Petition — Ever-Ready, Inc. v. Union Carbide Corp.
Supreme Court brief1976
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JUN 10 1575
IN THE '
Supreme Court of the GQnited States
OcTOBER TERM, 1975.
EVER-READY INCORPORATED, A CORPORATION, AND
MARK GILBERT, AN INDIVIDUAL,
Petitioners,
vs.
UNION CARBIDE CORPORATION, A CORPORATION,
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT.
FRANCIS J. MCCONNELL,
RICHARD P, CAMPBELL,
MARK F, LEOPOLD,
135 South LaSalle Street,
Chicago, Illinois 60603,
Attorneys for Petitioners.
Of Counsel:
McConNNELL & CAMPBELL,
Suite 4000,
135 South LaSalle Street,
Chicago, Illinois 60603,
312-726-9131.
Gunthorp-Warren Printing Company, Chicago e Financial 6-6565
= er oe we or «
INDEX
PAGE
TP OTTTTITTI TT CLL 1
PUREED é cb obnesecdc be eses we ceceeses ss *ésee 2
Questions Presented for Review .............0eee008: 2
SE ET an cen asdewesse ctendecscacvansoe* 2
CUE sos sd nd 6 06400006600646R000 0 3
ASGMIOME cccccccccccccccccceccccccettocccscces 7
I. The Holding of the Court of Appeals for the
Seventh Circuit That an Incontestable Trade-
mark Is Immune from Attack, Except Upon the
Grounds Listed in § 33(b) of the Lanham Act,
Is in Conflict with the Decisions of Other Cir-
cuits and Is Contrary to the Act Itself ........ 7
II. The Treatment by the Lower Court of the Issue
of Likelihood of Confusion Amounts to an Im-
proper Trial De NovVO .......ccesececceees 8
SE ccdétcutccccemaneenseitdesvebindoteee 11
Appendix:
1. Opinion—United States Court of Appeals, Seventh
Circuit as Amended on Denial of Rehearing
March 11, 1976 as Amended March 16, 1976
a6 065 6* Ceeeeaneesecoe 60h 60s ine dnaes Al1-A39
2. Memorandum Opinion—Prentice H. Marshall,
PED Fd eicdasedcanenssceunn A40-A62
3. Denial of Rehearing—United States Court of Ap-
pools March 11, 1976 .oreccccccccccees A63-A66
il
TABLE OF CASES.
Flavor Corporation of America v. Kemin Industries, Inc.,
Gap F. Se Sew Geee Ge BRFED co cccccccccccvcecss 8
Haviland & Co. v. Johann Haviland China Corporation,
269 F. Supp. 928 (S. D. N. Y. 1967) .........0085 8
Jockey International, Inc. v. Bukard, 185 U. S. P. Q. 201
3 eS errr ee eer Te 8
John Morrell & Co. v. Reliable Packing Co., 295 F. 2d 314
oe Gs TED 0 hv nh bn ke he neendedeeceesseeses 7,9
John R. Thompson Co. v. Holloway, 366 F. 2d 108 (Sth
COe. BES) co cccc ce cwticcccceetodsaccwccessoees 8
Schwinn Bicycle Co. v. Murray Ohio Manufacturing Co.,
339 F. Supp. 973 (M. D. Tenn. 1971) ..--........ 8
Seiler’s Inc. v. Hickory Valley Farm Inc., 139 U. S. P. Q.
GED Cas Wo Mis Gh ED 06.060 ce cetecsecdusnes ies 8
Tillamook Creamery Ass’n. v. Tillamook Cheese and Dairy
Ass’n., 345 F. 2d 158 (9th Cir. 1965) cert. denied, 382
SF ) PRT ee ere 7,8
Wrist-Rocket Manufacturing Co., Inc. v. Saunders Archery
Co., 516 F. 2d 846 (8th Cir. 1975), cert. denied, ...........
5 ae (oc Fe UF errr 7,8
Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U. S.
SP CED cveccnacd es tees Cetucdcdeevaswneess 8
STATUTES.
Sea Peers hudeateseeouenees errr 6
Be te es Ge ee ee ED 6 co 0:cben0sssadeuecais 6
Illinois Antidulution Act, Ill. Rev. Stat., ch. 140,§22 .. 6
Lanham Act:
at, i a Mr o 65 vids 6 ek deed es dnes ewes eS,
ee are Ge EE oo he Nea duws demendecceuas 3,4, 8
TEXT
Robert, D., The New Trademark Manual (1947) ...... 9
IN THE
Hupreme Court of the Anited States
OcTOBER TERM, 1975.
No.
EVER-READY INCORPORATZD, A CORPORATION, AND
MARK GILBERT, AN INDIVIDUAL,
Petitioners,
vs.
UNION CARBIDE CORPORATION, A CORPORATION,
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT.
Petitioners, Ever-Ready Incorporated and Mark Gilbert,
respectively pray that writ of certiorari issue to review the
judgment and opinion of the United States Court of Appeals
for the Seventh Circuit entered in this proceeding on January
30, 1976, as amended on denial of petition for rehearing on
March 11, 1976.
The opinion of the Court of Appeals for the Seventh Circuit
is reported at 531 F. 2d 366. The opinion of the District Court
for the Northern District of Illinois, Eastern Division, is reported
at 392 F. Supp. 280. Both opinions are-appended hereto.
JURISDICTION.
The judgment of the Court of Appeals for the Seventh Circuit
was entered on January 30, 1976. Petition for rehearing was
denied, and the January 30, 1976 opinion was amended on
March 11, 1976. This Court's jurisdiction is invoked under 28
U.S. C. § 1254(1).
QUESTIONS PRESENTED FOR REVIEW.
1. Whether a defendant in a trademark infringement action
may be denied the right to attack the underlying validity of
plaintiffs mark, except upon the limited grounds enumerated in
Section 33(b) of the Lanham Act, merely because by means of
registration and a lapse of five years, the mark has become “in-
contestable” under Section 15 of that Act.
2. Whether, in a trademark infringement action, the Court of
Appeals abused its discretion and violated F. R. C. P. 52(a)
by trying the likelihood of confusion issue de novo and reversing
the trial court’s specific finding that there was no likelihood of
confusion because (1) plaintiffs survey evidence was “slanted,
and likely to lead to bias and error”, and (2) plaintiff's witnesses
were not to be believed.
STATUTES INVOLVED.
The statutes involved are:
1. Section 15 of the Lanham Act, 15 U. S. C. § 1065, which
provides:
“Except on a ground for which application to cancel may
be filed at any time under subsection (c) and (e) of section
14 of this Act, and except to the extent, if any, to which the
use of a mark registered on the principal register infringes a
valid right acquired under the law of any State or Territory by
use of a mark or trade name continuing from a date prior to
3
the date of the publication under this Act of such registered
mark, the right of the registrant to use such registered mark in
commerce for the goods or services on or in connection with
which such registered mark has been in continuous use for 5
consecutive years subsequent to the date of such registration
and is still in use in commerce, shall be incontestable: Provided,
That—
(1) there has been no final decision adverse to registrant's
claim of ownership of such mark for such goods or services,
or to registrant’s right to register the same or to keep the
same on the register; and
(2) there is no proceeding involving said rights pending
in the Patent Office or in a court and not finally disposed
of; and
(3) an affidavit is filed with the Commissioner within 1
year after the expiration of any such 5-year period setting
forth those goods or services stated in the registration on
or in connection with which such mark has been in con-
tinuous use for such 5 consecutive years and is still in use
in commerce, and the other matters specified in subsections
(1) and (2) hereof; and
(4) no incontestable right shall be acquired in a mark
which is the common descriptive name of any article or
substance, patented or otherwise.
Subject to the conditions above specified in this section, the
incontestable right with reference to a mark registered under
this Act shall apply to a mark registered under the Act of
March 3, 1881, or the Act of February 20, 1905, upon the
filing of the required affidavit with the Commissioner within 1
year after the expiration of any period of 5 consecutive years
after the date of publication of a mark under the provisions of
subsection (c) of section 12 of this Act.
The Commissioner shall notify any registrant who files the
above-prescribed affidavit of the filing thereof.”
2. Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b),
which provides: :
4
“If the right to use the registered mark has become incontest-
able under section 15 hereof, the registration shall be conclusive
evidence of the registrant’s exclusive right to use the registered
mark in commerce on or in connection with the goods or
services specified in the affidavit filed under the provisions of
said section 15 subject to any conditions or limitations stated
therein except when one of the following defenses or defects is
established:
(1) That the registration or the incontestable right to
use the mark was obtained fraudulently; or
(2) That the mark has been abandoned by the registrant;
or
(3) That the registered mark is being used, by or with
the permission of the registrant or a person in privity with
the registrant, so as to misrepresent the source of the
goods or services in connection wit): which the mark is
used; or
(4) That the use of the name, term, or device charged to
be an infringement is a use, otherwise than as a trade
or service mark, of the party’s individual name in his
own business, or of the individual name of anyone in
privity with such party, or of a term or device which is
descriptive of and used fairly and in good faith only to
describe to users the goods or services of such party, or
their geographic origin; or
(5) That the mark whose use by a party is charged as an
infringement was adopted without knowledge of the reg-
istrant’s prior use and has been continuously used by such
party or those in privity with him from a date prior to
registration of the mark under this Act or publication of
the registered mark under subsection (c) of section 12 of
this Act: Provided, however, That this defense or defect
shall apply only for the area in which such continuous prior
use is proved; or
(6) That the mark whose use is charged as an infringement
was registered and used prior to the registration under
this Act or publication under subsection (c) of section 12
of this Act of the registered mark of the registrant, and
not abandoned: Provided, however, That this defense or
5
defect shall apply only for the area in which the mark was
used prior to such registration or such publication of the
registrant’s mark; or
(7) That the mark has been or is being used to violate
the antitrust laws of the United States.”
STATEMENT OF THE CASE.
Defendant, Ever-Ready Incorporated (Ever-Ready), is a
small Chicago distributor of a variety of electrical products and
gift goods. Defendant, Mark Gilbert, the Ever-Ready principal,
began business in 1944 as Ever-Ready Fluorescent Company
and continues to conduct a fluorescent light maintenance serv-
ice under that name. In 1946 a new company called Ever-Ready
Electric Co. was formed to distribute a number of electrical
products and gift goods. The business was incorporated as
Ever-Ready Electric Supply Company in 1952, and its name
later changed to Ever-Ready Incorporated (1955) and Ever-
Ready International Ltd. (1972). Defendant conducts busi-
ness under a trade name which includes the words “Ever-Ready”
in combination with a logo design. Defendant has used “Ever-
Ready” as a trademark since 1944.
Among a great variety of products, Ever-Ready imports
miniature lamp bulbs with the two words “Ever-Ready” stamped
on their base. Two bulbs are placed in a blister package. The
blister packs are sold to retailers for subsequent sale to
consumers. Upon each card are printed the words “Ever-Ready”
in a four-sided logo, the phrase “high intensity mini-bulbs” and
the legend near the bottom, “© 1970 Ever-Ready Inc., Chi-
cago, Il]. 60607.” Defendants also import high-intensity lamps
bearing the words “Ever-Ready” either stamped upon the lamps’
bases or printed upon attached labels. The lamps are sold only
at wholesale with literature bearing the words “Ever-Ready”
displayed thereon.
In 1970 Union Carbide Corporation (Carbide) first con-
tacted Ever-Ready, stating that the sale of defendants’ miniature
OO ene
6
bulbs for home lamp use under the trademark “Ever-Ready
Inc., Chicago, Ill.” constituted an infringement of Union Car-
bide’s “EVEREADY” mark which was used on packaging of
General Electric miniature lamp bulbs sold for automobile use.
After defendant refused to summarily abandon the name it had
used for over 25 years, Union Carbide filed the instant action
for trademark infringement and unfair competition, with a pen-
dent dilution claim under the Illinois Trade-Mark Act, Ill. Rev.
Stat., ch. 140, § 22. Jurisdiction of the District Court was
founded upon 15 U. S. C. § 1121, 28 U. S. C. §§ 1332 and
1338. The action was not limited to miniature lamp bulbs,
but sought to enjoin defendant from use of its “Ever-Ready
Inc.” name in any connection whatsoever. While Carbide did
not seek damages or an accounting of Ever-Ready’s profits, it
did request that Ever-Ready be required to deliver up to it all
the packaging and promotional material bearing the allegedly
infringing words and symbols. Ever-Ready denied the sub-
stantive allegations of the complaint, and raised as affirmative
defenses both laches, and misuse of the trademark in violation
of the antitrust laws. At trial, this latter defense was severed for
separate trial pursuant to Federal Rule of Civil Procedure
42(b).
Upon a bench trial, Judge Prentice H. Marshall found no in-
fringement, no dilution under Illinois law, and no unfair com-
petition. Moreover, Judge Marshall decided that there was no
likelihood of confusion between the two marks. This decision
was reached after the trial court had opportunity to assess both
the survey evidence prepared by a Carbide expert, and in-
stances of alleged actual confusion. As to the survey, Mr. Fitz-
patrick, Union Carbide’s expert witness, testified on cross-
examination that the survey was “leading,” and therefore
“slanted” and likely to lead to “bias” and “error”. As a result
of this testimony, the trial judge held the surveys “are entitled
to little, if any weight” (A57). Furthermore, Judge Marshall
found the three witnesses called by Union Carbide to testify as
7
to confusion, “suspect” and “inattentive people” and therefore
not to be believed (A56).
In the subsequent appeal by Union Carbide to the Seventh
Circuit Court of Appeals, the trial judge’s decision was re-
versed in its entirety. The Court first held that because Car,
bide’s mark had become incontestable under 15 U. S. C. § 1065,
Carbide had the exclusive right to use the trademark. As a re-
sult, the Court concluded, Carbide’s mark was immune from
any attack on its validity, except upon the grounds enumerated
in 15 U. S.C. § 1115(b). To reach this conclusion, the Seventh
Circuit specifically reversed its own fifteen-year old decision in
John Morrell & Co. Vv. Reliable Packing Co., 295 F. 2d 314
(1961). Moreover, Judge Pell recognized that the Court’s new
position was directly contrary to the decisions of the Ninth Cir-
cuit in Tillamook County Creamery Ass'n. v. Tillamook Cheese
and Dairy Ass'n., 345 F. 2d 158 (1965), cert. denied, 382
U. S. 903, and the Eighth Circuit in Wrist-Rocket Manufactur-
ing Co., Inc. v. Saunders Archery Co., 516 F. 2d 845 (1975),
cert. denied, ........U. §. ...... 46 L. Ed. 2d 100.
The Court of Appeals then reversed each of Judge Marshall’s
other findings, trying de novo the issue of likelihood of con-
fusion. Defendants’ petition for rehearing was denied, although
the Court did add the current Part IV to its opinion at that
time, allowing the defendants to try their antitrust misuse de-
fenses.
ARGUMENT.
I.
The Hoiding of the Court of Appeals for the Seventh Circuit
That an Incontestable Trademark Is Immune from Attack,
Except Upon the Grounds Listed in § 33(b) of the Lanham
Act, Is in Conflict with the Decisions of Other Circuits and
Is Contrary to the Act Itself.
The first of the two major issues with which the Court below
dealt was the effect of the fact that Union Carbide’s mark had
achieved incontestable status under 15 U. S. C. § 1065. Judge
Pell reached the conclusion that once incontestability is achieved
by registration and a lapse of five years, the only permissable
attack upon such a mark is one based upon the seven specific
defenses set forth in 15 U. S. C. § 1115(b). This holding is in
conflict with the decisions of other Courts of Appeal as well as
the Lanham Act itself.
The Appellate Court’s decision in the instant matter is directly
contrary to other Court of Appeals decisions in Tillamook
Creamery Ass'n. v. Tillamook Cheese and Dairy Ass’n., 345 F.
2d 158 (9th Cir. 1965), cert. denied, 382 U. S. 903, Wrist-
Rocket Manufacturing Co., Inc. v. Saunders Archery Co., 516
F. 2d 846 (8th Cir. 1975), cert. denied, ............ oo cane
(1975), 46 L. Ed. 2d 100, and Flavor Corporation of Amerie
v. Kemin Industries, Inc., 493 F. 2d 275 (8th Cir. 1974), as
well as the District Court decisions in Schwinn Bicycle Company
v. Murray Ohio Manufacturing Co., 339 F. Supp. 973
(M. D. Tenn. 1971), and Haviland & Co. v. Johann Haviland
China Corporation, 269 F. Supp. 928 (S. D. N. Y. 1967).
In support of the Seventh Circuit’s opinion is the Fifth Cir-
cuit decision in John R. Thompson Co. v. Hc!loway, 366 F.
2d 108 (1966), and the trial level decisions in Jockey Inter-
national, Inc. v. Bukard, 185 U. S. P. Q. 201 (S. D. Cal. 1975),
and Seiler’s Inc. v. Hickory Valley Farm Inc., 139 U. S. P. Q.
460 (T. T. A. B. 1963).
The decision below is also contrary to the plain intent of the
Lanham Act. The legislative history of the Lanham Act re-
veals that the doctrine of incontestability is a narrow defensive
device only. The incontestability provisions were enacted solely
to protect those who had registered their trademarks from can-
cellation of that registration by the claim of an alleged prior
user of the identical mark on identical goods. The legislation
was never intended to provide registrants with an affirmative
weapon which would allow them to assert that because their
mark was incontestable they somehow had acquired rights
against defendants in trademark infringement actions which pre-
cluded an attack not only on the registration but also on
the inherent invalidity of the mark. See, D. Robert, The New
Trademark Manual, pp. 134-35 (1947).
