AUTOZONE, INC. and SPEEDBAR, INC. v. Tandy Corp.

*The Honorable Karen K. Caldwell, United States District Judge for
the Eastern District of Kentucky, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2004 FED App. 0200P (6th Cir.)
File Name: 04a0200p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
AUTOZONE, INC. and
SPEEDBAR, INC.,
Plaintiffs-Appellants,
v.
TANDY CORP.,
Defendant-Appellee.
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No. 01-6571
Appeal from the United States District Court
for the Middle District of Tennessee at Nashville.
No. 99-00884—Thomas A. Wiseman, Jr., District Judge.
Argued: April 21, 2004
Decided and Filed: June 29, 2004
Before: BATCHELDER and MOORE, Circuit Judges;
CALDWELL, District Judge.*
2 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
_________________
COUNSEL
ARGUED: Alan S. Cooper, SHAW PITTMAN,
Washington, D.C., for Appellants. Jane Michaels,
HOLLAND & HART, Denver, Colorado, for Appellee.
ON BRIEF: Alan S. Cooper, SHAW PITTMAN,
Washington, D.C., Robb S. Harvey, WALLER, LANSDEN,
DORTCH & DAVIS, Nashville, Tennessee, for Appellants.
Jane Michaels, HOLLAND & HART, Denver, Colorado,
Timothy P. Getzoff, HOLLAND & HART, Boulder,
Colorado, Douglas R. Pierce, KING & BALLOW, Nashville,
Tennessee, for Appellee.
_________________
OPINION
_________________
KAREN NELSON MOORE, Circuit Judge. This case
springs from a trademark dispute between two large
nationwide retailers in the seemingly disparate markets of
automotive parts and electronics. Plaintiff-Appellant
AutoZone, Inc. (“AutoZone”) is a nationwide retailer of
consumer automotive products that uses the mark
AUTOZONE. AutoZone and its wholly owned subsidiary
Speedbar, Inc. brought an action against Defendant-Appellee
Tandy Corporation (“Tandy” or “Radio Shack”), which owns
the Radio Shack chain, after Tandy began using its
POWERZONE mark to promote a section of its retail outlets
dedicated to selling various power-related items, such as
batteries, extension cords, and chargers for electronics.
AutoZone alleged that Tandy’s use of POWERZONE
constituted trademark infringement, tradename infringement,
unfair competition, breach of contract, and trademark
dilution. The United States District Court for the Middle
District of Tennessee granted Tandy’s motion for summary
judgment and dismissed all of AutoZone’s claims. Because

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 3
AutoZone has not presented enough evidence such that a
reasonable jury could conclude that there existed a
“likelihood of confusion” between POWERZONE and
AUTOZONE or that Tandy’s use of POWERZONE diluted
the AUTOZONE mark, we AFFIRM the judgment of the
district court.
I. FACTS AND PROCEDURE
A. The 1982 Litigation
Although this particular round of legal action was instigated
by Tandy’s adoption of the POWERZONE mark, AutoZone
and Tandy’s litigious relationship dates back two decades. In
1979, AutoZone’s predecessor Malone & Hyde, Inc.
(“M&H”) opened a chain of retail-auto parts stores in
Tennessee and Arkansas under the name “Auto Shack.”
Tandy brought a trademark infringement action against M&H
for the use of the AUTO SHACK mark. Tandy Corp. v.
Malone & Hyde, Inc., 581 F. Supp. 1124, 1126-27 (M.D.
Tenn. 1984), rev’d, 769 F.2d 362 (6th Cir. 1985). The parties
settled in 1987: M&H ceased using AUTO SHACK, Tandy
agreed to M&H’s use of AUTOZONE, and Tandy was
contractually barred from using AUTOZONE or any other
name or mark confusing similar to AUTOZONE.
B. AutoZone, Tandy, and the Disputed Trademarks
1. AutoZone
In the years following the settlement, AutoZone blossomed
into a large, successful national chain, which currently owns
or franchises more than 3,000 stores in forty-two states and
Mexico and which reported $4.5 billion in sales in 2000.
AutoZone sells a wide variety of automotive parts and
supplies, including car batteries, tires, engine parts, and
assorted automotive peripherals. Some products sold at
AutoZone are also sold at Radio Shack, including automobile
power adapters, car stereos, amplifiers, cables, connectors,
4 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
switches, radar detectors, alarms, and citizen’s band radio
receivers. AutoZone also sells commonly available consumer
items, such as batteries, extension cords, power strips, and
tools, all of which a consumer could find at Radio Shack, as
well as at a variety of convenience stores, supermarkets, and
department stores. Depending on the size of the store, an
AutoZone outlet carries either 21,500 different products (as
measured by stock keeping units, or SKUs) or 55,100
different products. Of the 325 products sold by Radio Shack
in its POWERZONE section, 132 products are also carried by
AutoZone. Thus, less than 1% of all the products offered by
AutoZone overlap with those sold in the POWERZONE
section.
The AUTOZONE mark consists of the word “AutoZone”
slanted to the right and spelled with a capital “A” and “Z.”
The mark also features a “speedbar” design, which consists of
diagonal bars of decreasing thickness intended to convey an
impression of rapidity or movement. When in color, the word
“AutoZone” is red, and the speedbar design is orange. When
color advertising is not available, the AutoZone mark
naturally appears in black and white. Generally, the speedbar
design is located either to the left or to the right of the word
“AutoZone,” but occasionally the speedbar design appears on
both sides of the name. There is no dispute that AutoZone
properly registered the name and the speedbar design with the
Patent and Trademark Office (“PTO”).
2. Tandy
Tandy is largest nationwide retailer of consumer
electronics. Through its 7,186 Radio Shack outlets, it
reported $4.1 billion in sales in 1999. As a marketing tactic,
Radio Shack pursued a “store within a store concept”: it
physically grouped its core target products into separate
sections within its retail outlets. For example, within a Radio
Shack outlet a consumer might find a Sprint Communications
Store, an RCA Digital Entertainment Center, a Microsoft
Information Center, and a Compaq Creative learning center.

