United States v. 2006-07-06 | 04-16001 | RENO AIR RACING VMCCORD | precedential | opinion |

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
 RENO AIR RACING ASSOCIATION,
INC., No. 04-16001
Plaintiff-Appellee, D.C. No.
v. CV-02-00474-HDM
JERRY MCCORD, OPINION
Defendant-Appellant. 
Appeal from the United States District Court
for the District of Nevada
Howard D. McKibben, District Judge, Presiding
Argued and Submitted
February 14, 2006—San Francisco, California
Filed July 7, 2006
Before: Arthur L. Alarcón and M. Margaret McKeown,
Circuit Judges, and H. Russel Holland,* District Judge.
Opinion by Judge McKeown:
*The Honorable H. Russel Holland, Senior United States District Judge
for the District of Alaska, sitting by designation.
7519

-- 1 of 26 --

COUNSEL
Jeanne Collachia, Winnetka, California, for the defendant-
appellant.
Matthew D. Francis, Watson Rounds, Reno, Nevada, for the
plaintiff-appellee.
OPINION
McKEOWN, Circuit Judge:
Jerry McCord appeals the district court’s decision and final
judgment following a bench trial. The district court entered an
award of damages and a permanent injunction against
McCord due to his infringement of two trademarks belonging
to Reno Air Racing Association, Inc. (“Reno Air”), in viola-
tion of the Lanham Act of 1946, 15 U.S.C. §§ 1051 et seq.
(“Lanham Act”). In addition, the district court found McCord
in civil contempt and imposed sanctions based on his viola-
7523 RENO AIR RACING ASS’N v. MCCORD

-- 2 of 26 --

tion of an ex parte temporary restraining order (“TRO”)
issued the same day the complaint was filed.
This appeal highlights the sometimes routine fashion in
which TROs are issued to unsuspecting parties, who, lacking
fair notice of the prohibited conduct, may unwittingly invite
a contempt citation. We conclude that the TRO was improvi-
dently issued because it failed to comport with the notice and
specificity provisions of Federal Rule of Civil Procedure 65
(“Rule 65”). Consequently, we vacate and reverse the district
court’s contempt finding and imposition of sanctions. We
affirm the district court’s findings and judgment with respect
to trademark infringement.
BACKGROUND
Since 1964, Reno Air has operated the National Champion-
ship Air Races, an annual air show at the Reno/Stead Airport
in Nevada. The show features airplanes that race around pylons1
for cash prizes and stunt aircraft that perform acrobatic
maneuvers. Each year, approximately 80,000 to 90,000 peo-
ple attend the event, which generates millions of dollars of
revenue. Reno Air extensively advertises and promotes the
event through a variety of print and electronic media, refer-
ring to it both as “Reno Air Races” and “National Champion-
ship Air Races.”
Since commencement of the races in 1964, Reno Air has
used a logo featuring a checkered pylon with two airplanes
circling it (“pylon logo”) to identify the event and merchan-
dise promoting the event. Reno Air is the registered owner of
two federal trademarks,2 numbers 1,322,146 and 1,371,797,
1A “pylon” is defined as a “post or tower marking a prescribed course
of flight for an airplane.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 952
(10th ed. 1993).
2A “trademark” is “any word, name, symbol, or device, or any combina-
tion thereof” used by a person to “identify and distinguish his or her goods
. . . from those manufactured or sold by others and to indicate the source
of the goods, even if that source is unknown.” 15 U.S.C. § 1127.
7524 RENO AIR RACING ASS’N v. MCCORD

-- 3 of 26 --

for the “pylon logo;” the marks are identical, although one is
a trademark and the other a service mark. The marks have
been registered with the United States Patent and Trademark
Office since 1985 and have acquired incontestable status.3
The trademark registrations are in four classes that include
entertainment services, printed materials, cloth patches, caps
and t-shirts. Through special licensing agreements, Reno Air
permits vendors situated inside the gates of the show to sell
merchandise bearing the trademarks.
McCord owns Western Sales Distributing Company, a sole
proprietorship. Between 1999 and 2002, McCord sold mer-
chandise, including t-shirts, caps and mugs, depicting the term
“Reno Air Races” and artwork containing images of at least
one airplane and a pylon, from booths located just outside of
the gates of the air races. In 1999, McCord sold approxi-
mately $4,433 worth of such merchandise; in 2000, he sold
$10,152; in 2001, $3,174; and in 2002, $9,152.
Sometime in 2000, McCord received a letter and telephone
call from Reno Air’s attorney, who objected to McCord’s sale
of merchandise at the air races. The following year, a repre-
sentative from Reno Air advised McCord that his sale of such
merchandise violated Reno Air’s rights. The district court
noted that Reno Air was unable to produce a copy of the letter
sent to McCord in 2000 and that the testimony was also vague
on exactly how clearly Reno Air expressed its objections to
McCord’s sale of the merchandise prior to this litigation.
On September 13, 2002, Reno Air filed a complaint in the
District of Nevada, alleging McCord’s infringement of the
federally registered “pylon logo” mark in violation of 15
U.S.C. § 1114(1)(a) and infringement of the unregistered
“Reno Air Races” mark in violation of 15 U.S.C. § 1125(a).
3A federally registered trademark may become statutorily “incontest-
able” if it has been in “continuous use for five consecutive years subse-
quent to the date of such registration.” 15 U.S.C. § 1065.
7525 RENO AIR RACING ASS’N v. MCCORD

