CLICKS BILLIARDS, ,INC. V SIXSHOOTERS, INC.

Pool halls conjure up images of green felt tables, low-

hanging lights, and billiard cues. But can a pool hall's overall

image constitute protectable trade dress? To answer that ques-

tion in this dispute between two pool hall operators, Appellant

Clicks Billiards, Inc. ("Clicks"), and its competitor, Six-

shooters, Inc. ("Sixshooters"), we must address whether

Clicks' claimed trade dress was nonfunctional; whether

Clicks' trade dress had acquired secondary meaning; and

whether there was a likelihood of confusion between the two

establishments. Because there are disputed issues of material

fact on each of these three questions, we reverse the district

court's grant of summary judgment in favor of Sixshooters

and remand for trial.

BACKGROUND

Clicks operates a number of billiards establishments in the

Southwest, including two in the Phoenix area. Sixshooters

opened a single pool hall in the Phoenix area in December

1996, sometime after the two Clicks facilities were already in

existence. Daryl Chester, a former Clicks manager who left to

work for Sixshooters, was ostensibly involved in the design

of Sixshooters both before and after he left Clicks. Clicks

presented evidence that Chester and others affiliated with Six-

shooters visited Clicks and engaged in detailed inspection and

measuring of Clicks' interior features while the design of Six-

shooters was being formulated. Clicks also claims that Six-

shooters was built in the path of Clicks' planned expansion.

In April 1997 Clicks filed suit under the Lanham Act, 15

U.S.C. § 1051 et seq., alleging that Sixshooters infringed its

trade dress. In summary judgment proceedings, Clicks

asserted that the following individual features of its billiard

halls, taken collectively, constitute its trade dress:

Large floral print carpet pattern and style. Dark mahogany wood finishes. Ceiling and wall covers. Appearance, color, and design of custom lighting fixtures. Millwork details on woodwork. Layout and arrangement of pool tables. Various electrical details as well as air conditioning features to the extent they are part of the look, feel, and appearance of the decor of Clicks. Tile color, pattern, and use. Color, shape, and appearance of mahogany-stained top and bottom portions of bar. Acoustical wall treatment on lower third of perime- ter walls and drink rails. Light to medium colored oak cocktail tables. Drink rails. Signage at front door, including color, content, and font.

6738

Standardized appearance of the Clicks entry area, including the black and white tile on the floor. Drink rails, cue racks, and wood trim on top of the dark green acoustical wall. Spatial and layout arrangements between the drink rails and the pool tables. Neon beer signs placed on the off-white fur down or soffit above the dark, mahogany-stained wall. The design, color, shape, and placement of the lights over the pool halls, as well as the number and spac- ing between them. The design of the bar edge and the raised motifs on the bar. The coordinated color scheme relating to the acousti- cal tile ceilings, the light fixtures, and the drink rail- ings. The color, shape, and location of the ceiling fans. The location of the bartender relative to the entry way. Design, including shape, material, stain, and struc- tural aspects, of cue racks. Placement of match books on upside-down ash trays. Vinyl flooring. Appearance of ceiling loudspeaker baffles, as painted over to match ceiling tile sections.

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Wall or pole-mounted juke boxes. Oak chairs surrounding drink tables. Black vinyl bar chairs. Location and existence of promotional materials, stacked talcum powder containers, and boxed cue chalk squares at the register. Wooden stools at perimeter drink tables and interior aisle tables. Uniforms of bartenders and servers. Size, shape, and color of trash cans. Existence, shape, and appearance of bar-top video games. Handles of draft-taps. Internal layout of bar and laminate top of bar. The type, shape, configuration, and color of the drop ceiling.

Both parties conducted extensive discovery, including depositions of employees and patrons of both establishments. Clicks submitted photographs of Clicks and Sixshooters, and the district court conducted visits to the two Clicks and one Sixshooters pool halls, though not in the presence of the par- ties or their attorneys. Clicks also submitted a survey purport- ing to provide support for a finding of secondary meaning and likelihood of confusion. The district court granted summary judgment to Sixshooters, finding that Clicks had not presented sufficient evidence to raise a triable issue of fact on the basic

6740

trademark issues of functionality, secondary meaning, and

likelihood of confusion.

STANDARD OF REVIEW

We review de novo a grant of summary judgment. Balint

v. Carson City, 180 F.3d 1047, 1050 (9th Cir. 1999) (en

banc). Viewing the evidence in the light most favorable to the

nonmoving party (Clicks) and drawing all reasonable infer-

ences in its favor, we must determine whether the district

court correctly applied the relevant substantive law and

whether there are any genuine issues of material fact. See id.

ANALYSIS

Trade dress refers generally to the total image, design,

and appearance of a product and "may include features such

as size, shape, color, color combinations, texture or graphics."

Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822

(9th Cir. 1993) (internal quotation marks and citations omit-

ted). It is well settled that restaurants and similar establish-

ments may have a total visual appearance that constitutes

protectable trade dress. See, e.g., Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 765 (1992) (describing protect-

able trade dress of Mexican restaurant as "a festive eating

atmosphere having interior dining and patio areas decorated

with artifacts, bright colors, paintings, and murals"); Fud-

druckers, Inc. v. Doc's B.R. Others, Inc., 826 F.3d 837, 841

(9th Cir. 1987) ("[A] restaurant's decor, menu, layout and

style of service may acquire the source-distinguishing aspects

of protectable trade dress. . . ."); cf. Shakey's Inc. v. Covalt,

704 F.2d 426, 430 (9th Cir. 1983) (claimed aspects of pizze-

ria's trade dress included menu content, prices, pizza ingredi-

ents, and "style" of preparation).

To sustain a claim for trade dress infringement, Clicks

must prove: (1) that its claimed dress is nonfunctional; (2) that

its claimed dress serves a source-identifying role either

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because it is inherently distinctive 1 or has acquired secondary

meaning; and (3) that the defendant's product or service

creates a likelihood of consumer confusion. See Disc Golf

Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th

Cir. 1998); Fuddruckers, 826 F.3d at 841. The district court

held that Clicks did not present evidence sufficient to create

a triable issue of fact on any of the three elements. We

address them in turn.

I. FUNCTIONALITY

The first hurdle Clicks must overcome is functionality.

Trade dress protection extends only to design features that are

nonfunctional. As the Supreme Court explained, "A product

feature is functional and cannot serve as a trademark if the

product feature is essential to the use or purpose of the article

or if it affects the cost or quality of the article, that is, if exclu-

sive use of the feature would put competitors at a significant,

non-reputation-related disadvantage." Qualitex Co. v. Jacob-

son Prods. Co., Inc., 514 U.S. 159, 165 (1995); accord Traffix

Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255,

1259 (2001). Functionality is a question of fact. Fuddruckers,

826 F.2d at 843 (citing Transgo, Inc. v. Ajac Transmission

Parts Corp., 768 F.2d 1001, 1028-29 (9th Cir. 1983)).

Although trade dress had already been recognized by courts

as worthy of protection under the Lanham Act, in 1999 Con-

gress amended the Act to make this statutory protection

explicit. And, although the amendment took effect after the

filing of this case, it confirms the functionality limitation on

trade dress:

In a civil action for trade dress infringement under _________________________________________________________________ 1 That trade dress can be "inherently distinctive" without acquiring sec- ondary meaning was established in Two Pesos , 505 U.S. at 776. Clicks has not claimed that its trade dress is inherently distinctive, only that it has acquired secondary meaning.

6742

this chapter for trade dress not registered on the prin- cipal register, the person who asserts trade dress pro- tection has the burden of proving that the matter sought to be protected is not functional.

15 U.S.C. §1125(a)(3). As the Supreme Court observed: "This burden of proof gives force to the well-established rule that trade dress protection may not be claimed for product features that are functional." Traffix Devices, 121 S. Ct. at 1259. This court in Fuddruckers--a case bearing many similari- ties to this one--shed considerable light on the precise mean- ing of functionality in the context of a restaurant's trade dress. 2 The court stressed the importance of evaluating the establish- ment's "combination of visual elements `that, taken together, . . . may create a distinctive visual impression.' " Fuddruck- ers, 863 F.2d at 842 (quoting Falcon Rice Mill v. Cmty. Rice Mill, 725 F.2d 336, 346 (5th Cir. 1984)). The fact that individ- ual elements of the trade dress may be functional does not necessarily mean that the trade dress as a whole is functional; rather, "functional elements that are separately unprotectable can be protected together as part of a trade dress. " Id. (quoting Le Sportsac, Inc. v. K. Mart Corp., 754 F.2d 71, 76 (2d Cir. 1985)).

_________________________________________________________________

2 Fuddruckers is a national chain of "upscale" hamburger restaurants. Its

claimed trade dress, as characterized by the court, includes elements such

as: a visible food preparation area; glass display cases; the display of food

in bulk packages; stacked cartons of beer, produce, and other food items;

iced tea served in containers that "look[ ] suspiciously like a garbage can";

a self-serve condiment bar featuring "black, round crocks"; extensive use

of tiling; neon signs; a yellow awning; director's chairs; mirrors; a bakery

area labeled "Mother Fuddruckers"; a restaurant "newspaper" at each

table; paper-lined beer trays used as serving platters; an ice-cream display

case; French doors between the dining rooms; large ceiling lamps; potted

floor lamps; "black over-sized napkin holders stacked on top of each

other"; "a stainless steel bin used to dispense iced beverages"; and ceiling

fans. Fuddruckers, 826 F.2d at 839-40, 840 n.1.