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 5
At some point in the mid-1990s, Radio Shack sought to create
a store-within-a-store for one of its primary anchors — “the
business of connecting things,” which includes batteries,
power supplies, cords, connectors, and resistors. Joint
Appendix (“J.A.”) at 168 (David Edmondson Dep.). Market
research conducted by Radio Shack demonstrated that
consumers preferred POWERZONE as the name for the new
power-related store-within-a-store. Before launching the
POWERZONE concept, Radio Shack hired a trademark
search firm, which discovered a Georgia business that used
the POWERZONE mark and sold various types of batteries.
Radio Shack purchased the rights to the POWERZONE mark
from this firm and began using the mark on July 2, 1998.
The POWERZONE mark features the word “PowerZone,”
spelled with a capital “P” and a capital “Z,” bookended by
graphic elements consisting of same-sized diagonal lines
slanting to the right. The word “PowerZone” generally
appears on a clearly defined, cylindrical object that closely
resembles a battery and is centered in between the slanted
lines moving outward from the battery. The words Radio
Shack and an “R” with a circle around it, which is a Radio
Shack trademark, also appear on the battery. In some
advertisements, the battery, containing the word
“PowerZone” and the Radio Shack mark, appears without the
slanted lines. Additionally, in some advertisements, the word
“PowerZone” is depicted without any accompanying
graphics. The POWERZONE mark almost always appears in
black and white. However, in color advertisements, the word
PowerZone is written in white, and the battery has a coppery
yellow-orange color.
With limited exceptions, Radio Shack uses POWERZONE
either as a complement to or in close physical proximity with
the Radio Shack name and the Radio Shack house mark, such
that a consumer would be unlikely to see one without the
other whether in advertising or at an actual Radio Shack
outlet. AutoZone uncovered at least one example in which
POWERZONE appeared without the accompanying Radio
6 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
1AutoZone is a Nevada corporation, which has its principal place of
busine ss in Memp his, Te nnessee. Speedbar, Inc. (“Sp eedbar”), which is
wholly owned by AutoZ one, is also captioned as a named plaintiff-
app ellant. Speedbar is a Nevada corporation, which has its principal place
of business in the Cayman Islands. Speedbar actually owns the
AUTOZONE mark and licenses its use to AutoZo ne. Tandy is a
Delaware corporation, which has its principal place of business in Texas.
Shack mark on Radio Shack’s website. In this example, the
words “Radio Shack” and “RadioShack.com” appear multiple
times in close proximity to the word POWERZONE, and a
consumer would not see the word POWERZONE without
either purposely going to or being directed to
RadioShack.com.
C. Procedural Background
Shortly after Radio Shack began using the POWERZONE
mark, AutoZone requested that Radio Shack stop and retract
its application to register the mark. AutoZone sent Radio
Shack a formal cease-and-desist letter on February 1, 1999.
Radio Shack refused to comply. AutoZone filed this action
in the United States District Court for the Middle District of
Tennessee on September 15, 1999. It asserted five claims for
relief: 1) service mark and trademark infringement, see
15 U.S.C. § 1114(1); 2) tradename infringement, see id.;
3) unfair competition, see 15 U.S.C. § 1125(a); 4) service
mark and trademark dilution under both federal and
Tennessee statutes, see 15 U.S.C. § 1125(c) and Tenn. Code
Ann. § 47-25-513; and 5) breach of contract. The district
court properly asserted jurisdiction over claims one through
four pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331,
1338(a) (trademark claim), 1338(b) (unfair competition). The
court also properly exercised jurisdiction over AutoZone’s
breach of contract claim and Tennessee state dilution claim
pursuant to 28 U.S.C. §§ 1332(a)(1), 1367(a).1 As part of the
discovery that took place through 2000 and 2001, AutoZone
commissioned a consumer survey from its expert, Michael
Rappeport (“Rappeport”). The purpose of the survey, the

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 7
methodological validity and significance of which are highly
disputed, was to demonstrate the strength of the AUTOZONE
mark, although AutoZone also believes that the study
demonstrates actual confusion between AUTOZONE and
POWERZONE. Additionally, for the purposes of
demonstrating that third-party use of trademarks containing
ZONE was pervasive, Radio Shack discovered that as of
March 16, 2001, there were 745 active trademarks that used
or incorporated ZONE. At least sixteen of the registered
marks were used in the automotive or travel-related
industries. At least forty-three entities operated websites that
use ZONE either alone or in conjunction with other words.
Radio Shack filed a motion for summary judgment on
March 19, 2001, which the district court granted in its entirety
on November 9, 2001. The district court held that there were
no genuine issues of material fact regarding the likelihood of
confusion between the AUTOZONE and POWERZONE
marks. AutoZone, Inc. v. Tandy Corp., 174 F. Supp. 2d 718,
726-33 (M.D. Tenn. 2001). The district court also ruled that
summary judgment was proper as to AutoZone’s dilution
claim. Id. at 734-39. AutoZone timely appealed, and we
have jurisdiction pursuant to 15 U.S.C. § 1121(a) and
28 U.S.C. § 1291.
II. ANALYSIS
Although AutoZone asserted five separate claims against
Radio Shack, the claims can be grouped into two umbrella
claims: the “likelihood of confusion” claims and the dilution
claim. The trademark infringement, tradename infringement,
unfair competition, and breach of contract claims all require
us to employ a “likelihood of confusion” analysis. The
essence of a trademark or tradename infringement claim
brought pursuant to 15 U.S.C. § 1114(1) is “whether the
defendant’s use of the disputed mark is likely to cause
confusion among consumers regarding the origin of the goods
offered by the parties.” Daddy’s Junky Music Stores, Inc. v.
Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir.
8 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
1997); see also 15 U.S.C. § 1114(1)(a) (“Any person who
shall, without the consent of the registrant . . . use in
commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale,
offering for sale, distribution, or advertising of any goods or
services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive . . . shall
be liable in a civil action by the registrant. . . .”). The unfair
competition claim entails the same analysis. Section 43(a) of
the Lanham Act imposes liability on:
Any person who, on or in connection with any goods or
services . . . uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading
description of fact, or false or misleading representation
of fact, which — (A) is likely to cause confusion, or to
cause mistake, or to deceive . . . shall be liable in a civil
action by any person who believes that he or she is likely
to be damaged by such act.
15 U.S.C. § 1125(a)(1)(A) (emphasis added); see Wynn Oil
Co. v. Am. Way Serv. Corp., 943 F.2d 595, 604 (6th Cir 1991)
(“Wynn II”) (applying “likelihood of confusion” test to an
unfair competition claim brought pursuant to § 1125).
Additionally, AutoZone premises its breach of contract claim
on Radio Shack’s violation of Section III.D of the 1987
Settlement, which prohibited Radio Shack from using “any
name or mark . . . which is likely to cause confusion.” J.A. at
35 (1987 Settlement, § III.D). Our analysis of the dilution
claim is separate and distinct.
A. Standard of Review
We review de novo the district court’s grant of summary
judgment in a trademark infringement case. See Daddy’s, 109
F.3d at 280. Summary judgment is appropriate “if the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits . . . show that

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 9
there is no genuine issue as to any material fact and that the
moving party is entitled to a judgment as a matter of law.”
Fed. R. Civ. P. 56(c). The panel “may affirm the grant of
summary judgment to defendant only if the record, when
viewed in the light most favorable to the plaintiff, contains no
genuine issue[s] of material fact.” Daddy’s, 109 F.3d at 280.
“[T]he mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly
supported motion for summary judgment; the requirement is
that there be no genuine issue of material fact.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). With the
benefit of having all evidence and justifiable inferences drawn
from such evidence in its favor, the nonmoving party “must
set forth specific facts showing that there is a genuine issue,”
id. at 250 (quoting Fed. R. Civ. P. 56(e)), such that a jury
could reasonably find for the nonmoving party.
B. The “Likelihood of Confusion” Claims
The district court did not err in granting summary judgment
on the trademark infringement, tradename infringement,
unfair competition, and breach of contract claims because
AutoZone failed to show that there existed a genuine issue of
material fact concerning the likelihood of confusion. When
evaluating the likelihood of confusion, we analyze and
balance the following factors:
1. strength of the senior mark (AutoZone)
2. similarity of the marks
3. relatedness of the goods or services
4. evidence of actual confusion
5. marketing channels used
6. likely degree of purchaser care
7. the intent of Radio Shack in selecting the
POWERZONE mark
8. the likelihood of expansion of the product lines.
Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc.,
670 F.2d 642, 648 (6th Cir. 1982); see also Kellogg Co. v.
10 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
Exxon Corp., 209 F.3d 562, 568 (6th Cir. 2000) (applying the
Frisch factors); Daddy’s, 109 F.3d at 280 (same). “These
factors imply no mathematical precision, but are simply a
guide to help determine whether confusion is likely. They are
also interrelated in effect. Each case presents its own
complex set of circumstances and not all of these factors may
be particularly helpful in any given case. . . . The ultimate
question remains whether relevant consumers are likely to
believe that the products or services offered by the parties are
affiliated in some way.” Homeowners Group, Inc. v. Home
Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991)
(emphasis added). A focus on the “ultimate question” is
critical when we review a district court’s grant of summary
judgment; a genuine dispute of material fact on any one of the
eight factors does not demonstrate that a grant of summary
judgment was improper when there is not enough total
evidence for a jury to conclude that the junior mark is likely
to confuse consumers. See id. (“To resist summary judgment
in a case where the likelihood of confusion is the dispositive
issue, a nonmoving party must establish, through pleadings,
depositions, answers to interrogatories, admissions and
affidavits in the record, that there are genuine factual disputes
concerning those of the [] factors which may be material in
the context of the specific case.”).
Neither party disputes three of the eight Frisch factors —
marketing channels used, likely degree of purchaser care, and
likelihood of product-line expansion. First, the “marketing
channels used” factor looks at “the parties’ predominant
customers and their marketing approaches.” Therma-Scan,
Inc. v. Thermoscan, Inc., 295 F.3d 623, 636 (6th Cir. 2002).
“Where the parties have different customers and market their
goods or services in different ways, the likelihood of
confusion decreases.” Id. As national retail outlets, both
AutoZone and Radio Shack cater to the same general public
and use the same marketing channels. Second, in analyzing
the likely degree of purchaser care, “the standard used by the
courts is the typical buyer exercising ordinary caution.”
Daddy’s, 109 F.3d at 285 (quotation omitted). Customers are