That the Lanham Act’s incontestability section was not in-
tended to insulate a trademark from attack upon its inherent
invalidity is well supported by current case law. Indeed, to reach
the instant result, the Seventh Circuit found it necessary to
specifically reverse its own decision in John Morrell & Co. v.
Reliable Packing Co., 295 F. 2d 314 (1961). In Morrell, the
Court had held that § 1115(b) did not provide immunity from
attack upon the mark by the alleged infringer, but was only in-
tended “to protect a registrant from having its mark cancelled
by a prior user claiming superior rights.”
The Seventh Circuit's reversal of its prior holding not only
creates a conflict among the Circuits, but also presents an im-
portant question of statutory construction. If permitted to stand,
the decision leaves the intent and meaning of this key provision
of the Lanham Act in a state of confusion, and requires direc-
tion by this Court to resolve the conflict in the Circuits.
I.
The Treatment by the Lower Court of the Issue of Likelihood
of Confusion Amounts to an Improper Trial De Novo.
This Court has held, in Zenith Radio Corp. v. Hazeltine Re-
search, Inc., 395 U. S. 100, 123 (1969), that the scope of re-
view of an appellate court is limited:
“The authority of an appellate court when reviewing the
findings of a judge . . . is circumscribed by the deference
it must give to decisions of the trier of the fact, who is
usually in a superior position to appraise and weigh the
evidence. The question for the appellate court under Rule
52(a) is not whether it would have made the findings the
trial court dic, but whether ‘on the entire evidence [it] is
left with the definite and firm conviction that a mistake
has been committed.’ ”
10
In spite of this admonition, the appellate court here stated that
it was “in as good a position as the trial judge to determine the
probability of confusion” (A26), and thereupon tried the
likelihood of confusion issue de novo, and reversed Judge Mar-
shall’s finding that no one was likely to be confused by the two
marks. The appellate court reversed the trial court without
benefit of hearing the testimony or considering the demeanor of
the witnesses. It has resurrected plaintiff's expert who was utterly
discredited on cross-examination. The decision constitutes an
open invitation to perjury and a repudiation of the efficacy of
cross-examination.
The trial court opinion sets out the testimony of plaintiff's
expert, Fitzpatrick (A60). On cross-examination he was
destroyed, conceding that the survey he sponsored was “slanted”
and therefore likely to lead to “error” and “bias” (A60).
Nevertheless, because during the luncheon recess Fitzpatrick
was told he had given away the entire case and on redirect
recanted his testimony on cross, the appellate court was willing
to ignore the cross-examination testimony and assign as grounds
therefor the alleged failure of the trial judge to make a specific
finding that Fitzpatrick was not to be believed (A. 34). That
position ignores the fact that Judge Marshall did rule that
Fitzpatrick’s testimony and his survey were entitled “to little,
if any, weight” (A57).
By crediting the surveys sponsored by Fitzpatrick in the teeth
of a clear ruling that the trial judge who heard the testimony
andyobserved the witness found them to be incredible, the
Seventh Circuit has made its own de novo decision that surveys,
conceded to be fatally prejudiced by their sponsor, are in and
of themselves sufficient to establish likelihood of confusion.
Obviously even Carbide’s attorneys did not feel that the surveys
were alone sufficient to establish likelihood of confusion. If they
had, they would simply have introduced the surveys and rested.
Instead, they placed Fitzpatrick on the stand to expertly opine
that his surveys established likelihood of confusion. When
ll
Fitzpatrick conceded on cross-examination that the surveys were
slanted, biased, and error filled, that should have been the end
of the matter.
Finally, in addition to survey evidence, Carbide also intro-
duced evidence of alleged actual confusion. Judge Marshall
specifically found Carbide’s witnesses unworthy of belief, char-
acterizing two witnesses as “careless and inattentive” and ob-
serving that the other, Carbide’s lawyer’s secretary, presented
“manufactured” evidence (A56). Nevertheless, just as it
did with the survey, the Seventh Circuit ignored the trial
Court’s findings and held that Carbide’s witnesses were credit-
able (A28).
We submit that in reversing the decision of the trial judge
as to the weight and credibility of the testimony and thus try-
ing the likelihood of confusion issue de novo, the appellate court
has usurped the function of the trial court. The decision below
is erroneous and exceeds the scope of permissible appellate re-
view, and should, in the exercise of this Court’s supervisory
function, be reversed.
CONCLUSION.
For the foregoing reasons, a writ of certiorari should issue to
review the judgment and opinion of the Seventh Circuit.
Respectfully submitted,
FRANCIS J. MCCONNELL,
RICHARD P. CAMPBELL,
MARK F. LEOPOLD,
135 South LaSalle Street,
Chicago, Illinois 60603,
Attorneys for Petitioners.
Of Counsel:
McConNELL & CAMPBELL,
Suite 4000,
135 South LaSalle Street,
Chicago, Illinois 60603,
312-726-9131.
ee
Al
APPENDIX.
UNITED STATES COURT OF APPEALS,
SEVENTH CIRCUIT.
No. 75-1371.
UNION CARBIDE CORPORATION,
Plaintiff-A ppellant,
vs.
EVER-READY INCORPORATED, a corporation, and Mark
Gilbert, an individual,
Defendants-A ppellees.
Argued Oct. 22, 1975.
Decided Jan. 30, 1976.
As Amended on Denial of Rehearing March 11, 1976.
As Amended March 16, 1976.
PELL, Circuit Judge.
Union Carbide Corporation brought this action against Ever-
Ready Incorporated’ alleging trademark infringement and un-
fair competition.? In issue on this appeal are 1) whether the
district court erred in declaring Carbide’s trademark, EVER-
EADY, invalid; 2) whether the district court erred in finding
1. Ever-Ready Inc ted changed its name to Ever-Ready
International Ltd. while this action was pending in the district court.
2. The district court found jurisdiction-pursuant to 16 U. S. C.
§ 1121 and 28 U. S. C. §§ 1332 and 1338.
A2
that defendants’ use of Ever-Ready on electrical products was
not likely to cause confusion; and 3) whether the district court
erred in holding that defendants’ use of Ever-Ready does not
constitute unfair competition or dilution under Illinois statutes.
In the district court Ever-Ready raised the affirmative defenses
of laches and misuse of trademark in violation of the an‘itrust
laws. Prior to trial the antitrust issues were served for separate
trial pursuant to Fed. R. Civ. P. 42(b) and are not involved in
this appeal.
In 1898 plaintiff's predecessor, American Electrical Novelty
& Manufacturing Company, adopted the term EVER READY to
distinguish its products. In 1901 the mark was changed to
EVEREADY. In 1909 the company changed its name to
American Ever Ready Company, and in 1914 it assigned all
its assets to the National Carbon Company, Carbide’s
predecessor.
Currently plaintiff sells under its trademark, EVEREADY,
alone or in combination with other words and designs, an ex-
tensive line of electric batteries, flashlights, and miniature bulbs
for automobile and marine use. Carbide presently is the owner
of five United States trademark registrations on its trademark,
EVEREADY, alone, and with other words and distinctive de-
signs. Affidavits have been filed pursuant to 15 U. S.C. §§ 1058
(for continued validity) and 1065 (for incontestability). Car-
bide has advertised these products extensively and since 1966 has
had sales of its EVEREADY products in excess of one hundred
million dollars per year. From October 1965 through July 1967
Carbide sold certain bulbs under itt EVEREADY mark in blister
packages which indicated that theye were for high-intensity read-
ing lamps. Carbide has continued to sell identical bulbs pack-
aged for automotive and other uses.
In 1944 defendant Mark Gilbert began business as Ever-Ready
Fluorescent Company and still continues to conduct a fluorescent
light maintenance service. In 1946 a new company was formed
to import and distribute electrical supplies, stationery, gift items,
A3
and accessories, including lamps, light bulbs, light fixtures, and
flashlights. After several changes of form and name, this com-
pany became the defendant, Ever-Ready Incorporated. The
products listed above are primarily distributed under names
other than Ever-Ready, although Ever-Ready’s promotional ma-
terial, which is distributed within the trade, contains its cor-
porate logo.
In 1969 defendants commenced importing miniature lamp
bulbs having the term Ever-Ready stamped on their bases and
selling these bulbs in blister packages containing the term Ever-
Ready in a four-sided logo and indicating that they are for high-
intensity lamps. Ever-Ready also imports the high-intensity
lamps with Ever-Ready stamped on them or on labels attached to
them. The literature accompanying the lamps also contains
the logo. The name of the manufacturer is also indicated on the
lamps.
Carbide sought an injunction against Ever-Ready’s use of the
term Ever-Ready on or in connection with the advertising or
sale of electrical products. Carbide also requested that Ever-
Ready be required to deliver up to it all material containing the
allegedly infringing marks. No damages were sought. The dis-
trict court found no infringement, no dilution under Illinois law,
no unfair competition, and declared Carbide’s mark, EVER-
EADY, invalid.* This appeal followed.
I. Validity of Plaintiff's Trademark
A. Validity is in Issue
Plaintiff argues that the validity of its mark was not in issue
before the trial court and that it was improper for the trial court
to address the issue in its opinion. Plaintiff relies on a stipulation
entered before trial which stated that plaintiff's registrations were
in full force; on the statement of issues, which were part of the
3. The district court opinion appears at 392 F. Supp. 280.
A4
pretriai order; and on defendants’ proposed findings of facts and
conclusions of law, which contained no finding of invalidity.
The stipulation is of little help to plaintiff. That a registration
is in force is not necessarily inconsistent with the invalidity of a
trademark, for example, where the trademark has become a
generic term. At most the stipulation is ambiguous. We are,
however, troubled by the failure to include the question of valid-
ity in the statement of issues in the pretrial order. Invalidity is,
of course, a defense to an infringement action. If the defend-
ants wished to rely on it, it should have been a part of the
statement of issues. On the other hand, remarks during trial,
at least by defendants’ counsel, indicate that validity was in
issue. The trial judge concluded that it was in issue.
Having carefully considered these factors, we conclude that
we must face the issue of invalidity. Plaintiff may or may not
have been prejudiced before the district court if counsel did
not adequately brief or argue the validity of the trademark be-
cause he did not view it as in issue; nevertheless, counsel has not
shown this court that it was prejudiced because evidence was not
introduced which would have been had counsel believed validity
was in issue. The legal issues have been fully briefed before this
court.
B. Effect of Incontestability
A mark may become “incontestable” if the requirements of
15 U. S. C. § 1065 are met.* Defendant does not dispute that
Carbide has complied with the requirements of § 1065 on in-
contestability but disputes the effect and scope of that achieve-
ment. Section 1115 prescribes the effects of registration and in-
contestability in an infringement action. It provides in relevant
part:
“(a) Any registration . . . of a mark registered on the
principal register provided by this chapter and owned by a
party to an action shall be admissible in evidence and shall
4. Ҥ 1065. Incontestability of right to use mark under certain
conditions. (/nfra, at ........ ).
AS
be prima facie evidence of registrant’s exclusive right to
use the registered mark in commerce on the goods or
services specified in the registration subject to any con-
ditions or limitations stated therein, but shall not preclude
an opposing party from proving any legal or equitable de-
fense or defect which might have been asserted if such mark
had not been registered.
“(b) If the right to use the registered mark has become
incontestable under section 1065 of this title, the registra-
tion shall be conclusive evidence of the registrant’s exclusive
right to use the registered mark in commerce on or in con-
nection with the goods or services specified in the affidavit
filed under the provisions of said section 1065 subject to
any conditions or limitations stated therein except when
one of the following defenses or defects is established. . . .”
Seven defenses then follow, but none are relevant in this appeal.®
It is not disputed that the prima facie presumption of
§ 1115(a) may be used in an infringement action. Contrary to
defendants’ assertions, nothing in the statute indicates that the
conclusive evidence rule of § 1115(b) cannot be used sim-
ilarly. Three of the defenses enumerated in the section clearly
contemplate the use of incontestability in infringement actions
by plaintiffs. Subsections 1115(b)(4), 1115(b)(5), and
1115(b)(6) describe situations where a plaintiff's mark shall
not be conclusive evidence in infringement actions. This im-
plies that in other situations, assuming none of the other enu-
merated defenses are applicable, incontestability may be used
by a plaintiff in establishing his case. Nevertheless, courts
have not given the section uniform treatment. Opinions range
from strict to liberal.
Defendants argue that incontestability is a narrow defensive
device which cannot be used offensively by a plaintiff in an
infringement action. Certainly no such limitation is expressed
in the statute, but there is a line of cases which provides sup-
port for defendants’ position. John Morrell & Co. v. Reliable
Packing Co., 295 F. 2d 314 (7th Cir. 1961), is procedurally
5. The defenses are: (/nfra, at ........ ).
A6
similar to the present case. In Morrell, plaintiff, owner of an
incontestable registration, sued for statutory trademark infringe-
ment, unfair competition, and dilution under an_ [Illinois
statute. The essence of the court’s holding was that plaintiff
had failed to sustain its burden to show a likelihood of con-
fusion between its mark, “E-Z Cut,” and defendant’s “Easy-
Carve.” In reaching this conclusion the court relied on the
parties’ practices of using these marks in connection with their
names (Morrell E-Z Cut and Thompson Farms Brand Easy
Carve). Plaintiff had apparently argued that the court could
not consider this because its mark was incontestable. The dis-
trict court did not limit its discussion to holding that confusion
was not likely, but cited language in Rand McNally & Co. Vv.
Christmas Club, 105 U. S. P. Q. 499 (Comm. of Pat. 1955),
affd, 242 F. 2d 776, 44 CCPA 861 (1957), which indicated
that incontestability has a defensive, not an offensive, effect
and that when a mark becomes incontestable, the owner’s
rights in the mark are not broadened. We note that in Morrell
the court did not declare the plaintiffs mark invalid.
The language cited was clearly dicta in Rand McNally. In
issue in the case was whether the mark, “Christmas Club” was
descriptive when used as the title of defendant’s magazine.
Plaintiff indicated that he brought the petition to cancel the
registration so that it could not become incontestable and pre-
vent him from using the same words in connection with a sav-
ings plan as he had been doing. The assistant commissioner
who wrote the patent office opinion indicated, in the language
cited by the Morrell panel, that the plaintiff's fears were un-
founded. By the defensive/offensive language he apparently
was attempting to state in another way that incontestability
would not enable the defendant to extend his mark more
broadly than he could prior to incontestability. The assistant
commissioner went on to hold that the mark as used was valid.
The Court of Customs and Patent Appeals affirmed without
reference to the dicta regarding incontestability.
a
ere ee em
A7
The defensive/offensive language cited in Morrell has
caused much confusion regarding the effect of incontestability.
In Tillamook County Creamery Association v. Tillamook
Cheese and Dairy Association, 345 F. 2d 158 (9th Cir. 1965),
cert. denied, 382 U. S. 903, 86 S. Ct. 239, 15 L. Ed. 2d 157,
an infringement action, the court introduced a discussion of
incontestability with the statement: “Without basing any spe-
cial argument thereon or seeming to attach significance to it, the
appellant suggests that . . . it had obtained incontestability of
that registration.” (Footnote omitted.) Jd. at 163. It then
held that the appellant properly refrained from arguing incon-
testability because of the defensive/offensive distinction. Citing
Morrell it further stated:
“If plaintiff has attained incontestability of its mark, its
registration could not be cancelled by a proceeding to
cancel the same. But this does not aid the plaintiff in any
claim that it has an exclusive right to the name or mark
or that it may rely on the same as a basis for an injunction
against the defendant.” /d.
Regardless of the reason plaintiff did not argue incontestability,
it appears on the facts found by the court that plaintiff's mark
was not incontestable with respect to the defendant. The court
found that the defendant’s predecessor had acquired the right to
use the mark in question prior to plaintiff's use and that it had not
been abandoned. Section 1065 provides that a mark does not be-
come incontestable “to the extent, if any, to which the use of a
mark registered on the principal register infringes a valid right
acquired under the law of any State or Territory by use of a mark
or trade name continuing from a date prior to the date of the
publication under this chapter of such registered mark.” 15
U. S. C. § 1065.° Thus, plaintiff had no right to rely on incon-
6. This exception involving prior use must be contrasted with
§§ 1115(b)(5) and 1115(b)(6). The first involves a situation
where the registrant begins to use a mark (without registering it),
the alleged infringer begins use of his mark without knowledge of the
registrant’s prior use, and then the registrant registers and publishes
(Continued on next page)
A8
testability. Also, the court noted that the geographic location
defense might be available to the defendant.
A second problem arises from the court’s statement in Tilla-
mook regarding incontestability preventing cancellation of plain-
tiff's registration. This problem is presented in clearer focus in
the recent Eighth Circuit decision of Wrist-Rocket Manufactur-
ing Co., Inc. v. Saunders Archery Co., 516 F. 2d 846 (8th
Cir. 1975), cert. denied, ..... U. S. ....., 96 S. Ct. 134, 46
L. Ed. 2d 100. The lower court in Wrist-Rocket held that piain-
tiff's action for trademark infringement, which was based on an
incontestable mark, had not been sustained by the evidence;
that the defendant was the common law owner of the mark be-
cause he had first used it prior to plaintiffs registration; and
that plaintiffs registration should be cancelled and he be
permanently enjoined from using the mark.