6743

To illustrate, many of the elements that constitute part of

Clicks' claimed trade dress are indeed functional; the lamps

illuminate the pool tables, and the counters provide a place for

customers to place their drinks. Clicks cannot claim a monop-

oly in using the particular type of lamps or counters with

which it furnished its pool halls. Nor can it prevent Six-

shooters from copying purely functional aspects of the pool

hall. It can, however, " `claim[ ] as its mark the particular

combination and arrangement of design elements' that distin-

guish it from others using the same concept." Id. (citing Le

Sportsac, 826 F.2d at 76). As the Fuddruckers court further

explained,

Viewing the elements as a whole does not result in monopoly protection for necessary elements. If Fud- druckers were to get protection for its trade dress, which includes such items as directors chairs, white tile, and an open bakery, it could not preclude other restaurants from using those items. It can only pre- vent competitors from using the items in a way that, viewed as a whole, is likely to confuse consumers. There are many ways to use directors chairs, white tile, open bakeries, and the many other items that make up Fuddruckers' trade dress that would not cause confusion.

Id. at 843 n.7.

We emphasize here that, in evaluating functionality as

well as the other elements of a trade dress claim, it is crucial

that we focus not on the individual elements, but rather on the

overall visual impression that the combination and arrange-

ment of those elements create. Trade dress is the composite

tapestry of visual effects. Courts have repeatedly cautioned

that, in trademark--and especially trade dress--cases, the

mark must be examined as a whole, not by its individual con-

stituent parts. See, e.g., The Forschner Group, Inc. v. Arrow

Trading Co., Inc. 124 F.3d 402, 409 (2d Cir. 1997) ("[W]e are

not so much concerned with dissecting the competing trade

dress and enumerating discrete points of similarity, but rather

we focus on the overall image created."); Union Carbide

Corp. v. Eveready, Inc., 531 F.2d 366, 379 (7th Cir. 1976)

("[D]issecting marks often leads to error. Words which would

not individually become a trademark may become one when

taken together."); see also 1 J. Thomas McCarthy, McCarthy

on Trademarks and Unfair Competition § 8:2 (4th ed. 2000)

("[T]he issue is not whether defendant's package or trade

dress is identical to plaintiff's in each and every particular.

Rather, it is the similarity of the total, overall impression that

is to be tested. . . .").

In addressing functionality in its order granting summary

judgment, the district court stated, "The overall image of

Click's [sic] is Functional and Purely Aesthetic, not Source

Identifying." We disagree with this formulation of the func-

tionality inquiry. First, trade dress cannot be both"functional

and purely aesthetic." Such a formulation is internally incon-

sistent and at odds with the commonly accepted view that

functionality denotes utility. Nor has this circuit adopted the

"aesthetic functionality" theory, that is, the notion that a

purely aesthetic feature can be functional. See First Brands

Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1382 n.3 (9th Cir.

1987) ("In this circuit, the `aesthetic' functionality test has

been limited, Vuitton [et Fils S.A. v. J. Young Enters., Inc.],

644 F.2d [769], 773 [(9th Cir. 1981)], if not rejected, Fabrica,

Inc. v. El Dorado Corp., 697 F.2d 890, 895 (9th Cir. 1983),

in favor of the `utilitarian' functionality test."); 1 McCarthy

§ 7:81 (" `Aesthetic functionality' is an oxymoron. Ornamen-

tal aesthetic designs are the antithesis of utilitarian designs.");

see also Leatherman Tool Group, Inc. v. Cooper Indus., Inc.,

199 F.3d 1009, 1013 (9th Cir. 2000) (distinguishing func-

tional from "ornamental" features). 3

_________________________________________________________________

3 The Supreme Court recently decided an appeal in a related case, Coo-

per Indus., Inc. v. Leatherman Tool Group, Inc., 121 S. Ct. 297 (2001)

(certiorari granted with respect to punitive damages issue only).

6745

We do not accept that there is a dichotomy between

"functional" and "source identifying." Although the evidence

relevant to them may overlap, these are two separate aspects

of the protectability analysis. Whether a feature is functional

has no direct bearing on whether it plays a source-identifying

role. The functionality analysis should not be conflated with

the inquiry into whether "the purchasing public associates the

dress with a particular source." Fuddruckers , 826 F.2d at 843

(conducting functionality analysis and then conducting sepa-

rate secondary meaning analysis). Trade dress, of course, can

be aesthetically pleasing and still play a source-identifying

role; it can also be both aesthetically pleasing and functional.

Trade dress cannot, however, be both functional and purely

aesthetic.