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 11
unlikely to use any more than ordinary caution when
purchasing the items offered by Radio Shack and AutoZone.
Both of the above factors weigh in favor of the likelihood of
confusion. Third, “a strong possibility that either party will
expand [its] business to compete with the other or be
marketed to the same consumers will weigh in favor of
finding that the present use is infringing.” Homeowners, 931
F.2d at 1112 (quotation and citation omitted). Neither party
intends to expand its business into the other’s sphere. This
factor accordingly weighs against the likelihood of confusion.
1. Strength of Senior Mark
The district court had resolved this factor in AutoZone’s
favor, concluding that as a matter of law, the AUTOZONE
mark was strong. “The strength of a mark is a factual
determination of the mark’s distinctiveness. The more
distinct a mark, the more likely is the confusion resulting
from its infringement, and therefore, the more protection it is
due. A mark is strong and distinctive when the public readily
accepts it as the hallmark of a particular source; such
acceptance can occur when the mark is unique, when it has
received intensive advertisement, or both.” Daddy’s, 109
F.3d at 280 (internal quotations and citations omitted). In
general, “[t]he stronger the mark, all else equal, the greater
the likelihood of confusion.” Homeowners, 931 F.2d at 1107.
“Trademarks are generally categorized as fanciful, arbitrary,
suggestive or descriptive.” Little Caesar Enters., Inc. v. Pizza
Caesar, Inc., 834 F.2d 568, 571 (6th Cir. 1987). “Fanciful
and arbitrary marks are considered to be the ‘strongest’ or
most distinctive marks. . . . ‘Suggestive’ and ‘descriptive’
marks either evoke some quality of the product (e.g., Easy
Off, Skinvisible) or describe it directly (e.g., Super Glue).
Such marks are considered ‘weaker,’ and confusion is said to
be less likely where weak marks are involved.” Id.; see also
Champions Golf Club, Inc. v. The Champions Golf Club, Inc.,
78 F.3d 1111, 1116-17 (6th Cir. 1996) (“A term for which
trademark protection is claimed will fit somewhere in [a]
spectrum which ranges through (1) generic or common
12 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
descriptive and (2) merely descriptive to (3) suggestive and
(4) arbitrary or fanciful.” (quotations and citations omitted)).
AUTOZONE is either a suggestive or a descriptive mark
because it either suggests some quality of the AutoZone chain
(“Fulfill all your automotive needs here!”) or describes the
AutoZone stores (“Enter a Zone filled with all things auto!”).
The mark is weaker than a fanciful mark (Exxon) or an
arbitrary mark (Starbucks), particularly because it uses a word
— ZONE — that is commonly found in other trademarks.
See Daddy’s, 109 F.3d at 281 (“[T]he more common a word
or phrase is, the less inherent trademark strength it may have,
even when the mark has an arbitrary relation to the good or
service to which it applies.”); see also Amstar Corp. v.
Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir. 1980)
(noting that although application of DOMINO to sugar is
arbitrary, the mark faces limited protection outside the food-
products industry because DOMINO is relatively common
word).
Even though AUTOZONE is a suggestive or descriptive
mark, and thus is less likely to cause confusion, there is no
dispute that AUTOZONE is incontestable. “Incontestable”
trademarks — those that have not been successfully
challenged within five years of registration, see 15 U.S.C.
§ 1065 — are presumed to be strong marks. When a mark is
incontestable, “an infringement action may not be defended
on the ground that the mark is merely descriptive.” Jet, Inc.
v. Sewage Aeration Sys., 165 F.3d 419, 422 (6th Cir. 1999)
(quotation omitted). While Jet prevents Radio Shack from
arguing that AUTOZONE is weak simply by virtue of its
descriptive or suggestive nature, Radio Shack can rebut the
presumption of AUTOZONE’s strength by proving extensive
third-party use of similar marks. Data Concepts, Inc. v.
Digital Consulting, Inc., 150 F.3d 620, 625 (6th Cir. 1998)
(“[A] mark is weakened outside of the context in which it is
used if there is third-party use of the mark.”).
Radio Shack contends that extensive third-party use of
ZONE-related marks saps the strength of the AUTOZONE

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 13
mark. Radio Shack presented evidence that 745 trademarks
registered with the U.S. Patent and Trademark Office
(“PTO”) use the term ZONE in various combinations.
Sixteen registered marks use ZONE in the automotive-goods-
and-services industry. Furthermore, in excess of forty
websites use ZONE for a variety of services. “[M]erely
showing the existence of marks in the records of the [PTO]
will not materially affect the distinctiveness of another’s mark
which is actively used in commerce.” Homeowners, 931 F.2d
at 1108. Rather, “to be accorded weight a defendant must
show what actually happens in the marketplace.” Id. at 1108.
Radio Shack has succeeded in showing widespread use of
ZONE by presenting nearly 200 pages of evidence
highlighting the active use of ZONE in a variety of industries.
While ZONE may be used pervasively in the marketplace,
Radio Shack has not demonstrated that AUTOZONE is so
similarly employed. “[T]he validity and distinctiveness of a
composite trademark is determined by viewing the trademark
as a whole, as it appears in the marketplace.” Official Airline
Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 1993). The
unit of analysis in considering the strength of the mark is the
entire mark, not just a portion of the mark. There is scant
evidence that AUTOZONE is a commonly used mark.
Indeed, AutoZone has spent hundreds of millions of dollars
in advertising its mark, and there is widespread consumer
recognition of AutoZone’s use of the mark, as even Radio
Shack concedes. Thus, Radio Shack has failed to overcome
the presumption that incontestable marks are strong. The
district court properly concluded that AutoZone’s mark was
strong.
AutoZone asserts that the district court erred by not giving
enough weight to the strength-of-mark factor in the overall
eight-factor test. AutoZone suggests that the court “did not
accord AUTOZONE the broad protection to which strong
marks are entitled,” AutoZone Br. at 38, because the court
failed to evaluate the other factors in light of the ruling that
AUTOZONE was a strong mark. AutoZone’s contention is
14 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
baseless; AutoZone has not pointed to any case in which we
have stated that the strength-of-mark factor predominates over
the other seven Frisch factors. Contrary to AutoZone’s
position, the fact that a mark is strong does not impact our
analysis of the similarity of the marks, the relatedness of the
products and services, or any of the other factors in the
likelihood-of-confusion test.
2. Similarity of the Marks
The similarity of the senior and junior marks is “a factor of
considerable weight.” Daddy’s, 109 F.3d at 283. “When
analyzing similarity, courts should examine the
pronunciation, appearance, and verbal translation of
conflicting marks.” Id. A side-by-side comparison of the
litigated marks is not appropriate, although naturally the
commonalities of the respective marks must be the point of
emphasis. Instead, “courts must determine whether a given
mark would confuse the public when viewed alone, in order
to account for the possibility that sufficiently similar marks
may confuse consumers who do not have both marks before
them but who may have a general, vague, or even hazy,
impression or recollection of the other party's mark.” Id.
(quotations omitted).
Radio Shack distorts this analysis slightly: it requests that
we delete ZONE because of the word’s common usage and
consider only the similarity between AUTO and POWER, of
which there is none. By doing so, Radio Shack asks us to
violate the “anti-dissection rule,” whereby we “view marks in
their entirety and focus on their overall impressions, not
individual features.” Id.; see also Therma-Scan, 295 F.3d at
633; 3 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 23:41, at 23-123 (2003) (hereinafter
“McCarthy”) (“Conflicting composite marks are to be
compared by looking at them as a whole, rather than breaking
the marks up into their component parts for comparison. . . .
The rationale for the rule is that the commercial impression of