The Eighth Circuit first held incontestability was “not a sword”
on which plaintiff could rely to establish his exclusive right to
use the mark citing, inter alia, Tillamook. It upheld the district
court in its finding that defendant had a common law right to
use the trademark, but held that the right was not exclusive.
The court then considered the district court’s order cancel-
ling plaintiff's mark and injunction against its future use. It held
these actions were improper. The district court had held that
plaintiffs mark was unprotected because a mark cannot become
incontestable against a user’s prior rights established under
state law. This exception to § 1065 was quoted, supra, in dis-
cussing Tillamook. The Eighth Circuit held the district court’s
application of this section was improper because “[iJncon-
testability is . . . a shield that protects the registrant from can-
cellation of his trademark by a prior user claiming superior
rights.” 516 F. 2d at 851. At first glance this statement appears
in conflict with the exception in § 1065. The language is perhaps
(Continued from preceding page) —
his mark. The second involves a situation where the alleged infring-
ing mark was registered and used prior to the charging party’s
registration.
A9
unfortunate. As authority for this statement the court relied,
inier alia, on Tillamook, Morrell, and 4 Callman, Unfair Com-
petition, Trademarks and Monopolies, § 97.3(c)(1)(3d_ ed.
1970) at 599. Callman discusses incontestability of registra-
tion and incontestability of use. Section 1065 is entitled “Incon-
testability of right to use mark under certain conditions.” Com-
pliance with § 1065 entitles a registration to conclusive evi-
dentiary weight under § 1115(b). Portions of § 1064 indicate
that after five years a registration may only be cancelled for
specified reasons. Callman refers to these portions of §1064 as
the “incontestability of registration” provisions. The statute does
not use this terminology. Section 1064, not incontestability under
§ 1065, “protects the registrant from cancellation of his trade-
mark by a prior user claiming superior rights” because prior use
is not a ground for cancellation under § 1064. Section 1064's
protection is broader than the incontestability rights under
§ 1065. Also, five years of use after registration entitles a regis-
trant to protection under § 1064 whereas an affidavit must be
filed to achieve incontestability under § 1065. References to
the protection accorded registrations under § 1064 by the term
“incontestability” causes confusion and should be avoided even
though the sections were enacted at the same time and com-
plement each other.
Other cases which have «‘rawn the defensive/offensive distinc-
tion are: Schwinn Bicycle Company v. Murray Ohio Manufac
turing Co., 339 F. Supp. 973 (M. D. Tenn. 1971) (relying on
Tillamook and Morrell), aff'd per curiam on other grounds, 470
F. 2d 975 (6th Cir. 1972); Haviland & Co. v. Johann Havi-
land China Corporation, 269 F. Supp. 928 (S. D. N. Y. 1967)
(relying on Tillamook and Morrell); Electrical Information
Publications v. C-M Periodicals, Inc., 163 U. S. P. Q. 624
(N. D. Ill. 1969).
Defendants also rely on several cases which they assert stand
for the general propostion that descriptiveness of a plaintiff's
mark may be raised as a defense in any infringement action.
Al0
There is no indication in G. Lablanc Corporation v. H. & A.
Selmer Inc., 310 F. 2d 449 (7th Cir. 1962). cert. denied, 373
U. S. 910, 83 S. Ct. 1299, 10 L. Ed 2d 412 (1963), that the
mark involved was incontestable, notwithstanding defendants’
indication to the contrary, or that this court considered that
issue. In Jean Patou, Inc. v. Jacqueline Cochran, Inc., 201 F.
2d 125 (2d Cir. 1963), the district court mentioned incon-
testability, discussed the descriptive nature of plaintiffs mark,
then assumed the mark’s validity and held there was no infringe-
ment because defendant was using the word “Joy,” plaintiff's
mark, in a descriptive sense. Though the court did not cite
§ 1115(b)(4), we note that under it defendant’s use of the
alleged infringing term in a descriptive sense is a defense to
incontestability. The Second Circuit specifically declined to re-
view the propriety of other findings of the district court; noted
that since plaintiffs mark was incontestable, the primary issue
between the parties was whether the defendant’s use was likely
to deceive or cause confusion or mistake; and held that the dis-
trict court was not clearly erroneous in finding there was no
likelihood of confusion. Thus, Patou is of little help to defend-
ants; indeed, if it is relevant at all, the Second Circuit opinion
lends support to plaintiff's position. Finally, we must consider
Flavor Corporation of America v, Kemin Industries, Inc., 493
F, 2d 275 (8th Cir. 1974).
In Flavor Corporation the Eighth Circuit interpreted the in-
contestability provisions in relation to descriptiveness in an ap-
parently unique manner. The court first declined to resolve the
controversy over the precise effect of incontestable status. It held
that a mark registered under § 1052(f)* could not become in-
7. Carbide’s mark was not originally registered under § 1052(f),
but secondary meaning has become an issue in this law suit. Section
1052(f) reads as follows:
“(f) Except as expressly excluded in paragraphs (a)-(d)
of this section, nothing in this chapter shall prevent the registra-
tion of a mark used by the applicant which has become distinc-
tive of the applicant’s goods in commerce. The Commissioner
(Continued on next page)
—
All
contestable because of § 1065(4). Section 1065(4) provides:
“[N]o incontestable right shall be acquired in a mark which is
the common descriptive name of any article or substance pa-
tented or otherwise.” Section 1052(f) permits the registration
of marks which might be characterized as “merely descriptive”
if the mark has become “distinctive of the applicant’s goods in
commerce.” 15 U. S. C. §§ 1052(e), 1052(f). If a mark is the
common descriptive name of an item, it does not qualify for
registration under § 1052(f). If a mark becomes the common
descriptive name of an item, it may be cancelled at any time and
incontestability would be of no effect even if subsection (4)
had not been enacted. 15 U. S. C. §§ 1064(c), 1065. Subsec-
tion (4) was added to the act by the conference committee
without explanation, and it is doubtful whether the provision
does more than clarify what is already in the act. D Robert,
The New Trade-Mark Manual 138 (1947). In effect the Eighth
Circuit has equated a mark that is descriptive, but distinctive of
registrant’s goods, with one that is the common descriptive name
of an item. We do not believe this was the intention of Congress
and decline to follow Flavor Corporation on this point. We
note that this aspect of-the case has received substantial criti-
cism from commentators. W. Derenberg, The Twenty-Seventh
Year of Administration of the Lanham Trademark Act of
1946, 64 Trade-Mark Rep. 339, 419 (1974); A. Fletcher, The
Pestlur Case—Collateral Estoppel Effect of CCPA and TTAB
Decisions—Actual Confusion as to Incontestability of Descrip-
tive Marks, 64 Trade-Mark Rep. 252, 257 (1974).
Trademark statutes prior to the Lanham Act treated the
substantive law of trademarks as primarily a state law matter.
In enacting the Lanham Act Congress intended to unify trade-
(Continued from preceding page)
may accept as prima facie evidence that the mark has become
distinctive, as ied to the applicant’s goods in commerce,
proof of substantially exclusive and continuous use thereof as
a mark by the applicant in commerce for the five years next
preceding the date of the filing of the application for its
registration.”
Al2
mark law on a national basis. The Senate Committee Report
on the Act stated:
“There can be no doubt under the recent decisions of
the Supreme Court of the constitutionality of a national act
giving substantive as distinguished from merely procedural
rights in trade-marks in commerce over which Congress
has plenary power . . . a sound public policy requires that
trade-marks should receive nationally the greatest protec-
tion that can be given.” Sen. Rep. No. 1333, 79th Cong.,
2d Sess. (1946), U. S. Code Cong. Serv 1946, p. 1277,
reprinted in Robert, supra at 265, 269 (1947).
Callman indicates that the incontestability clauses are one of
the most significant innovations in the Lanham Act and that
they had a “vital effect upon the substantive law of trademarks.”
4 Callman, supra, § 93.3(c)(1) at 598-99 (3d ed. 1970). In
evaluating the incontestability clauses analytically, Callman
states:
“It would seem self-evident that there is no distinction
between an incontestable, exclusive right and a property
right, so that, in effect the Lanham Act implicitly demon-
strates Congressional willingness to recognize the trademark
as a property right. The exceptions to which this clause is
subjected do not detract from this highly salutary result.
They are nothing more than the usual limitations im-
posed upon every property right—the existence of its mate-
rial foundation and the legality of its use.” (Footnotes
omitted.) Jd. at 601.
Although Callman indicates that incontestability may lead to
misuse “unless the incontestability privilege is counterbalanced
or neutralized by judicial efforts to restrict the scope of protection
accorded to marks that consist primarily of descriptive or other-
wise defective matter,” id., and although he states the defensive/
offensive rule, citing the Morrell line of cases, id. at 599, he
also states: “When the right to use has become incontestable,
the right to sue others for infringement is then fortified by a
certificate of registration which is, under section 33(b) [15
U. S. C. § 1115(b)], conclusive evidence of the registrant's
Al3
exclusive right to use the mark.” (Footnotes omitted.) I/d.
§ 97.3(c)(3) at 605.
The most recent expression of this court on the effect of
incontestability appears in Burger King of Florida, Inc. v. Hoots,
403 F. 2d 904 (7th Cir. 1968). The case involved cross
suits for infringement for use of the name Burger King. Plain-
tiffs mark was incontestable. This court held that the incon-
testability of plaintiffs mark established conclusively plaintiff's
exclusive right to use the mark. The defendant was allowed to
continue to use the mark in a narrow geographic area because
of its prior use in that area, a defense to incontestability under
the statute. The panel was clearly aware of Morrell because it
cited it on another point, and we note that, notwithstanding
the defensive/offensive language in Morrell, not every court
has viewed the case as holding that a plaintiff may not rely
on incontestability in an infringement action.
In Jockey International, Inc. v. Burkard, 185 U. S. P. Q.
201 (S. D. Calif. 1975), the court held that the defendants in
the suit for infringement could not raise any defense or defect
not enumerated in § 1115(b) because plaintiff's mark had be-
come incontestable. The court cited, inter alia, Morrell in support
of this proposition. The Fifth Circuit clearly allows the use of
incontestability in infringement actions. In John R. Thompson
Co. v. Holloway, 366 F. 2d 108 (Sth Cir. 1966), the court
stated that although plaintiffs marks should have been refused
registration if primarily a surname, this could not be raised as a
defense because it was not one of the defenses enumerated under
§ 1115(b). Although Rand McNally & Co. v. Christmas. Club,
supra, is the apparent source of the defensive/offensive distinc-
tion, today the patent office appeals board apparently does not
follow it. In Seiler’s Inc. v. Hickory Valley Farm Inc., 139
U. S. P. Q. 460 (T. T. A. B. 1963), it sustained an opposition
brought by the holder of an incontestable mark on the grounds
that its incontestable registration was conclusive of its exclusive
right to use the mark. f
Al4
In light of this authority, we hold that a plaintiff in an in-
fringement action establishes conclusively, under § 1115(b),
his exclusive right to use a trademark to the extent he shows his
trademark has become incontestable under § 1065. Incon-
testability does not broaden a trademark in the sense that it al-
lows a registrant to claim rights over a greater range of products
than. he would otherwise be entitled to claim; but once in-
contestability is established, registrant’s mark is immune from
challenge on any grounds not enumerated in § 1115(b). There
is no defensive/offensive distinction in the statute, and we do
no believe one should be judicially engrafted on to it. To the
extent that Morrell holds that a plaintiff may not use the
conclusive evidence rule of § 1115(b) in an infringement ac-
tion and to the extent such a holding has not been overruled sub
silentio by Burger King, we overrule it now. As stated earlier,
it is not altogether clear that this is the holding of Morrell, but
it has been so interpreted by other courts, including district
courts within this circuit. J. McCarthy, Trademarks and Unfair
Competition, § 11:17 (1973), summarizes the effect of incon-
testability in cases such as the present one:
“But if a mark has become ‘incontestable’ . . . then lack of
distinctiveness of such a mark cannot be raised in litiga-
tion. That is, it is conclusively presumed either that the
mark is non-descriptive, or if so, has acquired secondary
meaning. Defendant faced with an incontestable registered
mark cannot defend by claiming that the mark is invalid
because it is descriptive.”
The district court in this case failed to consider incon-
testability. Plainly it was improper for the court to declare plain-
tiffs mark invalid even though it did not order the registration
cancelled. This would be true even if the defensive/offensive
distinction were viable. Plaintiff has established incontestability
under § 1065, and defendants in the present appeal have not
shown that any of the first six defenses enumerated in § 1115(b)
are available to them. These findings establish the validity of
plaintiffs mark and would be sufficient for us to proceed im-
AIS
mediately to consider the district court’s conclusions regarding
likelihood of confusion. However, even if we were to assume
arguendo that the incontestability status of the plaintiff's mark
did not preclude attack by the defendant on validity in the
present litigation, we would reach the same result with regard
to the mark involved. Because of what we view as serious
misconceptions of the law of this circuit in the district court
opinion, we deem it advisable to address the merits issue as an
alternative ground supporting the validity of the EVEREADY
marks.® /
/ C. Merits of Carbide’s Trademark
1. Descriptiveness
In discussing the validity of the EVEREADY mark, the dis-
trict court noted that the registration of a mark is “ ‘prima facie
evidence’ of (1) the validity of the registration, (2) the reg-
istrant’s ownership of the mark and (3) the registrant’s exclusive
right to use the mark in commerce under the specified condi-
tions and limitations of the registration.” 392 F. Supp. at 285.
Section 1115(a), regarding remedies such as actions for in-
fringement, provides that a registration is admissible into
evidence to establish registrant’s rights on a prima facie basis
but that an opposing party may prove any legal or equitable
defense or defect which might have been asserted if the mark
had not been registered. This is in contrast to a mark which
has attained incontestable status, discussed supra.
A mark which is “merely descriptive” may not be registered,
' and a holding that Carbide’s mark was merely descriptive would
defeat its action for infringement. 15 U. S. C. § 1052. Never-
theless, since the patent office allowed the EVEREADY mark
to be registered and proof of distinctiveness under § 1052(f)
8. Because of this panel's treatment of prior cases in part L B.,
this opinion has been circulated to all j of this court in re
active service; and no judge has v to rehear this case en
Judge Philip W. Tone has disqualified’ himself from any con-
sideration of this case.
Al6
was not required, it must have concluded that the mark was
not “merely descriptive.” This essential premise must be con-
sidered prima facie correct by a court in considering the validity
of a trademark, or the prima facie evidence rule would be
rendered ineffective. It is unclear whether the district court
accorded any weight to the patent office’s conclusion that the
EVEREADY mark was not descriptive.
Defendants rely on a statement in John Morrell & Co. Vv.
Reliable Packing Co., supra: “[W]here descriptive words are
used in the trademark, the assumption of validity can be easily
overcome.” 295 F. 2d at 316. Tnis statement was made in
describing the holding in Wilhartz v. Turco Products, Inc., 164
F, 2d 731 (7th Cir. 1947). In Wilhartz this court held that
under the circumstances of that particular case, the presumption
of validity was easily overcome. The circumstances were that
the mark, “Auto Shampoo,” had been refused registration twice
and then registration was finally allowed after the representa-
tions that “Auto” suggested instantaneous action while “Sham-
poo” as used suggested foaming, bubbling action as a result
of the application by a spray mechanism. The court found these
representations were a hoax in light of testimony by the vice-
president of the company that he had never heard of such claims
until the trial and that the product could be used just as effec-
tively without the spray mechanism. The statement in Morrell
is not inaccurate, but it is perhaps unfortunate because it has
caused some to overlook the necessity of according prima facie
weight to the patent office’s conclusion that particular words
as applied to a particular product are not descriptive.
The district court concluded that “Carbide’s mark
EVEREADY is descriptive and within the purview of § 2(e)
of the Lanham Act. 15 U. S. C. § 1052(e).” 392 F. Supp. at
288. In light of the statutory reference we shall treat this find-
ing as being that the mark is merely descriptive. But see Ex
Parte Heatube Corporation, 109 U. S. P. Q. 423, 424 (Comm.
of Pat. 1956).
Al7
A mark is invalid if it is merely descriptive of the ingredients,
qualities, or characteristics of an article of trade. Warner & Co.
v. Lilly & Co., 265 U. S. 526, 528, 44 S. Ct. 615, 68 L. Ed.
1161 (1924). Suggestive marks, however, have long been dis-
tinguished from descriptive ones. Watkins Products, Inc. V.
Sunway Fruit Products, Inc., 311 F. 2d 496 (7th Cir. 1962),
cert. denied, 373 U. S. 904, 82 S. Ct. 1291, 10 L. Ed. 2d 199
(1963); Independent Nail & Packing Co., Inc. v. Stronghold
Screw Products Inc., 205 F. 2d 921 (7th Cir. 1953), cert.
denied, 346 U. S. 886, 74 S. Ct. 138, 98 L. Ed. 391. Restate-
ment of the Law of Torts § 721 Comment (a) (1938). They
may be thought of as a middle ground between arbitrary or
fanciful names and descriptive names. E.g. General Shoe
Corporation v. Rosen, 111 F. 2d 95, 98 (4th Cir. 1940). The
line between descriptive and suggestive marks is scarcely “pike-
staff plain.” Various tests have been used by courts to make the
distinction. The district court, citing General Shoe Corporation
v. Rosen, supra; W. G. Reardon Laboratories, Inc. v. B & B
Exterminators, 71 F. 2d 515 (4th Cir. 1934); and Stewart
Paint Manufacturing Co. v. '/nited Hardware Distributing Co.,
253 F. 2d 568 (8th Cir, 1958), stated:
“Suggestive terms ‘suggest’, but do not describe the quali-
ties of a particular product. The distinction threatens to be
one without a difference. Essentially, however, the com-
mon and ordinary meaning of the term to the public and
the incongruous use of it as it relates to the product de-
termine whether a term is suggestive.” 392 F. Supp. at 286.