We consider several factors in determining whether trade

dress is functional: "(1) whether the design yields a utilitarian

advantage, (2) whether alternative designs are available, (3)

whether advertising touts the utilitarian advantages of the

design, and (4) whether the particular design results from a

comparatively simple or inexpensive method of manufac-

ture." Disc Golf, 158 F.3d at 1006. These factors do not trans-

late easily from application in the context of utilitarian

product features such as a parabolic chain on a disc golf

"hole," see id., or the configuration of a Swiss Army knife-

like tool, see Leatherman, 199 F.3d at 1009, to application in

the context of services, such as a restaurant or a pool hall.

Neither is the Fuddruckers case much help in this regard.

There the court did not actually evaluate whether the restau-

rant's trade dress was functional; it merely held that it was

error for the district court not to instruct the jury as to func-

tionality. See Fuddruckers, 826 F.2d at 842-43.

The discussion of functionality in the Fifth Circuit's Two

Pesos opinion may be most instructive. See Taco Cabana

Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1118-19 (5th

Cir. 1991), aff'd, 505 U.S. 763 (1992). 4 Acknowledging the

_________________________________________________________________

4 The Supreme Court in Two Pesos did not address functionality but

"made the explicit analytic assumption that the trade dress features in

question . . . were not functional." Traffix Devices, 121 S. Ct. at 1262.

6746

difficulty of applying traditional functionality analysis in the

restaurant context, the Fifth Circuit pointed out that the usual

concern motivating the functionality inquiry (i.e., not to allow

a merchant to obtain perpetual, patent-like protection for a

product feature) is generally not present in this area: "The

need to avoid monopolization of a design lessens . .. in the

area of distinctive trade dress. The wide range of available

packaging and design options allows a producer to appropri-

ate a distinctive identity without unduly hindering his compet-

itors' ability to compete." Id. at 1119 (quoting Sicilia Di R.

Biebow & Co. v. Cox, 732 F.2d 417, 425 (5th Cir. 1984)).

Thus, in that case, where plaintiff Taco Cabana claimed trade

dress protection for the overall image of its restaurant, the fact

that many of the individual features of its establishments were

functional did not preclude protection, because"Taco

Cabana's particular integration of elements leaves a multitude

of alternatives to the upscale Mexican fast-food industry that

would not prove confusingly similar to Taco Cabana's trade

dress." Id. 5

_________________________________________________________________

5 The Fifth Circuit upheld a jury instruction that read:

The law allows the copying of functional features in the public interest of enhancing competition . . . . Even if the trade dress is made up of individual elements, some of which serve a functional purpose, the trade dress may be protectable so long as the combi- nation of these individual elements which define Taco Cabana's trade dress taken is arbitrary. On the other hand, if you find that Taco Cabana's trade dress taken as a whole must be used by oth- ers in order to compete in the Mexican fast-food restaurant busi- ness, then you should find that Plaintiff's trade dress is functional and not protectable. [T]he inquiry into whether Taco Cabana's trade dress is func- tional or non-functional should not be addressed to whether indi- vidual elements fall within the definition, but whether the whole collection of elements taken together are functional or non- functional.

Two Pesos, 932 F.2d at 1119. Though it generally approved this instruc- tion, the Fifth Circuit expressed concern about the statement that protec- tion must be denied on functionality grounds where the particular combination "must be used by others in order to compete." Id. (emphasis

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Here, then, the ultimate issue on functionality is

whether Clicks' "particular integration of elements leaves a

multitude of alternatives to the" pool hall "industry that would

not prove confusingly similar to" its trade dress. Clicks, we

conclude, presented sufficient evidence of the arbitrariness

and non-functional nature of its design decisions and the

availability of alternative designs to clear the summary judg-

ment hurdle. The district court, even as it came to the conclu-

sion that Sixshooters was entitled to judgment as a matter of

law on the functionality issue, identified various arbitrary ele-

ments of Clicks' trade dress, among them the size, placement,

and layout of the pool tables; the color combination, including

the contrast between the carpet and the dark wood; the light-

ing; the neon beer signs, bar tap handles, and the like; the cue

racks; the selection of video games; the floor covering; the

wall treatment; the drink rails; and the millwork. To be sure,

many of these elements, considered in isolation, may be func-

tional. The issue, however, is whether, taken as a whole, the

overall look and feel of the establishment is functional.

As the district court itself stated, Clicks' "alleged `trade

dress' is purely aesthetic, and part of an overall image of an

upscale bar . . . . Within the overall image are several distinct

decisions, such as the darkness of the wood, the placement of

various items, color choices and patterns." The district court

concluded that "these decisions are decorative and aesthetic."