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 15
a composite trademark on an ordinary prospective buyer is
created by the mark as a whole, not by its component parts.”).
The AUTOZONE and POWERZONE marks have some
visual and linguistic similarities, but ultimately their
differences outnumber their similarities such that the
likelihood of confusion is small. For both, the mark appears
as a single word, with the first letter and the “Z” in ZONE
capitalized. They each have three syllables, although the
pronunciation of the first two syllables is not similar.
Additionally, both marks are generally featured with a series
of slanting lines bookending the main word. That is where
the similarities end. Aside from the clear differences in the
accentuation of the first syllables, the AUTOZONE font (soft-
edged or rounded) is distinct from the POWERZONE font
(more angular). The word AUTOZONE is slanted whereas
POWERZONE is not. When viewed in conjunction with the
slanted lines of decreasing thickness that emanate from the
word AUTOZONE, the entire design gives an impression of
momentum or speed. By contrast, the slanted lines on either
side of the word POWERZONE are all of the same size,
perhaps symbolizing the flow of power. Occasionally,
POWERZONE appears without the slanted lines.
POWERZONE is almost always featured on a cylindrical
object that closely resembles a battery, particularly given the
clear depiction of a battery’s positive node on the right side of
the object. AUTOZONE has no such aspect in its design.
For the AUTOZONE mark, the word AUTOZONE appears
in red and the slanted lines of decreasing width appear in
orange. POWERZONE generally appears in black and white,
but when it is in a color advertisement, POWERZONE is
written in white, the slanted lines are black, and the battery is
a coppery-yellow color.
Several cases provide points of comparison. In Jet we ruled
that the marks JET and AEROB-A-JET were dissimilar. We
noted that the two marks differed visually and verbally,
partially because the first syllables of the marks received
distinct emphasis. Jet, 165 F.3d at 423-24 (“The most
16 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
prominent part of AEROB-A-JET is not the shared term JET
but the initial syllables AEROB-A . . . .”). In Daddy’s, we
ruled that “Daddy’s Junky Music Store” and “Big Daddy’s
Family Music Center” were similar because both firms often
advertised using only the nickname “Daddy’s” and because
“Daddy’s” was not just a component of the mark, but was in
fact the mark itself. Daddy’s, 109 F.3d at 283-84. This case
is more similar to Jet than to Daddy’s: if both AutoZone and
Radio Shack often used the nickname “Zone” or “the Zone,”
Daddy’s might control, but instead the differences between
the first syllables of POWERZONE and AUTOZONE cannot
be ignored, particularly giving the ubiquity of ZONE. See
also Little Caesar, 834 F.2d at 571-72 (LITTLE CAESARS
and PIZZA CAESAR are dissimilar because “Caesar” is often
used in selling Italian food and because of the differences in
sound and appearance); Streetwise Maps, Inc. v. Vandam,
Inc., 159 F.3d 739 (2d Cir. 1998) (finding a dissimilarity
between STREETWISE and STREETSMART when both
were used to sell maps), Gruner & Jahr USA Publ’g v.
Meredith Corp., 991 F.2d 1072, 1079-80 (2d Cir. 1993)
(PARENTS magazine and PARENT’S DIGEST magazine
not confusingly similar).
Furthermore, the POWERZONE mark’s consistent
proximity to Radio Shack’s house mark is significant. The
use of a challenged junior mark together with a house mark or
house tradename can distinguish the challenged junior mark
from the senior mark and make confusion less likely.
3 McCarthy § 23:43, at 23-129; see Nabisco, Inc. v. Warner-
Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000) (“[Defendant]’s
prominent use of its well-known house brand therefore
significantly reduces, if not altogether eliminates, the
likelihood that consumers will be confused as to the source of
the parties’ products.”); Luigino’s, Inc. v. Stouffer Corp., 170
F. 3d 827, 831 (8th Cir. 1999) (“[T]he prominent display of
the house marks convey[s] perceptible distinctions between
the products.”). The co-appearance of a junior mark and a
house mark is not dispositive of dissimilarity, but it is
persuasive. See 3 McCarthy § 23:43, at 23-130.

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 17
POWERZONE almost never appears without its
accompanying Radio Shack house mark. The Radio Shack
mark appears on the battery slightly above the POWERZONE
mark. The only deviation from this pattern is a webpage for
RadioShack.com. However, multiple references to
RadioShack.com and Radio Shack accompany this slightly
different use of the POWERZONE mark, such that it would
nearly impossible for an internet user to see POWERZONE
without simultaneously recognizing its connection to Radio
Shack.
In conclusion, the marks are not similar enough to create a
likelihood of confusion. There are considerable visual and
linguistic differences. Furthermore, the use of the Radio
Shack house mark in proximity to POWERZONE reduces the
likelihood of confusion from any similarity that does exist.
3. Relatedness of Goods or Services
The parties vigorously dispute the relatedness of their
goods and services. We have employed three criteria for
testing the relatedness factor:
First, if the parties compete directly, confusion is likely
if the marks are sufficiently similar; second, if the goods
and services are somewhat related, but not competitive,
then the likelihood of confusion will turn on other
factors; finally, if the products are unrelated, confusion
is highly unlikely.
Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616, 624 (6th Cir.
2003). “The relatedness inquiry therefore focuses on whether
goods or services with comparable marks that are similarly
marketed and appeal to common customers are likely to lead
consumers to believe that they come from the same source, or
are somehow connected with or sponsored by a common
company.” Therma-Scan, 295 F.3d at 633 (quotation
omitted). In a variety of other cases, we have held that bulk
car wash products and car wash franchises, see Wynn II, 943
18 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
F.2d at 600, two slightly different types of oxygenating septic
filters, see Jet, 165 F.3d at 422, and sit-down and carry-out
pizza establishments, see Little Caesar, 834 F.2d at 571, are
related enough to create a likelihood of confusion. However,
infrared thermal-imaging devices and ear thermometers, see
Therma-Scan, 295 F.3d at 623, and real-estate brokers and
marketing services for real-estate brokers, see Homeowners,
931 F.2d at 1108-09, are not related enough to cause a
likelihood of confusion. In Toucan Golf, Kellogg claimed
that a golf-equipment manufacturer infringed the famous
“Toucan Sam” trademark when the golf firm used a mark that
featured a toucan “perched upon a golf iron” alongside the
word “Toucan Gold.” Kellogg Co. v. Toucan Golf, Inc., 337
F.3d at 621-22. Kellogg asserted that even though it
primarily manufactured breakfast cereal, its products were
related to the golf industry because it offered golf balls and
golf shirts featuring the visage of Toucan Sam and because it
had run advertisements featuring Toucan Sam on a golf
course. Id. at 624. We ruled that Kellogg’s connection with
the golf industry was tenuous, and consequently confusion
was unlikely: “We find that no consumer would associate
Kellogg with top-line golf equipment based on Kellogg’s
extremely limited licensing of its characters of novelty
items.” Id. at 625.
AutoZone and Radio Shack do not fit neatly into our
tripartite system. On the one hand, common sense suggests
AutoZone and Radio Shack do not directly compete: few
consumers would make the mistake of traveling to Radio
Shack to purchase an oil filter or would enter an AutoZone to
buy a DVD player. See J.A. at 950 (Sum. J. Hr’g Tr.) (the
district court brusquely, but aptly asking, “What idiot who
wants to buy an automobile part is going to go to a Radio
Shack?”). On the other hand, the products offered by
AutoZone and Radio Shack are not completely unrelated.
AutoZone and Radio Shack compete directly in selling certain
products, even though these products comprise less than 1%
of AutoZone’s total stock and AutoZone does not extensively
advertise the types of products also sold in Radio Shack’s

