Argued: Oct. 30, 2013.
[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
Jeffrey A. Lindenbaum, Collen IP, Intellectual Property Law, P.C., Ossining, New York, for Appellant.
William Jerome Utermohlen, Oliff & Berridge, PLC, Alexandria, Virginia, for Appellee.
Thomas P. Gulick, Collen IP, Intellectual Property Law, P.C., Ossining, New York, for Appellant.
James A. Oliff, Oliff & Berridge, PLC, Alexandria, Virginia, for Appellee.
Before NIEMEYER, KING, and DUNCAN, Circuit Judges.
Affirmed by published opinion. Judge DUNCAN wrote the opinion, in which Judge NIEMEYER and Judge KING joined.
DUNCAN, Circuit Judge:
Appellant Swatch AG brings this action seeking reversal of the district court's order denying its opposition to appellee Beehive Wholesale, LLC's trademark application and dismissing its related claims for federal, state, and common law trademark infringement, trademark dilution, and unfair competition. Swatch appeals on the ground that the district court's underlying factual findings— that there is no likelihood of confusion between Swatch's and Beehive's marks and that Beehive's mark is not merely descriptive— are clearly erroneous. For the reasons that follow we affirm.
Swatch is a well-known Swiss corporation that produces watches, clocks, jewelry, and various materials for watch collectors. It is the owner of three U.S. registrations for the mark SWATCH  and for materials bearing that mark. Beehive is a Louisiana
company engaged in wholesale and retail sales of a variety of products including watches and watch parts.
Beehive produces and sells watch bands and faces under the mark SWAP. The defining feature of these watch parts is that they are interchangeable. A purchaser of Beehive's watch components is able to affix any SWAP watch face to most or all SWAP watchbands. Swatch brand watches, which are typically sold at a higher price point, do not include interchangeable components.
On July 30, 2004, Beehive applied to the U.S. Patent and Trademark Office (" PTO" ) to register its mark, SWAP, for use on its " [w]atch faces, ribbon watch bands, slide pendants, and beaded watch bands." J.A. 315. Beehive's application was preliminarily granted and published for opposition  on December 26, 2005. On April 14, 2008, Swatch filed a notice of opposition to Beehive's application on three grounds: 1) priority of Swatch's mark and likelihood of confusion; 2) mere descriptiveness of Beehive's mark; and 3) dilution of SWATCH by Beehive's use of SWAP. Swatch primarily argued that the similarity of Beehive's SWAP mark to its SWATCH mark in combination with the similar character of their products was likely to result in confusion among consumers as to the origin of the goods. It also argued that SWAP is too generic to be registered. The parties submitted evidence concerning their products, sales, revenue, and advertising, as well as deposition testimony regarding Beehive's selection of the SWAP mark. The opposition was heard and dismissed on all counts by the Trademark Trial and Appeal Board (" TTAB" ).
Swatch then filed a civil action in the Eastern District of Virginia seeking the cancelation of Beehive's registration under 15 U.S.C. § 1071(b). Swatch added new claims for trademark infringement and federal unfair competition under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a); trademark dilution under the Trademark Dilution Act, 15 U.S.C. § 1125(c); state trademark infringement under Va.Code § 59.1-92.12; and common law unfair competition. It also submitted documentary evidence not presented to the TTAB including facts relevant to the SWAP clock-face variant, the parties' channels of distribution, and Swatch's dilution-by-blurring claim. The parties agreed to forgo live testimony and have the matter decided solely on the written record. The district court, upon consideration of the materials before it, affirmed the TTAB, holding that its determinations were supported by substantial evidence. It also found facts based on evidence not presented to the TTAB pursuant to its authority under 15 U.S.C. § 1071(b)(3). The district court concluded, on the basis of these combined findings, that there was no likelihood of confusion between the two marks and no likelihood that SWAP would dilute SWATCH. It dismissed Swatch's infringement and unfair competition claims as a matter of law. It also concluded that Beehive's mark is registrable because it is not merely descriptive. This appeal followed.
On appeal, we review the district court's factual findings ...