Although the court did go on to state as part of the same sen-

tence that "these decisions" are not "source identifying," as

explained above, we address separately the secondary mean-

ing analysis. That the design decisions were made for aes-

thetic reasons -- and not, for example, because they were the

_________________________________________________________________

added). The proper standard, rather, is that "It should suffice for a finding

of functionality if protecting the trade dress threatens to eliminate a sub-

stantial swath of competititve alternatives in the relevant market." Id. at

1119 n.6 (citing Sicilia, 732 F.2d at 427 ("A design would be considered

de jure functional if it is the best or one of a few superior designs avail-

able." (internal quotation marks omitted)).

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only, the cheapest, or the most efficient way to design a pool

hall -- is evidence of nonfunctionality.

In sum, Clicks presented evidence sufficient to raise an

issue of fact that the trade dress of its pool halls is nonfunc-

tional.

II. SECONDARY MEANING

We turn next to analysis of secondary meaning, a term

of art for identification of source. As the Supreme Court elab-

orated in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529

U.S. 205, 211 (2000), "a mark has acquired distinctiveness,

even if it is not inherently distinctive, if it has developed sec-

ondary meaning." "The trade dress of a product or service

attains secondary meaning when the purchasing public asso-

ciates the dress with a particular source." Fuddruckers, 826

F.2d at 843. "[T]he elements making up the alleged trade

dress must have been used in such a manner as to denote

product source. Thus, a product feature whose only impact is

decorative and aesthetic, with no source-identifying role, can-

not be given exclusive rights under trade dress law. " 1

McCarthy § 8:1 (quoted in Steven W. Boney, Inc. v. Boney

Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997)). "Whether a

particular trade dress has acquired secondary meaning is a

question of fact. . . ." First Brands, 809 F.2d at 1383.

Clicks introduced substantial evidence tending to show

that the trade dress of its pool halls had attained secondary

meaning. Chief among this evidence was a survey commis-

sioned by Clicks purporting to demonstrate that patrons asso-

ciated the look of Clicks with that establishment and not

others. Such surveys, while often subject to criticism and

varying interpretations, are a routine and well-established fea-

ture of trademark practice. "Surveys in trademark cases may

be considered so long as they are conducted according to

accepted principles." Stuhlbarg Int'l Sales Co., Inc. v. John D.

Brush & Co., Inc., 240 F.3d 832, 840 (9th Cir. 2001); see also

6749

E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280,

1292 (9th Cir. 1992) ("surveys in trademark cases are to be

admitted as long as they are conducted according to accepted

principles." (emphasis added)); Vision Sports, Inc. v. Melville

Corp., 888 F.2d 609, 615 ("An expert survey of purchasers

can provide the most persuasive evidence of secondary mean-

ing."). "Technical unreliability goes to the weight accorded a

survey, not its admissibility." Prudential Ins. Co. v. Gibraltar

Fin. Corp., 694 F.2d 1150, 1156 (9th Cir. 1982).

Clicks submitted a survey prepared by Dr. Sandra Cogan,

president of Cogan Research Group. According to Dr.

Cogan's resume, she has conducted surveys in over eighty

trademark cases and has testified in eight cases within the

Ninth Circuit. In this survey, patrons at a Clicks establishment

were asked, "Do you associate the visual look and appearance

of this billiard parlor with Clicks Billiards only or with other

billiard parlors too?" Eighty percent of respondents said that

they associated the look and feel with Clicks only; eighteen

percent said, "Other billiard parlors too."

The district court stated, "This survey is not without flaws,"

and ultimately concluded, "Put bluntly, the survey is of little

or no value." The court was troubled by the fact that in

response to a follow-up question, 6 respondents often used

vague and general language in describing Clicks' image and

made reference to unprotectable features of Clicks' interior,

such as its cleanliness, upkeep, good service, and music. This

is a valid observation and may indeed be true, but the issue

is not one subject to resolution on summary judgment. It is

true that some respondents used such vague language and

referred to unprotectable elements of Clicks' trade dress, but

other responses tend to support Clicks' contention that patrons

_________________________________________________________________

6 "What is it about the visual look and appearance of this billiard parlor

that makes you associate it with Clicks Billiards only?" This question was

only asked of respondents who said that they associated the look of Clicks

only with Clicks and not with other pool halls.

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specifically associate its image with Clicks and not with other

pool halls. Among the responses associating Clicks with ele-

ments, that, when taken as a whole, may constitute protectable

trade dress: "Different from other billiard parlors"; "nice lay-

out"; "lots of room between tables"; "general decor, pictures,

signs"; "the matchbooks, the, uh, pictures on the wall. . . .

Logos, the well-placed logos"; "the tables, more space, the

TVs"; "The appearance and position of the bar"; "They have

high ceilings, pool tables in a line, and the size. Large size.

There are two levels."; "Step down to play pool. Bar is round

and stools"; "Two levels, bar is unique, entrance."; "[T]he felt

on the wall. . . . Felix the Cat. The matches on top of the

ashtrays. No other place does that. . . . These black dots, on

the floor, you know, like metal, but this is a rubber floor. . . .