Another test which has been used and which was footnoted by
the district court is whether competitors would be likely to need
the terms used in the trademark in describing their products.
See McCarthy, supra, § 11:21 at 391-92 (1973); Restatement
of the Law of Torts § 721 Comment (a) (1938).
This court has not adopted a particular test for distinguishing
between suggestive and descriptive marks. We disagree with the
district court that it is a distinction without a difference, al-
Als
though it is often a difficult distinction to draw and is, un-
doubtedly, often made on an intuitive basis rather than as the
result of a logical analysis susceptible of articulation. This only
emphasizes the need to give due respect to the determinations
of the patent office if the distinction is to be drawn in a con-
sistent manner. Perhaps the best statement of the distinction
appears in A. Seidel, S. Dalroff, and E. Gonda, Trademark Law
and Practice § 4.06 at 77 (1963):
“Generally speaking, if the mark imparts information
directly, it is descriptive. If it stands for an idea which re-
quires some operation of the imagination to connect it
with the goods, it is suggestive.”
The information imparted may concern a characteristic, quality,
or ingredient of the product. We do not believe this conflicts
with this court’s holding in Independent Nail & Packing Co.,
Inc. v. Stronghold Screw Products, Inc., supra, even though
some language in the opinion arguably indicates the contrary.
Incongruity is not essential for a mark to be suggestive, rather
than descriptive; but incongruity is a strong indication of non-
descriptiveness, and it is probably the unusual case where a
mark will be suggestive but not descriptive where there is no
incongruity. The more imagination that is required to associate
a mark with a product the less likely the words used will be
needed by competitors to describe their products.
In analyzing Carbide’s mark, the district court noted the dic-
tionary definitions of “ever” and “ready” and concluded: “Thus,
the combination of ‘ever’ and ‘ready’ means constantly prepared
or available for service.” Dissecting marks often leads to error.
Words which could not individually become a trademark may
become one when taken together. E.g., Application of Standard
Elektrik, 371 F. 2d 870, 54 CCPA 1043 (1967); Food Fair
Stores, Inc. v. Food Fair, Inc., 177 F. 2d 177 (Ast Cir. 1949).
Were we considering de novo whether EVEREADY was
descriptive, we might reach a different conclusion than the
district court, but it is our opinion that the issue is close. In
Al9
Independent Nail & Packing Co., Inc. v. Stronghold Screw
Products, Inc., supra, this court indicated it considered “Hole-
proof” as applied to stockings suggestive. The statement was
made with reference to Holeproof Hosiery Co. v. Wallach Bros.,
172 F. 859 (2d Cir. 1909), although the court in that case did
not pause to consider whether the mark was descriptive or sug-
gestive but held that the mark had an established secondary
meaning. The court in Holeproof Hosiery also discussed whether
the mark was false and misleading. It held that no one would
be misled because no one would be fatuous enough to believe
the socks would never wear out. The mark EVEREADY is
closely analogous as applied to batteries. It suggests the quality
of long life, but no one in our society would be deceived into
thinking that this type of battery would never wear out or that
its shelf life was infinite. There is less incongruity with regard
to flashlight bodies. Nevertheless, we need not decide whether
the mark’s reference is too direct for the mark to be considered
nondescriptive or whether the district court’s holding to that
effect should be overruled because of what we consider over-
whelming evidence in the record of secondary meaning.
2. Secondary Meaning
Secondary meaning need only be shown if a mark sought
to be registered or sustained is found to be or is conceded to be
descriptive. Watkins Products, Inc. v. Sunway Fruit Products,
Inc., supra.
For purposes of this section we will assume arguendo the
correctness of the finding of the district court that Carbide’s
mark is descriptive.
The history and policy behind the secondary meaning doc-
trine was well stated in G & C Merriam Co. v. Saalfield, 198 F.
369 (6th Cir. 1912), cert. denied, 243 U. S. 651, 37 S. Ct. 478,
61 L. Ed. 947 (1917):
“It contemplates that a word or phrase originally, and
in that sense primarily, incapable of exclusive appropria-
A20
tion with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless
have been used so long and so exclusively by one producer
with reference to his article that, in that trade and to that
branch of the purchasing public, the word or phrase had
come to mean that the article was his product; in other
words, had come to be, to them, his trade-mark. So it was
said that the word had come to have a secondary meaning,
although this phrase, ‘secondary meaning,’ seems not hap-
pily chosen, because, in the limited field, this new meaning
is primary rather than secondary; that is is to say, it is, in
that field, the natural meaning.” Jd. at 373.
To establish secondary meaning it is not necessary for the public
to be aware of the name of the manufacturer from which a
product emanates. It is sufficient if the public is aware that the
product comes from a single, though anonymous, source.
Spangler Candy Co. v. Crystal Pure Candy Co., 353 F. 2d 641,
647 (7th Cir. 1965). It is easier to establish secondary mean-
ing where the term used, while descriptive, is not generic. W. E.
Bassett Company v. Revlon, Inc., 435 F. 2d 656, 661 (2d Cir.
1970). Cf. American Aloe Corporation v. Aloe Creme Labora-
tories, Inc., 420 F. 2d 1248 (7th Cir. 1970), cert. denied, 398
U. S. 929, 90 S. Ct. 1820, 26 L. Ed. 2d 91; Aloe Creme
Laboratories, Inc. v. Milsan, Inc., 423 F. 2d 845 (Sth Cir.
1970), cert. denied, 398 U. S. 928, 90 S. Ct. 1818, 26 L. Ed.
2d 90.
We agree with the district court’s summary of the factors
relevant on the issue of secondary meaning: “The amount and
manner of advertising, volume of sales, the length and manner
of use, direct consumer testimony and consumer surveys.” The
district court also summarized the evidence in this case relating
these factors to Carbide:
“The evidence shows that Carbide and its predecessors
have distributed and sold electrical products under the
EVEREADY mark since 1909; that in 1915 !0 million
dry cell batteries marked EVEREADY alone were sold
with an advertising cost of approximately $225,000; that
ee os ee
A21
Carbide’s sales of electrical products under the EVER-
EADY mark from 1963 to 1973 exceeded $100,000,000
each year; that during the 1963-1973 period Carbide ad-
vertised in magazines and trade journals, on radio and
television and through point of sale displays and that the
cost of the 1963-67 advertising was $50,000,000.” 392
F. Supp. at 288.
Advertising expenditures, of course, are a measure of the input
by which a company attempts to establish a secondary meaning.
In issue is the success of this effort. The chief _juiry is directed
toward purchasers’ attitudes toward a mark. Carter-Wallace Inc.
v. Procter & Gamble Co., 434 F. 2d 794, 802 (9th Cir. 1970).
The public’s attitude is more directly indicated by remarks of
counsel for Ever-Ready. In his opening statement he said, “All
right. We don’t sell batteries, and that’s what everybody thinks
of when you mention the name EVEREADY.” Later during
the trial he made a similar remark.
Two surveys were taken in anticipation of this litigation. The
district court discounted them on the issue of secondary mean-
ing stating:
“Carbide introduced two surveys in evidence on the
issue of likelihood of confusion. The surveys, however,
do not help on the secondary meaning issue. There is no
apparent evaluation of the products which would form a
basis for the acquisition of secondary meaning. Indeed,
there is no showing that the interviewee had past expe-
rience with Carbide’s products so as to establish brand
awareness.” (Footnote omitted.) 392 F. Supp. at 289.
We know of no doctrine which limits use of such evidence to
the issue on which it was originally introduced. It was perhaps
only initially introduced on the issue of likelihood of confusion
due to uncertainty as to whether the validity of Carbide’s mark
was in issue, see part I. A., and confusion over whether incon-
testability prevented Ever-Ready from raising descriptiveness as
a defense. We have held that this defense should not have been
considered in part I. B. In each of the surveys an insig-
A22
nificant number of persons named Carbide as the maker of
defendants’ products, but in excess of 50% of those interviewed
associated Carbide products, such as batteries and flashlights,
with defendants’ mark. The only conclusion that can be drawn
from these results is that an extremely significant portion of the
population associates Carbide’s products with a single anony-
mous source. The survey questions were not designed to estab-
lish secondary meaning; but once the issue of descriptiveness
was improperly considered, the survey results could not be
ignored.°
Additionally, we find it difficult to believe that anyone liv-
ing in our society, which has daily familiarity with hundreds of
battery-operated products, can be other than thoroughly
acquainted with the EVEREADY mark. While perhaps not
many know that Carbide is the manufacturer of EVEREADY
products, few would have any doubt that the term was being
utilized other than to indica‘e the single, though anonymous,
source. A court should not play the ostrich with regard to
such general public knowledge.
We hold that the district court’s determination that there
was inadequate evidence to find that EVEREADY had
acquired a secondary meaning is clearly erroneous.
D. Summary
Once Carbide’s mark was established as incontestable, the
district court should not have considered descriptiveness as a
defense to plaintiff's suit. The only grounds upon which the
validity of the mark could have been challenged were those
enumerated in §1115(b). Regardless of incontestability,
plaintiff clearly established the validity of its mark on the basis
of secondary meaning even if we were to accept the district
court’s conclusion that the mark is descriptive.
9. For a detailed discussion of the weight to be given the
surveys, see part II, infra.
A23
II. Likelihood of Confusion
Section 1114, in relevant part, provides that any person who
uses a mark in commerce which is likely to cause confusion
with a registered mark shall be subject to the various reme-
dies provided in the statute. A key issue in this case is whether
it is likely that the public will be confused into believing that
the products upon which the defendants’ mark, Ever-Ready,
appears emanate from the same source as products upon which
plaintiffs mark, EVEREADY, appears.
In determining whether likelihood of confusion exists, courts
consider such factors as the type of trademark in issue, the sim-
ilarity of design, similarity of products, identity of retail] outlets
and purchasers, identity of advertising media utilized, defend-
ant’s intent, and actual confusion. Roto-Rooter Corporation
vy. O'Neal, 513 F. 2d 44, 45-46 (Sth Cir. 1975). Survey
evidence is of*=n used because it is easier to obtain than evi-
dence of actual confusion. Products need not be in direct
competition for nfringement to exist. E.g., Continental Motors
Corporation v. Continental Aviation Corporation, 375 F. 2d
857, 861 (Sth Cir. 1967). Of course, the more closely prod-
ucts are related the more likely sources may be confused.
Nevertheless, the directness of competition is only one factor to
be considered in determining likelihood of confusion. Id. A
distinctive mark or name will be more broadly protected than
words, such as “every ready,” which have been registered
and applied to a variety of products. Philco Corporation v.
F. & B. Manufacturing Co., 170 F. 2d 958, 961 (7th Cir.
1948), cert. denied, 336 U. S. 945, 69 S. Ct. 813, 93 L. Ed.
1102 (1949).
The district court found that the parties’ marks were dis-
similar, The conclusion was based “on the whole appearance”
of the marks, and we would agree that when the marks are
A24
placed side-by-side differences are readily apparent.’® How-
ever, as the district court noted at an earlier point in its opinion,
a side-by-side comparison of the marks is not the proper test.
The test is the consumers’ state of mind when faced with the
marks individually. G. D. Searle & Co. v. Chas. Pfizer & Co.,
Inc., 265 F. 2d 385, 388 (7th Cir. 1959), cert. denied, 361
U. S. 819, 80 S. Ct. 64, 4 L. Ed. 2d 65; Independent Nail
& Packing Co., Inc. v. Stronghold Screw Products, Inc., supra,
205 F. 2d at 924. Courts have often held that small changes
in words, such as adding or deleting a hyphen, are insufficient
to distinguish marks. E.g., Stix Products, Inc. v. United Mer-
chants & Manufacturers, Inc., 295 F. Supp. 479 (S. D. N. Y.
1968). Indeed, the terms “EVEREADY” and EVER-READY”
have been held to be “in legal contemplation identical.” Union
Carbide Corporation vy. Midwest Mower Corporation, 132
U.S. P. Q. 689 (T. T. A. B. 1962). In Independent Nail the
district court distinguished the parties’ marks stating that the
marks had no resemblance to each other beyond the use of
the word “Stronghold.” This court reversed stating: “The
court apparently gave no weight to the fact that ‘Stronghold’
is the most prominent word in defendant’s mark while ‘Strong-
hold Nails’ are the most prominent words appearing in plain-
tiffs mark.” 205 F. 2d at 924. Consumers often do not
retain a clear impression of the precise form in which a mark
appears. This is not from carelessness but rather is due to
the fallibility of the human memory. In Spangler Candy v.
Crystal Pure Candy Co., supra, we indicated:
“It is sufficient if one adopts a trade name or a trade
mark so like another in form, spelling, or sound that one,
10. The district court noted these differences:
“The EVEREADY mark as used has all letters capitalized.
‘Ever-Ready’ as used only as the ‘E’ and ‘R’ capitalized.
Ever-Ready’s mark consisted of two words. The marks are
spelled differently. The EVEREADY mark appears in ascend-
ing and descending block letters and appears generally on a
blue or red background, which is pentagonal or hexagonal in
shape. ‘Ever-Ready’ is written in descending script on a black
trapezoidal background.” 392 F. Supp. at 291 n. 19.
A25
with a not very definite or clear recollection as to the
real trade-mark, is likely to become confused or misled.”
353 F. 2d at 644.
See also Stix Products Inc. v. United Merchants & Manu-
facturers Inc., supra. We find no evidence of bad faith on the
part of Ever-Ready, but the latecomer has a responsibility to
avoid confusion.
Cases such as Quaker Oats Co. v. General Mills, Inc., 134
F, 2d 429 (7th Cir. 1943), and Southern Shell Fish Co., Inc.
v. S. Felicione & Sons Fish Co., Inc., 108 U. S. P. Q. 289
(Comm. of Pat. 1956), do not conflict with the principles
stated above. In Quaker Oats, this court held that the mark
“Oaties” did not infringe General Mills marks, Wheaties,
Kornies, and Maizies, in the light of substantially different
package designs, a clear statement appearing on the box that
the cereal was manufactured by Quaker Oats Co., and the
name Quaker appearing at 20 places on the box. Quaker pro-
duced over 100 witnesses who testified they were not con-
fused in contrast to a survey of 17 persons taken by General
Mills which indicated they thought the cereal was made by
the Wheaties Company. The court held that the test was
whether Quaker had taken reasonable precautions to prevent
confusion, and the court held that it had. We note that the
words used in the marks in Quaker Oats, Wheaties and Oaties,
were much less similar than EVEREADY and Ever-Ready.
Also, there was a very close relationship between the mark
Oaties and the product on which it appeared, a cereal made
from oats.
In Southern Shell Fish, the assistant commissioner held in view
of the fact that the Gulf area was important in connection with
the packing of sea food and since the products in competition
are normally sold on a self-service basis, and further in light of
the visual differences of the packages, the similarity in sound of
the marks, Gulf Taste and Gulf Kist was not sufficient to cause
likelihood of confusion. It would appear that buyers would be
A26
much more likely to associate the product with the geographical
area of the Gulf than with a particular company. That situation
does not exist in the present case. Also, we note that once again
the words used in the marks are not as similar as those involved
in the present case.
This court has held that likelihood of confusion is a question
of fact subject to the clearly erroneous rule. Watkins Products,
Inc. v. Sunway Fruits Products, Inc., supra, 311 F. 2d at 499.
Nevertheless, to the extent the determination is predicated upon
the similarity of the marks themselves, it is a mixed question of
law and fact with this court being in as good a position as the
trial judge to determine the probability of confusion. Harold F.
Ritchie v. Chesebrough-Pond’s, Inc., 281 F. 2d 755 (2d Cir.
1960). See J. B. Williams Company, Inc. v. LeConte Cosmetics,
Inc., 523 F. 2d 187 (9th Cir. 1975). We hold that the trial
court erred in holding that the marks of the plaintiff and de-
fendant were dissimilar in the contemplation of the law. The
court did not err in considering the mark as a whole but failed
to give sufficient weight to the predominant feature of the marks,
the words “ever ready.”
The district court rejected all the evidence of actual confusion
presented by Carbide as not being entitled to weight. Since the
test under § 1114 is likelihood of confusion, courts have often
held that it is unnecessary to show actual confusion. E.g., Wat-
kins Products, Inc. v. Sunway Fruit Products, Inc., supra; Inde-
pendent Nail & Packing Co., Inc. v. Stronghold Screw Products,
Inc., supra. Nevertheless, courts often view evidence of actual
confusion as the best evidence of likelihood of confusion, though
isolated instances of actual confusion or misdirected mail have
been held insufficient to sustain a finding of likelihood of con-
fusion. Compare, e.g., Spangler Candy Co. v. Crystal Pure
Candy Co., supra, 353 F. 2d at 644; Roto-Rooter Corporation
v. O’Neal, supra, 513 F. 2d at 45-46 with Sunbeam Lighting
Co., v. Sunbeam Corporation, 183 F. 2d 969, 974 (9th Cir.
1950), cert. denied, 340 U. S. 920, 71 S. Ct. 357, 95 L. Ed.
