Petition — World Carpets, Inc. v. Armstrong Cork Co.

79-473 SEP 20 1979

Mw --

ICHAGL ROBSK, JR, BLERI

IN THE

Supreme Court of the United States

OCTOBER TERM, 1979

No.

WORLD CARPETS, INC.), et. al.,

Petitioners,

versus

ARMSTRONG CORK COMPANY, et. al.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

WARREN N. COPPEDGE, JR.

MITCHELL, MITCHELL, COPPEDG

BOYETT, WESTER & BATES

101 NORTH THORNTON AVENUE

DALTON, GEORGIA 30720

JULIUS R. LUNSFORD, JR.

BEVERIDGE, DeGRANDI, KLINE

& LUNSFORD

1012 HARRIS TOWER

PEACHTREE CENTER

233 PEACHTREE STREET, N.E.

ATLANTA, GEORGIA 30303

ATTORNEYS FOR PETITIONERS

iM

E,

SCOFIELDS' QUALITY PRINTERS, P. O. BOX 53096, N. O., LA. 70153 - 504/822-1611

INDEX

Page

OPINIONS BELOW ........cccccnees Seas awe ces 1

GI svi cabins dessncccccccseseccseses 2

QUESTION PRESENTED ...........ccceesesseees 2

STATUTE AND RULE INVOLVED ............. 3

STATEMENT OF THE CASE ..........cceeeeees 5

ARGUMENT FOR ALLOWANCE OF WRIT ..... 6

EE aac abeh cece cccseccscesascccceves 8

CERTIFICATE OF SERVICE ........csccccoeess 10

APPENDIX |

Opinion of the Court of Appeals ............. la

Order Denying Motion for Rehearing ........ 20a

Opinion of the District Court ...........++.- 21a

AUTHORITIES

AMP, Inc. v. Fay, 540 F.2d 1181 (4th Cir. 1976) ....7

G. D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d

I BIE nnn Vowit ews aicccvccees vores. 7

Harold F. Ritchie, Inc. v.,Chesebrough-Pond’s, Inc.,

281 F.2d 755 (2nd Cir. 1960) ......cc000 cocees 4

Northam Warran Corp. v. Universal Cosmetics Co.,

ee ee ee acc cuecs cevess 7

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1979

No.

WORLD CARPETS, INC., et. al.,

Petitioners,

versus

ARMSTRONG CORK COMPANY, et. al.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Petitioners pray that a Writ of Certiorari issue to

review the opinion and judgment of the United States

Court of Appeals for the Fifth Circuit rendered in these

proceedings on June 21, 1979.

OPINIONS BELOW

The opinion of the United States Court of Appeals

for the Fifth Circuit, as yet unreported, appears at Ap-

2

pendix, infra, pages 1a-19a. The opinion of the

United States District Court for the Northern District

of Georgia is reported at 448 F.Supp. 1072, and appears

at Appendix, infra., pages 21a-36a.

JURISDICTION

The judgment of the United States Court of Appeals

for the Fifth Circuit was entered on June 21, 1979. A

petition for rehearing, timely filed, was denied on

August 10, 1979. The jurisdiction of this Court is in-

voked under 28 U.S.C. §1254(1).

QUESTION PRESENTED

The Second, Fourth and Seventh Circuits recognize

that one entering a field of endeavor previously occu-

pied by another should in the selection of a trade name

or trademark keep far enough away from the existing

name or mark to avoid all possible confusion. In its deci-

sion, the Fifth Circuit has specifically refused to recog-

nize and apply this rule. (See Appendix, page 9a, Foot-

note 6.) Therefore, the question presented is:

Whether the Fifth Circuit Court of Appeals

applied the “clearly erroneous rule” to the in-

correct standard of “likelihood of confusion”

rather than the correct standard of “all possi-

bility of confusion”, thereby finding rever-

sible error in the Findings of Fact of the Dis-

trict Court and the Advisory Jury.

