# Petition — Wiener King, Inc. v. Wiener King Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_1178%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1977 - **Citation:** 430 U.S. 916 ## Text — Supreme Ceug, U a xe i i x x, > IN THE +¢ Supreme Court of the United States Ocrosper TERM, 1976 No. ~™*C.- OO WIENER KING, INC., Petitioner, vs. THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC., and JED ASSOCIATES, Respondents. Peririon FOR Writ oF CERTIORARI TO THE Unitrep States Court oF APPEALS FOR THE THIRp Circuit PETITION FOR WRIT OF CERTIORARI JOHN N. BAIN CARELLA, BAIN, GILFILLAN & RHODES, P.A., Counsel for Petitioner, Gateway I, Suite 2404, Newark, New Jersey 07102 9 wT Printing Co., Inc., South Plainfield, New Jersey (201) 753-0200 TABLE OF CONTENTS ere OTT ere rr eti ek 1 GAS: ORO RMR ie pee Pee ry 1 Questions Presented for Review ................... 2 Statutes and Rules Involved ...................... 2 as cine aac armies kiein nn pee Sins 3 Reasons for Granting the Writ .................... 7 I. The decision below conflicts with the decisions of the United States Supreme Court and the decisions of every other circuit as to the application of Rule 52(a) of the Federal Rules of Civil Procedure to non-demeanor evidence ...................... 7 II. The opinion below has decided an important ques- tion of state iaw, common law, and federal law in a way in conflict with applicable state law, common eg OPT Peper ree 12 EPO OR Oa Se 1 ae 16 Cases Crrep: A.L.B. Theatre Corp. v. Loew's Inc., 355 F.2d 495 (7th Cir. 1966) .......:........ 9 Amoskeag Mfg. Co. v. Trainer, a re a ey re 13 Bishop v. United States, 233 F.2d 582 (D.C. Cir. 1955), rev'd ee ne eos cbse ee eeae g Commissioner v. Duberstein, I iwc 7 Custom Paper Products Co. v. Atlantic Paper Box Co., 340 F. Supp. 897 (D. Mass. 1972), aff'd 469 F.2d 178 (Ist Cir. 1972) .................. 1 TABLE OF CONTENTS Cases CITED: H.K. Porter Co. v. Goodyear Tire & Rubber Co., 437 F.2d 244 (6th Cir. 1971) ................-.- i] Lamont v. Commr, 339 F.2d 377 (2d Cir. 1964) ............-2255. 9 Leach v. Crucible Center Co., 388 F.2d 176 (1st Cir. 1968) ............... wa Lundgren v. Freeman, 307 F.2d 104 (9th Cir. 1962) ................ 10 McLean v. Fleming, I OD vino cncctunsctasncnenenes 13 Metropolitan Life Ins. Co. v. Metropolitan Ins. Co., 277 F.2d 898 (7th Cir. 1960) ..............-... 13 Pendergrass v. New York Life Ins. Co., 181 F.2d 136 (8th Cir. 1950) ................ 10 Piedmont Minerals Co. v. United States, 429 F.2d 560 (4th Cir. 1970) ................ 9 Snider v. England, 374 F.2d 717 (9th Cir. 1967) ..............-. 9 Stork Restaurant v. Sahati, 166 F.2d 348 (9th Cir. 1948) ............00000. 14 Surgical Supply Services, Inc. v. Adler, 321 F.2d 536 (Sed Cir. 1008) ............... 7, 8 United States ex rel. Citizens Nat. Bank of Ontario v. Stringfellow, 414 F.2d 696 (5th Cir. 1969) .................. 9 United States v. Goldfiled Corp., 38% F.2d 669 (10th Cir. 1967) ................ 9 iii TABLE OF CONTENTS Cases CITED: United States v. Singer Mfg. Co., ee a ME ikke olse wrenuh dds deiib es bucks 8 United States v. United States Gypsum Co., ED ike o's b eeGavccbeitlek 7, 8 Worthen Bank & Trust Co. v. Franklin Life Ins. Co.., 370 F.2d 97 (8th Cir. 1966) .................. ) FEDERAL STATUTES CITED: me WBA. Gomes GMM... 6... ccs ckueeen 12 1 UEe, Se Sica itl ee 12 ty anys casvsnaveean kev catowen 3 3. 4 — “SRA ererie Hai" 3 EO ies i uu ccd dbe ea 12 We ID hs cae vec Pe cccescecch one 3 ee I NE nik sins sé daweckececdeotccneur l FEDERAL RuLE CITep: Federal Rules of Civil Procedure Rule 52(a) N.J. Stature Crrep: N.J.S. 56:3-13.11 AUTHORITIES CITED: Clark, Special Problems in Drafting and Interpreti 4 etl Procedural Codes and Rules, . si 3 Vanderbilt L. Rev. 493 (1950) ............... 8 9 Wright & Miller, Federal Practice & Procedure, §2587 n.30 (1971) iv TABLE OF CONTENTS APPENDIX Appendix A Memorandum Opinion of the United States Disteict Cawmt 2... nc cwvesccccencevecesewce la Appendix B Letter Opinion of the United States District Court 2la Appendix C Order and Final Judgment of the United States Ce os. ov dc ccdeeestunst seen 24a Appendix D Opinion and Judgment of the United States Court of Appeals ..............ccseeseueees 27a Appendix E Order on Remand of the United States 2 rn errs er eee 42a Appendix F Petition for Leave to Appeal United States oe 2 eee 46a Appendix G Cross-Petition and Answer to Petition for Leave to Appeal United States Court of Appeals ...... 53a Appendix H Order of the United States Court of Appeals ...... 56a Appendix J PROP. Gila) ......sc:2sas.00ees ee 58a SUPREME COURT OF THE UNITED STATES October Term, 1976 No. ~ WIENER KING, INC., Petitioner, vs. THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC., and JED ASSOCIATES, Respondents. Petition for Writ of Certiorari to the United States Court of Appeals for the Third Circuit The Petitioner WIENER KING, INC. respectfully prays that a Writ of Certiorari issue to review the judgment and opinion of the United States Court of Appeals for the Third Circuit entered in this proceeding on October 21, 1976. OPINION BELOW | The Opinion of the Court of Appeals, not yet reported, and the Opinion of the United States District Court for the District of New Jersey, as reported at 407 F. Supp. 1274, appear in the Appendix hereto. JURISDICTION The judgment of the Court of Appeals for the Third Circuit was entered on October 21, 1976, and this petition for certiorari was filed within 90 days of that date. This Court's jurisdiction is invoked under 28 U.S.C. §1254(1). 1 2 QUESTIONS PRESENTED FOR REVIEW l. Does Rule 52(a) of the Federal Rules of Civil Procedure apply to appellate review of factual findings based upon non-demeanor evidence? 2. Does state law, common law, or federal law re- quire that a prior user of a service mark prove, as a condi- tion precedent to injunctive relief against a junior user, a causal relationship between public use of the prior user's services and knowledge by the public of the prior user's reputation? STATUTES AND RULES INVOLVED Rule 52(a) of the Federal Rules of Civil Procedure is set forth in the Appendix. 3 STATEMENT OF THE CASE Plaintiff WIENER KING, INC. began using the service marks “WEINER KING” and “WEINER KING” in association with a crown in connection with the opera- tion and sale of restaurant services in 1962 in New Jersey (App. 6a,28a). Plaintiff first used its marks in connection with its restaurant on U.S. Route 202-31 in Flemington, New Jersey in 1962. It has since expanded its operation and use of the marks to include a restaurant at Turntable Junction in Flemington, New Jersey, commencing in 1967; a restaurant in Beach Haven, New Jersey commencing in 1973 (Summer season only); and a restaurant in Fleming- ton Shopping Mall in 1975 ( App. 6a,28a ). Defendant The Wiener King Corporation began using the confusingly similar service marks “WIENER KING” and “WIENER KING” in association with a crown in North Carolina in 1970. It obtained a federal service mark registration in 1972, and in that year learned of Plaintiff's prior use of the service marks. Thereafter, in 1973, Defendant The Wiener King Corporation embarked upon a franchising program (App. 7a,30a). In 1975, Defendant actively solicited franchises in New Jersey, and contracted with Defendants Operational Systems, Inc. and Jed Associates to open restaurants in New Jersey which would employ the contested service marks. Plaintiff thereupon instituted suit in the United States District Court for the District of New Jersey to enjoin the Defendants from using the service marks in New Jersey.’ Plaintiff also instituted proceedings in the United 1. Plaintiff charged Defendants with false designation of origin under 15 U.S.C. §1125(a), common law unfair competition, and New ary unfair competition, trademark infringement, and false advertising. Federal jurisdic- tion was alleged under 15 U.S.C. §1121, 28 U.S.C. §1338(b), and the doctrine of pendant jurisdiction. 4 Statement of the Case States Patent and Trademark Office for cancellation of Defendant's federal service mark registrations, which pro- ceedings are stayed pending the outcome of this litigation. The parties stipulated all of the essential facts except two. First, Defendant claimed that its mark was neither confusingly similar nor substantially identical to the Plaintiff's mark. The District Court found the marks to be confusingly similar, and that ruling was not attacked on appeal. Second, Defendant disputed the extent of the geographical area in which Plaintiff's patrons reside. The Plaintiff submitted substantial evidence proving the geographical distribution of its patrons and its probable expansion to include all of New Jersey and part of East- ern Pennsylvania. The evidence included statistical studies of state agencies, comparable analyses by neigh- boring business sources and trade associations, and over 6,700 survey forms completed by the Plaintiff's patrons. The District Court found the evidence to be relevant, admissible, and the best form of evidence for determina- tion of such an issue (App. 5a). Defendants submitted a competing survey which the Court found to contain fundamental flaws and accordingly worthy of little weight (App. 6a). The District Court made a factual finding of Plain- tiff's zone of reputation based upon the evidence presented and judicially noticed facts: Not surprisingly, given the highway location of plain- tiffs one facility, and the unique location of another (at Turntable Junction), the nature of Flemington as a tourist attraction, and its draw as a_ business center for furs and cut-glass, plaintiff's customers come from almost all of New Jersey's twenty-one counties, and, as well, fron) Pennsylvania. Based upon the materials submitted at final hearing, it is certainly clear PTT ee Statement of the Case 5 that the 20-mile radius I drew at a preliminary stage is inappropriate. It is also evident that, given New Jersey's status as a “corridor” state, and plaintiff's location on a well-traveled lane within this corridor, the evidence offered by plaintiff in this proceeding, while not of scientific authenticity and_ reliability, is entitled to some weight, and as the factfinder, I do accord it at least that weight which sees it as illustrative of the trend of plaintiff's business. . . . What is to be drawn from such evidence is that plaintiff's businesses in Flemington serve people throughout New Jersey and, presumably, having done so for several years, will continue to do so in the future. Indeed, as our population's mobility con- tinues to increase, plaintiff's penetration of New Jersey predictably will become more marked. I therefore conclude that plaintiff is entitled to claim as its trade area all of New Jersey. . . . I likewise find that plaintiff is entitled to a zone of protection extending into Pennsylvania, to be measured by a radius of 40 miles from Flemington. App. 17a, 18a. The District Court thereafter entered an order en- joining Defendants from using Plaintiff's service marks in connection with restaurant services in the State of New Jersey and that portion of Pennsylvania within forty miles of Flemington, New Jersey (App. 24a). Defendants took an appeal from the Order. The Court of Appeals, refusing to apply Rule 52(a) of the Federal Rules of Civil Procedure, reviewed the evidence and the District Court's factual finding de novo due to the absence of demeanor evidence (App. 34a). Assuming the admissibility of Plaintiff's evidence of patron residence, the Court overturned the District Court's find- ing due to the supposed absence of a nexus between proof of residence and proof of reputation (App. 34a). 6 Statement of the Case In setting forth a new criterion of proof for trade- mark cases, the Court stated: Proof would still be required that an individual from a particular geographical area patronized plaintiff's establishment because of plaintiff's reputation. App. 36a. The Court reversed the District Court’s finding and directed entry of an injunction for an area within a fifteen mile radius of Flemington, New Jersey. REASONS FOR GRANTING THE WRIT Il. The decision below conflicts with the decisions of the United States Supreme Court and the decisions of every other circuit as to the application of Rule 52(a) of the Federal Rules of Civil Procedure to non- demeanor evidence. Rule 52(a) of the Federal Rules of Civil Procedure provides that “Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge the credibility of the witnesses.” The Court below refused to apply the “clearly erroneous” standard on the ground that the evi- dence submitted was non-demeanor evidence. The Court's restrictive reading of Rule 52 is the traditional practice of the Third Circuit. See, e.g., Surgical Supply Service, Inc. v. Adler, 321 F.2d 536 (3rd Cir. 1962). This Court has always held Rule 52(a) to be ap- plicable to appellate review of factual findings directly or inferentially based upon non-demeanor evidence. In United States v. United States Gypsum Co., 333 U.S. 364 (1948) the Court stated: | Insofar as this finding and others to which we shall refer are inferences drawn from documents or undis- puted facts, heretofore described or set out, Rule 52(a) of the Rules of Civil Procedure is applicable. 333 U.S. ai 394 (emphasis supplied ). In Commissioner v. Duberstein, 363 U.S. 278 (1960), the Court stated: “Where the trial has been by a judge without a jury, the judge's findings must stand unless “clearly erroneous.” Fed.R.Civ.P. 52(a). . . The rule 8 Reasons for Granting the Writ itself applies also to factual inferences from undis- puted basic facts, (citing United States v. United States Gypsum Co., supra.), as will on many occa- sions be presented in this area.” 363 U.S. at 291 (emphasis supplied ). Finally, in United States v. Singer Mfg. Co., 374 US. 174 (1963), this Court reiterated its position in United States v. United States Gypsum Co., supra, and applied the “clearly erroneous” standard of Rule 52(a) to review of conclusions based upon inferences drawn from docu- ments or undisputed facts. 