A27
665 (1951); Everest & Jennings, Inc. v. E & J Manufacturing
Co., 263 F. 2d 254, 260 (9th Cir. 1958), cert. denied, 360
U. S. 902, 79 S. Ct. 1284, 3 L. Ed. 2d 1254 (1959). The
value of evidence of actual confusion is greater when the prod-
ucts involved are low value items because purchasers are un-
likely to complain when dissatisfied, which would bring to light
confusion; but rather they are likely simply to avoid all products
produced by the company which they believe produced the
product which caused them trouble.
Carbide presented three instances of actual confusion to the
trial court. The first was a letter of complaint concerning a
bulb which was initially sent to “Ever-Ready, Inc.; Chicago,
Illinois 60607,” the address which appears on Ever-Ready’s
miniature bulb blister packs. The letter was returned for insuf-
ficient address. She then mailed the letter to Carbide in New
York. Concernings this evidence the district court stated:
“This incident does not prove that Mrs. Kaplan was con-
fused. Initially she knew from whom she purchased the
defective product since she addressed the letter to Ever-
Ready in Chicago. Indeed, she gave the exact address
which appears on Ever-Ready’s miniature bulb blister
packs, At the least, this incident shows that Mrs. Kaplan
did not identify Carbide as the source of the product.”
Footnote omitted.) 392 F. Supp. at 290.
We disagree, finding a more reasonable inference is that she first
obtained the address from the blister pack and then when the
letter was returned as having an insufficient address she found
a more complete address from some other source for what she
thought was the one company using the combination of the
words “ever” and “ready” for bulbs, batteries, and similar prod-
ducts. She need not have known Carbide by name for confusion
to have been demonstrated. Finally in the absence of knowledge
by the consuming public of the defendant as a marketing entity,
it is clear that her reference in her letter to “your fine reputa-
tion” did not refer to anyone other than Carbide.
A28
The second instance occurred when Carbide’s then Chicago
counsel sent his secretary, Mr. Bailis, to purchase EVEREADY
high-intensity miniature lamp bulbs. In this court it is disputed
whether he knew Carbide did not sell bulbs so denominated;
but the district court held that he did, and this finding is not
clearly erroneous. Mrs. Bailis went to Marshall Field & Co.,
and the sales clerk showed her Ever-Ready bulbs and assured
her that the bulbs were made by Carbide. Regarding this evi-
dence the district court stated:
“The sales clerk’s confusion is not entitled to any weight.
Obviously the desire to make a sale influenced her actions.
At least, it is impossible to distinguish between her alleged
confusion and her desire to make a sale. Moreover, evi-
dence of this type, manufactured by a party after a com-
plaint has been filed, is suspect.” 392 F. Supp. at 291.
This court upheld the district court’s finding of no likelihood of
confusion in the face of a similar attempt to manufacture evi-
dence in Philco Corporation v. F. &B. Manufacturing Co., supra,
170 F. 2d at 961, though the evidence in that case was less
clear because the court believed that the sales clerk recognized
the purchaser’s mistake and substituted the product which the
purchaser was apparently seeking whereas in this case the sales
clerk made a specific representation that the goods were manu-
factured by Carbide. If the court meant to indicate that con-
fusion by sales clerks is never probative, we disagree. Although
we have great difficulty conceiving that a clerk’s anxiety to make
this small-dollar sale would prompt a deliberate and knowledge-
able misrepresentation, if we assume that the clerk was not con-
fused, the evidence is nevertheless relevant because it is unfair
competition for a person to put a product into a dealer’s hands
which a producer can reasonable anticipate may be easily passed
off as the goods of another. Stewart Paint Manufacturing Co.
Vv. United Hardware Distributing Co., supra, 253 F. 2d at 575.
See Warner & Co. v. Lilly & Co., supra. Assuming the clerk
was confused, this gives rise to an inference that purchasers
A29
would also be confused because salespersons are more likely
than customers to be familiar with various marks on the mer-
chandise they sell and hence are less likely to be confused.
Jockey International, Inc. v. Burkard, supra, 185 U. S. P. Q.
at 205; Stix Products, ‘nc. v. United Merchants & Manufactuers
Inc., supra, 295 F. Supp. at 495 n. 56. See Aloe Creme Labora-
tories, Inc. v. Milson, Inc., supra, 423 F. 2d at 850.
The third incident involved testimony by a Mrs. Lonczak and
her daughter from New Jersey who wrote a letter to Carbide
protesting the poor quality of an Ever-Ready bulb. The court
attributed this to carelessness in examining the marks and ig-
noring the Chicago address appearing on the blister packet.
Mrs. Lonczak initially called telephone information service to
obtain Ever-Ready’s address. She apparently viewed the address
given on the blister packet as inadequate but did call Chicago
and asked for the address of the “EVEREADY battery people.”
Upon finding there were several “Ever Readys” listed, she called
the store where she had purchased the bulbs, explained the
problem with the bulbs, and asked for an address to which to
send a letter of complaint. She was given Carbide’s address.
The district court statés that there is no evidence that Mrs.
Lonczak correctly identified the product to the store so as to
enable it to identify Ever-Ready as the product’s source. Pre-
sumably this is a reference tc the difficulty in aurally distinguish-
ing EVEREADY from Ever-Ready, and Mrs. Lonczak testified
that she told the store that she was the person who had been
complaining about the “EVEREADY” bulbs so it is possible, if
she was talking to someone unfamiliar with her complaints,
that the sales person thought she was referring to flashlight
bulbs. The district court states that at most this evidences the
store’s confusion. The district court also states that “Mrs. Lon-
czak did not examine the ‘Ever-Ready’ mark on the miniature
bulbs until after she was contacted by Carbide’s counsel.” 392
F. Supp. at 291i. The testimony shows that while Carbide’s
counsel was interviewing Mrs. Lonczak her husband got an
A30
EVEREADY battery from a flashlight, and they noticed the
difference between the marks while comparing them.
We find the testimony of Mrs. Lonczak and her daughter
probative of their confusion. We do not discredit the sales
person’s confusion because he was a sales person but rather be-
cause he was told of the product and the product is normally
bought on a self-service basis—by sight. At least the district
court’s conclusion in this regard is not clearly erroneous. On
the other hand, Mrs. Lonczak’s testimony is clear that she thought
the bulb was put out by the EVEREADY battery people when
she purchased it, and her daughter’s testimony is clear that she
thought it was put out by ie same company that put out batteries
and flashlights from the time her mother gave her the bulbs.
This is supported by her testimony that when she called informa-
tion she asked for the address of the EVEREADY battery people.
Her testimony cannot be discredited because she did not make
an exacting examination of the Ever-Ready mark or did not
compare it with a product of Carbide containing the EVER-
EADY mark. As we have indicated above, a side-by-side com-
parison is not the test of likelihood of confusion.
A district judge’s determination of evidentiary matters is en-
titled to great respect. Though we disagree with the district
judge on the above points, we would hesitate to find his de-
termination that Carbide failed to establish likelihood of confu-
sion was clearly erroneous were it not for the survey evidence
presented at trial.
Two surveys were taken by an expert in the field of market
research and public opinion surveys. One was taken to estab-
lish likelihood of confusion between Ever-Ready lamps and
Carbide’s products; one was taken to determine likelihood of
confusion between Ever-Ready bulbs and Carbide’s products.
Relevant facts concerning the surveys follow:"
11. Question 1 in each survey was a screening question designed
to eliminate persons involved in the bulb or lamp industries.
Lamps Survey
Questions
2) Who do you think puts
out the lamp shown
here?
3) What makes you think
so?
4) Please name any other
products put out by the
same concern which puts
out the lamp shown here.
Bulb Survey
2) Who do you think puts
out these mini-bulbs?
3) What makes you think so?
4a) Have you seen or heard
of any advertising by the
concern which you think
puts out these mini-bulbs?
4b) Please specify where,
A picture of an Ever-
Ready lamp was shown
to each person being in-
terviewed.
Number
Interviewed
1009
Results:
Number who associated the
products displayed with
Union Carbide
a) by answering Union Car-
bide
b) by indicating Carbide
products, such as bat-
teries, as being put out
by the same concern
Subtotals
c) associated blister packet
with Carbide’s advertis-
ing
Totals
what type and features
you re-call.
5) Please name any other
products put out by the
same concern which you
think puts out these mini-
bulbs.
A blister pack of Ever-
Ready bulbs was shown to
each person being inter-
viewed.
1014
Lamp Survey _ Bulb Survey
6 (6%) 13 (1.3%)
551 (54.6%) 545 (53.7%)
557 (55.2%) 558 (55.0%)
—— 57 (5.6%)
557 (55.2%) 615 (60.6%)
A32
We note these percentages are substantially higher than those
held sufficient in other cases to support in part an inference that
confusion is likely. Jockey International, Inc. vy. Burkard, supra,
(11.4% }; Seven-Up Company v. Green Mill Beverage Co., 191
F. Supp. 32 (N. D. Ill. 1961), (25%); Humble Oil & Refining
Co. V. American Oil Co., 259 F. Supp. 559 (E. D. Mo. 1966),
(18% ); Simoniz Co. v. Stumpmier, 117 U. S. P. Q. 130 (E. D.
Ill. 1957), (18%, 24%).
Prior to trial the survey questions were presented to Judge
Tone, then a district judge, along with memoranda and argu-
ments. He ruled the survey results would be admissible at trial
but reserved the question of the weight to be given the survey
evidence. In light of the cost of taking a survey, this was a com-
mendable procedure to follow where parties cannot agree on
survey questions. However, we also observe that desirable pro-
cedure would be for the parties to attempt in good faith to agree
upon the questions to be in such a survey.
The district court found the surveys were entitled “to little,
if any, weight.” It based this holding on General Motors Cor-
poration v. Cadillac Marine & Boat Co., 226 F. Supp. 716
(W. D. Mich. 1964) ; the testimony of Thomas Fitzpatrick, plain-
tiffs expert; and certain statistical correlations.
In Cadillac the plaintiff introduced survey results which the
court refused to credit. The purpose of the survey was to estab-
lish likelihood of confusion, and the questions were similar to
those in the present case.’* However, the mechanics of the
Cadillac survey were sloppy. The sample was of only about 150
persons. Many had no knowledge of boats and were not “pur-
chasers.’ The questioning was conducted by two college stu-
dents, and the tabulations were held to be “neither accurate nor
truly reflective.” The court held the second question to be a
“classic example of a leading question.” Id. at 736. Why
this characterization was justified is not clearly explained,
12. “(1) Who do you think puts out the boats shown on the
opposite page; and (2) Will you please name anything else that you
think is put out by the same concern?” 226 F. Supp. at 734 n. 16.
A33
but the court did state: “The question directed an opinion
to those who had formed none on the first inquiry.” Id.*
In other cases, very similar surveys have been held to be of
probative value. In Sperry Rand Corporation v. Seawol Distribu-
tors, Inc., 140 U.S. P. Q. 532 (S. D. Cal. 1964), the court held
a similar survey competent evidence which confirmed the in-
dependent judgment of that court. In Standard Oil Co. Vv.
Standard Oil Co., 141 F. Supp. 876 (D. Wy. 1956), aff'd, 252
F. 2d 65 (10th Cir. 1958), the district court relied in part upon
a survey in which persons were asked what their reactions
were to the word Sohio. In affirming, the appellate court ap-
proved the use of the survey by the district court."* 252 F. 2d
at 74-75. See also Girl Scouts of United States v. Hollingsworth,
188 F. Supp. 707 (E. D. N. Y. 1960).
On cross-examination Thomas Fitzpatrick, plaintiff's expert
who prepared and supervised the surveys testified:
“Q. Well, would you go so far as to say that the survey
there conducted in the Cadillac case was not probative, or
did not tend to show likelihood of confusion as to the
source of origin of the Cadillac boats?
“A. I would say that it was a leading questionnaire.
“Q. And, therefore, slanted?
“A. Yes.
13. While scarcely illuminating on the effi of the survey
utilized in Cadillac, there may be some aspects of ratio decidendi
in the district court’s observation: “General Motors should not be
permitted to reach out its strong, choking, monopolistic hand to
s industries or free enterprises located within the City of
Cadillac, Michigan.” Jd. at 741.
14. The questions asked in Standard Oil are not reproduced
in the published opinions but are part of the record on this appeal.
The questions were:
“1. If you were to stop at a service station in Michigan, dis-
playing the name SOHIO as shown here, what oil company
would you think put out the gas and oil sold there?
“2. What is there about the name that suggests that particular
oil company to you?
“3. Please name any well-known brands or trade names used
by that oil company for its gas or oil.”
A34
“Q. And, therefore, likely to lead to bias?
“A. Possibly, yes.
“Q. And, therefore, likely to lead to error?
“A. Correct.”
On re-direct examination he testified that the sample size in
the Cadillac survey was inadequate but that the questions were
not leading and that on direct examination, when he testified to
the contrary, he thought he was being asked what the judge
thought in the Cadillac case. The re-direct examination took
place after a recess; defendant implies that Fitzpatrick may have
changed his testimony as a result of a conference with Carbide’s
attorneys. The district court neither specifically credited nor
discredited this testimony, but it ignored it.
The district court noted that approximately 600 of the in-
terviewees in the bulb survey (59.1%) responded “ever ready”
to Question 2 “because it says so on the pack.” He also noted
that of the 176 who indicated a specific source of the product in
response to this question approximately 90% identified some-
one other than Carbide.’® There is no dispute that the answers
to these first questions do not, alone, establish confusion.
The district court attached significance to the statistics which
show that in the bulb survey 179 interviewees responded ini-
tially, “I don’t know” to Questions 2 and 3 but of these 48
responded batteries or flashlights to the final question. These
48 were counted as cases of confusion. Finally, the court found
the advertising question in the buib survey improper because
Ever-Ready does not advertise its mini-bulbs while Carbide does
substantial advertising. While there is uncontradicted evidence
that Ever-Ready bulbs have been advertised at least to a limited
extent by dealers, we cannot hold the district court clearly er-
roneous for treating this advertising as insignificant in light of
15. Defendants similarly argue: ‘635 properly stated that the
product was put out by ‘Ever-Ready because it says so.’ 179
answered ‘I don’t know.’ 140 named G. E. or some other firm. 23
positively identified defendant 2s ‘Ever-Ready, Chicago.’ Thus a total
of 977 or 97% were not confused.”
A35
the extreme disproportion between Ever-Ready’s advertising and
Carbide’s.
We do, however, hold the district court clearly erroneous in
not crediting the surveys taken by Carbide. That the first
questions alone do not show likelihood of confusion is significant.
They only show the interviewees do not associate the Ever-
Ready name with Carbide. The test, as discussed supra, is
whether they associate the products either with Carbide or
with the single, though anonymous, source which manufactures
EVEREADY products. Those who indicated that they believed
other Carbide products were manufactured by the same company
that produced the bulbs or lamps shown must be considered
cases of confusion. The statistics regarding those who initially
answered, “I don’t know,” though arguably consistent with the
latter questions being leading, are also consistent with confusion
resulting from an anonymous source. The questions on their
face are not leading. Apparently the argument that they are
leading is based on the likelihood that the first questions will
provoke the response, “ever ready,” and then the interviewee
will be more likely to confuse the product because the marks
are aurally identical while there are visual differences. This
is not a case where the interviewer stated the similar parts of
the plaintiff's name several times in questions and then asked
about the defendant company. Cf. Sears, Roebuck & Co. Vv.
All States Life Insurance Co., 246 F. 2d 161 (Sth Cir. 1957),
cert. denied, 355 U. S. 894, 78 S. Ct. 268, 2 L. Ed. 2d 192.
The surveys in this case do not share many of the weaknesses
of the one in Cadillac. There was clear testimony that the
sample size was sufficient, and that is not disputed. The survey
was taken by professionals, who were stipulated to be qualified
experts. The survey was directed to the relevant universe.
Almost anyone would be likely to have purchased bulbs, lamps,
batteries or flashlights. Thus a survey of the general population
was appropriate. The general population is not equally interested
in boats. A survey is more helpful where low value items are in-
A36
volved, rather than high value items, because purchasers of
high value items are likely to study the product they are pur-
chasing more carefully than the purchaser of a low value item.
We do not, of course, mean to indicate that a survey could not
be probative where high value items are in issue, an issue not
before this court. See Grotrian v. Steinway & Sons, 365 F. Supp.
707, 715-17 (S. D. N. Y. 1973), affd in relevant part, 523
F, 2d 1331, 1339-42 (2d Cir. 1975).
We cannot hold the district court’s determination that the
advertising question was improper was clearly erroneous in
light of the finding that Ever-Ready’s advertising was insigni-
ficant compared to Carbide’s. Fitzpatrick eliminated the adver-
tising question from the lamp survey upon learning that it was
not advertised. Since the only advertising the question was
likely to call to mind was Carbide’s, the responses indicating
Carbide’s advertisements cannot be counted as cases of con-
fusion. Whether the presence of the question biased the survey
r sults is a separate question. Carbide argues that a compari-
sun of the results of the lamp survey (55.2% confused), which
did not contain an advertising question, with the results of the
bulb survey without considering the 57 respondents who were
considered confused because they associated the bulbs with
Carbide’s advertising (55.0% confused) shows that the results
were not biased. This argument carries some weight, but it
is far from conclusive because it appears that those who asso-
ciated both Carbide’s advertising and Carbide’s products with
the bulbs were tabulated as cases of confusion by reason of
having associated the products with the bulbs. Thus a person
who might not have been confused if only asked about the
products might have been reminded of EVEREADY adver-
tising and then associated the advertising with other
EVEREADY products. This weakens the probative value of
the bulb survey. Nevertheless, we believe the likelihood of
substantial bias as a result of the advertising question is small.