3

STATUTE AND RULE INVOLVED

15 U.S.C. §1114(1)

§1114. Remedies; infringement; innocent

infringement by printers and pub-

lishers

(1) Any person who shall, without the con-

sent of the registrant —

(a) use in commerce any reproduction,

counterfeit, copy, or colorable imitation of a

registered mark in connection with the sale,

offering for sale, distribution, or advertising

of any goods or services on or in connection

with which such use is likely to cause con-

fusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy or color-

ably imitate a registered mark and apply such

reproduction, counterfeit, copy, or colorable

imitation to labels, signs, prints, packages,

wrappers, receptacles or advertisements in-

tended to be used incommerce upon or in con-

nection with the sale, offering for sale, dis-

tribution, or advertising of goods or services

on or in connection with which such use is

likely to cause confusion, or to cause mistake,

or to deceive.

&

shall be liable in a civil action by the registrant for the

remedies hereinafter provided. Under subsection (b) of

this section, the registrant shall not be entitled to re-

cover profits or damages unless the acts have been

committed with knowledge that such imitation is in-

tended to be used to cause confusion, or to cause mis-

take, or to deceive.

Rule 52(a) of the Federal Rules of Civil Procedure

Rule 52. Findings by the Court

(a) Effect. In all actions tried upon the facts

without a jury or with an advisory jury, the Court shall

find the facts specially and state separately its con-

clusions of law thereon, and judgment shall be entered

pursuant to Rule 58; and in granting or refusing inter-

locutory injunctions the court shall similarly set forth

the findings of fact and conclusions of law which con-

stitute the grounds of its action. Requests for findings

are not necessary for purposes of review. 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 of the credibility of the witnesses. The

findings of a master, to the extent that the court adopts

them, shall be considered as the findings of the court. If

an opinion or memorandum of decision is filed, it will be

sufficient if the findings of fact and conclusions of law

appear therein. Findings of fact and conclusions of law

are unnecessary on decisions of motions under Rule 12

or 56 or any other motion except as provided in Rule

41(b).

5

STATEMENT OF THE CASE

Armstrong Cork Company filed suit seeking a decla-

ration that its proposed new name, Armstrong World

Industries, Inc., did not infringe upon World Carpets,

Inc.’s trademarks, “WORLD” and “WORLD” with a

globe symbol. World, Carpets, Inc. counterclaimed

seeking injunctive relief and alleging that Armstrong

Cork Company had infringed upon its trademark

rights and had violated the Georgia Fair Business Prac-

tices Act of 1975, Ga. Laws 1975, pages 376-392.

Armstrong World Industries, Inc. and the several sub-

sidiaries of World Carpets, Inc. were subsequently join-

ed as parties plaintiff and defendants respectively.

An advisory jury made findings of fact that Arm-

strong Cork Company’s proposed new name was like-

ly to cause confusion, was not a good faith, fair, and

descriptive use of the word World, and was an unfair

trade practice. The District Court made its own find-

ings of fact and conclusions of law, ruling that first,

Armstrong Cork Company’s use of its proposed new

corporate name would infringe upon World Carpets,

Inc.’s trademark rights, and second, that Armstrong

Cork Company had not violated the Georgia Fair Busi-

ness Practices Act of 1975. The District Court en-

joined Armstrong Cork Company from using its pro-

posed new name.

On appeal, the Court of Appeals stated the con-

trolling issue to be whether the proposed new name

6

was likely to cause confusion in the minds of the carpet

buying public and refused to adopt the standard recog-

nized by the District Court that Armstrong as a new-

comer must avoid all possible confusion.! The Court

went on to rule that since the finding of likelihood of

confusion is one of fact, it is therefore reviewable un-

der the “clearly erroneous” test of F.R.Civ.P. 52(a). The

Court of Appeals found no evidence of likelihood of

confusion under the standard set out above and there-

fore reversed the injunction order as being clearly erro-

neous. The Court of Appeals affirmed the District

Court's finding of no violation of the state statute.

ARGUMENT FOR ALLOWANCE OF WRIT

The petitioners respectfully submit that this peti-

tion should be granted as it involves issues that affect

the very purpose and intent of federal trademark law.

By virtue of its decision in this case, the Court of

Appeals for the Fifth Circuit has eroded much of the

protection afforded registered trademarks under the

Lanham Act, 15 U.S.C. 1051, et seq.