374 U.S. at 194 n.9. This Court's view is along the lines of the clear intent of the rule. The Advisory Committee Note of 1937 to the original rule stated that the “clearly erroneous test is applicable to all classes of findings in cases tried without a jury whether the finding is of a fact concerning which there was conflict of testimony, or of a fact deduced or inferred from uncontradicted testimony.” Judge Charles E. Clark, the draftsman of Rule 52, always maintained that the Rule was meant to apply the “clearly erroneous test to non-demeanor evidence.2. In 1955 the Advisory Committee criticized the cases which applied de novo re- view to non-demeanor evidence and reaffirmed Judge Clark’s analvsis. In Surgical Supply Services, Inc., supra, the Third Circuit held Rule 52(a) inapplicable to review of factual findings based upon non-demeanor evidence since it be- lieved such inapplicability to be the general rule: It has been uniformly held by this Court and others that under these circumstances the findings of fact are reviewable on appeal, free of the impact of the said rule. 321 F.2d at 536. 2. See Clark, Special Problems in Drafting and Interpreting Procedural Codes and Rules, 3 Vanderbilt L. Rev. 493 (1950). Reasons for Granting the Writ 9 That holding has been severely criticized by note- worthy commentators on the basis that inapplicability of Rule 52(a) to review of findings based upon non-demeanor evidence was never uniformly held. 9 Wright & Miller, Federal Practice & Procedure, §2587 n.30 ( 1971). Fur- thermore, Surgical Supply Services, Inc., supra, relied for support upon various cases from the Second, Fifth and Seventh Circuits decided between 1950 and 1951. These and all other circuits have since abandoned their previous holdings and have more recently held that the “clearly erroneous standard of Rule 52(a) is applicable to review of findings based upon non-demeanor evidence. See e.g. Leach v. Crucible Center Co., 388 F.2d 176 (ist Cir. 1968); Lamont v. Comm’r, 339 F.2d 377 (2d Cir. 1964); Piedmont Minerals Co. v. United States, 429 F.2d 560 (4th Cir. 1970); United States ex rel. Citizens Nat. Bank of Ontario v. Stringfellow, 414 F.2d 696 (5th Cir. 1969); H.K. Porter Co. v. Goodyear Tire & Rubber Co., 437 F.2d 244 (6th Cir. 1971); A.L.B. Theatre Corp. v. Loew’s Inc., 355 F.2d 495 (7th Cir. 1966); Worthen Bank & Trust Co. v. Franklin Life Ins. Co., 370 F.2d 97 (8th Cir. 1966): Snider v. England, 374 F.2d 717 (9th Cir. 1967 ); United States v. Goldfiled Corp., 384 F.2d 669 (10th Cir. 1967): Bishop v. United States, 233 F.2d 582 (D.C. Cir. 1955), reversed on other grounds 350 U.S. 961 (1956). There is a well-grounded policy against de novo re- view of findings based upon non-demeanor evidence. The guarantee of de novo review is an open invitation to liti- gants to lie low in the District Court and to subsequently retry the entire case on appeal if the District Court’s de- cision is adverse. The ultimate effect is to overload ap- pellate dockets with cases which otherwise would be ended at the District Court level. Those courts which hold Rule 10 Reasons for Granting the Writ 52(a) applicable have recognized this for quite some time, as noted in the decision in Pendergrass v. New York Life Ins. Co., 181 F.2d 136 (8th Cir. 1950): The entire responsibility for deciding doubtful fact questions in a nonjury case should be, and we think it is, that of the district court. The existence of any doubt as to whether the trial court or this court is the ultimate trier of fact issues in nonjury cases is, we think, detrimental to the orderly administration of justice, impairs the confidence of litigants and the public in the decisions of the district courts, and multiplies the number of appeals in such cases. 181 F.2d at 138. The Ninth Circuit’s analysis is particularly policy- oriented in this regard, as set forth in the often-cited deci- sion of Lundgren v. Freeman, 307 F.2d 104 (9th Cir. 1962 ) : Rule 52(a) should be construed to encourage ap- peals that are based on a conviction that the trial courts’ decision has been unjust; it should not be construed to encourage appeals that are based on the hope that the appellate court will second-guess the trial court. Rule 52(a) explicitly clearly applies where the trial court has not had an opportunity to judge the credibility of witnesses. 307 F.2d at 114. Finally, the prospect of de novo review which per- mits the lackadaisical litigant to lie low will contemporane- ously discourage the serious litigant from obviating the need for live witneses by stipulation. In the case at bar the parties voluntarily stipulated an extensive number of critical facts and “agreed that the court may consider as in-court testimony certain depositions and affidavits.” Absent such agreement, Plaintiff was willing to present Reasons for Granting the Writ il three trial days of live testimony. Precisely the same pro- cedure was followed in the case of Custom Paper Products Co. v. Atlantic Paper Box Co., 340 F. Supp. 897 (D. Mass. 1972), affd 469 F.2d 178 (1st Cir. 1972): The case, by stipulation of counsel, was submitted to the court for resolution on the basis of affidavits and various other documentary exhibits, photographs, depositions, etc. No live testimony was proffered by either side. 340 F. Supp. at 898. The non-prevailing party then sought a new trial in the Court of Appeals, which declined the request: Because the evidence was all documentary and by depositions and affidavits, the (appellant) urges us to review the evidence de novo and make our own findings. . While in some instances the fact that the district court saw live witnesses may reinforce his conclusions in the area of credibility, * * *, the basic principle remains the same: if the district court’s findings, considering the record as a whole, whether based on live or other types of evidence are reasonably supported, they must stand. Our ap- pellate function does not differ just because the parties expedited the trial by obviating the need of live witness. 469 F.2d at 179 (emphasis supplied, cita- tions omitted ). For the reasons set forth above, Plaintiff respectfully submits that the Third Circuit's ruling in this case pre- sents a conflict justifying the grant of certiorari. 12 Reasons for Granting the Writ II. The opinion below has decided an important ques- tion of state law, common law, and federal law in a way in conflict with applicable state law, common law, and federal law. The Court below has set forth a standard of proof in trademark law that is substantially new and contrary to state, common, and federal law. The essence of the Court's ruling is that injunctive relief against a junior service mark user's use of the mark in an area wherein patrons of the prior user reside requires more than proof of the prior user's rendering of its services to its patrons in connection with the mark. The Court now requires proof that the patrons, who have been exposed to the mark and have actually partaken of services connected therewith, have patronized the prior user because of their knowledge of the prior user's reputation. App. 36a. Petitioner submits that this standard of proof sub- verts the prior law and the current policy bases therefor. The federal law of trademarks is embodied in the Lan- ham Act, 15 U.S.C. § 1051 et seq. One of the explicit purposes of the federal law is to regulate commerce by making actionable the deceptive and misleading use of marks in commerce. 15 U.S.C. § 1127. Where marks are registered, the proof required to sustain injunctive relief is proof showing the Defendant’s use to be “likely to cause confusion, or to cause mistake.” 15 U.S.C. § 1114(1). State law in the jurisdiction in question is wholly in accord with the federal law, and embodies the same test as precondition for relief, namely that the Defendant's mark be shown to be “likely to cause confusion or mistake. N.J.S. 56:3-13.11. Both federal and state law are codifications of the pre- sent common law test for trademark infringement, as Reasons for Granting the Writ 13 evolved in the decisions of this Court and others. As early as 1878, this Court stated: What degree of resemblance is necessary to constitute an infringement is incapable of exact definition, as applicable to all cases. All that courts of justice can do, in that regard, is to say that no trader can adopt a trademark, so resembling that of another, trader, as that ordinary purchasers, buying with ordi- nary caution, are likely to be misled. McLean v. Fleming, 96 U.S. 245, 251 (1878). Two years later the Court stated: Proof of actual intent to defraud is not required, but it is sufficient if the court sees that the trade-mark of the complainant is simulated in such a manner as probably to deceive the customers and patrons of the trade and business. Amoskeag Mfg. Co. v. Trainer, 101 U.S. 51, 65 (1880). Accordingly, false designation of origin cases or trade- mark infringement cases brought under the state, common, or federal law impose upon the Plaintiff the requirement of proving likelihood of confusion. Prior user’s have never been held to a standard of proof that confusion is certain or inevitable, or that actual confusion has occurred. The overriding policy is not so much the vindication of the Plaintiff's business rights as it is the protection of the pub- lic. See, Metropolitan Life Insurance Co. v. Metropolitan Insurance Co., 277 F.2d 898 (7th Cir. 1960). The. Opinion of the Court below sets forth a standard which is addressed solely to vindication of the Plaintiff's rights and wholly disregards the public interest embodied in the state, common and federal law. In requiring direct proof of actual knowledge of Plaintiff's reputation by those patrons who have been exposed to Plaintiff's services and 14 Reasons for Granting the Writ have been exposed to Plaintiffs mark, the Court has set forth a rule requiring proof of certain or inevitable con- fusion, rather than the likelihood of confusion. Moreover, the Court’s rule would require a level of proof that would be impractical if not impossible to obtain, and therefore it would foreclose meritorious trademark suits that would be sustainable under the prior law. Another serious consequence of the decision below is that the new rule as to elements of proof has been promulgated without any guidelines as to the form of proof required. The opinion below is so vague that the District Court on remand certified two issues for clarifica- tion. App. 42a-45a. All parties petitioned for leave to ap- peal but the Court of Appeals refused to clarify those issues which all parties and the District Court had brought be- fore it as well as the clarification sought by Plaintiff as to the form of proof required under the new rule. App. 46a- 57a. No such strict standard has been applied in restaurant cases before, even though the relief granted has been well in excess of the relief sought in this case. All applicable law establishes that reputation is inferred to the limits of exposure, and that direct proof of a causal link between is not necessary. Thus, in Stork Restaurant v. Sahati, 166 F.2d 348 (9th Cir. 1948), the Plaintiff introduced evidence of extensive exposure to persons across the country. Rep- utation was inferred, and the Plaintiff owner of a single 1estaurant in New York obtained an injunction against use of its tradename and service marks by a single restaurant enterprise in California. Plaintiff in the within case does not claim such an extensive exposure, only exposure throughout the state of New Jersey by virtue of Plaintiff's key location and the length of time Plaintiff has provided its services (14 years). Reasons for Granting the Writ 15 Thus, inference of reputation over the area of exposure was properly undertaken by the District Court, and im- properly reversed by the Court of Appeals. This Court has not undertaken an interpretation of the Lanham Act and its policy bases heretofore, and Peti- tioner submits that the time is ripe. For the reasons stated above, Peitioner further submits that the Third Circuit’s tuling in this case presents a conflict justifying the grant of certiorari. 