Taking into account all the above factors, we hold the dis-
trict court clearly erroneous in finding no likelihood of con-
A37
fusion. The predominant feature of the marks are the words
“ever ready.” The visual differences are not so substantial that
they are likely to overcome the effect of this similarity viuien
the marks are not side-by-side. The lamp survey showed sub-
stantial likelihood of confusion. The percentage of the inter-
viewees confused was far in excess of the percentages which
have been held sufficient to establish likelihood of confusion.
Though the bulb survey cannot be credited to the extent of the
lamp survey, we believe likelihood of confusion regarding the
bulbs was also shown. There was evidence of actual confusion
regarding the bulbs. The design of the Ever-Ready mark ap-
pearing on the bulbs is similar to that appearing on the lamp
so its results tend to show the bulbs would be confused also.
We do not believe the bias in the bulb survey was likely to be
sufficiently great so as to reduce to insignificance the extremely
high percentage of confusion shown by the survey.
Ill. Laches
Ever-Ready argued in the district court that even if it is
infringing Carbide’s mark, it should not be enjoined because
Carbide is barred by laches. The essence of the argument was
that Ever-Ready distributed products for Carbide about 1952
and therefore Carbide clearly knew of the company for
many years. Prior to 1971, Ever-Ready did not market the
electrical products involved in this case under its own name.
It still markets many products under other names, including
such products as flashlights (Femlite; Lumijet). In the trade
Ever-Ready has used its own name in marketing these products,
but there is no evidence that this resulted in confusion. In
1971, Ever-Ready began marketing the products involved in
this case. Carbide filed its complaint on December 30, 1971.
The time lapse is insufficient to establish laches on the facts
of this case. In any event, the issue of laches was not urged
on this appeal and may be considered as having been waived.
438
IV. Antitrust Issues
As noted hereinbefore, the antitrust issues raised as an
affirmative defense by the defendants were severed for sepa-
rate trial pursuant to Fed R. Civ. P. 42(b) and are not involved
in this appeal.
In their amended answer, the primary thrust of the defend-
ants’ antitrust contentions is directed toward 15 U. S. C.
§ 1115(b) (7), which relates only to one of the seven specified
defenses to incontestability of plaintiff's trademarks. In this
opinion, we have alternatively determined validity of the trade-
marks irrespective of the Lanham Act which arguably would
appear to preclude any further viability to the antitrust defense.
However, a fair reading of the antitrust affirmative defense
would indicate that it is sufficiently broad as to include a
claim for equitable denial of enforcement of the trademarks on
the basis of their claimed use in violation of the antitrust laws
aside from the specific defense to incontestability. In Stiftung
v. V. E. B. Carl Zeiss, Jena, 298 F. Supp. 1309, 1314 (S. D.N.
Y. 1969), aff'd. on the point in issue, 433 F. 2d 686, 706 (2nd
Cir. 1970), cert. denied, 403 U. S. 905, 91 S. Ct. 2205, 29
L. Ed. 2d 680 (1971), Judge Mansfield, then of the district
bench, reached the conclusion that although the issue was not
free from doubt, “a court, in the exercise of its equity powers,
may deny enforcement cf a trademark on the part of one who
has used that trademark in violation of the antitrust laws.” We
‘agree but we also agree with Judge Mansfield’s opinion that the
burden of such proof is a heavy one on the proponent of the
issue and that the forces favoring the defense are much weaker
than in patent cases which involve by their very nature a mon-
opoly situation. Nevertheless, in view of the posture of this
case as it has reached us, we will not deny the defendants the
opportunity to take up the burden of proof.
A39
V. Relief
The judgment of the district court is reversed and the case
is remanded for further proceedings not inconsistent with this
opinion. In the event of a failure by the defendants upon
further proceedings to sustain their antitrust affirmative defenses,
the district court will enter an appropriate injunction. In so
doing, the court will have to determine whether Ever-Ready
should be barred from using its name in the trade in connection
with electrical products such as mini-bulbs and lamps. We also
leave to the district court’s discretion in the event the plaintiff
ultimately prevails whether to grant the remedy of delivering
up articles on which the mark appears sought by Carbide under
§ 1118. All further proceedings in this cause shall be reas-
signed to another judge pursuant to Circuit Rule 23.
Since all the relief plaintiff seeks may be granted under the
federal act, we need not address plaintiff's state law unfair
competition and dilution claims.
The judgment of this court will assess costs of this appeal
against the defendants.
REVERSED AND REMANDED.
A40
UNITED STATES DisTRICT COURT,
N. D. Illinois, E. D.
Feb. 18, 1975.
UNION CARBIDE CORPORATION, a corporation,
Plaintiff,
vs.
EvER-READY INCORPORATED, a corporation, and Mark Gilbert,
an Individual,
Defendants.
No. 71 C 3151.
MEMORANDUM OPINION.
MarsHALL, District Judge.
This is an action for trademark infringement and unfair com-
petition brought by the plaintiff, Union Carbide Corporation
(hereafter “Carbide”), pursuant to the Lanham Act, 15
U. S. C. § 1051 et seq., and the Illinois Trademark Act. Ill. Rev.
Stat. 1973, ch. 140, § 8 et seq.’ Jurisdiction is founded upon 15
U.S. C. § 1121 and 28 U.S. C. §§ 1332 and 1338.
The defendants Ever-Ready Incorporated, by change of name
Ever-Ready International Ltd. (hereafter “Ever-Ready”), and
Mark Gilbert (hereafter “Gilbert”), have asserted the affirma-
tive defenses of laches and misuse of trademark in violation of
the anti-trust laws. Prior to trial, the anti-trust misuse issues
1. Appended to Carbide’s primary trademark infringement and
unfair competition claims is a dilution claim brought pursuant to the
Illinois Trademark Act, Lil. Rev. Stat. 1973, ch. 140, § 22, which
provides for injunctive relief to protect against “dilution of the
distinctive quality of the mark.”
A4l1
were severed pursuant to Rule 42(b) of the Federal Rules of
Civil Procedure. Consequently, presently ready for decision are
the issues of trademark infringement, unfair competition and
laches.
Carbide is a New York corporation authorized to do business
in Illinois with its principal place of business in New York.
Ever-Ready is an Illinois corporation having its principal place
of business in Chicago. Gilbert, a resident of Illinois, is the
President, a Director and the General Manager of Ever-Ready.
The matter in controversy, exclusive of interest and costs, ex-
ceeds the sum of $10,000.
In 1898 Carbide’s predecessor, American Electrical Novelty
and Manufacturing Company (hereafter “AEN&M”) adopted
the term EVER READY as a means of distinguishing its elec-
trical appliance products from the products of others. In July,
1901, AEN&M originated and adopted as a trademark a de-
vice which included a monogram consisting of the letters “E”
and “R”, the word EVEREADY and the words THE FAMOUS
EVER READY BATTERY.
On April 7, 1909, the corporate name of AEN&M was
changed to American Ever Ready Company. The business, prop-
erty and assets of American Ever Ready Company, including its
trademarks, trade names and goodwill, were assigned and trans-
ferred in 1914 to Carbide’s predecessor, the National Carbon
Company.
Carbide and its predecessors have been engaged continuously
since 1909 in manufacturing, distributing and selling throughout
the United States batteries, flashlights and miniature lamp bulbs
under the trademark EVEREADY, alone and in combination
with other words and distinctive designs, including octagonal and
hexagonal devices. Today Carbide is the owner of five United
States trademark registrations of the trademark EVEREADY.
Each trademark is in full force and effect, and affidavits for each
have been filed pursuant to 15 U. S. C. §§ 1058 and 1065.
A42
Presently, Carbide is selling under its trademark EVEREADY
electric flashlights, miniature bulbs for automobile and marine
use only and an extensive line of electric batteries.
Since 1966, Carbide’s annual sales of flashlights, batteries,
miniature bulbs and related products under its trademark
EVEREADY, have exceeded $100 million. In addition, Carbide
has advertised extensively throughout the years its batteries,
flashlights and miniature bulbs under its trademark EVEREADY
in magazines and on other periodicals, on radio and television
and through point of sale displays. Its advertising has featured
inter alia, dramatizations of the dependability, durability and
long-lasting qualities of Carbide’s products sold under its trade-
mark EVEREADY. Carbide’s total expenditures for advertising
and promoting the sales of its products under the trademark
EVEREADY from 1943 to 1974 exceed $50 million.
Defendant Gilbert began doing business in 1944 as Ever-
Ready Florescent Company. In 1946, he and his wife formed a
partnership called Ever-Ready Electric Company, the business
of which was to distribute electrical products and gift goods.
Ever-Ready was incorporated as an [Illinois corporation on
February 25, 1952 under the name Ever-Ready Electric Supply
Company and succeeded to the business of Ever-Ready Electric
Company. Thereafter, the name Ever-Ready Electric Supply
Company was changed to Ever-Ready, Incorporated, in 1955,
and to Ever-Ready International, Ltd., in 1972.
Essentially, Ever-Ready is an importer and distributor of
electrical supplies, stationery, gift items and accessories includ-
ing lamps, light bulbs, light fixtures and flashlights. It conducts
business under the trade name “Ever-Ready” alone and in
combination with a logo design.
Ever-Ready imports from Japan miniature lamp bulbs having
the term “Ever-Ready” stamped on their base. Thereafter, Ever-
Ready sells the miniature lamp bulbs at wholesale for resale
by retailers. The bulbs are sold in blister packages. Each blister
A43
pack, intended to be displayed by retailers at the point of sale,
contains two bulbs and displays the term “Ever-Ready” in a
four-sided logo, the words “high intensity minibulbs” and the
legend, “(C) 1970 Ever-Ready, Inc., Chicago, Illinois 60607.”
Ever-Ready imports high-intensity lamps manufactured in
Japan bearing the term “Ever-Ready” stamped on the lamps or
on removable labels attached thereto and desk lamps manufac-
tured in Denmark with tags bearing the term “Ever-Ready”
attached thereto. The desk lamps are sold with literature having
the term “Ever-Ready” displayed thereon and with guarantee
cards addressed to Ever-Ready Service Center. Appearing on
all the lamps sold by Ever-Ready, however, is the name of the
manufacturer.
Carbide seeks an injunction against Ever-Ready’s use of the
term “Ever-Ready” on and in connection with the advertising,
offering for sale and sale of electrical products. Carbide also
requests that Ever-Ready be required to deliver up to it the
packaging and promotional material bearing the alleged infring-
ing words and symbols.”
I. TRADEMARK INFRINGEMENT.
Section 32(1) (a) of the Lanham Act provides:
“(1) Any person who shall, without consent of the
[trademark] registrant—
“(a) use in commerce any reproduction, counter-
feit, copy, or colorable imitation of a registered mark
in connection with the sale, offering for sale, distribu-
tion, 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 [trademark] regis-
trant... .” 15 U. S. C. § 1114(1) (a).
2. Carbide does not seek damages or an accounting of Ever-
Ready’s profits.
A44
Section 45 of the Act defines “colorable imitation” as:
“. .. any mark which so resembles a registered mark as to
be likely to cause confusion or mistake or to deceive.” 15
U.S. C. § 1127.
The gravamina of an action for federal trademark infringe-
ment are (1) that the trademark owner owns a currently valid
federal trademark registration for his mark and (2) that the
infringer uses a mark likely to cause confusion, mistake or to
deceive in interstate commerce. In the present case the parties
have stipulated that Carbide is the owner of the mark
EVEREADY’ and the evidence shows that Ever-Ready uses the
term “Ever-Ready” in interstate commerce. Consequently, the
validity of Carbide’s mark and the likelihood of confusion caused
by Ever-Ready mark are the remaining issues to be resolved
on the trademark infringement question.
A. VALIDITY
Presumption of Validity. Under Section 7(b) of the Lanham
Act, 15 U. S. C. § 1057(b), registration of a mark is “prima
facies evidence” of (1) the validity of the registration, (2) the
registrant’s ownership of the mark and (3) the registrant’s exclu-
sive right to use the mark in commerce under the specified
conditions and limitations of the registration. Thus, registration
of a mark creates a presumption of validity, which is entitled to
considerable weight. Miss Universe, Inc. v. Patricelli, 408 F.
2d 506, 509 (2d Cir. 1969). The presumption of the trade-
mark’s validity, however, is rebuttable, with the burden on the
party attacking the mark or its registration. Schwinn Bicycle
Co. v. Murray Ohio Mfg. Co., 470 F. 2d 975, 977 (6th Cir.
1972).
Here there is no dispute that Carbide registered its mark
EVEREADY. Consequently, Carbide’s mark is presumed valid.
Descriptive Term. Section 2(e) of the Lanham Act, 15 U. S.
C. § 1052(e) provides in material part:
3. Stipulation of Uncontested Facts, q 6.
A45
“No trade-mark by which the goods of the applicant may
be distinguished from the goods of others shall be refused
registration on the principal register on account of its
nature unless it—
* e * e *
“(e) Consists of a mark which, (1) when applied
to the goods of the applicant is merely descriptive of
them...”
Succinctly, descriptive terms are not subject to trademark pro-
tection.* Clearly, then, where descriptive terms are used, the
presumption of validity is rebutted. Shaw-Barton, Inc. v. John
Baumgarth Co., 313 F. 2d 167 (7th Cir. 1963); John Morrell
& Co. v. Reliable Packing Co., 295 F. 2d 314 (7th Cir. 1961).
Ever-Ready argues that Carbide’s mark is descriptive only
of the products to which it is attached and hence, is not pro-
tected by the trademark laws.
The nature of the term, the common and ordinary meaning
of the term to the public and the relationship the term bears to
the particular product determine whether the terms is descrip-
tive. If the term conveys to the public the characteristics, quality,
functions or other attributes of a product, it is descriptive.
Warner & Co. v. Eli Lilly & Co., 265 U. S. 526, 44 S. Ct. 615,
68 L. Ed. 1161 (1924); Flexitized, Inc. v. National Flexitized
Corp., 335 F. 2d 774 (2d Cir. 1964). Terms which describe
the desirable aspects of a product, how a product functions or
what the product looks like are descriptive. Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F. 2d 1296 (CCPA,
1972) (the term SUPER BLEND held descriptive of multi-
viscosity oils, because the conclusion is inescapable that the
product is an allegedly superior blend of oils); Ralston Purina
Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129 (S. D. N. Y.
4. Since descriptive terms describe merely the goods to which
they are «tached, they do not perform the essential trademark func-
tion of identifying the source of the goods and distinguishing them
from the of others. Hence, the statutory exclusion. Ar-type,
Inc. v. Zappulla, 228 F. 2d 695 (2d Cir. 1956).
A46
1972) (the term Tender Vittles only a descriptive term because
the unique characteristic of the product [cat food] and the quality
which sets it apart from other non-canned cat foods is that
characteristic which is conveyed by the words “tender vittles”) ;
S. M. Flickinger Co. v. Beatrice Foods Co., 174 U. S. P. Q. 51
(T. T. A. B. 1972) (the term SUPER DUPER entitled only
to a limited protection since it is a commonly used expression
which signifies great excellence, size or the like).
Here Carbide and Ever-Ready sell a number of electrical
products. Batteries, flashlights, lamps and miniature bulbs are
among the products sold by either Carbide or Ever-Ready.
The mark at issue consists of two words “ever” and “ready”.
According to The American Heritage Dictionary of the English
Language (1969), the primary meaning of the word “ever”
is: “at all times; constantly, repeatedly.” The same dictionary
defines the word “ready” as “prepared or available for service
or action.” Thus, the combination of “ever” and “ready” means
constantly prepared or available for service. Those words as
they relate to the products sold by the parties describe a char-
acteristic or attribute of the products. Indeed, Carbide’s national
advertising in magazines and trade journals, on radio and tele-
vision and through point of sale displays has featured drama-
tizations of emergencies overcome as a result of the depend-
ability, durability and long-lasting qualities of the products
sold under the mark EVEREADY.
Other uses of the words “ever” and “ready” in connection
with various products and services manifests the intended
descriptiveness of them. For example, Ever-Ready introduced
into evidence advertisements of “Ever-Ready Oil”, “Ever-Ready
Calendars”, “Everedy Housewares”, “Ever Ready Mailing Lists”,
the “Ever-Ready Shaving Brush” and the “everedy Koke-Toter”
[cake server and carrier]. Defendant’s Exhibits Nos. 119, 120,
123, 124, 125 and 127.°
5. While these third party uses of the terms “ever” and “ready”
involved goods or services which are unrelated to electrical products,
they are illustrative of the descriptive nature of the terms.
A47
On the other hand, descriptive terms must be distinguished
from suggestive terms, since the latter are protected by the
federal trademark laws. Watkins Prods. Inc. v. Sunway Fruit
Prods., Inc., 311 F. 2d 496 (7th Cir. 1962). Suggestive terms
“suggest”, but do not describe the qualities of a particular prod-
uct. The distinction threatens to be one without a difference.
Essentially, however, the common and ordinary meaning of the
term to the public and the incongruous use of it as it relates to
the product determine whether a term is suggestive. General
Shoe Corporation v. Rosen, 111 F. 2d 95, rhg. denied, 112 F.