The way the lights hang down. Most places have track light-

ing, one long light."

Ultimately these responses may not add up to much, and a

reasonable juror might ultimately agree with the district court

that the survey did not prove that Clicks' trade dress had

acquired secondary meaning. But the juror could only have

done so after considering conflicting evidence and deciding

what weight to accord the survey and the follow-up inter-

views. This undertaking describes the proper role for a trier

of fact; it is not the role of a district court at the summary

judgment stage where the issue is whether a triable issue of

fact even exists. See, e.g, Summer v. A. Teichert & Son, Inc.,

127 F.3d 1150, 1152 (9th Cir. 1997) ("The court must not

weigh the evidence or determine the truth of the matters

asserted but must only determine whether there is a genuine

issue for trial.").

Here, the district court did not exclude the survey on the

ground that it was irrelevant or that it was undermined by

some other fatal flaw. Rather, the court appeared to admit the

survey into evidence and then to analyze what it considered

to be its deficiencies. Treatment of surveys is a two-step pro-

cess. First, is the survey admissible ? That is, is there a proper

6751

foundation for admissibility, and is it relevant and conducted

according to accepted principles? See Wendt v. Host Int'l,

Inc., 125 F.3d 806, 814 (9th Cir. 1997); E. & J. Gallo Winery,

967 F.2d at 1292-93. This threshold question may be deter-

mined by the judge. Once the survey is admitted, however,

follow-on issues of methodology, survey design, reliability,

the experience and reputation of the expert, critique of conclu-

sions, and the like go to the weight of the survey rather than

its admissibility. Stuhlbarg, 240 F.3d at 840. These are issues

for a jury or, in a bench trial, the judge. In laying this guide

for analysis of survey evidence, we are not endorsing the sur-

vey here nor are we prejudging its fate at trial. Nor are we

suggesting that the presence of a survey will always preclude

summary judgment. We are simply saying that the survey

admitted by the district court raises questions of material fact

with respect to secondary meaning that may not be disposed

of by the court alone.

Aside from the survey, Clicks presented evidence that

Sixshooters intentionally copied Clicks' trade dress. "Our

cases recognize that evidence of deliberate copying is relevant

to a determination of secondary meaning. E.g. Transgo, 768

F.2d at 1015-16. . . . Indeed, in appropriate circumstances,

deliberate copying may suffice to support an inference of sec-

ondary meaning. See [id.] at 1016 (dictum)." Fuddruckers,

826 F.2d at 844; Lisa Frank, Inc. v. Impact Int'l, Inc., 799 F.

Supp. 980, 989 (D. Ariz. 1992); see also Vision Sports, 888

F.2d at 615 ("[W]e have held that proof of copying strongly

supports an inference of secondary meaning.").

As the district court stated in its summary judgment order,

"One former Sixshooters employee, employed by Clicks prior

to joining Sixshooters, testified that Daryl Chester stated that

he wanted Sixshooters to look like Clicks because the `look

worked.' " Clicks also presented evidence that Chester, while

working at Sixshooters, greeted a Clicks manager who came

to visit him, "Welcome to Clicks West." When asked if he

knew what Chester meant, the manager said the comment

6752

referred to "the look" and that he thought Sixshooters looked

like Clicks. Clicks employee Shawnna Gereg stated in her

deposition that the Forbes brothers (the owners of Six-

shooters) visited Clicks and actually took measurements of

various features, including the foosball areas, the bar, and the

lighting. They also examined other details of the interior, such

as the rails and the woodwork. Clicks employee Roger Collett

testified that the Forbes brothers brought samples of counter-

tops into Clicks to compare them with those at Clicks and

took measurements of cabinets above the bar. Clicks manager

Tanya Mueller stated that she once saw the Forbes brothers in

Clicks before opening time (apparently accompanied by

Chester) examining and measuring lighting fixtures, counter

tops, shelves, and the distance between pool tables. A Clicks

patron confirmed that she saw the Forbes brothers come into

Clicks and examine various aspects of the pool hall, specifi-

cally the tables, walls, and bar stools.

The district court's response to such extensive evi-

dence of intentional copying was to deem it "slight" and "con-

tested," and to note that it "was controverted in the record."

No doubt, the statements at issue are subject to various inter-

pretations. But the very fact that the court acknowledged that

the evidence of copying was "contested" and"controverted"

should have precluded summary judgment on this point. On

summary judgment, the district court is prohibited from

weighing evidence and deciding issues of contested fact. Even

if we accept that Sixshooters presented a version of events

that cast considerable doubt on Clicks' allegations of copying,

it is not the role of the district court at this stage to decide

which party has the more compelling argument; rather, it is

simply to determine whether a triable issue of fact exists.