The Court of Appeals correctly stated the con-

trolling issue in a trademark infringement case to be

whether the alleged infringer’s mark is likely to cause

confusion (15 U.S.C. §1114). However, the Court of

1 Actually the District Court recognized the “newcomer” stand-

ard of avoiding “all possibility of confusion”, but applied and found

evidence to support a finding that Armstro ork Company’s

te barge name change would violate the “likelihood of con-

sion” standard.

7

Appeals erred by applying the incorrect standard of

likelihood of confusion when the “all possibility of con-

fusion” standard should have been applied. This brings

the Fifth Circuit into direct conflict with the Second,

Fourth and Seventh Circuits. The Courts of Appeal for

the Second, Fourth and Seventh Circuits indicate that

when a newcomer to a trade or product area is in-

volved, the newcomer must avoid all possibility of con-

fusion.

The Seventh Circuit has repeatedly held:

“One entering a field of endeavor already oc-

cupied by another should, in the selection of a

trade name or trademark, keep far enough

away to avoid all possible confusion”. Northam

Warran Corp. v. Universal Cosmetics Co., 18 F.2d

774, 775 (7th Cir. 1927); G. D. Searle & Co. v.

Chas. Pfizer & Co., 265 F.2d 385, 387 (7th Cir.

1959).

In accord is the Fourth Circuit, AMP, Inc. v. Fay,

540 F.2d 1181 (4th Cir. 1976); and the Second Circuit,

Harold F. Ritchie, Inc. v. Chesebrough-Pond’s, Inc., 281 F.2d

755 (2nd Cir. 1960). im

In this matter the Court recognized that Armstrong

Cork Company was anewcomer both to the tufted car-

pet industry and to the use of the name and mark

WORLD in connection therewith, but failed to apply

the legal standard that would require Armstrong Cork

Company, as a newcomer, to avoid all possibility of

confusion. The Court of Appeals acknowledged the “all

8

possibility of confusion” standard, but expressly de-

clined to apply it. (Court of Appeals Opinion, Footnote

6, Appendix, page 9a) Instead it applied the “clearly

erroneous rule” [Fed.R.Civ.P. 52(a)] to the standard of

“likelihood of confusion in the minds of the carpet buy-

ing public” (Court of Appeals Opinion, Appendix, page

9a), and thereby avoided consideration of the pos-

sible uses of WORLD by Armstrong Cork Company.

Such a consideration would be required under the “all

possible confusion” test (a consideration explored and

weighed by the District Court in Conclusion of Law

No. 41, Appendix, page 32a) and would have resulted in

a finding that the District Court’s opinion was not

clearly erroneous.

In substituting its own findings of fact for that of the

District Court and Advisory Jury, the Court of Appeals

narrowed its focus to a proposed label in order to find

clear error. Application of the standard favored by the

Fifth Circuit provides no real protection to the trade-

mark owner, but rather encourages repeated litiga-

tion. As stated in Footnote 16 of the Court of Appeals

decision “. .. Should Armstrong in the future use its

name in such a manner that infringes upon World's

trademark rights World will, of course, be free at that

time to seek redress”.

The effect of such a ruling is that World Carpets, Inc.

will be forced to prosecute an infringement claim each

time Armstrong Cork Company uses its new name ina

manner other than diminutively on its carpe . label. To

not take action could be determined as acquiescence

under the present law. Petitioners submit that it is not

S

the intent of federal trademark law to force World

Carpets, Inc. to undertake such a burden.

The trademark owner needs to know where it stands

in relation to the alleged infringer. The standard

applied by the Fifth Circuit is too narrow and does not,

as this matter clearly demonstrates, afford the trade-

mark owner the opportunity of a final determination of

its rights.

Petitioners submit that the “all possible confusion”

standard recognized and followed by the Second,

Fourth and Seventh Circuits is the more reasoned legal

standard for likelihood of confusion. However, as

matters now stand, a conflict exists between the cir-

cuits that strikes at the heart of trademark law. It is a

conflict that can only be resolved by this Court.

CONCLUSION

For the reasons set out above, a Writ of Certiorari

should issue to review the judgment and opinion of the

United States Court of Appeals for the Fifth Circuit.