16 CONCLUSION For the above-stated reasons, Petitioner respectfully prays that a writ of certiorari should issue to review the judgment and opinion of the Third Circuit. Respectfully submitted, /s/ John N. Bain JOHN N. BAIN CARELLA, BAIN, GILFILLAN & RHODES, P.A. Gateway I, Suite 2404 Newark, New Jersey 07102 (201) 623-1700 APPENDIX A MEMORANDUM OPINION OF THE UNITED STATES DISTRICT COURT District of New Jersey Civil No. 75-1018 WIENER KING, INC., Plaintiff, vs. THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC., JED ASSOCIATES, ROBERT ALEX, CARY ALEX, JOSEPH E. DIAZ, FRANK M. LEO and other unknown persons, individually, Defendants. MEMORANDUM OPINION LACEY, District Judge: This action involves the respective rights of the parties to certain trade and service marks and the interaction of the common law of trademarks with the Lanham Act (15 U.S.C. Sec. 1051 et seq.). Plaintiff, a New Jersey corporation (WKNJ), has its principal place of business in Flemington, New Jersey, where since 1962 it has operated a restaurant facility under the name “Weiner King,” (N.B. “ei’), using the design “Weiner King” and a crown. It sues to enjoin the defend- ants from using within New Jersey the name “Weiner la 2a Appendix A King,” (N.B. “ei”) and the design “Wiener King” and a crown in, on and at restaurants which will, when opened, specialize in selling the same product plaintiff sells, “hot dogs.” The defendants are as follows: Defendant The Wiener King Corporation (WKNC) is a corporation organized under the laws of the State of North Carolina and has its principal place of business in Charlotte, North Carolina. Defendant Operational Systems, Inc., is a corporation organized under the laws of the State of Delaware with its principal place of business in New Jersey. Defendant Jed Associates is a corporation organized under the laws of the State of New Jersey with its principal place of business in New Jersey. Defendant Robert Alex is an individual residing at 6 Appletree Lane, East Brunswick, New Jersey, and is presi- dent of defendant Operational Systems, Inc. Defendant Cary Alex is an individual residing at 25 Monroe Place, Brooklyn, New York, and is a principal in defendant Operational Systems, Inc. Defendant Joseph Diaz is an individual maintaining a real estate practice in Bloomfield, New Jersey, and is the registered agent of defendant Jed Associates. Defendant Frank M. Leo is an individual residing in Nutley, New Jersey, and is president of defendant Jed As- sociates. Plaintiff's complaint alleges (Count 1) that plaintiff is the prior user of the disputed trade and service marks, having first used them in 1962; defendant WKNC did not errs LEIP RB Appendix A 3a use its marks until 1970, in North Carolina; WKNC now proposes to enter into business in New Jersey, through the sale of franchises for restaurant facilities similar to plaintiff's, using as the name of such facilities the allegedly infringing marks, all with knowledge of plaintiff's preexist- ing rights to the exclusive use of said marks; the other defendants are involved in the pro franchising; and defendants’ proposed action constitutes a false designation of origin and a false representation, and otherwise is in violation of plaintiff's rights under 15 U.S.C. Section 125(a) and 1126. Jurisdiction is claimed under 15 U.S.C. Sec. 1121. The remaining counts claim “Common Law Unfair Com- petition’ with jurisdiction under 28 U.S.C. Sec. 1338(b) (Count II); “New Jersey Unfair Competition” under pen- dent jurisdiction principles (Count III); “New Jersey Trademark Infringement” under pendent jurisdiction princi- ples (Count IV); and “New Jersey Fraudulent Advertising” under pendent jurisdiction principles (Count V). In addition to the injunctive relief sought, plaintiff seeks accounting of profits, costs, and cancellation of WKNC’s federally registered marks, under 15 U.S.C. Section 1064(a) and 1119. | Defendants’ answer denied the material allegations of the complaint, including the averments of subject matter jurisdiction. The defendants WKNC, Jed Associates, Diaz and Leo also counterclaimed under the Lanham Act and under the common law, claiming plaintiff's Beach Haven “Wiener King” facility infringes WKNC’s registered ser- vice mark. This court has subject matter jurisdiction over the claim asserted in Count I of the complaint under 15 U.S.C. Sec- tions 1121 and 1125(a), although not under Section 1126. 4a Appendix A L’Aiglon Apparel v. Lana Lobell, Inc., 214 F.2d 649 (3d Cir. 1954); and will, in the exercise of its discretion, as- sume jurisdiction over the remaining pendent state claims. United Mine Workers of America v. Gibbs, 383 U.S. 715 ( 1966 ). Before addressing the issues in the case at bar it is noted that the plaintiff and defendant WKNC are also contest- ing in the Patent and Trade Mark Office. Plaintiff there seeks to register its own marks and cancel WKNC’s 1972 registrations. WKNC seeks concurrent registration, under which WKNJ would be granted use in Hunterdon County, New Jersey, and WKNC would be granted use in the balance of the United States. On November 7, 1975, these proceedings, having been consolidated, were stayed by the Trademark Trial and Appeal Board until this suit is con- cluded. It is further noted that the parties in this proceed- ing have suggested that this court deal with the cancella- tion and 2oncurrent registration problems. Prior Proceedings At the outset of suit, upon plaintiffs application, this court preliminarily enjoined defendants from using their mark in New Jersey within 20 miles of Flemington and within 20 miles of Beach Haven. At the same time, the parties were advised that this court saw as a critical issue the extent of plaintiff's trade territory wherein it was en- titled to protection as a prior user of its mark. Accordingly, the parties were instructed to submit statistical data and other information to illumine this area of dispute. Thereafter the parties pursued discovery, pretried the matter, stipulated numerous facts, and submitted the case to this court for final determination following submission of briefs and oral argument. Appendix A 5a To exedite disposition of this matter I am placing this opinion into the record. The Facts Most of the critical facts have been stipulated. The parties have also agreed that the court may consider as in-court testimony certain depositions and affidavits. The parties also have tendered for the record certain statistical studies and reports purporting to show traffic flow in the Flemington, New Jersey, area; the tourist “draw” of Flemington; the business done—by customers’ residences—by certain Flemington industries; and customer surveys at plaintiff's restaurants. All of this material will be accepted in evidence. All of it has relevance, and is entitled to some weight and, of course, except as to plaintiff's questionnaires, hearsay objections were waived (Tr. Dec. 10, 1975, 57 et seq.). As to the questionnaires—and customers’ responses there- to—they are admitted over defendants’ hearsay objection. Id., 58. Plaintiff had actual customers indicate where they resided. What better way is there to ascertain where people who patronize plaintiff's restaurants reside? While it is true that a certain amount of facetiousness crept into a limited number of responses, the court is confident that the results can be relied upon to the extent that they reveal broad percentages and trends of use. There is no suggestion that customers from the vicinity of Fleming- ton were induced to fabricate their responses to reflect they came from afar. On the other hand, as to the mean- ing and weight to be given to this evidence, it supports only the argument that people from various points, driv- ing by, drew up and visited plaintiff's restaurant. Doubt- less many if not all from the Flemington area went to 6a Appendix A plaintiff's restaurant. People from Bergen or Essex County or other remote points, so far as the evidence indicates, did not leave their homes for a snack at the Weiner King; no claim is made of such uniqueness of specialty as would induce this activity. At best, from plaintiff's point of view, while driving in the area, people stopped for the light meal plaintiff offers. Then, having been exposed to the “Weiner King” mark of identification, they now serve as means of carrying plaintiff's name home into their areas of residence. It is on this basis that all of plaintiff's data will be considered. Cf. Zippo Manufacturing Co. v. Rogers Imports, Inc., 216 F. Supp. 670, 683 (S.D. N.Y. 1963); and see authorities cited in Grotrian Helferich Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975). Insofar as the Roper poll is concerned, I find it of very little assistance in dealing with the issue presented here. Accordingly, it will be given little weight. From the stipulated facts, and those developed by the submissions and generally uncontested, the following are adjudged to be critical. Plaintiff was the first user but has never obtained federal registration for its mark, first used in Flemington, New Jersey, in 1962; plaintiff opened a second Flemington fa- cility in 1967, first expanded beyond Flemington when it opened a facility in Beach Haven, New Jersey, in 1973, and opened a fourth facility, in Flemington, in 1975. Defendant WKNC, second user, innocently adopted its mark in North Carolina in 1970, and obtained federal reg- istrations by May in 1972; no opposition had been filed to such registration and by May 1972 WKNC had 11 “Wiener King” company-owned restaurants in operation. At oral argument WKNC’s counsel stated there were now 61 res- eee eel Appendix A 7a taurants open, 9 under construction, and 35 under site de- velopment, in 20 states. Many of these have come about, of course, after WKNC first learned of plaintiff's mark. Plaintiff has not sought, however, to enjoin any one of them until this suit was brought. WKNC first learned in late 1972 of the incorporation of plaintiff in New Jersey in 1966 under the name Wiener King, Inc., and first learned in July 1972 of plaintiff's use on Highway 31-202 of the words “Weiner King” within a crown-shaped design. At this time WKNC had not yet come into, and, apparently, had not made plans to come into New Jersey. After learning of plaintiff's use of its mark in Flemington, WKNC offered for sale, and advertised for the purpose of offering for sale, franchises throughout the United States, including New Jersey: and at least one such franchise has been sold in New Jersey, with defendant planning to oper- ate it in Ramsey, New Jersey. Tr. Dec. 10, 1975, 67. Plaintiff has advertised very little and then only in and near Flemington; and its first facility outside of Flemington, opened in Beach Haven in August 1974, was opened with knowledge of WKNC'’s service mark registrations. Plain- tiff has never actively advertised or solicited the sale of franchises for restaurants to operate under the name “Weiner King” or “Wiener King.” Other facts will be referred to in connection with the discussion which follows hereinafter. Based upon the foregoing, plaintiff claims it is entitled to exclusive use of its mark throughout the State of New Jersey. Defendants, conceding plaintiff has “some rights in the mark ‘Weiner King, ” respond ( Defts.’ Factual Con- tentions ): 8a Appendix A Plaintiff admittedly has some rights in the mark “Weiner King” and the territorial scope of these rights is defined by Plaintiff's actual trade area as it existed as of the dates of Defendant Wiener King Corpora- tion’s service mark registrations (1972). Since Plain- tiffs history of operation was limited to Flemington, New Jersey, and its advertising minimal this actual trade area was properly only the town of Flemington, New Jersey. The professionally designed, conducted and analyzed Roper Organization study bears this out with the specific definition of trade area being no greater than that portion of New Jersey included within a fifteen-mile radius of Flemington. Defendants add (Ibid. ): Plaintiff is entitled to no rights for its limited use of “Wiener King” in Beach Haven, New Jersey since that use was not commenced until after the dates of Defendant Wiener King Corporation’s service mark registrations. Nonetheless, the Roper Organization study shows that any hypothetical rights of plaintiff would be limited to Long Beach Island. Discussion Involved here is the matter of concurrent use of trade- marks, that is, the use of what is essentially the same mark by two parties to identify the same goods and services. The controversy here arises out of facts which show a prior user, WKNJ, which failed to register umder the Lanham Act and confined its operating and advertising to a narrow geographical area, Flemington, New Jersey, contesting the right of a subsequent user, WKNC, which, having previ- ously innocently adopted and federally registered its mark, now seeks to move into a trade area, New Jersey, which plaintiff claims as its own. Appendix A 9a Defendant WKNC unquestionably was an innocent and “good faith” adopter when in 1970 it commenced business in North Carolina. Its expansion was rapid, and in ignor- ance of plaintiff's mark, until late 1972, by which time it had obtained federal registration of its mark. After learn- ing of plaintiff's mark, WKNC continued to expand on a very substantial basis, and embarked upon a franchising program. Plaintiff took no steps to halt WKNC’s activities until its expansion brought it into New Jersey. Only then was suit instituted. A careful balancing of the interests of the public and the parties, in the light of the facts and the somewhat uncertain state of trademark law related to con- current use, is required to resolve the controversy which thus arises. Plaintiff's federal claim is founded upon 15 U.S.C. Sec- tion 1125(a), which in pertinent part provides: Any person who shall . . . use in connection with . services .. . a false designation of origin, or any feles description or representation, including words or other symbols . . shall be liable to a civil action . by any person who believes that he is or is likely to be damaged by the use of any such false description or representation. It should be noted at the outset that a cause of action under the above section is not dependent on possession of a federally registered trademark. Potato Chip Institute v. General Mills, Inc., 333 F. Supp. 173, 179 (D. Neb. 1971). “The misconceptions are obviously attributable to the fact that section 43(a) is a part of the Trademark Act where, of course it does not logically belong.” 1 Callmann, The Law of Unfair Competition Trademarks and Monopolies, Sec. 18.2(b) at 622 n. 26 (3d ed. 1967) (Callmann). 10a Appendix A The common law of trademarks is a part of the law of unfair competition. 