-- 4 of 26 --

That same day, Reno Air also filed an ex parte application for
a TRO pursuant to Rule 65(b) and a motion for a preliminary
injunction. Reno Air’s TRO application stated that notice to
McCord was unnecessary because “of the immediate and
irreparable harm that will occur if the restraining order is not
immediately issued . . . and because of the significant risk that
[McCord] may leave the Reno/Stead Airport area and destroy
or conceal [his] infringing merchandise once [he] receive[s]
notice of the lawsuit.”
The district court granted the application after a telephonic
hearing, and issued an ex parte TRO that prohibited McCord
from engaging in the following activities:
(1) making, manufacturing, using, distributing,
shipping, licensing, selling, developing, displaying,
delivering, advertising and/or otherwise marketing or
disposing of any goods, packaging or any other
items which bear the trademarks set forth in Exhibit
F to Mr. Houghton’s declaration, or any confusingly
similar variations thereof;
(2) disposing of, destroying, moving, relocating or
transferring any and all goods and other items . . .
bearing the trademarks set forth in Exhibit F to Mr.
Houghton’s declaration, or any confusingly similar
variations thereof;
(3) disposing of, destroying, moving, relocating or
transferring any means for making products having
the trademarks set forth in Exhibit F to Mr. Hough-
ton’s declaration, or any confusingly similar varia-
tions thereof . . . ;
(4) disposing of, destroying, moving, relocating or
transferring any documents pertaining to the cre-
ation, development . . . of items bearing the trade-
marks set forth in Exhibit F to Mr. Houghton’s
7526 RENO AIR RACING ASS’N v. MCCORD

-- 5 of 26 --

declaration, or any marks confusingly similar
thereto.
“Exhibit F,” to which the TRO referred extensively, contained
a picture of a t-shirt design sold by McCord that depicted a
stylized image of two airplanes and a checkered pylon, with
the words “Reno Air Races” underneath.
Reno Air served McCord with the TRO late in the after-
noon on September 13, 2002, the Friday of the air races week-
end. McCord was outside the gates of the show when he was
served and was packing up for the day. He did not read the
TRO until later that evening and over the weekend had diffi-
culty locating an attorney with whom he could consult about
the meaning of the injunction. Even after the weekend, find-
ing an attorney in the Reno area who did had not have a con-
flict of interest as a result of a prior relationship with Reno
Air was not easy. McCord finally located an attorney in Car-
son City, Nevada.
As of Saturday, September 14, 2002, McCord stopped sell-
ing t-shirts containing the exact design pictured in Exhibit F.
McCord continued to sell merchandise containing the term
“Reno Air Races” and depicting a pylon and airplanes until
the end of the air show on Sunday, September 15, 2002.
In April 2003, more than six months after the show closed,
Reno Air filed a motion for contempt and claimed that
McCord violated the TRO. The district court denied this
application without prejudice to its renewal at trial. A two-day
bench trial was held in February 2004. The district court
entered a final judgment in April 2004.
The district court found that McCord infringed “Reno Air
Races” and the “pylon logo,” which were protectable marks
under the Lanham Act. The district court awarded Reno Air
$6,727 in damages arising from the sale of infringing mer-
chandise and permanently enjoined McCord from “making,
7527 RENO AIR RACING ASS’N v. MCCORD

-- 6 of 26 --

manufacturing, [or] distributing . . . any goods, packaging or
any other items which bear the Marks, or any confusingly
similar variations thereof.”4 The district court also found
McCord in civil contempt for continuing to sell infringing
merchandise after being served with the TRO on September
13, 2002. The district court imposed contempt sanctions in an
amount equal to Reno Air’s reasonable attorneys’ fees and
costs in connection with the TRO and contempt motion.
ANALYSIS
I. CONTEMPT
“We review for abuse of discretion the district court’s civil
contempt order, including the decision to impose sanctions.”
Hook v. Arizona Dep’t of Corrections, 107 F.3d 1397, 1403
(9th Cir. 1997). “[W]e will not reverse unless we have a defi-
nite and firm conviction that the district court committed a
clear error of judgment after weighing the relevant factors.”
In re Dual-Deck Video Cassette Recorder Antitrust Litig., 10
F.3d 693, 695 (9th Cir. 1993).
“Civil contempt in this context consists of a party’s disobe-
dience to a specific and definite court order by failure to take
all reasonable steps within the party’s power to comply.” Id.5
4The district court declined to award attorneys’ fees under 15 U.S.C.
§ 1117(a), which provides that “[t]he court in exceptional cases may
award reasonable attorney fees to the prevailing party.” The district court
reasoned that the evidence did not justify a finding that this was an “ex-
ceptional case” under § 1117(a)—i.e., a case in which the infringement
was “willful, deliberate, knowing or malicious.” Earthquake Sound Corp.
v. Bumper Indus., 352 F.3d 1210, 1217 (9th Cir. 2003).
5McCord’s contention that the district court wrongly characterized the
contempt as “civil” rather than “criminal” is without merit. Where the pur-
pose of contempt is “remedial, i.e. to compensate for the costs of the con-
temptuous conduct or to coerce future compliance with the court’s order,
the contempt order is civil.” Portland Feminist Women’s Health Ctr. v.
Advocates for Life, Inc., 877 F.2d 787, 790 (9th Cir. 1989). In awarding
7528 RENO AIR RACING ASS’N v. MCCORD

