goods. In Williamsonr-Dickie Manufacturing Co. v. Davis Manufacturing Co., 251 F.2d 924 (3d Cir.1958), for example, we did not look beyond the marks themselves in upholding a trial court’s determination that the marks “Dickie Davis” and “Dick-ie’s” for boys’ clothing were confusingly similar. See id. at 926-27. Furthermore, in Lapp we stated that

[w]here the trademark owner and the alleged infringer deal in competing goods or services, the court need rarely look beyond the mark itself. In those cases the court will generally examine the registered mark, determine whether it is inherently distinctive or has acquired sufficient secondary meaning to make it distinctive, and compare it against the challenged mark.

721 F.2d at 462 (emphasis added). Additionally, in Fisons, we noted that the

showing of proof plaintiff must make for[likelihood of confusion] depends on whether the goods or services offered by the trademark owner and the alleged infringer are in direct competition.... Where the goods or services are not competing, the similarity of the marks is only one of a number of factors the court must examine to determine likelihood of confusion.

30 F.3d at 472-73. Finally, in A&H III, we stated that “the standard to be applied when goods ... are directly competing ... is different than that applied when the goods are not competing.” 166 F.3d at *214 202. In each of these cases, we arguably implied that when the goods are competing, the similarity of the marks is the only relevant factor.

Nonetheless, we read our prior opinions on this subject to counsel only that a district court may, if it so chooses, examine only mark similarity for directly competing goods.

A & H urges us to take the quoted statement from A & H III to mean that a district court should not consider any factors at all beyond the similarity of the marks themselves. However, we believe that the word “standard” is different from the word “test.” The better reading of this statement is the literal one: The “standard” for deter mining when marks are likely to be confused is different when the marks directly compete, i.e., the factor regarding the similarity of marks may increase in importance, but it does not eliminate the other factors entirely. This proposition is not only unremarkable, it flows naturally from the Lapp test, which considers the competition and potential competition of the products in the marketplace. We have certainly never held that a court may not look beyond the marks themselves to determine likelihood of confusion. The quote from Lapp itself, res-cribed in our prior opinion in this case (“the court need rarely look beyond the mark itself’) presumes that a court might sometimes need to look beyond the mark. Lapp, 721 F.2d at 462.

We think that this inference is a sound one, for there appears to be no reason, statutory or otherwise, to impose the restrictive rule proposed by A & H. Indeed, the cases relied upon by A & H do no more than suggest that the Lapp inquiry may be unnecessary in some directly competing goods cases. See, e.g., A & H III, 166 F.3d at 202 (holding that in directly competing goods cases, the multi-factored test “is not required”). At all events, because we have never before been confronted with this question, any implication in our prior cases that courts are foreclosed from looking beyond mark similarity for competing goods would have been dictum.

Our conclusion that the Lapp factors may be used to determine the likelihood of confusion in cases of directly competing goods, at least when the marks are not identical, accords with the approaches of the Second, Sixth, Eighth, and Ninth Circuits, which also have approved using mul-ti-factored tests, developed for noncompetitive goods, in the competitive goods arena. See Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486, 490 (2d Cir.1988); Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 421-22 (6th Cir.1999); Duluth News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 1096 (8th Cir.1996); Dr. Seuss Enters., L.P. v. Penguin Books U.S.A., Inc., 109 F.3d 1394, 1404 (9th Cir.1997).

As explained above, we do not hold that a District Court must use the factors. In fact our precedents suggest the opposite. If products are directly competing, and the marks are clearly very similar, a district judge should feel free to consider only the similarity of the marks themselves. See, e.g., Opticians Ass’n of Am. v. Independent Opticians of Am., 920 F.2d 187, 195 (3d Cir.1990) (“[v]ery little analysis” was necessary in a case where a splinter group of a larger organization continued to use the organization’s collective mark). Moreover, the court often need not apply each and every factor; when goods are directly competing, both precedent and common sense counsel that the similarity of the marks takes on great prominence. 8 At all events, the factors are meant to be tools, not hurdles. On the other hand, when, as in this case, the degree of confusing similarity of the marks is not clear, see Barre National, Inc., 773 F.Supp. at 742, a court can turn to the other factors. Here, the District Court *215 did not err in choosing to look beyond the marks themselves.

To summarize, we hold that whether or not the goods directly compete, the Lapp factors should be employed to test for likelihood of confusion. Therefore, likelihood of confusion for both competing and noneompeting goods should be tested with reference to the following:

(1) the degree of similarity between the owner’s mark and the alleged infringing mark;

(2) the strength of the owner’s mark;

(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) the length of time the defendant has used the mark without evidence of actual confusion arising;

(5) the intent of the defendant in adopting the mark;

(6) the evidence of actual confusion;

(7) whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties’ sales efforts are the same;

(9) the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors;

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture both products, or expect the prior owner to manufacture a product in the defendant’s market, or expect that the prior owner is likely to expand into the defendant’s market.

As we stress further below, the Lapp test is a qualitative inquiry. Not all factors will be relevant in all cases; further, the different factors may properly be accorded different weights depending on the particular factual setting. A district court should utilize the factors that seem appropriate to a given situation.

C. The District Court’s Methodology

A & H argues in the alternative that inasmuch as the District Court used a multi-factored test, it should have considered all of the Lapp factors, and that the “missing” factors would have favored A & H. It therefore contends that the court erred as a matter of law in fashioning its own test. However, the test used by the District Court is functionally the same as the Lapp test. A comparison of these factor lists reveals that the ostensibly missing Lapp factors appear to be incorporated into the District Court’s test. Lapp factor (9), “the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors” and Lapp factor (8), “the extent to which the targets of the parties’ sales efforts are the same,” are subsumed in the court’s factor (3), which considers the “similarity of the products and the degree to which they directly compete with each other.” Lapp factor (4), “the length of