3 Callmann, Sec. 67.1 at 53. Basic to an analysis of plaintiff's rights under Sec. 1125(a) are Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) and United Drug Co. v. Rectanus Co., 248 U.S. 90 (1918). At common law the exclusive right to a trademark rested upon appropriation and use. The Supreme Court in Han- over held that a prior user has exclusivity only within the geographical area of use, and that a subsequent good faith user without notice of prior use was entitled to the concur- rent use in his own market, provided it is remote from the market of the prior user. Neither party in Hanover had a registered mark. The Court applied what it referred to as “common-law principles of general application,” 240 U.S. at 411, under which, it stated, the doctrine of “priority” or “prior appropriation” was inapplicable. Thus the Court said (240 U.S. at 415): In the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question. But where two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant (footnote omitted ). Two years later, in Rectanus, the mark involved was federally registered under the Trademark Act of 1881. Again the Court held that a prior user could not bar a sub- sequent user from using the mark in his own trading area. This rule of law has not been changed by the Lanham Act’s provisions. American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619 (5th Cir. 1963). The next analytical step is the comparison of the com- peting marks. The test is likelihood of confusion. Thus, assuming the same market area (unlike Hanover and Rec- ERE ne ae ~ ee ee 8 we ee nee = a Appendix A lla tanus), a trademark owner, having proved priority of ap- propriation and use, is afforded protection if the subse- quently used mark would be likely to cause confusion of the source or origin of the goods or services involved. Hanover Star Milling Co. v. Metcalf, supra, 240 U.S. at 415. There is no doubt that, within its trade or market area, plaintiff, as the prior user of “Weiner King,” is entitled to protection against WKNC’s “Wiener King.” The marks are confusingly similar. The distinction between “ei” and “ie’ is insignificant; it will cast no impression of difference upon the average patron of plaintiffs or defendants’ restau- rants. This is particularly so when the crown is considered. Not only do the marks appear the same. They are pro- nounced the same, notwithstanding the valiant effort by defendants’ counsel, who would pronounce plaintiff's mark as “Winer.” Grotrian, Helferich Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975); LaTouraine Coffee Co. v. Lorraine Coffee Co., 157 F.2d 115, 117 (2d Cir.), cert denied, 329 U.S. 771 (1946); ac- cord, David Sherman Corp. v. Heublein, Inc., 340 F.2d 377, 380 (8th Cir. 1965). The two marks thus may not coexist in the same trade area; and plaintiff, as the first user, achieves exclusivity by virtue of its common law right to protection, a right not cut off by defendants’ federal regis- tration under the Lanham Act, even if said registration was validly obtained and is sustained. United Drug Co. v. Rec- tanus Co., supra; Holiday Inns of America, Inc., v. B & B Corp., 409 F.2d 614 (3d Cir. 1969). In this sense it can be said the Lanham Act did not change preexisting trade- mark law. It is appropriation and use, not federal regis- tration, which gives rise to the right to a trademark. This is evident in the Lanham Act itself which provides for the preservation of existing rights. 15 U.S.C. Sec. 1051. Defendant Wiener King Corporation, moreover, has not overlooked the inherent confusion. This is implicit in its 12a Appendix A application to the Patent and Trade Mark Office for con- current registration. It is explicit in defendants’ counter- claims which assert that, with knowledge of defendants’ federal registration of WKNC’s service marks, plaintiff used at its Beach Haven facility its service mark, which “uses constitute infringement of defendant Wiener King Corpo- ration’s service mark rights and cause likelihood of confu- sion, deception or mistake, all in violation of 15 U.S.C. Sec. 1114.” Of course there has as yet been no actual confusion dem- onstrated because defendants have not yet opened a restau- rant in New Jersey. It is plaintiff's purpose in bringing this action to preclude them from doing so. Given the likeli- hood of confusion as described, we must now consider the geographic reach plaintiff's protection should be given, that is, what is plaintiff's trade area within which it can enjoy the exclusive use of its mark? Plaintiff's first position, seemingly fashioned from Mr. Justice Holmes concurring opinion in Hanover, 240 U.S. at 424, is that something akin to a per se rule operates to make a market area co-existensive with the state's bounda- ries. Holmes assumed that every valid mark is entitled, at a minimum, to state-wide protection and that if a mark “is good in one part of the state, it is good in all.” This rule has been rejected by numerous courts, including this Cir- cuit. Jacobs v. lodent Chemical Co., 41 F.2d 637 (3d Cir. 1930); Burger King, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968); Food Fair Stores, Inc. v. Square Deal Market Co., 206 F.2d 482 (D.C. Cir. 1953), cert. denied, 346 U.S. 937 (1954); Katz Drug Co v. Katz, 89 F. Supp. 528 (E.D. Mo. 1950), affd., 188 F.2d 696 (8th Cir. 1951). Nor is plain- tiff’s contention strengthened by its having obtained a New Jersey registration. N.J.SA. 56:3-13.1, et seq. In the first place, there is considerable doubt about the validity of the re rer ee Appendix A 13a registration, as is best evidenced by the various corrective steps taken by the plaintiff itself after its initial effort at registration. Beyond that, however, there is nothing in the state statutory fabric which can be read as overriding the Hanover-Rectanus doctrine. To the contrary, N.J.S.A. 56: 3-13.13 expressly preserves this common law rule. We turn next to plaintiff's argument that its statistical and survey data show its trade area to be statewide. The starting point in this analysis is that the actual locale of plaintiffs business was, from 1962 to 1974, Flemington, New Jersey, with no expansion until 1974 when it opened a seasonal restaurant in Beach Haven, New Jersey. Concep- tually, plaintiff is entitled to areas of predictable potential expansion, zones of advertising, and so-called “reputation zones.” See Sweetarts v. Sunline, Inc., 436 F.2d 705 (8th Cir. 1971); and authorities cited in Comment, The Scope of Territorial Protection of Trademarks, 65 Nw. U.L. Rev. 781 (1970). Consideration of these factors follows. Expansion: Plaintiff has the right to have considered its entitlement to protection of its mark in what Callmann calls a “zone of potential expansion.” 3 Callmann, supra, Sec- tion 76.3(b)(2), 317. This is because a prior user, natu- rally enough, deserves such protection not only in the im- mediate area of its current physical plant but also within that area to which it can reasonably be expected to expand. Cf. Hanover Star Milling Co. v. Metcalf, supra, 240 U.S. at 420. To determine this “zone of potential expansion” with exactitude is impossible. We can only rely upon what has occurred and what is said to be planned. Plaintiff, from 1962 to 1974, operated only two facilities, both in Flemington, and advertised only modestly, again in the Flemington area. It opened its Beach Haven facility, a seasonal restaur.1t on the Jersey shore, onlv after having learned of WKNC’s federal registrations. Plaintiff was thus 14a Appendix A content (or required) to maintain a small and locally oriented operation for some 13 years; and even now it does not claim it plans to open restaurants at sites in New Jersey other than Flemington (and Beach Haven). Accordingly, the expansion factor is given little weight in this trade area analysis. Advertising: As has been mentioned, plaintiff's advertis- ing has been negligible; and it cannot be said that plain- tiff's trade area has been enlarged appreciably beyond the Flemington area by advertising. Reputation zone: Plaintiff's claim to statewide protection rests largely upon this factor. 3 Callmann, supra, Section 76.3(b)(1), 312: Even without . . . advertising or other special efforts by its owners, the fame of a mark may extend beyond the immediate selling market. The area thus affected can be called its reputation zone. Modern progress in trans- portation and communication defies boundaries and ren- ders static legal concepts obsolete. The traveler, who is introduced to an article unknown in his locale often “re- turns home and sings the praises of the article to his friends”; he indirectly open a potential market at a point far distant from that directly solicited by the manufac- turer. This is more the rule than the exception.... And to gourmets the world over, the name of a restaurant may become an international hallmark even without the aid of newspapers and radio. . . . Cf. 51 West 51st Corp. v. Roland, 139 N.J. Eq. 156, 50 A.2d 369 (Ch 1946) ( Toots Shor Restaurant in New York—Toots Shores in Atlantic City); see also Ambassador East, Inc. v. Orsatti, Inc., 257 F.2d 79 (3d Cir. 1958); Stork Restaurant, Inc. v. Sahati, 166 F.2d 348 (9th Cir. 1948). Appendix A 15a Callmann treats as “probably anachronisms today” early cases which “proceeded on the rather unsophisticated as- sumption” that the trade area of a retail store, or theatre, or service station, was 50-70 miles. Callmann, supra Sec. 76.3 (b)(1), 314. What then is plaintiff's “reputation zone” and what factors are to be considered in arriving at ig? One factor which, while seemingly extraneous, should be reviewed in light of decisional law, is the subjective motive of WKNC. It is true that while WKNC’s original adoption of its mark was innocent and in good faith in that it was without knowledge of piaintiff's mark, WKNC’s entry into New Jersey cannot be said to be innocent in that sense. Indeed, a considerable amount of its natural ex- pansion, and its franchising, came only after it learned of plaintiffs mark. There is some authority for concluding that this is a case of good faith adoption not bad faith ex- . Tie Rack Enterprise, Inc. v. Tie Rak Stores, 168 U.S.P.Q. 441 (TTAB 1970). However, Tie Rack, even as- suming it to be correct on its facts, cf. Hanover Star Milling Co. v. Metcalf, supra, is not only not binding upon this court; it is readily distinguishable. Reason and common sense compel the conclusion that the defendants are not seeking to trade upon or profit from the name and reputation of another, the plaintiff. Instead they seek to gain from their own goodwill, founded upon the use of “Wiener King” throughout a large part of the United States. To put it succinctly, this is not a “palming off” case where the subsequent user attempts to confuse the public into believing his product is that of the prior user. Nor do we have here a gourmet restaurant run by a prior user whose patrons, out of a fondness for his unique menu and finely cooked food, can be expected to make their way to defendants’ restaurants, thinking there to be similarly wined and dined. To put it baldly, these are “hot dogs” we are talking about, not Chateaubriand with Sauce Bearnaise. 16a Appendix A Nor is there a claim made by plaintiff here that its repu- iation as a purveyor of “hot dogs” of excellent quality is likely to be tarnished or diminished by defendants’ sale of an inferior product with inferior service. For all that the record shows, defendants’ food and services are at least the equal of plaintiff's in quality. Given all these negative factors, plaintiff is still entitled to protection of its mark in its reputation zone, and this not- withstanding WKNC’s federal registration. Cf. Mariniello v. Shell Oil Company, 511 F.2d 853, 857-58 (3d Cir. 1975); “... Despite the adoption of a uniform federal registration scheme, local trademarks may be enforced by statute or common law unless conflicts develop with a national trade- mark.” In a footnote to this textual provision the Court of Appeals also stated (Id., 858 n. 22): Even where collisions occur with federal trademark holders, the Act provides that earlier local use of identify- ing names may prevail over national trademarks within a circumscribed zone. 15 U.S.C. Sec. 1115(b)(5). See Mister Donut of America, Inc. v. Mr. Donut, Inc., 418 F2d 838 (9th Cir. 1969); John R. Thompson Co. v. Holi- away, 366 F.2d 108 (5th Cir. 1966). Cf. Safeway Stores, Inc. v. Safeway Quality Foods, Inc., 433 F.2d 99 (7th Cir. 1970); In re Beetrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970). What then is the measure of the reach of plaintiff's mark? Plaintiff's reputation zone cannot be measured with mathematical exactitude. The assembled data, while illu- minating and helpful, falls short of establishing conclusively the farthest reaches of plaintiff's trade area. Yet I can only rely upon what I have, and from such data derive inferences which represent my best effort to resolve this troublesome question. Appendix A 17a Prelimiinarily, I take “trade area” to mean that geograph- ical area from which plaintiffs customers are drawn through (a) awareness of plaintiff's facilities; and (b) resultant good will flowing from use of such facilities. Not surprisingly, given the highway location of plaintiff's one facility, and the unique location of another (at Turntable Junction), the nature of Flemington as a tourist attrac- tion, and its draw as a business center for furs and cut- glass, plaintiff's customers come from almost all of New Jersey's twenty-one counties, and, as well, from Penn- sylvania. Based upon the materials submitted at final hear- ing, it is certainly clear that the 20-mile radius 1 drew at a preliminary stage is inappropriate. It is also evident that, given New Jersey's status as a “corridor” state, and plain- tiffs location on a well-traveled lane within this corridor, the evidence offered by plaintiff in this proceeding, while not of scientific authenticity and reliability, is entitled to some weight, and as the factfinder, I do accord it at least that weight which sees it as illustrative of the trend of plaintiff's business. , I am not unmindful of defendants’ Roper study and its disparagement of plaintiff's evidence. Roper, however, overlooks the obvious; no one contends that the various materials submitted by plaintiff are 100% accurate. What is to be drawn from such evidence is that plaintiff's busi- nesses in Flemington serve people throughout New Jersey and, presumably, having done so for several years, will continue to do so in the future. Indeed, as our popula- tion's mobility continues to increase, plaintiff's penetration of New Jersey predictably will become more marked. I therefore conclude that plaintiff is entitled to claim as its trade area all of New Jersey. In so holding, I rely upon the aforementioned data, notwithstanding that it reflects a state of affairs post-May 1972, by which time WKNC