2d 561 (4th Cir. 1940) (“{Suggestive] terms . . . shed some
light upon the characteristics of the goods, but so applied they
involve an element of incongruity and in order to be understood
as descriptive, they must be taken in a suggestive or figurative
sense through an effort of the imagination on the part of the
observer”); W. G. Reardon Laboratories, Inc. v. B & B Ex-
terminators, Inc., 71 F. 2d 515 (4th Cir. 1934) (holding that
the term MOUSE SEED for rat poison suggested that the
product consists of small seeds which exterminate rodents and
did not describe seeds which grow mice); Stewart Paint Mfg.
Co. v. United Hardware Distributing Co., 253 F. 2d 568 (8th
Cir. 1958) (holding the term Flint-Top for paint did not
describe a paint with a top made of flint but suggested that the
paint, when dry, had a hard surface).
The terms “ever” and “ready” as they relate to electrical
products do not come within the “suggestive” classification.®
6. See 1 Nims’ Unfair Competition and Trade-Marks, § 201
(1947), wherein it is stated:
“A practical test [of whether a term is descriptive] is to
inquire whether giving to the plaintiff the right to appropriate
the word as his trade-mark in any way ‘restricts others from
properly describing similar articles produced by them. . .” In
some cases where trade-marks have been held to be invalid,
the courts have pointed out the words claimed as trade-marks
are the only words or the most appropriate words by which
the goods can be named or described. Where recognition of
trade-mark rights woud deprive competitors of the only or best
“(Continued on next page)
A48
Two cases are troublesome. In Independent Nail & Pack Co.
v. Stronghold Screw Products, Inc., 205 F. 2d 921 (7th Cir.
1953), the Court of Appeals for the Seventh Circuit held that
the mark Stronghold was not descriptive but suggestive when
used in connection with nails. The defendant argued that the
mark referred to the superior holding power of a nail manufac-
tured by the plaintiff and consequently was descriptive. In
rejecting the argument, the court stated in material part:
“Although the word ‘Stronghold’ is suggestive of one of
the attributes of plaintiff's nail . . ., it is not descriptive of
a nail, let alone that type of nail. A person unaware of the
particular product, or the manufacturer, upon seeing or
hearing the name ‘Stronghold’ would find it virtually im-
possible to identify the product to which it might have been
applied. The label ‘Stronghold’ on a carton, with no other
words to designate the contents, would never reveal that
the contents were nails of a particular type.” 205 F. 2d at
925.
If by this the court meant to hold that in order to be descrip-
tive a term must identify, at least impliedly, the product, I dis-
agree. Describing a characteristic, a quality or an attribute of
the product is sufficient. Warner & Co. v. Eli Lilly & Co., 265
U. S. 526, 44 S. Ct. 615, 68 L. Ed. 1161 (1924). To hold
otherwise would mean that words like “Superior”, “Best” and
“Super”, ail of which claim merely the excellence of a product,
would be considered suggestive. Indeed, under this view only
nouns could be considered descriptive. The consequence would
(Continued from preceding page)
means of naming and describing their wares there can be no
doubt as to the invalidity of the claimed trade-mark... .
Competitors have a right to use any and all words which,
though not absolutely necessary, may appropriately and honestly
be used, in their normal sense, with reference to the goods.
Arguably the words “ever” and “ready” are particularly appro-
priate for service goods such as electrical products. Consequently,
they should not be entitled to trademark protection. See also, Minn
sota Mining & Mfg. Co. v. Johnson & Johnson, 454 F. 2d 1179,
1180 (CCPA 1972).
A49
make the exclusion of generally descriptive terms from trade-
mark protection meaningless.’
There was, however, an additional factor in Stronghold that
is not present here. The defendant in Stronghold, when threat-
ened with litigation, registered its Stronghold mark in 46 states.
The court emphasized that the defendant was in a weak position
to assert the descriptiveness of the term in light of its prior
conduct. 205 F. 2d at 926.
Watkins Products, Inc. v. Sunway Fruit Products, 311 F. 2d
496 (7th Cir. 1962) was a case which arose initially from a
Patent Office trademark cancellation proceeding.* The Trade-
mark Trial and Appeal Board held unanimously that the mark
FRESHIE, registered in 1944 for use in connection with bev-
erage bases for soft drinks, was entitled to trademark protection;
that confusion was likely to arise from the concurrent use of
FRESH-AID or FRESH-AIDE and FRESHiE and that the regis-
trations of FRESH-AID and FRESH-AIDE, obtained in 1957,
were cancelled.
An appeal to the district court ensued. That covrt reversed
the Board and found that FRESHIE was a descriptive term
when used in connection with beverage bases for soft drinks.
The Court of Appeals for the Seventh Circuit, reversing the
district court, found that FRESHIE was entitled to protection
but emphasized:
“It should be kept in .aind that the instant case did not
arise in the District Court. This was a Patent Office can-
cellation proceeding. The role of the District Court is
different in this kind of proceeding than a case where a
suit involving the validity of a trademark is originally com-
7. Certainly, there is nothing incongruous in the use of the term
“Stronghold” for describing nails.
The briefs submitted to the Court of Appeals in Stronghold did
not raise the “incongruity requirement” for suggestive terms.
8. This proceeding results from a petition being filed with the
Patent Office objecting to the use of a mark and requesting cancel-
lation of the objectionable mark’s registration.
A50
menced in the District Court . . . ‘a finding of fact by the
Patent Office . . . must be accepted as controlling, unless
the contrary is established by evidence . . . a mere pre-
ponderance of the evidence is not sufficient... .”” 311
F. 2d at 498-99.
Watkins is not this case.
When the mark EVEREADY is applied to the electrical
products sold by Carbide, the conclusion is inescapable that the
products are dep-ndable and durable. Accordingly, I find that
Carbide’s mark EVEREADY is descriptive and within the pur-
view of § 2(e) of the Lanham Act. 15 U. S. C. § 1052(e).
Secondary Meaning. Carbide argues that assuming arguendo
EVEREADY is a descriptive term, it is still entitled to trade-
mark protection since it has acquired secondary meaning.
A descriptive term may be protected as a trademark if it has
secondary meaning. It acquires secondary meaning through
usage on a product so that it signifies to the public that the
product is produced by a particular source. 1 Nims, Unfair
Competition and Trademarks, § 37 (1947). Simply stated, the
primary significance of the term to the public must be the pro-
ducer, so that the public associates the goods designated by the
mark with a particular source. Kellogg Co. v. National Biscuit
Co., 305 U. S. 111, 59 S. Ct. 109, 83 L. Ed. 73 (1938); Keller
Prods., Inc. v. Rubber Linings Corp., 213 F. 2d 382 (7th Cir.
1954).®
Proof of secondary meaning must satisfy rigorous “evidentiary
requirements.” Ralston Purina Co. v. Thomas J. Lipton, Inc.,
341 F. Supp. at 133. Consequently, the burden of proving
9. Section 2(f) of the Lanham Act provides in material part:
“| nothing in this chapter shall prevent the registration of a
mark by the applicant which has become distinctive of the
poner goods in commerce.” 15 U. S. C. § 1052(f).
Essentially, section 2(f) provides that when a non-distinctive designa-
tion, e.g., a descriptive term, has become distinctive of the producer's
goods in commerce, it is subject to trademark protection. emingly,
“secondary meaning” and “distinctiveness” are synonymous.
AS1
secondary meaning which is on the party asserting it, Keller
Prods., Inc. v. Rubber Linings Corp., 213 F. 2d at 386, is
necessarily “substantial.” Aloe Creme Laboratories, Inc. v.
Milsan, Inc., 423 F. 2d 845 (Sth Cir. 1970), cert. denied 398
U. S. 928, 90 S. Ct. 1818, 26 L. Ed. 2d 90 (1970).
Relevant factors on the issue of secondary meaning are: the
amount and manner of advertising, volume of sales, the length
and manner of use, direct consumer testimony and consumer
surveys. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341
F. Supp. at 134 (“The term in question must have been ‘used in
such a manner, over such a period of time, and to such an
extent that the purchasing public associates’ it with the goods of
a particular source”); Sun Valley Mfg. Co. v. Sun Valley Togs,
Inc., 39 F. Supp. 502, 503-04 (S. D. N. Y. 1941) (“The ele-
ments to be considered in determining whether a name has
acquired a secondary meaning are generally (a) length of use
of such name, (b) the nature and extent of popularizing and
advertising such name, (c) the efforts in promoting the con-
sciousness of the public in connecting that name with a particu-
lar product”).
The evidence shows that Carbide and its predecessors have
distributed and sold electrical products under the EVEREADY
mark since 1909; that in 1915 10 million dry cell batteries
marked EVEREADY alone were sold with an advertising cost
of approximately $225,000; that Carbide’s sales of electrical
products under the EVEREADY mark from 1963 to 1973
exceeded $100,000,000 each year; that during the 1963-1973
period Carbide advertised in magazines and trade journals, on
radio and television and through point of sale displays and that
the cost of the 1963-1967 advertising was $50,000,000.
But length of use and volume of sales alone cannot establish
secondary meaning. Moreover, the cost of advertising does
not establish the success of it but merely the efforts to establish
secondary meaning. Aloe Creme Laboratories, Inc. v. Milsan,
A52
Inc., 423 F. 2d at 850; Ralston Purina Co. v. Thomas J. Lipton,
Inc., 341 F. Supp. at 134. Indeed, short of a survey, secondary
meaning is difficult of direct proof. Aloe Creme Laboratories,
Inc. v. Milsan, Inc. 423 F. 2d at 849.
Carbide introduced two surveys in evidence on the issue of
likelihood of confusion.’® The surveys, however, do not help on
the secondary meaning issue. There is no apparent evaluation
of the products which would form a basis for the acquisition of
secondary meaning. Indeed, there is no showing that the inter-
viewee had past experience with Carbide’s products so as to
establish brand awareness.
Carbide failed to prove that the EVEREADY mark has
acquired secondary meaning. Accordingly, since EVEREADY
is a descriptive term without secondary meaning, it is not entitled
to trademark protection.
B. LIKELIHOOD OF CONFUSION.
Assuming arguendo that EVEREADY is either (1) a non-
descriptive term or (2) a descriptive term which has acquired
secondary meaning, the issue of whether Carbide established the
requisite likelihood of confusion caused by the term “Ever-
Ready” must be considered.
To be entitled to relief Carbide must show that Ever-Ready’s
use of the term “Every-Ready” is likely to confuse the public
into believing that the product on which the term appears is
produced by Carbide. There is no requirement that actual con-
fusion occur. Tisch Hotels, Inc. v. Americana Inn, Inc., 350
F. 2d 609, 611 (7th Cir. 1965); Keller Prods., Inc. v. Rubber
Linings Corp., 213 F. 2d at 386. Moreover, whether a pros-
10. Carbide introduced into evidence two surveys. One survey
involved the use of the term “Ever-Ready” on high intensity mini-
bulbs and sought to determine whether such use would likely con-
fuse the public into believing that the bulbs were produced by
Carbide. The other survey’s purpose was the same but it involved
the use of the term “Ever-Ready” on lamps.
The surveys and the weight to be accorded them on the issue of
the likelihood of confusion are discussed infra at pp. 292-294.
A53
pective purchaser, seeing the marks of the parties side by side,
would believe that the marks were the same, is not determina-
tive. G. D. Searle & Co. v. Chas. Pfizer & Co., 265 F. 385
(7th Cir. 1959); Albert Dickinson Co. v. Mellos Peanut Co.,
179 F. 2d 265 (7th Cir. 1950). Rather the crux of the matter
is the purchasing public’s state of mind when confronted by
similar marks singly presented. G. D. Searle & Co. v. Chas.
Pfizer & Co., 265 F. 2d at 388."
Since it is the effect on prospective purchasers that is im-
portant, the conditions under which they act are vital.
Competition between Carbide and Ever-Ready. In the present
case, Carbide and Ever-Ready do not sell competing goods.
Carbide employs its EVER-READY mark in the sale of bat-
teries, flashlights, lanterns and miniature lamp bulbs adver-
tised for automobile and marine use. Ever-Ready does not sel!
batteries. The only flashlights and lanterns sold by it bear tiie
tradenames of the products’ manufacturers, which is not Ever-
Ready. Moreover, Ever-Ready does not distribute miniature
bulbs for automobile and marine use, but limits sale of its
bulbs to those intended for use in high intensity home lamps.
The fact that Carbide’s miniature bulbs, advertised only for
automobile and marine use, can be used in high intensity lamps
is inconclusive since the consuming public is not aware of and
has no way of knowing the interchangeability of the Carbide
bulb. Finally, Carbide does not sell any of the various other
products sold by Ever-Ready, e.g., lamps, ash-trays, vacuum
jugs and other gift items.
The absence of competition between Carbide and Ever-
Ready, however, is not necessarily fatal to Carbide’s claim.
Beef Eater Restaurants, Inc. v. James Burrough, Ltd., 398
F. 2d 637 (Sth Cir. 1968) (Beefeater for gin enforced against
Beef/Eater for restaurants); Yale Electric Corp. v. Robertson,
26 F. 2d 972 (2d Cir. 1928) (Yale mark on locks and keys
11. Consumer surveys and evidence of actual confusion are the
best, if not the only means, to determine th i
prep! pre bee y ne the prospective purchaser’s
A54
enforced against Yale on flashlights and batteries); Wall v.
Rolls-Royce of America, Inc., 4 F. 2d 333 (3d Cir. 1925)
(Rolls-Royce for automobiles and airplanes enforced against
Rolls Royce for radio tubes). Carbide need only show that
Ever-Ready’s products are sufficiently related so that the public
is likely to assume that Carbide is their source.
Nothing was presented at trial establishing a relationship
between Ever-Ready miniature bulbs and desk lamps and Car-
bide’s flashlights, batteries, lanterns and bulbs. Carbide attempted
to show that a camping lantern manufactured by it was similar
to Ever-Ready’s desk lamps. The comparison was not persuasive.
Similarly, Carbide relied on the fact that its automobile and
marine bulbs were interchangeable with Ever-Ready’s high
intensity miniature bulbs. Again, while there was obviously
some relationship established, it could not result in confusion
since the consuming public was unaware of the interchange-
ability.
Assuming arguendo that the parties’ products are related,
there still must be independent proof that confusion is likely.
Continental Motors Corp. v. Continental Aviation Corp., 375
F. 2d 857 (Sth Cir. 1967). Carbide also failed here.
Actual Confusion. Carbide introduced evidence of three
instances of alleged actual confusion. Of the three, two occurred
after the filing or the complaint.’* First, Carbide introduced a
complaint letter from a Mrs. Kaplan in San Francisco which
was mailed December 29, 1971. When initially sent, the letter
was addressed to Ever-Ready in Chicago,* but was returned
12. Interestingly, the trademarks in these cases had gained fame
and notoriety for excellence and quality. In the present case there is
no evidence that the EVEREADY mark had gained such stature.
13. The other instance of alleged confusion occurred the day
before the filing of the complaint December 29, 1971.
14. The envelope read:
“Ever-Ready, Inc.
Chicago, Illinois 60607”
The zip code appearing on the envelope was the correct Ever-
. Ready zip code.
AS5
to Mrs. Kaplan by the Post Office for “insufficient address.”"®
Only after the letter’s return did Mrs. Kaplan send it to Carbide
in New York. This incident does not prove that Mrs. Kaplan
was confused. Initially she knew from whom she purchased
the defective product since she addressed the letter to Ever-
Ready in Chicago. Indeed, she gave the exact address which
appears on Ever-Ready’s miniature bulb blister packs. At the
least, this incident shows that Mrs. Kaplan did not identify
Carbide as the source of the product.’®
Next Carbide called a Mrs. Ballis to testify. On October 11,
1971, a Mr. Speckman, at that time Carbide’s Chicago counsel,
instructed Mrs. Ballis, his secretary, to go out and purchase
EVEREADY high intensity miniature lamp bulbs, well knowing
that Carbide did not manufacture such bulbs.’” Thereafter,
Mrs. Ballis proceeded to Marshall Field & Co., a department
store in Chicago. The Field’s sales clerk showed Mrs. Ballis
Ever-Ready’s miniature bulbs, who insisted that those particular
bulbs were not manufactured by Carbide. Despite Mrs. Ballis’
protests, the sales clerk assured her that the bulbs were made
by Carbide. After purchasing the Ever-Ready bulbs, Mrs. Ballis
returned to Speckmar to inform him of what transpired.
According to Mrs. Ballis, his reaction was “kind of humorous.”
Record, Vol. 2, at 313. Immediately, however, he requested
Mrs. Ballis to write down what had happened.
The sales clerk’s confusion is not entitled to any weight.
Obviously the desire to make a sale influenced her actions.
15. The declaration “insufficient address” on the envelope, if
offered for the truth of it, is hearsay. Consequently, the only meaning
which I can ascribe to it is that the letter reached some point in
postal delivery; that the Post Office returned it to Mrs. Kaplan who
subsequently addressed a second envelope to Carbide in New York.
16. There is no evidence in the record that Mrs. Kaplan’s
remarks in her letter regarding the quality of the goods and “your
good reputation” were directed particularly at Carbide.
17. At the time Speckman had in his possession Ever-Ready
blister pack cards containing its high intensity miniature bulbs. The
alleged of the Ballis excursion, as represented to her, was
to enable Speckman to compare Ever-Ready and Carbide bulbs.