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 19
POWERZONE area. Unlike Kellogg, in which the cereal
manufacturer had made only superficial and extremely limited
in-roads to the golf industry, AutoZone and Radio Shack,
which generally occupy distinct niches, converge in the area
of power sources and power connections. We are presented
with a competitive context that combines elements of the first
and third criteria: the parties compete directly in a very
limited fashion, but for the most part, the products offered by
each company are unrelated and their marks are not very
similar.
AutoZone believes the degree of relatedness presents a
genuine issue of material fact. AutoZone contends that the
district court erred in focusing on the fact that the total
overlap between the stores (number of products in
common/total number of AutoZone products) was less than
one percent when AutoZone offers 40% of the products sold
by Radio Shack in its POWERZONE area. There is no
factual dispute, however, because both figures are accurate
and undisputed. The pertinent question is which method of
examining the overlap best describes the relatedness of the
products as a matter of law. The reality is that both figures
inform the analysis by demonstrating that there is generally
no overlap, except when considering a limited subset of
products. It is also significant that most of these overlapping
products are not unique to either Radio Shack or AutoZone,
as batteries and power cords are generally offered by many
different kinds of retailers, including grocery stores,
pharmacies, and hardware stores. Furthermore, the 40%
figure preferred by AutoZone is deceptive. We have no
information about the percentage of Radio Shack products
sold in the POWERZONE area. We also note that the
existence of a high percentage of overlap when considering an
extremely small subset of products does not demonstrate a
high degree of relatedness: by AutoZone’s logic, if
POWERZONE stocked only five types of batteries all of
which were also sold by AutoZone, the overlap would be
100%, even though in reality Radio Shack and AutoZone
20 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
2There are several problems with Rappeport’s study. The study
attempted to show the strength of the AutoZo ne ma rk by giving survey
participants in various malls one p art of a well-known retail chain (WAL
____ or __ __ D EP OT ) and asking them to fill in the b lank. One of the
questions was “AUTO ____.” Of 110 respondents, 48% answered ZONE,
14% answered PARTS, 25% offered various other answers, and 12% did
not offer any response. First, it is questionable whether the results are
statistically significant given the small number of respondents. Second,
the surveyors to ld participants at the outset that the survey sought to test
their knowledge of retail chains. This preliminary statement limited the
universe of po tential answers to the fill-in-the-blanks questions.
Rappep ort has been criticized by other courts for the employment of
would share only five products of the approximately 55,000
offered by AutoZone.
In sum, although there is a minuscule overlap between the
products offered by AutoZone and Radio Shack, which
appears larger when limiting the analysis to only the
POWERZONE store-within-a-store, the products offered by
the two companies are not related enough such that this factor
tilts in AutoZone’s direction.
4. Evidence of Actual Confusion
“Evidence of actual confusion is undoubtedly the best
evidence of likelihood of confusion.” Wynn Oil Co. v.
Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988) (“Wynn I”).
“[A] lack of such evidence is rarely significant, and the factor
of actual confusion is weighted heavily only when there is
evidence of past confusion, or perhaps, when the particular
circumstances indicate such evidence should have been
available.” Daddy’s, 109 F.3d at 284 (quotation omitted).
AutoZone has failed to present any evidence of actual
confusion. AutoZone and Radio Shack have simultaneously
used their marks for three years, but AutoZone has been
unable to demonstrate even one instance of actual confusion.
AutoZone’s reliance upon the study conducted by Michael
Rappeport is misguided. Even on the undeserved assumption
that Rappeport’s study is methodologically sound,2 the study

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 21
faulty methodologies and the presentation of unreliable results. See
Indianapolis Colts, Inc. v. Metro. Ba ltimore Fo otba ll Club , Ltd. P’Ship,
34 F.3d 410 , 415 (7th Cir. 199 4) (“T he defendants’ [study] was . . .
summarized in a perfunctory affidavit by Dr. Rappeport to which the
district judge gave little weight. T hat was a kindness. The heart of
Rap pep ort’s study was a survey that consisted of three loaded questions
asked in one Baltimore mall. Rappeport has been criticized before for his
metho dolo gy, and we hope that he will take these criticisms to heart in his
next courtroom appearance.”) (citing Jaret Int’l, Inc. v. Pro mo tion in
Motion, Inc., 826 F. Supp. 69, 73 -74 (E.D.N.Y . 1993)).
neither provides evidence of actual confusion nor creates a
genuine issue of material fact on the matter. The study
ostensibly sought to discern the strength of AutoZone’s mark.
J.A. at 101 (Rappeport Study) (labeling the study as an
attempt “to test the strength and perception of the mark
AUTOZONE.”). No aspect of the study actually tested
whether randomly chosen survey participants were confused
between the two marks. In fact, the study did not even
mention POWERZONE or Radio Shack. Because AutoZone
presented no evidence of actual confusion, this factor should
not have any bearing on the analysis.
5. Radio Shack’s Intent
Finally, AutoZone argues that the district court erred
because there is a genuine dispute over whether Radio Shack
intentionally infringed upon the AUTOZONE mark. Proving
intent is not necessary to demonstrate likelihood of confusion,
but “the presence of that factor strengthens the likelihood of
confusion.” Wynn II, 943 F.2d at 602; see also Wynn I, 839
F.2d at 1189 (“While . . . we do consider intention to be
relevant when a plaintiff shows that a defendant knowingly
copied the contested trademark, . . . absent such a showing,
intentions are irrelevant.”). “If a party chooses a mark with
the intent of causing confusion, that fact alone may be
sufficient to justify an inference of confusing similarity.”
Homeowners, 931 F.2d at 1111. “Circumstantial evidence of
copying, particularly the use of a contested mark with
22 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
knowledge of the protected mark at issue, is sufficient to
support an inference of intentional infringement where direct
evidence is not available.” Therma-Scan, 295 F.3d at 638-39.
The intention factor naturally is considered in light of the
other factors; a bad-faith intent to infringe upon another mark
may not increase the likelihood of confusion if the other
seven factors suggest that confusion is improbable.
AutoZone has presented no direct evidence of an intent by
Radio Shack to infringe upon the AUTOZONE mark.
AutoZone does not dispute Radio Shack’s assertion that it
“did not copy the AUTOZONE mark or intend to trade off
any of [AutoZone]’s goodwill in AUTOZONE when it chose
the POWERZONE mark.” J.A. at 784 (Pl. Local Rule 8(b)(7)
Statement). Indeed, there is simply no evidence that Radio
Shack chose the POWERZONE mark in order to steal
customers from AutoZone. Radio Shack apparently selected
POWERZONE based solely upon the results of a consumer
survey.
AutoZone instead argues that circumstantial evidence of
copying supports an inference of intentional infringement. As
proof that Radio Shack was carelessly or negligently
indifferent to AutoZone’s trademark rights, AutoZone points
to Radio Shack’s knowledge of the AUTOZONE mark in
conjunction with Radio Shack’s failure to consult an attorney
knowledgeable in trademark law before adopting
POWERZONE. Radio Shack concedes that as a corporation
it was aware of the AUTOZONE mark when it chose the
POWERZONE mark, which is unsurprising given that Radio
Shack itself agreed to the use of AUTOZONE as part of the
1987 Settlement. This circuit has not yet decided whether
evidence of carelessness or negligence with regards to
searches for preexisting marks suffices as circumstantial proof
of an intent to infringe. We do not decide this issue today,
although our decision in Daddy’s implies the potential
difficulty of employing such a standard. See Daddy’s, 109
F.3d at 286-87 (“Plaintiff is incorrect to the extent that it is
suggesting that the mere prior existence of a registered mark