had received its federal registrations. Data as of May 1972 18a Appendix A was not available, however, I will presume that operations at the Flemington facilities were at that time substantially the same as depicted in the studies submitted. The Beach Haven facility was opened after May 1972. However, in view of the disposition of the larger question, it follows that Beach Haven was within the plaintiff's rep- utation zone. I likewise find that plaintiff is entitled to a zone of protec- tion extending into Pennsylvania, to be measured by a radius of 40 miles from Flemington. Defendants’ contention of laches is without merit and their counterclaims are dismissed with prejudice. Plaintiff is entitled to an accounting, with costs. In view of the disposition of this matter it is unnecessary to deal separately with the remaining counts of plaintiff's complaint. Where the Lanham Act is not the source of the right sued upon, state law applies. Artype, Inc. v. Zap- pulla, 228 F.2d 695 (2d Cir. 1956); Maternally Yours, Inc., v. Your Maternity Shop, Inc., 24 F.2d 538, 540-41 n. 1 (2d Cir. 1956). In this case, however, the choice of law presents no real problems, since trademark use is accepted as a general common law requirement, with no discernible differences from jurisdiction to jurisdiction. Federal regis- tration does not alter the basic common law requirement of use. The Lanham Act does not create the trademark right; it only recognizes the right acquired through use, Radio Shack Corp. v. Radio Shack, Inc., 180 F.2d 200 (7th Cir. 1950); Vandenburgh, Trademark Law & Pro- cedure, Section 2.10 (2d ed. 1968). Both parties have suggested that the Lanham Act's can- cellation and concurrent registration provisions be utilized by this court to expedite a conclusion of all litigation. Appendix A 19a The beginning point in dealing with concurrent registra- tion questions is Sec. 2(d) of the Lanham Act, 15 U.S.C. Sec. 1052(d). . when the Commissioner determines that confu- sion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limita- tions as to the . . . place of use of the marks. . . concurrent registrations may be issued to such per- sons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under this chapter. . . . Congress further provided in Section 2(d) of the 1946 Act: “In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to . . . place of use of the mark.” Congress further provided in Section 18 (15 U.S.C. Sec. 1068 ) : That in the case of the registration of any mark based on concurrent use, the Commissioner shall deter- mine and fix the conditions and limitations provided for in subsection (d) of section 2 of this Act. Section 2(d) also provides (15 U.S.C. Sec. 1052(d): Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in com- merce. See Avon Shoe Co., Inc. v. David Crystal, Inc., 171 F. Supp. 293, affd., 279 F.2d 607 (2d Cir. 1960), cert. den., 20a Appendix A 364 U.S. 909 (1960); Coastal Chemical Co., Inc. v. Dust-A- Way, Inc., 263 F. Supp. 351 (W.D. Tenn. 1967). In Safeway Stores, Inc. v. Safeway Quality Foods, Inc., 433 F.2d 99 (7th Cir. 1970), it was held appropriate that the district court certify to the Commissioner that it had been determined by that court that concurrent reg- istration of the disputed marks was indicated, leaving it to the Commissioner to prescribe the conditions and limita- tions of such use. It is believed, however, that the better rule is that of Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150, 156 (6th Cir. 1973), holding that the court with proceedings before it should iiself under 15 U.S.C. Sec. 1071(b)(1), deal with cancellation “or such other matter as the issues in the proceeding require. . . .” Accordingly, the Commissioner is directed to cancel WKNC’s present registrations and to issue concurrent registrations to plaintiff and WKNC. The registrations shall reflect that the place of use of plaintiff's mark shall be New Jersey and so much of Pennsylvania as is included within the area defined herein and that the place of use of WKNC’s mark shall be the remainder of the United States; that plaintiff's mark shall be defined as “Weiner King” or “Wiener King’; that WKNCs mark shall be as previously registered. Submit an appropriate form of judgment on notice within 10 days. /s/ Frederick B. Lacey FREDERICK B. LACEY, United States District Judge. Dated: January 9, 1976. > — —— 2la APPENDIX B LETTER OPINION OF THE UNITED STATES DISTRICT COURT District of New Jersey Civil 75-1018 WIENER KING, INC. vs. WIENER KING CORP., et al. LETTER OPINION (Dated February 9, 1976) Jeffrey L. Miller, Esq. Bain Gilfillan & Rhodes 17 Academy Street Newark, N.J. 07102 Andrew T. Berry, Esq. McCarter & English 550 Broad Street Newark, N.J. 07102 Gentlemen: Counsel having moved for certain relief connected with the Court’s opinion of January 9, 1976, the Court rules as follows: 1. Defendants’ motion to modify so much of the Court's determination extending plaintiff's protection to a 40-mile radius adequately supports the proposition that, within 22a Appendix B that 40-mile radius, plaintiff had established a zone of reputation. 2. Defendants’ motion to modify so much of the Court's determination as ordered an accounting is denied, except that the accounting is ordered as to the defendant Wiener King Corporation. 3. Defendants’ motion for a protective order under Fed. R. Civ. P. 26 (c)(7) is denied as untimely. It appears the information became available several months ago, with what was deemed confidential at the time deleted from certain documentation by defendants counsel. It would now be unfair, at this juncture, to grant this application. 4. With consent of the parties, plaintiff's claims against the individual defendants are dismissed and the injunction should be expanded to cover the principals, agents and em- ployees of the defendant corporations. 5. Plaintiff's request that there be a disclaimer of asso- ciation between plaintiff and Wiener King Corporation in any national advertising, to the extent that such seems likely to be circulated widely in New Jersey, e.g., the Wall Street Journal, is granted. A disclaimer should generally be in the form suggested by plaintiff. 6. Plaintiff's motion to delete from the Court’s opinion, and any order or judgment entered thereon, reference to concurrent use registration, is granted. Plaintiff's counsel has represented that (a) he did not place this issue before this Court, and (b) there are matters he wishes to explore in discovery before the Trademark Trial and Appeal Board. 7. Plaintiff moves to amend the Court's opinion to delete or modify the characterization as “innocent” of the adop- tion of the disputed mark by defendant Wiener King Cor- poration in North Carolina. I decline to do so. I will, Appendix B 23a however, state that my characterization was intended to de- fine the 2 option as “innocent” in the sense that there was nothing :n the record to indicate that the defendant knew of plaintiff's mark when it first adopted its own. 8. This Court's opinion is modified, as requested by plaintiff, with respect to the date it opened its Beach Haven Restaurant. Submit an appropriate Order. Very truly yours, FREDERICK B. LACEY US.DJ. /s/ Frederick B. Lacey ~ 24a APPENDIX C ORDER AND FINAL JUDGMENT OF THE UNITED STATES DISTRICT COURT For the District of New Jersey Civil Action No. 75-1018 WIENER KING, INC., a New Jersey corporation, Plaintiff, vs. THE WIENER KING CORPORATION, a North Carolina corporation, et al., Defendants. The findings of fact and law in the above-captioned case having been previously set forth by this Court in its Memo- randum Opinion of January 9, 1976, and the Court having considered and determined applications by the parties un- der Rule 52 to amend the findings, it is on this 5 day of March, 1976 ORDERED: 1. Defendants The Weiner King Corporation, Opera- tional Systems, Inc. and Jed Associates, Inc. and their prin- cipals, agents and employees are enjoined, in the State of New Jersey and in that part of the State of Pennsylvania within a radius of 40 miles of Flemington, New Jersey, from using the terms WEINER KING, WEINER KING & DESIGN, WIENER KING and/or WIENER KING & DESIGN (the “Mark”) or any designation which is con- Appendix C 25a fusingly similar thereto in connection with (a) operating restaurants, and constructing restaurant facilities; (b) negotiating for the sale of franchises for restaurant services using the Mark, to be located in the Enjoined Territory; (c) awarding franchises for restaurant services using the Mark, to be located in the Enjoined Territory; and (d) ad- vertising within the Enjoined Territory for the sale of franchises using the Mark except by means of publications of general circulation published outside the Enjoined Territory PROVIDED THAT advertisements in publica- tions of general circulation published outside the Enjoined Territory which are circulated widely in New Jersey shall conspicuously bear a disclaimer in the general form: “Not Associated with Weiner King, Inc. of New Jersey’; 2. Defendants’ counterclaims are dismissed with prej- udice; 3. Defendants’ Motion to Dismiss against individual Defendants is granted; 4. Pursuant to 28 U.S.C §1920, 28 U.S.C. §1923(a), and Federal Rule of Civil Procedure 54(d), Plaintiff is awarded costs; 5. Plaintiff is awarded an accounting from the Defendant The Weiner King Corporation for any monies accepted and retained from the sale of Wiener King franchises in plain- tiff's zone of protection, except monies accepted and re- tained for the sale of franchises using marks other than the Mark. 6. The Commissioner of Patents & Trademarks is directed to cancel Defendant THE WIENER KING CORPORA- TION’s Federal Service Mark Registrations Nos. 934,504, 934,596, and 934,597 and to subsequently reopen proceed- ings on concurrent use and pending applications of plain- tiff and defendant The Wiener King Corporation including the form of mark used in the cancelled registrations; 26a Appendix C 7. Pursuant to 15 U.S.C. §1119, the Clerk of this Court is directed to certify a copy of this Order to the Honorable Commissioner of Patents & Trademarks, Washington, D.C. 20231. 8. Defendants’ application for a stay of the injunctive and other relief in favor of plaintiff herein, pursuant to Rule 62, is denied. /s/ Frederick B. Lacey FREDERICK B. LACEY, US.D,J. 27a APPENDIX D OPINION AND JUDGMENT OF THE UNITED STATES COURT OF APPEALS For the Third Circuit No. 76-1589 WIENER KING, INC., a New Jersey Corporation WIENER KING CORPORATION, THE, a North Carolina Corporation, OPERATIONAL. SYSTEMS, INC., a Delaware Corporation, JED ASSOCIATES, a New Jersey Corporation, ROBERT ALEX, CARY ALEX, JOSEPH E. DIAZ, FRANK M. LEO and other unknown persons, individually, THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC., and JED ASSOCIATES, Appellants. (D.C. Civil Action No. 75-1018) Appeal from the United States District Court for ine District of New Jersey Argued September 8, 1976 Before: Adams, Rosenn, and Garth, Circuit Judges 28a Appendix D OPINION OF THE COURT (Filed October 21, 1976) ANDREW T. BERRY, McCARTER & ENGLISH 550 Broad Street Newark, New Jersey 07102 Counsel for Appellants. Of Counsel: FLOYD A. GIBSON, JAMES D. MYERS, BELL, SELTZER, PARK & GIBSON, P.A. P.O. Drawer 10337, Charlotte, North Carolina THEODORE J. LEO 317 Belleville Avenue Bloomfield, New Jersey 07003 R. GALE RHODES, JR., ESQ. JEFFREY L. MILLER, ESQ. CARELLA, BAIN, GILFILLAN & RHODES Attorneys for Appellee Gateway I—Suite 2404 Newark, New Jersey 07102 PER CURIAM This appeal involves a dispute over the use of the “Wiener King’ trademark. Plaintiff Wiener King, Inc. is a New Jersey corporation which began to use the trade- mark in Flemington, New Jersey, in 1962. It has never Appendix D 29a obtained federal registration. Defendant Wiener King Corporation (WKNC) is a North Carolina corporation which innocently adopted the mark in North Carolina in 1970 and federally registered its mark in 1972. Plaintiff filed a complaint in the District Court for the District of New Jersey seeking to enjoin WKNC from using the mark in New Jersey. The district court enjoined WKNC from using the mark anywhere in the State of New Jersey and - in those parts of Pennsylvania within a 40 mile radius of Flemington. In addition, the district court directed the Commissioner of Patents and Trademarks to cancel WKNC'ss federal registrations and to reopen the concurrent use proceedings then pending before him. Because we have determined that plaintiff failed to meet its burden of proof, we conclude that plaintiff is entitled to injunctive relief as to only those areas conceded by defendant. We . also conclude that the record does not support the district court’s order cancelling WKNC’s registrations. I. In 1962, plaintiff opened a restaurant in Flemington on Route 31-202 under the name “Weiner King’ ' contained within a crown-shaped design. Thereafter, plaintiff in- corporated in New Jersey as Wiener King, Inc. in 1966. In 1967, plaintiff opened a second facility in Flemington at Turntable Junction. In 1973 it opened a third facility in the seashore resort of Beach Haven, New Jersey. This facility operated only during the summer months. A fourth facility was openind in Flemington in 1975. Plaintiff ob- tained New Jersey registration for its mark* in September 1974 and filed applications for federal registration in May 1975, shortly before the initiation of this action. L Although the pleadings refer to plaintiff as Wiener King, apparently some of plaintiff's signs and insignia use the name Weiner hing. 2. See 56 N.J.S.A. § 3-13.1 et seq. 30a Appendix D WKNC innocently adopted the mark “Wiener King” used with a crown-shaped design in North Carolina in 1970. WKNC obtained federal registrations by May 1972, several months before it learned of plaintiff's use of the mark in Flemington. WKNC has expanded rapidly since its organization. By late 1975, when the district court heard oral argument in this case, WKNC’s counsel repre- sented that