Respectfully submitted,

MITCHELL, MITCHELL,

COPPEDGE, BOYETT,

WESTER & BATES

P. O. ADDRESS:

P. O. Box 668

Dalton, GA 30720 Warren N. Coppedge, Jr.

(404) 278-2040 COUNSEL FOR PETITIONERS

10

BEVERIDGE, DeGRANDI,

KLINE & LUNSFORD

Julius R. Lunsford, Jr.

1012 Harris Tower COUNSEL FOR PETITIONERS

Peachtree Center

233 Peachtree Street, N.E.

Atlanta, Georgia 30303

CERTIFICATE OF SERVICE

I hereby certify that three (3) copies of the foregoing

Petition for Writ of Certiorari were duly served by

first-class mail, postage prepaid, on the attorneys for

Respondents:

David H. T. Kane

Kane, Dalsimer, Kane, Sullivan and Kurucz

420 Lexington Avenue

New York, New York 10017

Oscar M. Smith

Smith, Shaw, Maddox, Davidson & Graham

P. O. Box 29

Rome, Georgia 30161

This ____ day of September, 1979.

Warren N. Coppedge, Jr.,

Counsel for Petitioners

a

la

APPENDIX

ARMSTRONG CORK COMPANY and

ARMSTRONG WORLD INDUSTRIES, INC.,

Plaintiffs-Appellants, Cross-Appellees,

versus

WORLD CARPETS, INC., et al.,

Defendants-Appellees, Cross-Appellants.

No. 78-1919

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

June 21, 1979

JOHN R. BROWN, Chief Judge:

In this case, we fly by magic carpet through the exotic

and esoteric realm of trademark law and the Lanham

Act, 15 U.S.C.A. §§1051-1127. Armstrong Cork Com-

pany (Armstrong), plaintiff below, appeals from a Dis-

trict Court order enjoining Armstrong from using its

proposed new corporate name, Armstrong World

Industries, Inc. World Carpets, Inc. (World), defend-

ant below, appeals from the District Court’s ruling that

Armstrong had not violated the Georgia Fair Business

Practices Act of 1975, Ga. Code Ann. §§106-1201 to

1217. The main issue on appeal is whether the District

2a

Court was correct in ruling that Armstrong’s use of its

proposed corporate name would infringe World's

rights in its registered trademarks WORLD and

WORLD with a globe symbol. We conclude that the

District Court’s finding of trademark infringement

was incorrect. The District Court's order of injunction

is reversed and its ruling on the state law issue is

affirmed.

I. In The Beginning

The Carpetbaggers

Armstrong is a Pennsylvania corporation that manu-

factures home furnishing products, including hard sur-

face flooring, ceiling material, furniture, and carpet-

ing. Armstrong has ten foreign subsidiaries and affili-

ates located in eight foreign countries. Armstrong’s

products are sold in over 100 countries. From 1950 to

1976, Armstrong spent approximately 180 million

dollars in advertising.

Armstrong sells its products under various trade-

marks, such as Armstrong with a circled A and

Evans & Black. Armstrong is also the owner of regis-

tered trademarks INDOOR WORLD and THE IN-

DOOR WORLD, which refer to Armstrong’s interior

decorating services and cotton piece goods.

Although Armstrong is best known for its hard sur-

face flooring products, Armstrong is also a manufac-

turer of tufted carpets. In the early part of this cen-

——— —

3a

tury, Armstrong manufactured or sold carpet under

various trade names, culminating with the Deltox label

that was discontinued in the early 1960’s. In 1966,

Armstrong acquired Brinton Carpets, a Canadian pro-

ducer of woven and tufted carpeting. In 1967, Arm-

strong acquired Evans & Black of Texas and Georgia, a

tufted carpet producer. Armstrong is now one of the

largest producers of carpets. As required by federal

law, the Armstrong corporate name appears on every

label of carpet manufactured or warranted by Arm-

strong.

Since 1973, Armstrong has operated a wholly-owned

subsidiary, Pacific World. Pacific World is the whole-

sale distributor of Armstrong carpets in California and

the surrounding areas. Pacific World has approxi-

mately six to seven million dollars in annual sales.