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 23
demonstrates that the alleged infringer intentionally copied
that mark; otherwise, presumably all trademark infringement
cases could result in a finding of intentional copying.”); see
also A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,
237 F.3d 198, 226, 232-33 (3d Cir. 2000) (stating that “mere
carelessness” is not enough to prove intent). Even if we were
to assume that carelessness or negligence is sufficient to
create an inference of an intent to infringe, there is no
evidence that Radio Shack was careless or negligent in
choosing POWERZONE. Radio Shack conducted two
separate trademark searches — one through a trademark
search company (Thompson & Thompson) and another
through in-house counsel. Radio Shack chose
POWERZONE, even though it knew about the AUTOZONE
mark, because it believed that there was no infringement
given the dissimilarity of the marks and the unrelatedness of
the products offered by each company.
AutoZone has not presented any evidence of bad intent.
Nor has it presented any circumstantial evidence of
negligence or carelessness, if such evidence suffices to create
an inference of intent to pilfer the goodwill in the
AUTOZONE mark. This factor weighs against the likelihood
of confusion.
6. Conclusion
The district court did not err in granting Radio Shack’s
motion for summary judgment because AutoZone did not
present enough evidence for a jury to conclude that there was
a likelihood of confusion. Most of the factors weigh against
the likelihood of confusion: there is no evidence of actual
confusion, the marks are not similar, there is no evidence that
Radio Shack intended to cause confusion over the marks, and
neither party plans to expand its product lines into the other’s
at any point in the near future. The relatedness-of-products
factor at best does not aid the analysis and at worst suggests
that the likelihood of confusion is small, given that AutoZone
and Radio Shack offer completely disparate products except
24 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
for one relatively small portion of their respectively enormous
inventories. It is true that AutoZone’s mark is strong, that
AutoZone and Radio Shack use common marketing channels,
and there is a low degree of purchaser care, all of which
weigh in favor of a likelihood of confusion. Yet, these factors
are not enough to tip the balance. In considering the
touchstone question of “whether relevant consumers are likely
to believe that the products or services offered by the parties
are affiliated in some way,” Homeowners, 931 F.2d at 1107,
AutoZone has simply not presented sufficient evidence that
consumers are likely to be confused by Radio Shack’s use of
POWERZONE.
C. The Dilution Claim
AutoZone also contests the district court’s grant of
summary judgment on its dilution claim. AutoZone
principally argues that the district court erred as a matter of
law because it employed the wrong test in assessing
AutoZone’s dilution claim. While we decline to rule
definitively on the propriety of the test used by the district
court, we affirm the district court’s grant of summary
judgment as proper because AutoZone failed to present any
evidence of actual dilution.
1. Dilution As Distinct From Infringement
The law governing dilution is independent from the law
attendant to claims of trademark infringement. Kellogg Co.
v. Exxon Corp., 209 F.3d at 576. “Dilution law, unlike
traditional trademark infringement law . . . is not based on a
likelihood of confusion standard, but only exists to protect the
quasi-property rights a holder has in maintaining the integrity
and distinctiveness of his mark.” Kellogg Co. v. Toucan Golf,
Inc., 337 F.3d at 628. “Courts recognize two principal forms
of dilution: tarnishing and blurring. . . . Dilution by blurring,
the injury at issue here, occurs when consumers see the
plaintiff’s mark used on a plethora of different goods and
services . . . raising the possibility that the mark will lose its

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 25
ability to serve as a unique identifier of the plaintiff’s
product.” Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d
456, 466 (7th Cir. 2000) (quotations and citation omitted)
(second alteration in original).
The Federal Trademark Dilution Act of 1995 (“FTDA”),
Pub. L. No. 104-98, 109 Stat. 985 (1995), “seeks to prevent
both of these forms of dilution by protecting the trademark
owner from the erosion of the distinctiveness and prestige of
a trademark caused by . . . a proliferation of borrowings, that
while not degrading the original seller’s mark, are so
numerous as to deprive the mark of its distinctiveness and
hence impact.” Id. (quotations omitted) (alteration in
original). Section 43(c) of the amended Lanham Act
provides,
The owner of a famous mark shall be entitled, subject to
the principles of equity and upon such terms as the court
deems reasonable, to an injunction against another
person’s commercial use in commerce of a mark or trade
name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of
the mark, and to obtain such other relief as is provided in
this subsection.
15 U.S.C. § 1125(c)(1). Dilution is defined by the FTDA as
“the lessening of the capacity of a famous mark to identify
and distinguish goods or services, regardless of the presence
or absence of [] (1) competition between the owner of the
famous mark and other parties, or (2) likelihood of confusion,
mistake, or deception.” 15 U.S.C. § 1127. The Tennessee
state dilution statute is similar to the federal dilution statute.
It reads,
The owner of a mark which is famous in this state shall
be entitled, subject to the principles of equity and upon
such terms as the court deems reasonable, to an
injunction against another person's commercial use of a
mark or trade name, if such use begins after the mark has
26 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
become famous and causes dilution of the distinctive
quality of the mark, and to obtain such other relief as is
provided in this section.
Tenn. Code Ann. 47-25-513(a). There are no Tennessee cases
that analyze this statute, and in the past we have
interchangeably analyzed the Tennessee and federal
antidilution statutes. Kellogg Co. v. Exxon Corp., 209 F.3d
at 577.
2. The Federal Dilution Test
We have repeatedly employed a five-part dilution test. To
succeed in a federal dilution claim:
[T]he senior mark must be (1) famous; and
(2) distinctive. Use of the junior mark must (3) be in
commerce; (4) have begun subsequent to the senior mark
becoming famous; and (5) cause dilution of the
distinctive quality of the senior mark.
Kellogg Co. v. Toucan Golf, Inc., 337 F.3d at 616; see also
Kellogg Co. v. Exxon Corp., 209 F.3d at 577; Nabisco, Inc. v.
PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999) (creating
the test adopted by the Sixth Circuit); 4 McCarthy § 24:89, at
24-146 (outlining a similar test for a prima facie case of
trademark dilution). Neither party disputes the application of
the first, third, and fourth factors: AUTOZONE is famous,
Radio Shack uses the junior mark POWERZONE in
commerce, and Radio Shack commenced its use of
POWERZONE after AUTOZONE attained widespread
recognition.
a. Distinctiveness
In the court below, Radio Shack disputed the
distinctiveness of the AUTOZONE mark, but the district
court held that the mark was distinctive. AutoZone, 174 F.
Supp. 2d at 736. Radio Shack has not appealed this ruling,