more than 100 facilities in 20 states were either open, under construction, or under site development. After learning of plaintiff's prior use of the “Weiner King” mark in Flemington, WKNC advertised the sale of franchises in national media. According to the parties’ joint stipulation in June 1975, WKNC was at that time “ac- tively soliciting franchises in the State of New Jersey in counties other than Hunterdon County,” in which Fleming- ton is located. Il. On May 29, 1975, plaintiff filed applications with the Patent and Trademark Office for federal registrations and simultaneously initiated cancellation proceedings against WKNC's registrations. As a result, the Patent and Trade- mark Office declared the institution of concurrent use pro- ceedings to decide the parties’ respective rights to federal registrations of the “Wiener King” mark. In November 1975, these proceedings were stayed pending the outcome of the instant district court litigation. On June 11, 1975, plaintiff filed a five-count complaint in the District Court for the District of New Jersey and named as defendants, in addition to WKNC, several corporations and individuals alleged to have negotiated the sale of fran- chises in New Jersey for or with WKNC. The complaint Appendix D 3la claimed “Federal Unfair Competition” (Count I), “Com- mon Law Unfair Competition” (Count II), “New Jersey Unfair Competition” (Count III), “New Jersey Trademark Infringement” (Count IV), and “New Jersey Fradulent Advertising” (Count V). It sought an injunction against WKNC's use of the mark in New Jersey, as well as an accounting. On plaintiff's application, the court issued a preliminary injunction which enjoined WKNC from using the mark within 20 miles of Flemington or Beach Haven. The parties stipulated all the essential facts but two. First, WKNC claimed that its mark was neither identical nor confusingly similar to plainitff's. Second, the parties disputed the extent of plaintiff's trade area. On this ques- tion, both parties submitted statistical evidence. III. The district court's opinion dealt primarily with plain- tiffs rights under common law principles. It held that plaintiff's New Jersey registration did not enlarge the rights plaintiff enjoyed under common law. It also found that plaintiffs and WKNC’s marks were confusingly similar, despite the different spellings (“Weiner” for plaintiff as opposed to “Wiener” for WKNC) and defendant’s claim that the pronunciation differs (Wee-ner for plaintiff and Wy-ner for defendant). Turning to plaintiff's common law rights, the district court held that prior users are not automatically entitled at a minimum to state-wide protection. See 3 R. Callman, The Law of Unfair Competition and Monopolies §76.3(b) (1) at 310 (1969). It also rejected the argument that the trade area of a retail store always commands a radius of 50 to 70 miles from its location. Id. at §76.3(b)(1) at 314-15. 32a Appendix D Recognizing that plaintiff was entitled to protection within its trade area, the court observed that a trade area consists of 1. the zone of potential expansion, 2. the adver- tising zone, and 3. the reputation zone. Since the court found that plaintiff had no plans for expansion and did little advertising, it based its injunctive decree exclusively on plaintiff's reputation zone. Plaintiff's evidence to support a “reputation zone” ex- tending throughout the State of New Jersey consisted of a survey® showing the residences of its patrons; data show- ing the residences of customers of other Flemington busi- nesses; and a study of traffic flow in the Flemington area. This evidence was intended to prove that plaintiff's “repu- tation” was known throughout the state and that therefore its trade area was coextensive with its reputation zone and should be protected by injunction throughout the entire state. The district court also took judicial notice that: New Jersey is a “corridor” state; Route 31-202, on which plaintiff's original facility is located is a “well travelled lane”; and Flemington holds certain tourist attractions. Based on this evidence, the court enjoined WKNC from using its mark in New Jersey and in parts of Pennsylvania within 40 miles of Flemington. Its order also directed the Commissioner to cancel WKNC’s federal registrations and to reopen the concurrent use proceedings which were pending before the Patent and Trademark Office and 3. WKNC objected strenuously to the admission into evidence of plaintiff's survey. It argued that the questionnaires which were made available to plain- tiff's patrons were not “controlled” in that no efforts were made to insure that all plaintiff's patrons participated and completed questionnaires on each of their visits. WKNC argued further that plaintiff's survey did not reflect those parties who chose not to complete the questionnaires. Other defects in plain- tiffs questionnaires were asserted by a WKNC expert, Burns W. Roper, who was also responsible for preparing a Roper Survey on behalf of WKNC. Despite these objections, the district court admitted plaintiffs’ survey and data in evi- dence and relied upon them in its discussion and order. Appendix D 33a which had been stayed by virtue of the district court liti- gation.’ It is from this order that WKNC appeals.” IV. WKNC argues that plaintiff failed to meet its burden of proof to sustain the trade area found by the district court. We agree. In considering the zones of “potential expansion” and “advertising” as bases on which to predicate the trade area contended for by plaintiff, the district court found no evi- dence in the record sufficient to support plaintiff's claims. Consequently, if limited to just those two factors, the dis- trict court indicated that the plaintiff's trade area could not extend beyond Flemington. Memorandum Opinion at 17. We accept these findings and conclusions of the dis- trict court as they relate to the zones of advertising and expansion. See Government of Virgin Islands v. Gereau, 502 F.2d 914 (3d Cir. 1974). However, the district court, as noted, based its injunctive decree on findings that plaintiff's reputation extended 4. Initially, in its opinion of January 9, 1976, the district court had directed that the Commissioner issue concurrent registrations to both parties. Plain- tiff's registration was to include the same area as the district court’s injunction, and WKNC’s was to include the rest of the country. However, after the court issued its opinion, plaintiff moved to have the concurrent use determination deleted. Plaintiff argued that it had not requested that such a determination be made and that it had not been aware that that question would be decided by the district court in this litigation. It also claimed that there was virtually no evidence in the record that WKNC had requested or contemplated such a determination. On March 5, 1976, the court amended its opinion by deleting the concurrent use determination, but it retained the direction that WKNC’s registration be cancelled. It also disposed of the injunction and the other issues presented by the pleadings. Together with the injunction, the district court awarded an accounting to the plaintiff “for any monies accepted and retained from the sale of [WKNC] franchises in plaintiff's zone of protection. .. .” 5. The only defendants appealing are Wiener King Corp. (WKNC) and Jed Associates, both of whom are referred to throughout this opinion as WKNC. 34a Appendix D throughout the State of New Jersey and part of Pennsyl- vania. We are troubled by the lack of supporting evi- dence for these findings. The plaintiff concedes, as it must, that short of its statistical evidence and those facts as to which the district court took judicial notice, there is no other evidence bearing on “reputation” which could sustain a finding that plaintiff's reputation zone encompassed all of New Jersey and part of Pennsylvania. The district court’s opinion recognized that [t]he assembled data, while illuminating and helpful, falls short of establishing conclusively the farthest reaches of plaintiff's trade area. Yet I can only rely upon what I have, and from such data derive infer- ences which represent my best efforts to resolve this troublesome question. Memorandum Opinion at 20. We, on the other hand, feeling free to deal with the underlying facts in the absence of demeanor evidence," Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975), have concluded that there is a fatal flaw and gap in plaintiff's proof. Even assuming, without deciding, that plaintiff's survey and its other statistical evidence were admissible,’ they do not establish the extent of plaintiff's zone of reputation. Plaintiff's survey does indeed show the residences of some of its patrons, but the nexus between proof of residence and proof of reputation is missing. The fact that some persons who resided a significant distance from Fleming- 6. The district court’s opinion notes that “[mJost of the critical facts have been stipulated.” Memorandum Opinion at 5. 7. WKNC has vigorously attacked the admission of plaintiff's survey and have cited the standards contained in the Manual for Complex Litigation § 2.172 (3d ed. 1973) for the admission of polls and surveys. In view of our disposition, we perceive no need to reach or decide the issue of admissibil- ity, for as noted in the text, even assuming that the survey was admissible, w« find it completely lacking in probative value as to “reputation.” Appendix D 35a ton or Beach Haven happened to patronize one of plain- tiffs restaurants simply does not prove that plaintiff's repu- tation zone encompasses their home towns or counties. Many may have patronized plaintiff's facilities for reasons wholly unrelated to plaintiff's reputation. A substantial number of patrons, for example, may have eaten at a Wiener King only because they happened to drive by at meal time. Other customers who lived some distance from Flemington or Beach Haven may have been tourists or vacationers who were visiting those towns on a single occasion. The fact that some people from fairly distant points patronized plaintiff does not establish: 1. that those patrons had ever heard of Wiener King’s reputation before visiting there; or 2. that they ever returned; or 3. that they spoke of or extolled plaintiff or plaintiffs reputation in their home communities; or 4. that anyone who heard of plaintiff through such a patron was thereby influenced to patronize Wiener King. It is quite clear that plaintiff's survey, at best, proved only that some of its customers, viz., those who completed questionnaires, resided in various parts of New Jersey and Pennsylvania. Neither the district court's opinion con- cluded nor did plaintiff's brief argue that the survey ac- curately measured the distribution of plaintiff's business in terms of percentages. Although the district court stated that the survey revealed “broad percentages’ (Memo- randum opinion at 6), it never mentioned the percentage of plaintiff's business attributable to any of the areas which it included within the scope of its injunction. In addi- tion, since many of those regions, according to plaintiff's own survey, accounted for only a miniscule portion of plaintiff's business, it is evident that the court based its holding, not on the percentage of customers who lived in a given area, but on the simple fact that some, if perhaps only one, of plaintiff's patrons resided there. See Id. at 6-7. We note that the district court's injunction encom- 36a Appendix D passing the entire State of New Jersey includes Cape May County. Yet piaintiff's own survey (A.146) reveals that no customers from Cape May County patronized the Flem- ington Wiener King on Route 31-202. Plaintiff conceded at oral argument that Cape May County should have been excluded from the court's injunction. Plaintiff also maintains that “the Prior User’s [plaintiff's] protectable trade territory is not a function of the percent- age of the patrons residing at specific areas, but is a func- tion of the geographical extent of the residence of the patrons. Brief for Plaintiff-Appellee at 56-57. Plaintiff states succinctly that “it is the where not the how many, which counts.” (Emphasis in original.) Id. at 58. Even if we were to accept this proposition, which we do not, plaintiff's proof of reputation would still be deficient. Proof would still be required that an individual from a particular geographical area patronized plaintiff's estab- lishment because of plaintiff's reputation. That proof is just not present in this record. Plaintiff's other statistical evidence and the facts noticed by the district court are even less probative of reputation. Consequently, it is apparent that plaintiff, having failed to prove the elements of “expansion” or “advertising,” which would justify its claimed trade area, has similarly failed to carry its required burden of proof demonstrating “reputation.” Absent proof that plaintiff's “advertising,” “expansion,” or “reputation” would operate to extend plaintiff's trade area beyond the locale where its products are sold, we are obliged to limit plaintiffs protection to just that area of sale, i.e., Flemington. However, WKNC has conceded that plaintiff should be protected within a 15 mile radius of Flemington, and we know no reason why we should not hold WKNC to that concession. Accordingly, as re- Appendix D 37a spects plaintiff's Flemington facilities, we will direct that the district court modify its order and injunction to provide protection for plaintiff limited to a 15 mile radius from Flemington as conceded by WKNC. V. With respect to the concurrent use proceedings, the pertinent portion of paragraph 6 of the district court's order of March 5, 1976, provides: 6. The Commissioner of Patents & Trademarks is directed . . . to subsequently reopen proceedings on concurrent use and pending applications of plaintiff and defendant The Wiener King Corporation includ- ing the form of mark used in the cancelled registra- Despite