For some time now, Armstrong has been consider-

ing a name change. Because cork has ceased to be a sig-

nificant part of Armstrong’s product line, Arm-

strong’s executives concluded that the corporate name

Armstrong Cork Company no longer provided an

appropriate description of Armstrong’s business. De-

ciding to change to a corporate name that was “more

reflective of what the Armstrong Cork Company is to-

day,” Armstrong embarked upon what has been a

rocky road to name change. Testimony of James Binns,

Pres., Armstrong Cork Co.

Before deciding upon Armstrong World Industries,

Inc., Armstrong considered other names, such as Arm-

-

a i a ll

da

strong International, Armstrong Industries, and Arm-

strong Indoor World Industries. Armstrong Inter-

national and Armstrong Industries could not be cleared

for use in certain states because of existing companies

with identical names. Armstrong Indoor World Indus-

tries was not adopted because it was considered too re-

strictive. ~

Armstrong eventually settled upon the name Arm-

strong World Industries, Inc. The proposed name was

approved by Armstrong’s shareholders in 1977. Arm-

strong then formed a Delaware name-holder corpora-

tion, Armstrong World Industries, Inc., and received

permission to do business in that name in all fifty

states.

At this point, World pulled the rug from under

Armstrong’s corporate feet, objecting to the proposed

name change.

The Rug Beaters

World is a Georgia corporation manufacturing tuft-

ed textile carpets in a variety of styles and colors. Or-

ganized in 1954, World is a closely-held corporation

with subsidiaries in seven metropolitan areas through-

out the United States and with export sales in twenty-

five countries, including Australia, England, Ger-

many, and Japan. World’s annual sales exceed 100

million dollars. World has an established reputation in

the carpet industry as a “trend setter.” Nationwide,

—_—__»-

5a

World has spent approximately eighteen million dollars

on newspaper, magazine, and television advertising.

World is the owner of federal registered trademarks

WORLD and WORLD with a globe symbol. The fed-

eral trademark WORLD has become incontestable un-

der Section 15 of the Lanham Act, 15 U.S.C.A. §1065.

World and Armstrong are major competitors in the

carpeting industry. Their manufacturing processes are

similar. They have similar sales and distribution

methods. For example, the companies frequently

market their products through the same retail stores.

Both companies typically furnish distributors and re-

tailers with sample books, display racks, and other pro-

motional materials. Armstrong and World both adver-

tise in the same magazines, often on adjacent pages.

The companies use the same toll-free telephone

number for consumer inquiries.

II. How It Went: A Rug By Any Other Name

When efforts to resolve the name change dispute

failed, Armstrong brought this declaratory judgment

action, seeking a ruling that its proposed new corporate

name did not infringe or unfairly compete with World’s

rights in its registered trademarks, WORLD and

WORLD with a globe symbol.! World counterclaimed

for an injunction restraining Armstrong's use of the

1 For an example of the latter trademark, see World’s carpet

label, reproduced infra, at 13a.

ae

6a

new name and for damages and attorneys fees for vio-

lations of the Georgia Fair Business Practices Act of

1975, Ga.Code Ann. §§106-1201 to 1217. A jury was

impaneled for a determination of World’s counter-

claim for damages. The jury found that World was not

entitled to exemplary or punitive damages. The jury

also made advisory findings of fact that Armstrong’s

use of the proposed name was likely to cause con-

fusion, was not a good faith, fair, and descriptive use of

the word World, and was an unfair trade practice. The

District Court then made its own findings of fact and

conclusions of law and enjoined Armstrong from using

the proposed name.

The District Court held that World was entitled to

injunctive relief because Armstrong carpet sold by

Armstrong World Industries, Inc. would likely be con-

fused with carpet sold by World and that therefore

Armstrong’s use of its proposed corporate name would

infringe World’s trademark rights.2 The Court further

2 Lanham Act §32(1), 15 U.S.C.A. §1114(1), sets forth the

elements of an action for infringement of a registered trademark:

(1) Any person who shall, without the consent of the

registrant—

a) use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered mark in con-

nection with the sale, offering for sale, distribution, or

advertising of any goods or services on or in connection

with which such use is likely to cause confusion, or to

cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate

a registered mark and apply such reproduction, counter-

feit, copy, or colorable imitation to labels, signs, prints,

packages, wrappers, receptacles or advertisements in-

tended to be used in commerce upon or in connection

7a

held that Armstrong could not claim protection under

the “fair use” defense of Section 33(b)(4) of the Lanham

Act.3

The Court ruled against World on the state law issue,

finding that Armstrong had not passed off its goods as

those of World and that no one was actually confused

by the proposed name change. The Court upheld the

jury’s refusal to award damages to World.