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 27
and an evaluation of the eight statutory factors of
distinctiveness, see 15 U.S.C. § 1125(c)(1)(A)-(H),
demonstrates that the district court reached the correct
conclusion. The extent of AutoZone’s use of the mark, the
pervasive and geographically widespread advertising of the
mark, the high recognition of the mark, and AutoZone’s
registration of its mark, which entitles AutoZone to a
presumption of distinctiveness, all highlight the distinctive
nature of the AUTOZONE mark. However, a finding that the
mark was distinctive does not address the degree of
distinctiveness, which is part of the test for determining
whether the use of a junior mark causes dilution.
b. The Fifth Factor
The central dilution issue in this appeal is how to analyze
the fifth and final factor, which measures whether the junior
mark caused actual dilution of the distinctive quality of the
senior mark. The district court, acting properly at the time,
relied on our opinion in V Secret Catalogue, Inc. v. Moseley,
259 F.3d 464 (6th Cir. 2001) (“V Secret”), rev’d, 537 U.S.
418 (2003). In V Secret, we applied a ten-factor,
nonexclusive test to determine whether dilution had occurred.
Id. at 476; see Nabisco, Inc. v. PF Brands, Inc., 191 F.3d at
217-22. The ten factors are:
distinctiveness; similarity of the marks; proximity of the
products and the likelihood of bridging the gap;
interrelationship among the distinctiveness of the senior
mark, the similarity of the junior mark, and the proximity
of the products; shared consumers and geographic
limitations; sophistication of consumers; actual
confusion; adjectival or referential quality of the junior
use; harm to the junior user and delay by the senior user;
and the effect of [the] senior’s prior laxity in protecting
the mark.
V Secret, 259 F.3d at 476 (quotations omitted) (alteration in
original); see also PACCAR, Inc. v. TeleScan Techs., L.L.C.,
28 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
319 F.3d 243, 257-58 (6th Cir. 2003) (referencing the ten-
factor test, but declining to employ it because the issuance of
an injunction was proper for other reasons). The district court
proceeded through the analysis and held that “[a]fter
concluding that the AUTOZONE and POWERZONE marks
are not sufficiently similar given the heightened similarity
requirement in the dilution context, the other factors weighing
in favor of dilution are inadequate to preclude summary
judgment on AutoZone’s dilution claim.” AutoZone, 174 F.
Supp. 2d at 739.
On appeal, AutoZone asks us to reject the district court’s
holding and its application of the Nabisco test. AutoZone
criticizes the Nabisco test for erroneously duplicating several
factors of the likelihood-of-confusion test and for incorrectly
shifting the burden of proving several affirmative defenses
onto the plaintiff. In assessing AutoZone’s arguments, we
must initially determine whether V Secret incorporated the
Nabisco test into the law of this circuit such that we are bound
by the decision of a prior panel. It is only if V Secret adopted
the Nabisco test that we must assess what effect the Supreme
Court’s reversal of V Secret has upon our application of the
ten Nabisco factors.
(1) V Secret’s Treatment of the Nabisco Test
AutoZone contends that we never expressly adopted the
Nabisco test, instead preferring to leave the issue open for
“further explication on a ‘case-by-case’ basis.” AutoZone Br.
at 12. AutoZone is partially correct. This court stated in
V Secret:
We find that these factors effectively span the breadth of
considerations a court must weigh in assessing a claim
under the FTDA, from the inherent qualities of the marks
themselves, to the behavior of the corporate entities in
introducing a mark into commerce, to the highly practical
and subjective considerations of the effect of the marks

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 29
on the actual consumers who will consider them, and
find them persuasive to our analysis.
V Secret, 259 F.3d at 476. We agreed with the Second
Circuit’s statement that the ten-factor list was “nonexclusive”
and was intended to “develop gradually over time and with
the particular facts of each case.” Id. (quotation omitted).
V Secret was decided on the basis of only two Nabisco factors
(distinctiveness and similarity). The other factors were not
discussed in any depth thus leaving “further explication for
later development gradually over time, on a case-by-case
basis.” Id. at 477 (quotation omitted). Therefore, AutoZone
is correct that V Secret did not evaluate and apply all ten
Nabisco factors. The opinion simply noted that the ten
Nabisco factors represent a broad array of inquiries that can
help a court assess whether dilution has occurred.
AutoZone is incorrect, however, when it claims that
V Secret did not adopt the Nabisco test. V Secret explicitly
adopted the general framework and thrust of the Nabisco
inquiry, but it did so with the recognition that the test is
variable and subject to both maturation and refinement. We
imported the Nabisco test with the expectation that it would
evolve. As the Nabisco court itself exhorted, “We make no
suggestion that the factors we have focused on exhaust the
test of what is pertinent. New fact patterns will inevitably
suggest additional pertinent factors. . . . [N]o court should, at
least at this early stage, make or confine itself to a closed list
of the factors pertinent to the analysis of rights under the new
antidilution statute.” Nabisco, 191 F.3d at 228.
(2) The Supreme Court and Nabisco
The Supreme Court’s reversal of V Secret calls into doubt
the continued vitality of the Nabisco test. Between the
district court’s grant of summary judgment and the parties’
oral argument before us, the Supreme Court reversed
V Secret. See Moseley v. V Secret Catalogue, Inc., 537 U.S.
418 (2003) (“Moseley”). To resolve a circuit split, the
30 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
Supreme Court addressed the discrete issue of whether a
dilution claim required proof of actual dilution or whether
proof of a likelihood of dilution would suffice. Id. at 428; see
V Secret, 259 F.3d at 476 (adopting likelihood of dilution
standard); Nabisco, 191 F.3d at 223-24 (adopting likelihood
of dilution standard); Ringling Bros.-Barnum & Bailey
Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d
449, 464 (4th Cir. 1999) (requiring proof of actual dilution).
Analyzing the text of § 1125(c)(1), the Court held that the
statute “unambiguously requires a showing of actual dilution,
rather than a likelihood of dilution.” Moseley, 537 U.S. at
433. Actual dilution “does not mean that the consequences of
dilution, such as an actual loss of sales or profits, must also be
proved.” Id. However, “where the marks at issue are not
identical, the mere fact that consumers mentally associate the
junior user’s mark with a famous mark is not sufficient to
establish actionable dilution . . . [because] such mental
association will not necessarily reduce the capacity of the
famous mark to identify the goods of its owner, the statutory
requirement for dilution under the [antidilution act].” Id. The
Court recognized that proof of actual dilution may be difficult
to obtain, although it noted that circumstantial evidence can
be used to show actual dilution under certain circumstances,
such as the “obvious” case when the marks are identical. Id.
at 434. The Supreme Court reversed because the evidence
was not sufficient to support summary judgment given the
stricter standard adopted by the Court. Id.
Nothing in the Supreme Court’s opinion in Moseley
adressed the efficacy of the ten-factor test; the Supreme Court
did not criticize the Second Circuit for creating the test or the
Sixth Circuit for adopting it. The Supreme Court in essence
made it more difficult for dilution claims to succeed because
plaintiffs face a much higher hurdle of demonstrating actual
dilution, but the Court was silent as to the manner in which
courts must evaluate plaintiffs’ success in overcoming that
hurdle. This silence could imply that a test designed to
measure likelihood of dilution may not be appropriate to