WKNC’s contention that the district court itself should have disposed of the concurrent use issue and permitted concurrent registrations for plaintiff and WKNC, we believe that the district court on this record was justi- fied in directing the Commissioner to reopen its concur- rent use proceedings. Finding no abuse of discretion per- taining to this aspect of the district court's order, we will affirm so much of the March 5, 1976 order as directs the Commissioner to reopen proceedings on concurrent use. VI. In its opinion, the district court initially disposed of the concurrent use issue. It did so by directing the Commis- sioner to cancel WKNC’s present registrations and to issue concurrent registrations to plaintiff and WKNC. The registrations shall reflect that the place of use of plaintiffs mark shall be New Jersey and so much of Pennsylvania as is included within the area defined 38a Appendix D herein and that the place of use of WKNC’s mark shall be the remainder of the United States; that plaintiff's mark shall be defined as “Weiner King” or “Wiener King”; that WKNC’s mark shall be as previously registered. Memorandum Opinion at 25. Hence, the canceilation action was taken in conjunction with and as a part of the district court’s actions respecting concurrent registration. Thereafter, the plaintiff having objected to the concurrent use disposition, the court without further explanation or discussion entered its orders of March 5, 1976, which: 1. deleted from its opinion the grant of concurrent regis- trations; 2. directed cancellation of WKNC’s registrations; and 3. directed the Commissioner to continue proceedings on concurrent use. In light of the transfer of the concurrent use proceedings to the Commissioner for his resolution, we have difficulty understanding or finding a basis for the district court’s action in cancelling WKNC’s registration. We could under- stand that action as a part of the entire disposition of the concurrent use issue by the district court. Standing alone, however, the cancellation action taken by the district court appears to us to be an improper exercise of the district court's discretion, particularly in light of a silent record which does not sustain this action. In fact, even the plaintiff appeared to concede at oral argument that if the concurrent use proceedings are to be transferred to the Commissioner, then so should the can- cellation proceedings. Hence, we will also direct the dis- trict court to modify its order of March 5, 1976 by vacating so much of that order as cancels WKNC’s registration and by providing that both the issues of cancellation and con- current registrations be transferred to the Commissioner for disposition and resolution. Appendix D 39a VIL. Because the Commissioner will now make the cancella- tion and concurrent use determination, we think that it would also be appropriate that the Commissioner consider the issues concerning plaintiffs Beach Haven facility. Under the district court’s theory, Beach Haven, of course, was included within plaintiff's state-wide reputa- tion zone. As a result, the district court was not required to give independent consideration to this facility. Under the modified order which we have directed the district court to enter, Beach Haven is outside the 15 mile radius and therefore must be considered separately and inde- pendently in connection with plaintiff's complaint and proofs. As we have observed, WKNC'’s federal registra- tions were obtained in 1972. Since those registrations predated the opening of plaintiff's Beach Haven restaurant in 1973, the effect of WKNC's registration on plaintiff's Beach Haven facility must be assessed. In light of our approval of the district court's order, which permits the concurrent use determination to be made by the Commis- sioner, we think that it would be premature and inap- propriate for the district court to act with respect to the Beach Haven facility before the Commissioner has con- cluded his proceedings. Accordingly, jurisdiction of this aspect of the plaintiff's case will be reserved and retained in the district court pending the Commissioner's determina- tion in the cancellation and concurrency proceedings. To preserve the status quo until that determination is made, we will direct the district court to modify its order to restrain WKNC’s from using the mark on Long Beach Island, the island on which Beach Haven is located. VIIL. Inasmuch as the modifications we have ordered with respect to the injunction decreed by the district court 40a Appendix D may have mooted or may have otherwise affected the ac- counting portion of the district court’s order, (paragraph 5)* we will also remand the issue of accounting to the district court for its consideration in light of our directions. IX. We will therefore reverse and remand to the district court for those further proceedings required by our direc- tions, including the modification of its March 5, 1976 order in a manner consistent with this opinion. TO THE CLERK: Please file the foregoing opinion. Appendix D 4la JUDGMENT This cause came on to be heard on the record from the United States District Court for the District of New Jersey and was argued by counsel. On considerationwhereof, it is now here ordered and adjudged by this Court that the judgment of the said District Court, filed March 5, 1976, be, and the same is hereby reversed and the cause is remanded to the district court for those further proceedings required by the direc- tions of this Court, including the modification of its March 5, 1976, order in a manner consistent with the opinion of this Court. Costs taxed against the appellee. DATED: October 21, 1976. ATTEST: /s/ Thomas Clerk 8. Paragraph 9 of the district court's order of March 5, 1976, provides: 5. Plaintiff is awarded an accounting from the Defendant The Wiener King Corporation for any monies accepted and retained from the sale of Wiener King franchises in plaintiffs’ zone of pro- tection, except monies accepted and retained for the sale of franchises using marks other than the Mark. 42a APPENDIX E ORDER ON REMAND OF THE UNITED STATES DISTRICT COURT For the District of New Jersey Civil Action No. 75-1018 WIENER KING, INC., a New Jersey corporation, Plaintiff, vs. THE WIENER KING CORPORATION, a North Carolina corporation, OPERATIONAL SYSTEMS, INC., a Delaware corporation, and JED ASSOCIATES, a New Jersey corporation, Defendants. ORDER ON REMAND This matter being opened to the Court by McCarter & English, Esqs., attorneys for The Wiener King Corporation (WKNC) Jed Associates and Operational Systems, Inc., on notice to Carel Bain, Gilfillan & Rhodes, Esqs., attor- neys for plaintiff, and it appearing that by its Judgment of October 21, 1976 the United States Court of Appeals for the Third Circuit reversed this Court Order and Final Judgment of March 5, 1976, and remanded the cause to this Court for further proceedings required by the Court of Appeals, and good cause appearing, IT IS on this 29 day of Nov. , 1976 ORDERED that: Appendix E 43a 1. Paragraphs 1, 5 and 6 of this Court’s Order and Judg- ment of March 5 1976 are hereby vacated; 2. Defendants The Wiener King Corporation, Opera- tion Systems, Inc. and JED Associates, Inc., and their principals, agents and employees, are hereby enjoined and restrained from using the mark WEINER KING, WEINER KING & DESIGN, WIENER KING and/or WIENER KING & DESIGN (the “Mark”) within a fifteen (15) mile radius of the geographic center of Flemington, New Jersey, as set forth on the map annexed to this Order as Exhibit A, (the “Enjoined Territory) in connection with (a) operating restaurants, and construction restaurant fa- cilities; (b) negotiating for the sale of franchise for res- taurant service using the Mark, to be located in the En- joined Territory; (c) awarding franchises for restaurant services using the Mark, to be located in the Enjoined Territory; and (d) advertising within the Enjoined Terri- tory for the sale of franchises using the Mark except by means of publications of general circulation published out- side the Enjoined Territory PROVIDED THAT advertise- ments in publications of general circulation published out- side the Enjoin Territory which are circulated widely in the Enjoined Territory shall conspicuously bear a dis- claimer in the general form: “Not Associated with Wiener King, Inc. of New Jersey.” 3. Jurisdiction with respect to the respective parties rights to use of the Mark on Long Beach Island, New Jersey, is hereby reserved and retained in this Court along with disposition of this aspect of WKNC’s related counter- claim, pending determinal of such rights by the Commis- sioner of Patents and Trademarks, and pending such deter- mination, defendants The Weiner King Corporation, Operational Systems, Inc. and JED Associates, Inc., and the principals, agents and employees, are enjoined and restrained from using the Mark on Long Beach Island in 44a Appendix E connection with (a) operating restaurants, and construct- ing restaurant facilities; (b) negotiated for the sale of franchises for restaurant services using the Market to be located on Long Beach Island; (c) awarding franchises for restaurant services using the Mark, to be located on Long Beach Island and (d) advertising within Long Beach Island for the sale of franchises using the Mark except by means of publications of general circulation published outside Long Beach Island PROVIDED THAT advertise- ments in publications of general circulation publish out- side Long Beach Island which are circulated widely in Long Beach Island shall conspicuously bear a disclaimer in the general form “Not Associated with Wiener King, Inc. of New Jersey’; 4. The Commissioner of Patents and Trademarks is di- rect to reopen proceedings on concurrent use and pending applications of plaintiff and WKNC, including the form of Mark used in the registration of WKNC, and including the rights of the respective parties to the use of the Mark on Long Beach Island, New Jersey, and including plain- tiffs application for the cancellation of WKNC’s present registrations; 5. Pursuant to 15 U.S.C. $1119, the Clerk of this Court is directed to certify a copy of this Order to the Honorable Commissioner of Patents Trademarks, Washington, D.C 20231. 6. In the event that WKNC has accepted and retained any monies from the sale of Wiener King franchises usin the Mark in the Enjoined Territory, plaintiff is entitled to an accounting in connection therewith. 7. Pursuant to 28 U.S.C. §1292(b) the status of WKNC’s counterclaim for cancellation of plaintiffs New Jersey state trademark registration of the Mark, and the issue as Appendix E 45a to which party is entitled to costs arising out of the orig- inal trial of this action are hereby certified to the United States Court of Appeals for clarification. /s/ Frederick B. Lacey FREDERICK B. LACEY, USD]. WE HEREBY CONSENT TO THE FORM OF THE WITHIN ORDER. /s/ Jeffrey L. Miller Carella Bain, Gilfillan & Rhodes Attorneys for Plaintiff 46a APPENDIX F PETITION FOR LEAVE TO APPEAL UNITED STATES COURT OF APPEALS For the Third Circuit Docket No. 76-1589 D.N.J. Docket No. 75-1018 WIENER KING, INC., Petitioner-Plaintiff, vs. THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC., and JED ASSOCIATES, Respondents-Defendants. PETITION FOR LEAVE TO APPEAL TO: THE HONORABLE JUDGES OF THE UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT The Petition of Wiener King, Inc. respectfully repre- sents: 1. This Petition seeks leave to appeal, under Section 1292(b) of Title 28 of the United States Code, from an Order entered on December 6, 1976, in the United States District Court for the District of New Jersey in the above entitled cause. 2. This Court has previously rendered a decision in this case by an Opinion filed October 21, 1976, wherein this Appendix F 47a Court reversed the United States District Court for the District of New Jersey and remanded the cause thereto for further consideration in light of the Opinion of this Court. 3. There are certain issues, as are more particularly set forth below, incident to the disposition of this case in the Court below which the Court below is unable to resolve on the basis of the Opinion of this Court. Accordingly, the United States District Court for the District of New Jer- sey in the aforesaid Order has certified these issues to this Court for clarification. The United States District Court for the District of New Jersey has additionally embraced in the aforesaid Order a provision which Petitioner respectfully contends is inconsistent with this Court’s aforesaid Opinion. This provision, set forth below, effectively transfers to an ad- ministrative tribunal that which this Court may well have deemed settled, and this Court's consideration of this issue at this time will aid in discouraging subsequent appeals and possibly in discouraging a significant amount of dup- licative administrative adjudication. 4. This Court's aforesaid Opinion has _ significantly changed the law that this Court and other Circuit Courts of Appeals have previously applied to similar cases, and has effectively removed from consideration certain proce- dural and evidentiary matters without setting forth any guidelines for future proceedings. As set forth below, such a change in the law directly affects the further pro- ceedings in this case, since new matters have arisen since trial which will require additional proceedings. The dis- position of this issue and the setting of appropriate guide- lines will aid in discouraging subsequent appeals and will facilitate the further conduct of this case. 5. Upon information and belief, Respondent joins Peti- tioner in seeking clarification of those issues certified to 48a Appendix F- this Court in the aforesaid Order. Petitioner is only nomi- nally the Petitioner as between the interested parties, and all interested parties as well as the Court below require the clarification sought. Accordingly, Petitioner requests that Petitioner be relieved from any requirement to file a bond in the event that this Petition is granted. 