Clicks has come forward with sufficient evidence of second-

ary meaning in the form of both a consumer survey and testi-

mony from various witnesses to defeat summary judgment on

this point.

6753

III. LIKELIHOOD OF CONFUSION

Likelihood of confusion, a question of fact, Levi Strauss &

Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 n.5 (9th Cir.

1985), is "the most important element" of the three compo-

nents of a protectable mark. Kendall-Jackson Winery Ltd., v.

E. & J. Gallow Winery, 150 F.3d 1042, 1048 (9th Cir. 1998).

Indeed, we have observed that "trial courts disfavor deciding

trademark cases in summary judgments because the ultimate

issue is so inherently factual. . . . Additionally, the question

of likelihood of confusion is routinely submitted for jury

determination as a question of fact." Levi Strauss, 778 F.2d at

1355 n.5 (citations omitted); see also 5 McCarthy § 32:119.

"Likelihood of confusion exists when customers view-

ing the mark would probably assume that the product or ser-

vice it represents is associated with the source of a different

product or service identified by a similar mark. " Fuddruckers,

826 F.2d at 845 (internal quotation marks and emphasis omit-

ted). "The factual elements that make up likelihood of confu-

sion include evidence of actual confusion, the defendant's

intent in adopting the mark, similarity of marks, similarity of

goods and marketing channels, and the strength of the mark."

Id. (citing Park `N Fly, Inc. v. Dollar Park and Fly, Inc., 782

F.2d 1508, 1509 (9th Cir. 1986)).

Clicks has presented significant evidence of actual

confusion, which, according to our precedent, constitutes

"persuasive proof that future confusion is likely." Id. at 845.

First, the Cogan survey tends to support a conclusion of actual

confusion. Respondents were shown a series of photographs

of Sixshooters and asked, "Do you think that the billiard par-

lor in these photos is owned or operated by Clicks Billiards

or do you think that the billiard parlor in the photos is owned

and operated by a different company?" Seventy-two percent

stated that they believed Clicks owned or operated the estab-

lishment (Sixshooters) shown in the photos. On top of that

seventy-two percent, thirteen percent believed that the pool

6754

hall in the photos was "licensed by, endorsed by, authorized

by or in [some] way connected with Clicks Billiards." Of the

eighty-five percent of respondents expressing apparent confu-

sion as to ownership or affiliation, twenty-eight percent had

actually visited Sixshooters.

Clicks also introduced testimony from a variety of people

reporting their impressions about the similarities between

Clicks and Sixshooters. 7 Several witnesses made statements

that appear to indicate actual confusion. For example, one

Clicks patron was asked, "Had you ever before anybody

talked to you about this ever made any assumption or thought

process that the two of them [Clicks and Sixshooters] might

have been the same place?" He responded, "The first time I

walked into Sixshooters." Another patron was asked, "While

you were actually in Sixshooters those two times, did you

actually think at any time, `Boy, I might be in a Clicks'?" He

responded, "Yeah." A third patron was asked,"When you

went to Sixshooters the first time, did you have any initial

impressions at Sixshooters?" He responded, "I thought it was

Clicks under a different name."

In sum, Clicks presented sufficient evidence of likelihood

of confusion between the trade dress of Clicks and Six-

shooters to defeat summary judgment on the confusion issue.

A jury, of course, may reject such evidence or determine that

the witnesses are not credible, but a court on summary judg-

ment may not make such determinations; instead it must draw

_________________________________________________________________

7 Much of this testimony delivers much less than promised. The vast

majority of the statements consist solely of the deponent's belief that

Clicks and Sixshooters look similar. That is not the same as the deponent

being confused as to the source of the trade dress; if two products look

somewhat the same, but consumers suffer no confusion, there can be no

successful trademark infringement claim.

Though most of the cited deposition testimony does not indicate actual

confusion, it still may, however, be probative of likelihood of confusion,

because it indicates that significant numbers of patrons perceived a strong

similarity between the trade dress of the two establishments.

6755

all reasonable inferences in favor of the non-moving party, i.e.

Clicks.

In addition, there was evidence of intent to copy, yet

another of the factors tending to show likelihood of confusion.

Fuddruckers, 826 F.2d at 854. "A showing that the defendant

intended to adopt the plaintiff's trade dress is . .. entitled to

great weight because a defendant is presumed able to accom-

plish this purpose." Id. at 845-46 (internal quotation marks

and citation omitted). But the district court failed to accord

"great weight" to the evidence presented by Clicks suggesting

that such copying did occur. The district court brushed aside

the extensive evidence presented by Clicks that Sixshooters

employees conducted detailed inspection of Clicks and even

went so far as to measure various features of the interior.