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 31
3Our sole post-Moseley dilution case did not explicitly cite to the
Nabisco test when the plaintiff failed to provide evidence showing that
actual dilution occu rred. Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616,
628 (6th Cir. 2003). In Tou can Golf, the plaintiff could no t demonstrate
that the defendant’s use of its junior mark reduced consumers’ association
between the senior mark and K ellogg’s prod ucts. Id.
4Other circuits have exc luded these and certain additional Nabisco
factors in analyzing dilution claims and adopted simpler tests. See Eli
Lilly & Co. v. Na tural Answers, Inc., 233 F.3d 4 56, 468-69 & n.7 (7th Cir.
2000) (ado pting a two-part test, which focused so lely on similarity
between the marks and renown of senio r mark); Luigino’s, Inc v. Stouffer
Corp., 170 F.3d 8 27, 832-33 (8 th Cir. 1999) (adopting a two-part test that
measures the similarity of the marks and whether consumers connect the
defendant’s product with the plaintiff’s famous mark); I.P. Lund Trading
ApS v. Kohler Co., 163 F.3d 27, 49-50 (1st Cir. 1998) (criticizing the
Nabisco test’s precursor, Mead Data Cental, Inc. v. Toyo ta Mo tor Sales,
U.S.A., Inc., 875 F.2d 102 6, 10 35 (2d C ir. 198 9) (Sweet, J., concurring),
and Mead’s use of certain factors that are also found in the Nabisco test,
such as the similarity of products). A leading commentator disapproves
of the Nabisco test, believing that it fashions such a complex test that not
only will few mark owners succeed in their dilution claims, but few will
evaluate actual dilution, but we are left without firm guidance
on the issue.
(3) AutoZone’s Failure to Present Evidence of
Actual Dilution
We need not resolve whether the Nabisco factors may be
useful in future cases because AutoZone here has presented
no evidence of actual dilution.3 However, we note that
several of the Nabisco factors are particularly unhelpful in
cases such as this one. Given that the FTDA authorizes
dilution claims no matter whether there exists competition
between the owners of the respective marks or whether there
is a strong likelihood of confusion between the marks, the
factors measuring “proximity of the products,” Nabisco, 191
F.3d at 218-19, “shared consumers and geographic
limitations,” id. at 220, and actual confusion, id. at 221, seem
irrelevant to the dilution analysis.4 Even Radio Shack
32 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
even pursue dilution claims because the Nabisco test makes accurate
predictions of victory difficult. 4 M cCarthy § 24:94.4, at 24-211. The
same commentator urges that certain factors, such as the similarity of the
products, the sophistication o f consumers, and actual confusion, are not
only irrelevant but also misinterpret the purpose of anti-dilution law s. Id.
at § 24:94.4, at 24-211 to 24-214. Nonetheless, at least one other circuit
has not only adopted the Nabisco test, but also has expanded it. See Times
Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157,
168-69 (3d Cir. 2000), cert. denied, 531 U.S. 107 1 (2001 ) (adopting a
sixteen-part test).
conceded at oral argument that actual confusion is not a
pertinent consideration.
No matter the remaining vitality of the Nabisco test, the
district court properly granted summary judgment because
AutoZone has not presented enough evidence of actual
dilution such that there exists a genuine dispute of material
fact for a jury to resolve. Coupled with AutoZone’s failure to
provide any evidence that the PowerZone mark blurred the
distinctiveness of the AutoZone mark, the dissimilarity
between the two marks by itself demonstrates why
AutoZone’s claim cannot succeed. The “similarity” test for
dilution claims is more stringent than in the infringement
milieu:
The . . . test of similarity used in the traditional
likelihood of confusion test cannot be the guide [for
dilution], for likelihood of confusion is not the test of
dilution. For blurring . . . to occur, the marks must at
least be similar enough that a significant segment of the
target group of customers sees the two marks as
essentially the same. Blurring is one mark seen by
customers as now identifying two sources. But two
different marks identifying two different sources is not
blurring and will not cause dilution.
4 McCarthy § 24:90:2, at 24-160. In V Secret, we considered
it important that the “two marks in questions are highly
similar.” V Secret, 259 F.3d at 476 (emphasis added); see

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 33
5AutoZone protests that Jet is not relevant here because we applied
the stronger similarity threshold only in the midst of a discussion of the
Ohio state antidilution statute. However, Jet also evaluated the plaintiff’s
motion to amend its complaint to add a federal dilution claim under
§ 1125(c). In ruling that such an amendment would be futile, we spoke
directly to the degree of similarity needed to succeed in a federal dilution
claim: “[T]he federal dilution claim would fail because the marks are not
sufficiently similar. Although some aspects of this claim would be
different under the federal statute than under Ohio common law, we w ould
still require a greater degree of similarity than is needed under the
likelihood o f confusion test.” Id. (emphasis added).
also id. at 476-77 (finding that “Victoria’s Secret” and
“Victor’s Little Secret” are “semantically almost identical”
and “graphically similar as well.”). In Jet, we stated, “The
purpose of anti-dilution laws is to provide a narrow remedy
when the similarity between two marks is great enough that
even a noncompeting, nonconfusing use is harmful to the
senior user. . . . The degree of similarity required for a
dilution claim must be greater than that which is required to
show likelihood of confusion.” 165 F.3d at 425. We held
that because JET and AEROB-A-JET were not similar
enough even to satisfy the likelihood of confusion test, the
plaintiff’s dilution claim could not succeed.5 Despite
AutoZone’s contention that the level of similarity required is
not higher in the dilution context, every federal court to
decide the issue has ruled that a high degree of similarity,
ranging from “nearly identical” to “very similar,” is required
for a dilution claim to succeed. See Playboy Enters., Inc. v.
Welles, 279 F.3d 796, 806 (9th Cir. 2002) (stating that marks
must be “identical or nearly identical”); Eli Lilly, 233 F.3d at
469 (holding that HERBROZAC and PROZAC were “highly
similar”); Ringling Bros., 170 F.3d at 458 (requiring “a
sufficient similarity between the junior and senior marks to
evoke an instinctive mental association of the two” (quotation
omitted) and affirming lower court’s factual finding that
GREATEST SHOW ON EARTH and GREATEST SNOW
ON EARTH were not similar enough to sustain dilution
claim); Luigino’s, 170 F.3d at 832 (LEAN CUISINE and
34 AutoZone, Inc. et al. v. Tandy Corp. No. 01-6571
LEAN ‘N TASTY are not similar enough because the sight
and sound of the marks are different and the common use of
the word “lean” does not make the marks similar); Nabisco,
191 F.3d at 218 (stating that “[t]he marks must be of
sufficient similarity so that, in the mind of the consumer, the
junior mark will conjure an association with the senior,” but
not requiring that marks be completely identical); I.P. Lund
Trading ApS v. Kohler Co., 163 F.3d 27, 50 (1st Cir. 1998)
(adopting the standard that customers must view the marks as
“essentially the same”). Following our precedent and the
guidance of other circuits, we require a plaintiff to
demonstrate a higher degree of similarity than is necessary in
infringement claims in order to prove that actual dilution has
occurred.
AutoZone’s dilution claim must fail because the absence of
a high degree of similarity between AUTOZONE and
POWERZONE underscores AutoZone’s failure to provide
any evidence of actual dilution. Given that there is not even
enough similarity between the two marks to demonstrate a
likelihood of confusion, the marks are certainly not highly
similar or nearly identical such that AutoZone can prove that
actual dilution has occurred. The two marks look different;
they are written in different fonts and colors. They utilize
different designs (slanted versus nonslanted tradename) and
are meant to convey different messages. They also sound
different because there is little acoustic similarity between
AUTO and POWER. As a comparison, AUTOZONE and a
hypothetical AUDIOZONE would have a higher level of
acoustic similarity. Additionally, the common word between
AUTOZONE and POWERZONE is pronounced second and
is consequently deemphasized.
Because we hold that AUTOZONE and POWERZONE are
not similar enough to pass the higher threshold required to
prove actual dilution, and because AutoZone has produced no
other evidence of actual dilution, AutoZone cannot
demonstrate that Radio Shack’s use of POWERZONE caused

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No. 01-6571 AutoZone, Inc. et al. v. Tandy Corp. 35
“dilution of the distinctive quality of the senior mark.”
Kellogg Co. v. Toucan Golf, Inc., 337 F.3d at 628.
c. Conclusion Regarding Dilution Claim
In sum, we affirm the district court’s grant of summary
judgment because there are no genuine issues of material fact
regarding AutoZone’s dilution claim. AutoZone failed to
present evidence satisfying the fifth and ultimate factor in our
five-part test for dilution. AutoZone also contends that
because the Supreme Court altered the standard for dilution
claims we must remand the case so that the district court can
reevaluate its decision in light of Moseley. AutoZone’s
argument falls wide of the mark. Moseley raised the bar for
dilution claims. If AutoZone failed in its efforts to show
dilution under the more generous “likelihood of dilution”
standard, it will not find success under a more stringent test.
See Kellogg Co. v. Toucan Golf, Inc., 337 F.3d at 628-29
(refusing to remand on account of Moseley’s change in the
standard because we considered plaintiff’s “proffered
empirical evidence insufficient even to meet the lesser
standard”). Furthermore, because we analyze the federal and
Tennessee dilution claims in the same manner, AutoZone’s
failure to succeed in its federal claim also extinguishes its
state dilution claim.
III. CONCLUSION
We AFFIRM the district court’s grant of summary
judgment in favor of Radio Shack. AutoZone did not present
any genuine issues of material fact regarding the likelihood of
confusion between AUTOZONE and POWERZONE. Nor
did AutoZone provide evidence that would allow a jury to
conclude that the POWERZONE mark actually diluted the
AUTOZONE mark. Under these circumstances none of
AutoZone’s claims can withstand Radio Shack’s summary
judgment motion. We AFFIRM.

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