6. STATEMENT CONCERNING THOSE _ ISSUES WHICH THE DISTRICT COURT HAS CERTIFIED TO THE COURT FOR CLARIFICATION AS TO ITS PREVIOUS OPINION. A. ISSUES CONCERNING DEFENDANTS’ COUN- TERCLAIM FOR CANCELLATION OF PLAINTIFF'S NEW JERSEY STATE TRADEMARK REGISTRATION. Plaintiff instituted this action against Defendants for injunctive relief against Defendants’ use of a service mark confusingly similar to Plaintiff's service mark and for can- cellation of Defendants’ Federal Service Mark Registra- tions concerning said service mark. Defendants counter- claimed against Plaintiff for trademark infringement and for cancellation of Plaintiff's New Jersey State Registration for said service mark. Judgment was awarded to Plain- tiff in the United States District Court for the District of New Jersey on the issue of injunction and cancellation of Defendants’ service mark registrations. Defendants’ coun- terclaims at that time were dismissed with prejudice. Sub- sequently, Defendants took an appeal to this Court, and this Court modified the extent of the injunction and re- versed. At a hearing to settle the Order on this Court's mandate in the Court below, Defendants maintained that the issue of the dismissal of Defendants’ counterclaims was properly on appeal, and that this Court's Opinion supports rein- stitution of said counterclaims and judgment for Defend- ants. Plaintiff maintained that Defendants had not assigned Appendix F 49a such dismissal of counterclaims as error on appeal, that this Court's Opinion could in no way be construed so as to reverse the District Court in its dismissal of the counter- claims, and that the stipulated priority of use of Plaintiff of the contested mark required dismissal of the counter- claims as a matter of law. This District Court, on the basis of the Opinion of this Court, was unable to resolve the issue and has certified the issue to this Court for clari- fication. B. ISSUES CONCERNING THE AWARD OF COSTS AT TRIAL. The District Court originally awarded statutory trial costs to Plaintiff. This Court awarded appellate costs to Defendants, notwithstanding the fact that Plaintiff pre- vailed in this appeal on a crucial issue: affirmance of the District Court’s transfer of concurrent use proceedings to the United States Patent Trademark Office. This Courts Opinion gave no indication as to whether the District Court’s award of statutory trial costs to Plaintiff was to be reversed, modified, or affirmed. At the hearings to settle Order on a mandate on this Court’s Opinion, Defendants argued that they were essen- tially the prevailing party given this Court’s appellate dis- ition of the case, since the injunction against Defend- ants would now be essentially the same as that which De- fendants had always conceded to the Plaintiff. Plaintiff was the prevailing party at trial and after the appellate disposition, claiming that the relief that Plaintiff is now left with is in excess of that which Defendants had con- ceded. The District Court was unable to resolve the issue on the basis of this Court's Opinion, and has certified the issue to this Court for clarification. 7. ISSUES CONCERNING PROVISION OF THE DISTRICT COURT'S ORDER AT VARIANCE WITH THIS COURT'S OPINION. 50a Appendix F Paragraph 3 of the District Court's Order orders that “jurisdiction with respect to the respective parties’ rights to use of the Mark on Long Beach Island, New Jersey, is hereby reserved and retained in this Court along with disposition of this aspect of WKNC’s related counterclaim, pending determination of such rights by the Commissioner of Patents and Trademarks .. .”. At the hearing to set- tle the Order, Plaintiff objected to this language on the grounds that Defendants’ counterclaims had been dis- missed with prejudice, said dismissal was not urged as error on appeal, and that this Court’s Opinion did not reverse the District Court's dismissal of the counterclaims. Plaintiff also contended that there existed no basis in law upon which Defendants’ counterclaim relating to Plaintiff's use of its Mark on Long Beach Island could be sustained. Plaintiff finally argued that this Court's Opinion expressly stated “accordingly, jurisdiction of this aspect of the Plain- tiffs case will be reserved and retained in the District Court pending the Commissioner's determination in the cancellation and concurrency proceedings.’ [emphasis supplied, Opinion page 14]. Defendants, on the other hand, argued that although this Court's Opinion was un- clear, the Opinion can only be rationally interpreted as conferring jurisdiction over the rights of the respective parties’ use of the Mark. The District Court accepted Defendants’ analysis, which Petitioner respectfully submits is contrary to this Court’s Opinion and is without legal basis. 8. ISSUES WHICH MUST NECESSARILY BE RE- SOLVED PRIOR TO FURTHER PROCEEDINGS IN THIS CASE. Contrary to this Court's prediction made at a Pretrial Conference with counsel for the respective parties, this Court's Opinion indeed will have great precedential value. In fact, the decision has made front page news in BNA’s Patent, Trademark & Copyright Journal (November 25, Appendix F 5la 1976). By rejecting the inferential nexus between ex- posure to a mark and secondary meaning therein, which has always been traditionally accepted in trademark cases as a matter logic and even more so as a matter of prac- ticality, this Court has drastically altered the law that has been formerly applied by this Circuit and all other cir- cuits. However, in the course of its fifteen page per curiam Opinion, this Court cited not one single trademark case as authority for its position, nor did this Court set forth any guidelines whatsoever as to how trademark case are to be proven in the future. As this Court's Opinion stands, there is a serious void in trademark law that will engender serious controversies over how trademark cases are to be proven, which in turn will inevitably result in numerous appeals to this Court for further clarification. The law of this circuit is that a party who cannot prove confusing similarity and secondary meaning in a specific area is not prejudiced from subsequently making such proof when such proof is obtained. Holiday Inns of Amer- ica v. B & B Corporation, 409 F.2d 614 (Third Circuit, 1969). This is also the law in other jurisdictions. Ac- cordingly, Plaintiff must make subsequent application to the Court below for injunctive relief as it seeks and obtains further proof of secondary meaning. However, absent the traditional reliance upon an inferential nexus between ex- posure to the mark and secondary meaning, Plaintiff and the Court below are without guidelines as to the manner of proof which must be submitted. Additionally, Plaintiff has accrued certain rights in an additional geographic location since the trial in this case. Plaintiff foresees im- minent clash between the respective parties in this loca- tion, and Plaintiff therefore needs judicial guidelines as to the manner of proof that must be submitted at trial. Finally, Plaintiff is currently preparing a Petition for Writ of Certiorari in this case, and subsequent clarification by 52a Appendix F this Court can conceivably limit the issues that need be presented in such Petition. 9. REASONS WHY AN IMMEDIATE APPEAL MAY MATERIALLY ADVANCE THE TERMINATION OF THIS LITIGATION. As to those issues enumerated in paragraph 6, an im- mediate appeal is necessary to effect termination of the corresponding aspects of this litigation since the District Court is presently unable to interpret this Court's saa in those matters. As to the issue presented in paragraph 7, an immediate appeal will materially advance the termination of this liti- gation since it may effectively remove a particular issue from the case and may thereby effectively foreclose a full blown administrative adjudication on that issue in the Patent and Trademark Office. As to the issues detailed in paragraph 8, an immediate appeal may materially advance the termination of this litigation by discouraging piecemeal and final appeals from whatever proceedings must necessarily follow. The guide- lines sought will additionally fill a void left in the law by this Court’s previous opinion, which will enable the parties to expeditiously complete any further proceedings in this case. WHEREFORE, Petitioner prays for leave to appeal under Section 1292(b) of Title 28, United States Code, from the Order herein above-described. A copy of the Order is attached hereto. Respectfully submitted, CARELLA, BAIN, GILFILLAN & RHODES, P.A. Attorneys for Petitioner-Plaintiff By: Jeffrey L. Miller JEFFREY L. MILLER 53a APPENDIX G CROSS-PETITION AND ANSWER TO PETITION FOR LEAVE TO APPEAL UNITED STATES COURT OF APPEALS For the Third Circuit Third Circuit Docket No. 76-1589 D.N.J. Docket No. 75-1018 WIENER KING, INC., Petitioner-Plaintiff, vs. THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC. and JED ASSOCIATES, Respondents-Defendants. TO: THE HONORABLE JUDGES OF THE UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT Respondents, The Wiener King Corporation (“WKNC’ ), Operational Systems, Inc. and Jed Associates, by way of Cross-Petition and Answer to Petition for Leave to Ap- peal respectfully show: 1. Respondents join in the petition of Petitioner-Plain- tiff Wiener King, Inc. with respect to the issues certified to this Court pursuant to 28 U.S.C. §1292(b), by the Hon- orable Frederick B. Lacey, U.S.D.J., in the District Court's Order of November 29, 1976. 2. The other matters which Petitioner-Plaintiff seeks leave to appeal should not be reviewed by this Court, in- 54a Appendix G asmuch as such matters were determined by the District Court in accordance with this Court's Opinion and Judg- ment of October 21, 1976. Pursuant to this Court's Opin- ion and the provisions of Paragraph 4 of the District Court’s November 29, 1976 Order (as to which provisions Petitioner-Plaintiff does not seek leave to appeal), the Commissioner of Patents and Trademarks will determine the respective parties’ rights to the use of the mark on Long Beach Island, New Jersey; it is nearly impossible tu assume that the Commissioner will grant concurrent registrations to permit both Plaintiff and WKNC to oper- ate restaurants on Long Beach Island. It is more likely that effect will be given to WKNC’s federal registration which pre-dates Plaintiff's opening of its seasonal facility on Long Beach Island. Respondents, as to this issue, do not believe there exists a substantial basis for a difference of opinion. 3. Respondents deny vigorously Plaintiff's unsupported assertion that this Court should issue “guidelines” for the edification of Plaintiff, its counsel, or the BNA Patent, Trademark & Copyright Journal. (Respondents are con- strained to note that there existed no legal nor practical bar to Plaintiff's having attempted to obtain admissible probative evidence at the trial of this case in the form of relevant scientifically-conducted polls and surveys; its failure to do so creates, in Respondent's view, an inference that Plaintiff well knew the reputation of its hot dog stand did not extend beyond Flemington.) Similarly, Respond- ents believe that there can be no “second” trial in this case if the principle of res judicata is to have any meaning at all. (Plaintiff's previous suggestion that it could “supple- ment the record below on remand” contained in its letter of September 23, 1976 to this Court, found no support in this Court’s subsequent opinion.) Finally, Respondents do not understand that this Court sits to assist Plaintiff's counsel in preparing a Petition for a Writ of Certiorari. Appendix G 55a 4. Respondents believe that the other provisions of the District Court's Order of November 29, 1976 require no review by this Court. To the extent that Plaintiff seeks reveiw of matters other than those certified to this Court pursuant to paragraph 7 of the District Court's November 29th Order, Respondents believe that Plaintiff should not be relieved of the requirement to file a bond for costs pursuant to F.R.A.P. 5(d). . WHEREFORE, Respondents pray for leave to appeal the matters set forth in paragraph 7 of the District Court's November 29th Order, and pray that this Court deny Petitioner-Plaintiff's Petition for leave to appeal from any other provisions of said Order. Respectfully, McCarter & English Attorneys for Respondents By: Andrew T. Berry Andrew T. Berry A Member of the Firm 56a APPENDIX H ORDER OF THE UNITED STATES COURT OF APPEALS For the Third Circuit Denying Petition and Cross-Petition for Leave to Appeal C.A. Misc. No. 76-8255 WIENER KING, INC., Petitioner, vs. THE WIENER KING CORPORATION, OPERATIONAL SYSTEMS, INC., and JED ASSOCIATES, Respondents. Petition and Cross-Petition for Leave to Appeal Pursuant to 28 U.S.C. §1292(b) Before: Adams, Rosenn and Garth, Circuit Judges ORDER It appearing that by this Court's judgment of October 21, 1976, No. 76-1589, the district court’s order of March 5, 1976 was reversed and remanded to the district court for further proceedings and it appearing that thereafter an order of the district court dated November 29, 1976 Appendix H 57a was entered, which order, among other provisions (see paragraph 7) certified two issues for clarification pursuant to 28 U.S.C. §1292(b), and it further appearing that plain- tiff petitioned and defendants cross-petitioned for leave to appeal under 28 U.S.C. §1292(b), and it further appearing that plaintiff petitioned and defendants cross-petitioned for leave to appeal under 28 U.S.C. § 1292(b), It is ORDERED that the petition of Wiener King, inc. ( Petitioner-Plaintiff ) and the cross-petition of The Wiener King Corporation, Operational Systems, Inc. and Jed Asso- ciates, (Respondents-Defendants ) for leave to appeal pur- suant to 28 U.S.C. §1292(b) be, and the same are hereby denied. DATED: Dec. 28, 1976. BY THE COURT: /s/ Circuit Judge ————OOoOoSSrt ——— —_——