-- 7 of 26 --

The contempt “ ‘need not be willful,’ ” id. (quoting In re
Crystal Palace Gambling Hall, Inc., 817 F.2d 1361, 1365 (9th
Cir. 1987)); however, a person should not be held in contempt
if his action “appears to be based on a good faith and reason-
able interpretation of the court’s order.” Id. (internal quota-
tions and citations omitted).
A. EX PARTE PROCEEDING
We consider first whether the TRO was properly granted ex
parte without notice. Rule 65(b) provides, in relevant part:
A [TRO] may be granted without written or oral
notice to the adverse party . . . only if (1) it clearly
appears . . . that immediate and irreparable injury,
loss, or damage will result to the applicant before the
adverse party or that party’s attorney can be heard in
opposition, and (2) the applicant’s attorney certifies
to the court in writing the efforts, if any, which have
been made to give the notice and the reasons sup-
porting the claim that notice should not be required.
Every [TRO] granted without notice shall . . . define
the injury and state why it is irreparable and why the
order was granted without notice.
Fed. R. Civ. P. 65(b) (emphasis added). In Granny Goose
Foods, Inc. v. Teamsters, 415 U.S. 423 (1974), the Supreme
Court explained that circumstances justifying the issuance of
an ex parte order are extremely limited:
Reno Air reasonable attorneys’ fees and costs associated with the TRO
and the contempt motion, the district court noted that such sanctions were
“appropriate to compensate the plaintiff for any losses sustained . . . .”
Thus, the purpose was remedial, and the district court properly denomi-
nated the contempt as “civil.” Id. (explaining that where the sanction for
contempt was liability for costs associated with the contempt motion,
including reasonable attorneys’ fees, the sanction was “remedial,” and
contempt was properly characterized as civil).
7529 RENO AIR RACING ASS’N v. MCCORD

-- 8 of 26 --

The stringent restrictions imposed . . . by Rule 65 on
the availability of ex parte temporary restraining
orders reflect the fact that our entire jurisprudence
runs counter to the notion of court action taken
before reasonable notice and an opportunity to be
heard has been granted both sides of a dispute. Ex
parte temporary restraining orders are no doubt nec-
essary in certain circumstances, but under federal
law they should be restricted to serving their under-
lying purpose of preserving the status quo and pre-
venting irreparable harm just so long as is necessary
to hold a hearing, and no longer.
Id. at 438-39 (internal citation omitted).
[1] Consistent with this overriding concern, courts have
recognized very few circumstances justifying the issuance of
an ex parte TRO. For example, an ex parte TRO may be
appropriate “where notice to the adverse party is impossible
either because the identity of the adverse party is unknown or
because a known party cannot be located in time for a hear-
ing.” Am. Can Co. v. Mansukhani, 742 F.2d 314, 322 (7th Cir.
1984). Obviously, this exception is inapplicable as Reno Air
knew exactly where McCord was—outside of the air show
gates—and thus, never suggested that McCord could not be
found or that notice would have been, in any way, “impossi-
ble.”
[2] In cases where notice could have been given to the
adverse party, courts have recognized “a very narrow band of
cases in which ex parte orders are proper because notice to the
defendant would render fruitless the further prosecution of the
action.” Am. Can Co., 742 F.2d at 322. In the trademark
arena, such cases include situations where an alleged infringer
is likely to dispose of the infringing goods before the hearing.
See In the Matter of Vuitton et Fils S.A., 606 F.2d 1, 5 (2d Cir.
1979) (“Vuitton”). To justify an ex parte proceeding on this
latter ground, “the applicant must do more than assert that the
7530 RENO AIR RACING ASS’N v. MCCORD

-- 9 of 26 --

adverse party would dispose of evidence if given notice.”
First Tech. Safety Sys., Inc. v. Depinet, 11 F.3d 641, 650 (6th
Cir. 1993). “[P]laintiffs must show that defendants would
have disregarded a direct court order and disposed of the
goods within the time it would take for a hearing . . . [and]
must support such assertions by showing that the adverse
party has a history of disposing of evidence or violating court
orders or that persons similar to the adverse party have such
a history.” Id. at 650-51; see also Vuitton, 606 F.2d at 4-5.
For example, in Vuitton, the company explained the need
for an ex parte order by pointing to its experience in eighty-
four previous actions against counterfeiters, where Vuitton’s
litigation efforts were foiled because a counterfeiter, after
receiving notice of an impending injunction, and before the
court could hold a hearing, transferred its inventories to other
members of “closely-knit distribution networks.” 606 F.2d at
2. The Second Circuit held Vuitton’s showing to be sufficient
to justify issuance of an order “narrow in scope and brief in
its duration.” Id. at 5. Notably, all Vuitton’s TRO sought to
do was “for a few hours . . . to maintain the status quo,
namely the defendants’ inventory of counterfeit Vuitton mer-
chandise.” Id. at 3.
[3] Reno Air’s TRO application and supporting evidence
can be described as thin and barebones at best. The applica-
tion stated that the TRO “must issue without notice . . .
because of the significant risk that Defendant may leave the
Reno/Stead Airport area and destroy or conceal [his] infring-
ing merchandise once [he] receive[s] notice of the lawsuit.”
The only “evidence” offered to support this assertion was a
declaration from Reno Air’s counsel that “[i]n [his] experi-
ence, this is a common occurrence when dealing with infring-
ers at one time famous events such as the ‘Reno Air Races’
and it is well-recognized in the case law.” This conclusory
statement from counsel hardly qualified as evidence and cer-
tainly did not link the TRO application to McCord. McCord
was no stranger to Reno Air. Curiously, Reno Air did not
7531 RENO AIR RACING ASS’N v. MCCORD