A5S6
At least, it is impossible to distinguish between her alleged con-
fusion and her desire to make a sale. Moreover, evidence of this
type, manufactured by a party after a complaint has been filed,
is suspect.
Finally, Carbide called a Mrs Lonczak and her daughter,
Barbara, to testify to their alleged confusion regarding the source
of certain miniature lamp bulbs purchased by them. Mr. Lon-
czak had purchased miniature lamp bulbs marked “Ever-Ready”
for Barbara’s reading lamp. When the bulbs burned out, Barbara
wrote a letter protesting the poor quality of the bulbs. In
addressing the letter, however, Barbara and Mrs. Lonczak
ignored completely the Chicago address of Ever-Ready appear-
ing on the blister package which carried the bulbs and instead
used Carbide’s New York address.** Apparently, the obvious
difference in the addresses was of no moment. Also, the testi-
mony establishes that Mrs. Lonczak did not examine the “Ever-
Ready” mark on the miniature bulbs until after she was contacted
by Carbide’s counsel. Record, vol. 1 at 141-42. The most cursory
examination of the marked “Ever-Ready” and EVEREADY
reveals their dissimilarities." Occasignal confusion by careless
and inattentive people cannot sustain an action for trademark
infringement and unfair competition. S. C. Johnson & Son, Inc.
v. Johnson, 266 F. 2d 129, 141 (6th Cir. 1959).
18. Mrs. Lonczak called telephone information in Chicago for
Ever-Ready’s complete Chicago address. After being told by the
operator that there were several Ever-Ready’s listed in Chicago, Mrs.
Lonczak terminated her Chicago efforts and telephoned the store at
which she purchased the bulbs. She obtained therefrom Carbide’s
New York address. Arguably, the testimony of Mrs. Lonczak and
her daughter evidences only the store’s confusion, especially in light
of Mrs. Louczak’s Chicago efforts. Also, there is no evidence estab-
lishing whether Mrs. Lonczak correctly identified the product which
she purchased so as to enable the store to identify Ever-Ready
as the product’s source.
19. In determining whether a mark causes confusion with
another, I may compare and contrast the marks. When “Ever-Ready”
and EVEREADY are so analyzed, I conclude that the two marks
are not likely to be confused with each other. Although my conclu-
sion is formed on the whole appearance, its expression must neces-
sarily detail the differences. The EVEREADY mark as used has
(Continued on next page)
AS7
Survey Evidence. Carbide introduced in evidence two surveys
to establish the likelihood of confusion caused by the term “Ever-
Ready” with its mark EVEREADY. While the survey were ruled
admissible prior to trial, the question of the weight to be
accorded them was reserved expressly for trial.2° After consider-
ing the testimony of Carbide’s expert, Thomas Fitzpatrick
(hereinafter “Fitzpatrick” ),?" who supervised the preparation”?
and giving of the surveys, and analyzing the survey questions,
I conclude that the surveys are entitled to little, if any, weight.
First Carbide introduced the mini-bulb survey in evidence.
The purpose of the offer was to establish that the use of the
term “Ever-Ready” on Ever-Ready’s high intensity miniature
bulbs was likely to confuse the public into believing that the
bulbs were produced by Carbide. 1,014 persons were inter-
viewed. Each interviewee, after qualifying for the survey, was
shown a blister pack of Ever-Ready miniature bulbs and asked:
Question 1: Who do you think puts out these mini-bulbs?
Question 2: | What makes you think so?
(Continued from preceding page)
all letters capitalized. “Ever-Ready” as used only has the “E” and
R” capitalized. Ever-Ready’s mark consists of two words. The
marks are spelled differently. The EVEREADY mark appears in
ascending and descending block letters and appeais generally on a
~ ow Sa > oe which is = or hexagonal in shape.
. y” is written in descending script on - i
Re tere g scrip a black trapezoidal
20. On April 11, 1973, Judge Tone ruled “conditionally”
that the surveys were admissible in evidence. In suggesting certain
changes in the framing of two survey questions, Judge Tone stated:
I am therefore not deciding or intimating any opinion as to whether
the survey might be more or less persuasive if it were recast.”
ean the April 11 ruling did not go to the weight to be accorded
surveys.
21. Ever-Ready stipulated that Fitzpatrick is an ex in the
field of market a Bn ay and public opinion surveys. -_
22. Fitzpatrick had the final say on the wording of
questions. Record, vol. 1 at 172. den, . os
AS58
Question 3a: Have you seen or heard of any advertising by
the concern which you think puts out these mini-
bulbs?
Question 3b: Please specify where, what type and features you
recall.
Question 4: Please name any other products put out by the
same concern which you think puts out these
mini-bulbs.
Next Carbide introduced the lamp survey in evidence. Again,
the purpose was to establish that the use of the term “Ever-
Ready” on the lamps sold by Ever-Ready was likely to confuse
the public into believing that the lamps were produced by
Carbide. Like the bulb survey, each interviewee was shown the
product marked “Ever-Ready”, but unlike the bulb survey,
the interviewees were asked only:
Question 1: Who do you think puts out the lamp shown here?
Question 2: What makes you think so?
Question 3: Please name any other products put out by the
same concern which you think puts out the
lamps shown here.”*
Carbide claims that 615 of 1014 (61%) interviewees identi-
fied it in the bulb survey as the source of the miniature bulbs.
Of those 615, 13 interviewees identified Carbide specifically
in answer to Questions 1 and 2; 545 interviewees answered
“batteries” and/or “flashlights” in response to Question 4, and
57 interviewees associated their responses to Questions 1 and 2
with Union Carbide advertising.
Also, Carbide claims that 557 of 1009 (55%) interviewees
identified it in the lamp survey as the source of the product.
Of those 557, 6 identified Carbide specifically in answer to
Questions 1 and 2 and 551 interviewees answered “batteries”
and/or “flashlights” in response to Question 3.
23. Questions 1, 2, 3a, 3b and 4 of the bulb survey were num-
bered Questions 2, 3, 4a, 4b and 5 in the actual survey. Questions
1, 2 and 3 of the lamp survey were numbered Questions 2, 3 and
4 in the actual survey.
A59
Questions 1 and 2 of the bulb and lamp surveys establish
nothing. The evidence shows that in the bulb survey, approxi-
mately 600 interviewees who responded “ever ready” to Ques-
tion 1 answered “because it says so on the pack” or “because
I can read it on the blister pack.” At best, such responses show
the reading ability of the interviewee. Certainly, the responses
are equivocal on the issue of the product’s source. Indeed, Fitz-
patrick when asked:
. .. Where the respondent answered “Ever-Ready” to Ques-
tion [1], and to the follow-up Question [2], “Because it says
so” or “I can read it on the packet,” how does that prove
anything other than that the respondent can read the name
“Ever-Ready” on the packet?
responded:
I would say it does not help it. Record, vol. 2 at p. 249.
In light of the responses to Questions 1 and 2, Questions 3
and 4 of the lamp and bulb surveys respectively, proceeded to
suggest an opinion of those interviewees who had not formed
one. For example, in the bulb survey 179 interviewees responded
initially, “I don’t know” to Questions 1 and 2, but after Question
4 was asked, 48 of the -179 responded “batteries” or “flash-
lights.”** A similar question was condemned as leading in Gen-
eral Motors Corp. v. Cadillac Marine & Boat Co., 226 F. Supp.
716 (W. D. Mich. 1964). There General Motors sought to
enjoin the Cadillac Marine & Boat Co. from manufacturing and
selling “Cadillac” boats. A survey, consisting of an interviewer
showing an interviewee a picture of a “Cadillac” boat advertise-
ment and asking (1) who do you think puts out the boats
shown . . . and (2) will you please name anything else that
you think is put out by the same concern, was introduced in
evidence to establish likelihood of confusion. The court, finding
the second question defective on the grounds that it was leading
and suggestive, stated:
24. Interestingly, these 48 interviewees were ted
“ ~“?onmee counted as cases
A60
“To demonstrate the propensity of the question to lead,
an examination of the survey booklets provides many in-
stances where a person who drew a complete blank on
the initial question was suddenly reminded of cars and
General Motors by the way in which the second question
is phrased. This reminder was the product, not of the
advertisement, but of the second question itself.” 226 F.
Supp. at 736.
In support of this conclusion, Fitzpatrick testified:
Question: Well, would you go so far as to say that
the survey there conducted in the Cadillac case was not
probative, or did not tend to show likelihood of confusion
as to the source of origin of the Cadillac boats? ~
Answer: I would say that it was a leading questionnaire.
Question: And, therefore, slanted?
Answer: Yes.
Question: And, therefore, likely to lead to bias?
Answer: Possibly, yes.
Question: And, therefore, likely to lead to error?
Answer: Correct.”
Record, vol, 2 at pp. 226-227.
Strangely, Fitzpatrick does not reach the same conclusions on
the bulo and lamp surveys here, despite the great similarities
they share with the Cadillac survey.
Also Question 3a of the bulb survey biases that survey in
favor of Carbide. Ever-Ready does not advertise its mini-bulbs.
On the other hand, Carbide spent in excess of $50 million for
advertising and promoting the sales of its EVEREADY products
between 1943 and 1973. Consequently, the only advertising
that would suggest the source of the mini-bulbs would originate
from Carbide.”* In explaining why Question 3a was not included
in the lamp survey, Fitzpatrick testified:
25. The record does not support Carbide’s contention that
Fitzpatrick was restating what he understood to be the court's
position in the Cadillac case.
26. Carbide argues that Ever-Ready’s point of sale dis
advertising is sufficient to remove any bias from Question 1. 1
disagree. Certainly, such displays do not resemble in kind and do
not reach the magnitude of Carbide’s national advertising over the
past 30 years.
Aél
_ Question: What, again was your explanation for drop-
ping Question [3a of the bulb survey] in the lamp survey?
Answer: To the best of my knowledge I was informed
that there was no advertising performed by the defendant
on the lamp survey—on his lamps.
Question: Just no advertising or—who informed you
of that?
Answer: The firm of Nims, Halliday.
Question: Well, what did they say to you on that
specifically?
Answer: They said that the—when they asked me to
prepare a questionnaire for the lamp study, I prepared
an identical questionnaire for both studies, and they said,
well, there no advertising—the defendant has not done
any advertising. Do you think we should ask that particular
question? I said no.
Question: And why did you think that that question
should not be included if in fact the defendant had done
no advertising of the lamp?
Answer: Because if we insert it there, I think you can
be accused—we could be accused of showing a bias for
the Union Carbide Company.
Question: Well, how could you be accused of showing
a bias for the Union Carbide Company by including
Question [3a] if the defendant did no advertising of its
product being surveyed.
Answer: Because if we asked that question of a respond-
ent and the defendant did not use it, how could they
possibly answer in terms of the defendants’ product?
Question: And, therefore, the only advertising that
would be likely to be called to mind would be Union
Carbide’s advertising?
Answer: That would be correct.
Record, vol. 2, at pp. 235-237.
Seemingly, the same rationale is applicable to the bulb survey.
Succinctly, the bulb and lamp surveys do not establish the
A62
requisite likelihood of confusion between the term “Ever-Ready”
and the mark EVEREADY.”
For the reasons hereinbefore stated, defendants’ use of the
term “Ever-Ready” does not constitute a violation of the trade-
mark infringement laws.”
Il. UNFAIR COMPETITION.
Carbide seeks relief based on Ever-Ready’s alleged unfair
competition.
First, the term “Ever-Ready” is different from the mark
EVEREADY. Supra, note 19. Consequently, it is not likely
that they will be confused. Assuming arguendo, however, that
they are similar, Carbide has not proved the requisite likelihood
of confusion. Supra, pp. 289-295.
Accordingly, I find that the use of the term “Ever-Ready”
does not constitute unfair competition.
Carbide’s claim for relief based on dilution under Ill. Rev.
Stat. 1973, ch. 140, § 22, is without merit. Accordingly that
claim is rejected.
The foregoing will constitute findings and conclusions under
Rule 52(a) of the Federal Rules of Civil Procedure. Judgment
will enter dismissing plaintiffs complaint and defendants will
have judgment for their costs.
27. Interestingly, 140 interviewees in the bulb survey identified
a company other than Carbide and Ever-Ready as the source of the
mini-bulbs. If the 36 interviewees who identified either Carbide
[13] or Ever-Ready [23] as the source of the mini-bulbs are added
to the 140 figure, the total number who identified a specific source
for the product is 176. Of the 176, 163 [approximately 90% ]
interviewees identified Ever-Ready or someone other than Carbide
as the products’ source.
28. In light of my conclusion on the trademark infringement
issue, I do not reach defendants’ affirmative defense of laches.
A63
UNITED STATES CoURT OF APPEALS
For the Seventh Circuit
Chicago, Mlinois 60604
March 11, 1976
Before
Hon. Tom C. Criark, Associate Justice*
Hon. WILBvrR F. PELL, Jr., Circuit Judge
Hon. Rosert E. SPRECHER, Circuit Judge
UNION CARBIDE CORPORATION, ,
a corporation, Appeal from United
n?- States Distri
Plaintif-Appellant,| foe the ——
, ? District of Illinois,
No. 75-1371 vs. . Eastern Division.
EvER-READY INCORPORATED, a corpo- No. 71-C-3151
ration, and MARK GILBERT, an ,
individual. Prentice H. Marshall,
Defendants-Appellees. | Judge.
On consideration of the petition of the defendants-appellees,
Ever-Ready Incorporated and Mark Gilbert, for rehearing,
IT Is ORDERED that the opinion of this court heretofore filed
on January 30, 1976, shall be and hereby is amended in the
following respects:
° Associate Justice Tom C. Clark of the Supreme C
the United States (Retired) is sitting by designation. sions
A64
(1) At page 5 of the slip opinion, the last sentence is
amended to read as follows:
Seven defenses then follow, but none are relevant in this
appeal.°
(2) At page 14 of the slip opinion, the fourth sentence in
the last paragraph is amended to read as follows:
Plaintiff has established incontestability under § 1065, and
defendants in the present appeal have not shown that any
of the first six defenses enumerated in § 1115(b) are avail-
able to them.
(3) At page 34 of the slip opinion, the first sentence in the
first full paragraph is amended to read as follows:
We cannot hold the district court’s determination that the
advertising question was improper was clearly erroneous ir
light of the finding that Ever-Ready’s advertising was insig-
nificant compared to Carbide’s.
(4) At page 35 of the slip opinion, the caption of the first
full paragraph is amended to read as follows:
III. Laches
(5) At page 35 of the slip opinion, following the paragraph
caption “III. Laches,” the following new material is inserted
in the opinion:
IV. Antitrust Issues
As noted hereinbefore, the antitrust issues raised as an
affirmative defense by the defendants were severed for
separate trial pursuant to Fed. R. Civ. P. 42(b) and are
not involved in this appeal.
In their amended answer, the primary thrust of the
defendants’ antitrust contentions is directed toward 15
U.S.C. § 1115 (b)(7), which relates only to one of the
seven specified defenses to incontestability of plaintiff's
trademarks. In this opinion, we have alternatively deter-
mined validity of the trademarks irrespective of the Lanham
Act which arguably would appear to preclude any further
viability to the antitrust defense. However, a fair reading
A65
of the antitrust affirmative defense would indicate that it is
sufficiently broad as to include a claim for equitable denial
of enforcement of the trademarks on the basis of their
claimed use in violation of the antitrust laws aside from the
specitic defense to incontestability. In Carl Zeiss Stiftung v.
V.E.B. Carl Zeiss, Jena, 298 F.Supp. 1309, 1314 (S.D.N.Y.
1969), affd. on the point in issue, 433 F.2d 686, 706 (2nd
Cir. 1970), cert. denied, 403 U.S. 905 (1971), Judge Mans-
field, then of the district bench, reached the conclusion that
although the issue was not free from doubt, “a court, in the
exercise of its equity powers, may deny enforcement of a
trademark on the part of one who has used that trademark
in violation of the antitrust laws.”
We agree but we also agree with Judge Mansfield’s opinion
that the burden of such proof is a heavy one on the propo-
nent of the issue and that the forces favoring the defense are
much weaker than in patent cases which involve by their
very nature a monopoly situation. Nevertheless, in view of
the posture of this case as it has reached us, we will not
deny the plaintiffs the opportunity to take up the burden
of proof.
(6) At pages 35-36 of the slip opinion the final paragraphs
entitled “V. Relief” are deleted and the following paragraphs are
substituted:
V. Relief
The judgment of the district court is reversed and the
case is remanded for further proceedings not inconsistent
with this opinion. In the event of a failure by the defendants
upon further proceedings to sustain their antitrust affirma-
tive defenses, the district court will enter an appropriate
injunction. In so doing, the court will have to determine
whether Ever-Ready should be barred from using its name
in the trade in connection with electrical products such as
mini-bulbs and lamps. We also leave to the district court’s
discretion in the event the plaintiff ultimately prevails
- Whether to grant the remedy of delivering up articles on
which the mark appears sought by Carbide under § 1118.
All further proceedings in this cause shall be reassigned to
another judge pursuant to Circuit Rule 23.
A66
Since all the relief plaintiff seeks may be granted under
the federal act, we need not address plaintiff's state law
unfair competition and dilution claims.
The judgment of this court will assess costs of this appeal
against the defendants.
REVERSED AND REMANDED
Further, having considered the other contentions advanced by
the defendants in their petition for rehearing, the said petition
shall be and hereby is denied, and the opinion of this court here-
tofore issued, subject only to the amendments set forth in the
foregoing order, shall stand as the opinion of this court.
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