Given that, on summary judgment, the court was required to

draw all reasonable inferences in Clicks' favor, see Balint,

180 F.3d at 1050, the court was required to draw the inference

that Sixshooters did engage in copying. The district court did

acknowledge in its summary judgment order that "[t]here is

conflicting evidence of intent to deprive Clicks of the benefit

of its reputation." Consequently, no conclusion can be drawn

from such "conflicting evidence." Perhaps at trial, Sixshooters

would be able to convince the jury of an innocent explanation

for such conduct, or successfully dispute that it ever actually

took place, but that is a factual determination reserved for

trial, not for resolution on summary judgment.

The other likelihood of confusion factors--similarity

of marks, similarity of goods and marketing channels, and the

strength of the mark--do not bear greatly on our analysis in

light of the factors discussed above. Clicks did present testi-

mony from a variety of patrons who stated that they believed

that the interiors of Clicks and Sixshooters looked similar.

The "goods," or, in this case, services, are indisputably simi-

lar; they are both billiards halls. Clicks did not present signifi-

cant relevant evidence regarding marketing. And, finally, as

the district court noted, Clicks has conceded that, given the

6756

nature of the business at issue, its mark is not particularly

strong. Based on a review of the evidence, we conclude that

Clicks has cleared the threshold of demonstrating that there is

genuine issue of fact with respect to likelihood of confusion.

IV. JUDICIAL VISIT

Finally, we address Clicks' argument that the district

court's visit to the three establishments at issue, without the

parties or counsel present, constituted a denial of Clicks' right

to due process.

We first wish to make clear that, in a trade dress case, there

is nothing wrong with a judge examining the actual dress at

issue. Surely if this were a case about the outside of a cereal

box instead of the inside of a pool hall, no one would object

to the judge examining the actual box instead of pictures of

it. If a picture is worth a thousand words, then the real thing

is worth a thousand pictures. And if the judge were to take the

box from the courtroom back to his chambers for additional

study, he would be under no obligation to invite counsel to

accompany him. Neither is there anything wrong with official

excursions by a judge or jury to view evidence that simply

cannot, because of physical limitations, be brought into a

courtroom.

The situation here, however, is more troublesome. When a

judge takes exhibits back to chambers to examine them, the

parties have seen the same exhibits and know exactly what the

court is reviewing. Here, however, because counsel were not

informed when the judge would be conducting his inspection,

the parties had no way of knowing exactly what the court

looked at, or how the judge went about his visit. In short, the

court's site visit improperly exposed him to factual evidence

not part of the record. See, e.g., Pina v. Henderson, 752 F.2d

47, 50 (2d Cir. 1985) ("A court should not go outside the

record to supply a fact that is an essential part of a party's

case unless the fact is clearly beyond dispute."); Mayhue v.

6757

City of Plantation, 375 F.2d 447, 451 n.6 (5th Cir. 1967) ("A

judge is not to use . . . those facts that he may know only as

an individual observer outside of the courtroom."); Alvary v.

United States, 302 F.2d 790, 794 (2d Cir. 1962) ("Although

it is proper, and all too frequently necessary, for a judge to do

independent research on questions of law, the [matters at

issue] are questions of fact. On fact questions the court should

not . . . go outside the record unless the facts are matters of

common knowledge or are capable of certain verification.").

This concern is especially heightened in this case, given

Clicks' accusations in the record of spoliation of evidence,

specifically that Sixshooters changed the appearance of its

interior during the course of the litigation. 8 And the court

itself challenged the photographic depictions offered by

Clicks. Thus, though the district court stated that the conclu-

sions in its summary judgment order were based at least in

part on its inspection of the pool halls, we have no way of

knowing precisely what the pool halls looked like at the time

of the visit and how that view compared to the evidence in the

record. All of this is another way of saying that the record on

appeal is incomplete. At a minimum, the district judge should

have given the parties and their counsel the opportunity to

accompany him.

In this case, there is conflicting evidence whether Clicks

actually consented to the court's visit to the pool halls. 9 For

that reason, and because we conclude for other reasons that

summary judgment was not appropriate, we decline to reach

the issue whether Clicks' due process rights were violated

under these circumstances.

_________________________________________________________________

8 We wish to underscore that we do not determine here whether such

accusations have any merit.

9 It appears that the court and counsel discussed this matter on a confer-

ence call that was not transcribed. On appeal, the parties dispute whether

Clicks consented to the court's visit.

6758

CONCLUSION

This case underscores our warning that "trial courts disfa-

vor deciding trademark cases in summary judgments because

the ultimate issue is so inherently factual." Levi Strauss, 778

F.2d at 1355 n.5. Clicks has presented evidence sufficient to

clear the summary judgment hurdle. We emphasize that we do

not hold here that Clicks has necessarily established nonfunc-

tionality, secondary meaning, and likelihood of confusion, but

only that there remain genuine disputes of material fact as to

those issues.

REVERSED AND REMANDED.