-- 10 of 26 --

advise the court of its prior dealings with McCord regarding
purported trademark infringement. Nor did the company
acknowledge that it had done nothing to enforce its rights fol-
lowing the earlier contacts. Finally, Reno Air offered no sup-
port that there was a “significant risk” that McCord, who had
been working in the Reno area for many years, “may leave the
Reno/Stead Airport area.” Were a single conclusory statement
by counsel about infringers sufficient to meet the dictates of
Rule 65, then ex parte orders without notice would be the
norm and this practice would essentially gut Rule 65’s notice
requirements.
B. SPECIFICITY REQUIREMENT
[4] The TRO was also deficient for lack of specificity. Rule
65(d) requires that any injunction or restraining order be “spe-
cific in terms” and describe “in reasonable detail, and not by
reference to the complaint or other document, the act or acts
sought to be restrained.” Fed. R. Civ. P. 65(d). “If an injunc-
tion does not clearly describe prohibited or required conduct,
it is not enforceable by contempt.” Gates v. Shinn, 98 F.3d
463, 468 (9th Cir. 1996). As the Supreme Court explained in
Int’l Longshoremen’s Ass’n. v. Philadelphia Marine Trade
Ass’n, 389 U.S. 64 (1967):
The judicial contempt power is a potent weapon.
When it is founded upon a decree too vague to be
understood, it can be a deadly one. Congress
responded to that danger by requiring that a federal
court frame its orders so that those who must obey
them will know what the court intends to require and
what it means to forbid.
Id. at 76; see also Schmidt v. Lessard, 414 U.S. 473, 476
(1974) (“[T]he specificity provisions of Rule 65(d) are no
mere technical requirements. The Rule was designed to pre-
vent uncertainty and confusion on the part of those faced with
injunctive orders, and to avoid the possible founding of a con-
7532 RENO AIR RACING ASS’N v. MCCORD

-- 11 of 26 --

tempt citation on a decree too vague to be understood.”).
Thus, we look to the language of the TRO to determine if it
provided McCord with fair and well-defined notice of the pro-
hibited conduct. Here, the TRO fell short.
[5] The TRO enjoined McCord from making, distributing
or disposing of “items which bear the trademarks set forth in
Exhibit F to Mr. Houghton’s declaration, or any confusingly
similar variations thereof.” McCord suggests that the TRO’s
reference to an outside document—Exhibit F—automatically
violated Rule 65(d). Although a number of our sister circuits
read the “no reference” requirement strictly,6 we have permit-
ted incorporation by reference in certain limited scenarios, for
example, where the referenced document is “physically
attached to the [order] itself.” State of California v. Campbell,
138 F.3d 772, 783 (9th Cir. 1998); Henry Hope X-Ray Prods.,
Inc. v. Marron Carrel, Inc., 674 F.2d 1336, 1343 (9th Cir.
1982) (holding that the district court did not err in attaching
a confidential appendix to its order that set out the prohibited
acts); see also Davis v. San Francisco, 890 F.2d 1438, 1450
(9th Cir. 1989) (permitting reference to fire department rules
“already binding upon the officers” and where “[i]t is unlikely
the officers could argue they were unaware of these rules”).
[6] Here, the district court noted that Exhibit F was “made
a part of the [TRO] and provided to McCord at the time that
the order was served on him.” Thus, while ordinarily the TRO
should not incorporate by reference another document, see
Henry Hope, 674 F.2d at 1343, the reference to the attached
Exhibit F does not, in and of itself, invalidate the contempt
finding. We emphasize, however, that incorporation by refer-
6See e.g., H.K. Porter Co. v. Nat’l Friction Prods. Corp., 568 F.2d 24,
27 (7th Cir. 1977) (holding that incorporation by reference was a “serious
and decisive” error that precluded a finding of contempt); Consumers Gas
& Oil, Inc. v. Farmland Indus., Inc., 84 F.3d 367, 371 (10th Cir. 1996)
(strictly construing the “no-reference” requirement of Rule 65(d)); Seattle-
First Nat’l. Bank v. Manges, 900 F.2d 795, 799-800 (5th Cir. 1990)
(same); Thomas v. Brock, 810 F.2d 448, 450 (4th Cir. 1987) (same).
7533 RENO AIR RACING ASS’N v. MCCORD

-- 12 of 26 --

ence should be the rare exception rather than the rule, and dis-
trict courts should be particularly cautious where the
injunctive order is issued at the outset of litigation, before the
receiving party has acquired a context for understanding the
referenced document and the subject matter of the dispute.
The language of Rule 65 is exacting and we underscore that
the narrow exceptions do not merit expansion, and certainly
not in this case.
[7] More problematic in this case is the fact that neither the
TRO nor Exhibit F clearly identified and described the “trade-
marks” at issue. The operative language of the TRO did not
reference the trademark registrations and curiously did not
describe the marks themselves.7 The referenced attachment,
Exhibit F, simply contained a copy of a t-shirt design sold by
McCord. The t-shirt included the terms “Reno Air Races,”
“Reno, Nevada,” “USA,” “2002,” and a picture of two air-
planes positioned to the left of a checkered pylon. Nothing in
Exhibit F identified what trademarks were contained in
Exhibit F. Looking at this t-shirt design, one is hard pressed
to know what trademarks are referenced in the order, whether
the “trademarks” invoked in the TRO referred to the t-shirt,
the design as a whole, the phrase “Reno Air Races,” all of the
words depicted, the checkered pylon, one or more airplanes,
the pylon plus one or more airplanes, or some other combina-
tion.
[8] In addition to the unexplained “trademarks,” McCord
points to the ambiguity of the phrase “confusingly similar
variations thereof.” If a reader of the TRO were left in the
dark about what trademarks were covered, then surely
bootstrapping the order to include “confusingly similar varia-
7Although the paragraph relating to the show cause order referred gen-
erally to “the ‘pylon logo’ or ‘Reno Air Races’ trademarks,” it did not ref-
erence the registrations, photographs or clarifying information that
described the actual trademarks at issue. The operative paragraphs of the
TRO did not even reach this level of identification.
7534 RENO AIR RACING ASS’N v. MCCORD

-- 13 of 26 --

tions thereof” would leave the reader’s head spinning with
more confusion. “Variations of what?” one might ask.
Because the underlying order failed to identify the trademarks
with sufficient specificity, the order was hardly enforceable as
to the “variations thereof” language.
Ultimately, there are no magic words that automatically run
afoul of Rule 65(d), and the inquiry is context-specific. “[T]he
fair notice requirement of Rule 65(d) must be applied ‘in the
light of the circumstances surrounding [the order’s] entry.’ ”
Common Cause v. Nuclear Reg. Comm’n, 674 F.2d 921, 927
(D.C. Cir. 1982) (quoting United States v. Christie Indus.,
Inc., 465 F.2d 1000, 1007 (3d Cir. 1972)). This case not only
points out the pitfall of incorporating documents by reference
in a TRO but also the hazard of failing to identify with partic-
ularity the enjoined conduct in conjunction with specific iden-
tification and description of the trademarks. The recipient of
a TRO, which usually takes effect immediately, should not be
left guessing as to what conduct is enjoined. The benchmark
for clarity and fair notice is not lawyers and judges, who are
schooled in the nuances of trademark law. The “specific
terms” and “reasonable detail” mandated by Rule 65(d)
should be understood by the lay person, who is the target of
the injunction. This is a circumstance, among many in the
legal field, that cries out for “plain English.”
[9] Here, the TRO was issued the same day the action com-
menced, and the parties had no prior litigation history.
Although they had engaged in limited communications, Reno
Air could not even find the letter it purportedly sent to
McCord. Given this backdrop and the failure of the TRO (and
Exhibit F) to clearly identify the trademarks at issue, the
TRO’s prohibition—i.e. enjoining infringement of “the trade-
marks set forth in Exhibit F . . . or any confusingly similar
variations thereof”—would certainly have left a lay person
scratching his head in confusion. The TRO failed to meet
even the most minimal fair notice requirement.
7535 RENO AIR RACING ASS’N v. MCCORD

-- 14 of 26 --

[10] As the TRO was improperly issued ex parte and failed
to describe the prohibited conduct with specificity, the order
cannot serve as the foundation for a finding of civil contempt.8
We vacate and reverse the part of the district court’s order
finding McCord in contempt for violating the TRO and
imposing contempt sanctions.
II. TRADEMARK INFRINGEMENT
[11] A claim of trademark infringement under § 1114(1)(a)
of the Lanham Act requires a trademark holder to demon-
strate: (1) ownership of a valid mark (i.e., a protectable inter-
est), and (2) that the alleged infringer’s use of the mark “ ‘is
likely to cause confusion, or to cause mistake, or to deceive’ ”
consumers. KP Permanent Make-Up, Inc. v. Lasting Impres-
sion I, Inc., 408 F.3d 596, 602 (9th Cir. 2005) (quoting 15
U.S.C. § 1114(1)(a)), on remand from 543 U.S. 111 (2004).
Although the district court determined that McCord
infringed both the “pylon logo” and the “Reno Air Races”
marks, McCord only challenges the district court’s findings
with respect to the “pylon logo.” It is undisputed that the
“pylon logo” is a registered mark that has become incontest-
able. “The incontestability provisions of the Lanham Act were
designed to provide a means for a trademark holder to ‘quiet
title in the ownership of his mark.’ ” Id. at 603 (quoting Park
‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198
(1985)). An incontestable registration is “conclusive evidence
of the validity of the registered mark.” 15 U.S.C. § 1115(b).
A. GENERICNESS AND DESCRIPTIVENESS
On appeal, McCord essentially concedes that Reno Air has
an exclusive right to its “unique composite mark”—i.e. the
registered “pylon logo.” McCord even goes beyond this con-
8We do not need to reach McCord’s remaining arguments challenging
the district court’s contempt finding and imposition of sanctions.
7536 RENO AIR RACING ASS’N v. MCCORD

-- 15 of 26 --

cession to suggest that Reno Air has an exclusive right to the
distinctive “Eiffel-tower”-like pylon depiction in its registered
mark. The pylon trademark contains not only a stylized
checkered pylon, but an artistic rendition of two airplane sil-
houettes that encircle it and lines representing the airplanes’
respective paths around the pylon. In effect, in the face of
these concessions, what McCord really asks from us is a pro-
phylactic declaration that pylons in general are generic and
that he can use some form of a pylon with impunity. Although
we are not unsympathetic to his effort to cabin a safe harbor
regarding future use, we are not in the business of providing
such advisory opinions, and to the extent that McCord’s
future depictions are challenged by Reno Air, it is for the dis-
trict court to determine in the first instance whether trademark
infringement has occurred.
[12] To be sure, even an incontestible mark is subject to
challenge as generic. “Generic marks are not capable of
receiving protection because they identify the product, rather
than the product’s source,” KP Permanent, 408 F.3d at 602,
and “a registered mark may be canceled at any time on the
grounds that it has become generic.” Park ‘N Fly, 469 U.S.
at 194. However, registered marks are endowed with a strong
presumption of validity, and a defendant has the burden of
showing genericness by a preponderance of the evidence. Yel-
low Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc.,
419 F.3d 925, 928 (9th Cir. 2005).
[13] Even construing McCord’s pleadings liberally as
asserting the argument that the genericness inquiry should
focus on the checkered pylon as the “most salient feature” of
the pylon logo, KP Permanent, 408 F.3d at 604, no single fea-
ture of the incontestable logo mark—e.g., the checkered pylon
or the two airplane silhouettes circling around it with lines
representing their trails—merits such an exclusive focus.
Thus, the district court correctly focused its validity inquiry
on the trademark as a whole and appropriately concluded that
McCord failed to meet his burden of showing that the regis-
7537 RENO AIR RACING ASS’N v. MCCORD

-- 16 of 26 --

tered pylon logo had become generic. See California Cooler,
Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir.
1985) (“[T]he validity of a trademark is to be determined by
viewing the trademark as a whole. . . . [T]he composite may
become a distinguishing mark even though its components
individually cannot”).
McCord’s position that the “pylon logo” is an invalid
descriptive mark that has not acquired secondary meaning is
foreclosed by hornbook trademark law. “[A] defendant in a
trademark infringement action cannot assert that an incontest-
able mark is invalid because it is descriptive and lacks sec-
ondary meaning.” KP Permanent, 408 F.3d at 606; see Park
‘N Fly, 469 U.S. at 196 (holding that unlike genericness,
“[m]ere descriptiveness is not recognized . . . as a basis for
challenging an incontestable mark”).
B. LIKELIHOOD OF CONFUSION
[14] The core element of trademark infringement is
whether customers are likely to be confused about the source
or sponsorship of the products. Interstellar Starship Services,
Ltd. v. Epix, Inc., 304 F.3d 936, 941 (9th Cir. 2002). We
review the district court’s determination of likelihood of con-
fusion for clear error. GoTo.com, Inc. v. Walt Disney Co., 202
F.3d 1199, 1204 (9th Cir. 2000). “If the district court’s
account of the evidence is plausible in light of the record
viewed in its entirety, we may not reverse even though . . . as
the trier of fact, we would have weighed the evidence differ-
ently.” Interstellar, 304 F.3d at 941.
An eight-factor test—the so-called Sleekcraft factors—
guides the assessment of whether a “likelihood of confusion”
exists. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49
(9th Cir. 1979).9 The district court applied the eight-factor
9“Those factors are: (1) the strength of the mark; (2) proximity or relat-
edness of the goods; (3) the similarity of the marks; (4) evidence of actual
7538 RENO AIR RACING ASS’N v. MCCORD

-- 17 of 26 --

Sleekcraft test to the “pylon logo” and “Reno Air Races”
marks and made explicit findings based on the evidence at
trial, including the following: (1) Reno Air’s trademarks were
“strong” and it had “expended substantial sums of money and
effort in advertising and promoting;” (2) McCord sold sub-
stantially similar merchandise in “extremely close proximity
to the Reno Air Races”—i.e., McCord’s booths were “directly
outside the gate;” (3) McCord’s merchandise contained sub-
stantially similar marks with an “airplane pylon motif and the
use of words ‘Reno Air Races’ prominently displayed;” (4) “a
number of customers asked whether the defendant was selling
official merchandise, indicating that there was confusion as to
whether or not the defendant was affiliated with the Reno Air
Races event as an authorized sponsor;” (5) “customers [did]
not exercise a great deal of care in selecting t-shirts and other
merchandise which is relatively inexpensive;” (6) McCord
intended to “trade off plaintiff’s goodwill;” and (7) there was
a “strong possibility” that McCord would expand his business
because he testified that “he hoped to expand his services and
operations.” Based on these findings, the district court con-
cluded that McCord’s use of the marks was likely to confuse
the public as to the source of the goods.
McCord does not challenge the district court’s finding of
infringement with respect to the “Reno Air Races” mark. As
to the “pylon logo,” he challenges the district court’s findings
with respect to a single factor—the “similarity of the marks.”
He argues that the district court erred because the airplane/
pylon motif used in his merchandise does not resemble Reno
Air’s “pylon logo.” In his brief, McCord summarizes this
argument as follows: “Now Appellate court, please compare
these two. They don’t look anything alike, do they?”
confusion; (5) the marketing channels used; (6) the degree of care custom-
ers are likely to exercise in purchasing the goods; (7) the defendant’s
intent in selecting the mark; and (8) the likelihood of expansion into other
markets.” KP Permanent, 408 F.3d at 608. “[N]ot all of the factors are of
equal importance or applicable in every case.” Id.
7539 RENO AIR RACING ASS’N v. MCCORD

-- 18 of 26 --

We note at the outset that “the legal question is not whether
the marks look similar to us but whether they look similar to
ordinary consumers” of the products, and it is the district
court that “heard testimony on that subject and received evi-
dence of actual confusion.” Scandia Down Corp. v. Euroquilt,
Inc., 772 F.2d 1423, 1428-29 (7th Cir. 1985). “Our job as an
appellate court is not to reweigh the evidence.” Levi Strauss
& Co. v. Blue Bell, Inc., 778 F.2d 1352, 1360 (9th Cir. 1985)
(en banc). Thus, we reject McCord’s argument that we should
apply de novo review to the district court’s findings because
we are in as a good a position as the trial court to compare
McCord’s designs to Reno Air’s trademark. See id. at 1355
(explaining that de novo review of likelihood of confusion
“would demand a significant diversion of appellate court
resources to a task which more properly belongs to the district
court judge”).
The district court’s findings are detailed and reference evi-
dence not only of actual consumer confusion but of the practi-
cal, real world effect of McCord selling unofficial Reno Air
Races merchandise directly outside the gates of the air show.
In addition, to the extent that McCord’s merchandise included
a depiction of the airplane/pylon motif, that design did not
appear alone but was accompanied by the “Reno Air Races”
mark or some combination of the terms “Reno” and “Air
Races.”
When viewed in isolation, it is true that there is no identical
resemblance between the airplane/pylon motif in McCord’s
designs and Reno Air’s registered “pylon logo.” For example,
the airplanes in McCord’s design contain greater detail than
the plane silhouettes in the “pylon logo,” and unlike the
“pylon logo,” the pylon in McCord’s design has a flag above
it and is not centered between the planes. However, similarity
of the marks is but one factor in the Sleekcraft test, albeit an
important one, and a court does not consider the similarity of
the marks in the abstract, but rather “in light of the way the
marks are encountered in the marketplace and the circum-
7540 RENO AIR RACING ASS’N v. MCCORD

-- 19 of 26 --

stances surrounding the purchase.” Lindy Pen Co. v. Bic Pen
Corp., 725 F.2d 1240, 1245 (9th Cir. 1984).
[15] The confusing similarity arose from the fact that
McCord sold merchandise featuring the airplane/pylon motif
alongside the terms “Reno Air Races,” outside the gates of the
air show, in close proximity to the sale of official merchan-
dise. Considering the airplane/pylon depictions in the context
in which they appeared to ordinary consumers in the market-
place, and “[w]eighing the marks’ similarities more heavily
than their differences,” Rodeo Collection, Ltd. v. West Sev-
enth, 812 F.2d 1215, 1219 (9th Cir. 1987), the district court
did not clearly err in finding substantial similarity. McCord
does not dispute the district court’s remaining factual findings
with respect to likelihood of confusion, including evidence of
actual consumer confusion, which we have emphasized “is
strong evidence that future confusion is likely. . . .” Official
Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1393 (9th Cir.
1993). Finally, it bears noting that McCord’s acknowledg-
ment that he has no right to use the “Reno Air Races” mark
should, standing alone, take the air out of his argument that
his composite designs pass muster. The district court
employed a comprehensive likelihood of confusion analysis
and its findings were not clearly erroneous.
C. PERMANENT INJUNCTION
In addition to an award of damages, the district court per-
manently enjoined McCord from selling items “which bear
the Marks [i.e., the ‘pylon logo’ and ‘Reno Air Races’ trade-
marks], or any confusingly similar variations thereof.”10 15
U.S.C. § 1116(a) vests the district court with the “power to
10In its entirely, the permanent injunction language reads:
[Reno Air] shall be entitled to a permanent injunction against
defendant McCord, enjoining him, his officers, directors, ser-
vants, employees, attorneys, agents, representatives, and all per-
sons in active concert or participation with him, from making,
manufacturing, using, distributing, shipping, licensing, selling,
developing, displaying, delivering, advertising, and/or otherwise
marketing or disposing of any goods, packaging, or any other
items which bear the Marks, or any confusingly similar variations
thereof.
7541 RENO AIR RACING ASS’N v. MCCORD

-- 20 of 26 --

grant injunctions according to principles of equity and upon
such terms as the court may deem reasonable, to prevent the
violation of any right” of the trademark owner. The Supreme
Court recently reiterated that district courts should apply “tra-
ditional equitable principles” in deciding whether to grant per-
manent injunctive relief, eBay Inc. v. MercExchange, L.L.C.,
___ U.S. ___ , 126 S. Ct. 1837, 1840 (2006),11 and the deci-
sion is “an act of equitable discretion by the district court,
reviewable on appeal for abuse of discretion.” Id. at 1839.
[16] McCord does not point to any error in the district
court’s assessment or application of traditional equitable prin-
ciples. Instead, McCord challenges the permanent injunction
on the ground that he cannot be enjoined from being able to
depict “any and all visualizations of a checkered pylon.”
McCord overreads the injunction language. Significantly, the
injunction only enjoined him from infringing on Reno Air’s
“Marks”—defined by the district court as “the ‘pylon logo’
and ‘Reno Air Races’ trademarks and service marks”—and
“any confusingly similar variations thereof.”12 McCord
emphasizes that his argument is pylon-specific and that he has
never suggested that the district court erred when it enjoined
him from depicting a checkered pylon circled by two air-
planes.
11According to these equitable principles, a plaintiff seeking a perma-
nent injunction must demonstrate:
(1) that it has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the balance of
hardships between the plaintiff and defendant, a remedy in equity
is warranted; and (4) that the public interest would not be dis-
served by a permanent injunction.
Id. at 1839.
12McCord does not raise a specificity challenge to the permanent injunc-
tion. Unlike the TRO, the district court’s Final Judgment, which contains
the permanent injunction language, specified the marks at issue.
7542 RENO AIR RACING ASS’N v. MCCORD

-- 21 of 26 --

Like the genericness challenge, McCord’s objection to the
permanent injunction is really an attempt to solicit our assur-
ance that he can depict “any and all checkered pylons” in the
future. In support of that claim he points to record evidence
that the notion of a pylon is generic and universal. As with his
trademark challenge, we decline to provide such prophylactic
assurances or to address trademark infringement in the
abstract. The district court determined that McCord infringed
the specific “pylon logo” and “Reno Air Races” marks, his
continued use posed a strong likelihood of confusion, and
Reno Air’s remedy at law was inadequate to compensate for
the injury. We conclude that the district court did not abuse
its discretion in granting permanent injunctive relief with
respect to those marks.
III. LACHES
McCord agues that the district court should have applied
the equitable defense of laches to bar Reno Air’s claims of
trademark infringement with respect to the “Reno Air Races”
mark and the “pylon logo.” “Laches is an equitable time limi-
tation on a party’s right to bring suit . . . [and] is a valid
defense to Lanham Act claims.” Jarrow Formulas, Inc. v.
Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002) (inter-
nal quotations and citations omitted). Although the district
court did not make express findings with respect to McCord’s
laches defense, it specifically denied “each” of McCord’s
defenses. Thus, we may assume that the district court rejected
the laches defense.13 Clamp Mfg. Co. v. Enco Mfg. Co., 870
F.2d 512, 515 (9th Cir. 1989). We review this decision for an
abuse of discretion. In re Beaty, 306 F.3d 914, 921 (9th Cir.
2002) (clarifying that the appropriate standard of review for
laches determinations is abuse of discretion).
13Reno Air incorrectly asserts that the “first time McCord raised laches
was in his Post-Trial Brief on Willful Infringement.” Because McCord
explicitly raised the issue in several pre-trial submissions, including his
“First Amended Answer” and in his pre-trial “Proposed Findings of Fact
and Conclusions of Law,” we address the merits of this issue.
7543 RENO AIR RACING ASS’N v. MCCORD

-- 22 of 26 --

Laches bars trademark infringement claims “only where the
trademark holder knowingly allowed the infringing mark to
be used without objection for a lengthy period of time.”
Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174
F.3d 1036, 1061 (9th Cir. 1999). “While laches and the statute
of limitations are distinct defenses . . . [i]f the plaintiff filed
suit within the analogous limitations period, the strong pre-
sumption is that laches is inapplicable.” Jarrow, 304 F.3d at
835. If the plaintiff filed suit outside this analogous period,
“courts have often presumed that laches is applicable.” Id. at
836. Because the Lanham Act contains no explicit statute of
limitation, courts “borrow” the analogous state time period,
id., which the parties here agree is three years under Nevada’s
fraud or “catchall” statutes of limitation. Nev. Rev. Stat.
§ 11.190(3).
“In determining the presumption for laches, the limitations
period runs from the time the plaintiff knew or should have
known about his . . . cause of action.” Jarrow, 304 F.3d at
838. “This principle is grounded in the fact that laches penal-
izes inexcusable dilatory behavior; if the plaintiff legitimately
was unaware of the defendant’s conduct, laches is no bar to
suit.” Id. In addition “[a] party asserting laches must show
that it suffered prejudice as a result of the plaintiff’s unreason-
able delay in filing suit.” Id. at 835.
There is no evidence that Reno Air knew of McCord’s
infringement before 2000. In 2000, Reno Air attempted to
contact McCord to object to his sale of merchandise outside
of the air show. Although McCord argues that Reno Air
should have known of his infringing activities from 1990 to
1999 because he sold similar merchandise to certain retail
outlets in the Reno area, the record demonstrates a mere hand-
ful of limited sales (i.e., less than a hundred t-shirts) during
this period and no evidence of knowledge by Reno Air. Per-
haps the earliest that Reno Air should have known about
McCord’s infringing conduct was in 1999, the year that
7544 RENO AIR RACING ASS’N v. MCCORD

-- 23 of 26 --

McCord began selling merchandise outside the gates of the air
show.
[17] Reno Air brought suit in 2002, within three years of
when it knew or reasonably should have known of McCord’s
infringing conduct; thus, the “strong presumption is that
laches is inapplicable.” Id. McCord has not demonstrated
prejudice sufficient to overcome this strong presumption. See
Shouse v. Pierce County, 559 F.2d 1142, 1147 (9th Cir. 1977)
(“It is extremely rare for laches to be effectively invoked
when a plaintiff has filed his action before limitations in an
analogous action at law has run.”). The district court did not
abuse its discretion in declining to apply laches.
IV. EXCLUSION OF TESTIMONY
Upon Reno Air’s motion, the district court excluded the
testimony of Thorton Audrang because he was not identified
in the pretrial order or listed in Fed. R. Civ. P. 26 disclosures.
McCord contends that this evidentiary ruling was reversible
error. Audrang was a former manager at Reno Air who was
to testify that “he never felt [that] Reno Air had a trademark
right in the term ‘Reno Air Races’ ” prior to this case. Not
only is this point moot because McCord does not challenge
the district court’s findings as to the “Reno Air Races” mark,
even if the testimony were admissible, the district court was
well within its discretion to exclude the witness.
“A court may exclude testimony from witnesses not listed
in the pre-trial witness list.” Price v. Seydel, 961 F.2d 1470,
1474 (9th Cir. 1992). When deciding to exclude testimony, a
court should consider the following factors:
(1) the prejudice or surprise in fact of the party
against whom the excluded witness would have testi-
fied;
(2) the ability of that party to cure the prejudice;
7545 RENO AIR RACING ASS’N v. MCCORD

-- 24 of 26 --

(3) the extent to which waiver of the rule against
calling unlisted witnesses would disrupt the orderly
and efficient trial of the case . . . ;
(4) bad faith or willfulness in failing to comply
with the court’s order.
Id. (quoting Spray-Rite Serv. Corp. v. Monsanto Co., 684 F.2d
1226, 1245 (7th Cir. 1982), aff’d on other grounds, 465 U.S.
752 (1984)). The district court gave due consideration to these
factors and determined that McCord’s repeated failure to dis-
close the witness was willful and Reno Air would be preju-
diced if the testimony was permitted:
I’m very troubled because clearly, [McCord’s] coun-
sel kn[ew] about [this witness] for some time, didn’t
move to amend the pretrial order, didn’t list him in
the pre-trial order . . . so that [Reno Air’s] counsel
then would have any opportunity to respond to it,
and would have had an opportunity to take a deposi-
tion before the trial.
[18] Trial by surprise is no longer countenanced. The dis-
trict court’s exclusion order was not an abuse of discretion.
See Spray-Rite, 684 F.2d at 1245 (holding that the district
court did not abuse its discretion where it “gave due consider-
ation to these factors” and concluded that permitting the
excluded witness’s testimony would cause prejudice to the
other party who “did not have adequate time to prepare for the
witness”).
CONCLUSION
The TRO cannot support a finding of civil contempt
because it was improperly issued ex parte and failed to
describe the prohibited conduct with specificity. We vacate
and reverse paragraphs 5 and 6 of the district court’s Final
Judgment finding McCord in contempt for violating the TRO
7546 RENO AIR RACING ASS’N v. MCCORD

-- 25 of 26 --

and imposing contempt sanctions. We affirm the judgment in
all other respects.
VACATED and REVERSED in part; AFFIRMED in
part. Each party shall bear its own costs on appeal.
7547 RENO AIR RACING ASS’N v. MCCORD

-- 26 of 26 --