On this appeal, Armstrong attacks the holdings ad-

verse to it. World attacks the District Court’s resolu-

with the sale, offering for sale, distribution, or adver-

tising of goods or services on or inconnection with which

such use is likely to cause confusion, or to cause mistake,

or to deceive.

shall be liable in a civil action by the registrant for the

remedies hereinafter provided.

* * 7

3 Section 33(b)(4) of the Lanham Act, 15 U.S.C.A. §1115(b)(4),

codifies the common law principle of “fair use,” under which a par-

ty is protected in certain uses of a registrant’s otherwise exclusive

trademark:

(b) If the right to use the registered mark has become

incontestable under section 1065 of this title, the regis-

tration shall be conclusive evidence of the registrant's ex-

clusive right to use the registered mark incommerce. . .

except when one of the following defenses or defects is

established: haath ;

(4) That the use of the name, term, or device charged

to be an infringement is a use, otherwise than as a trade

or service mark, of the party's individual name in his own

business, or of the individual name of anyone in privity

with such party, or of a term or device which is descrip-

tive of and used fairly and in good faith only to describe to

users the goods or services of such party, or their geo-

graphic origin... .

tion of the state law issue. We need discuss only one of

these challenges.‘

III. The Legal Standard: Confusion Reigns

In a trademark infringement case, the controlling

issue is whether the alleged infringer’s imitation of a

registéred mark is “likely to cause confusion, or to

cause mistake, or to deceive... .” Lanham Act §32(1),

15 U.S.C.A. §1114(1); Roto-Rooter Corp. v. O'Neal, 5 Cir.,

1975, 513 F.2d 44; World Carpets, Inc. v. Dick Littrell’s New

World Carpets, 5 Cir., 1971, 438 F.2d 482; Continental

Motors Corp. v. Continental Aviation Corp., 5 Cir., 1967, 375

F.2d 857; American Foods, Inc. v. Golden Flakes, Inc., 5 Cir.,

1963, 312 F.2d 619.5 Therefore, as the District Court

4 We affirm the District Court’s ruling against World on its

claim under the Georgia Fair Business Practices Act of 1975.

World has failed to prove that Armstrong has engaged in “unfair

or deceptive consumer transactions” or unlawful “consumer acts

or practices.” See Ga.Code Ann. §106-1203(a). Our resolution of

the infringement issue makes it unnecessary to reach Arm-

strong’s “fair use” defense.

5 From this “likelihood of confusion” test, two further questions

emerge — confusion about what? and confusion of whom?

Until 1962, trademark infringement was based upon confusion

of goods or businesses. See Act July 5, 1946, ch. 540, §32, 60 Stat.

437. Under the Lanham Act, as amended, however, Congress

adopted an open-ended concept of confusion. See Act Oct. 9, 1962,

Pub.L. No. 87-772, §17, 76 Stat. 773. Any kind of. confusion will

now support an action for trademark infringement:

A likelihood of confusion attributable to use of a similar

trademark need no longer be predicated upon the claim

that the public may be misled because there is a similar-

ity between the goods or businesses. We may now refer

not only to this “relative” confusion, but also to a concept

of absolute confusion, one that arises out of another's use

9a

rightly observed, the case turns upon the correctness

of the District Court's finding that Armstrong’s use of

World’s trademark in its corporate name created a like-

lihood of confusion in the minds of the carpet buying

public.¢

The finding of likelihood of confusion is one of fact

and is therefore reviewed by this Court under the

“clearly erroneous” test of F.R.Civ.P. 52(a). T. G. I.

Friday's, Inc. v. International Restaurant Group, Inc., 5 Cir.,

1978, 569 F.2d 895; Holiday Inns, Inc. v. Holiday Out In

America, 5 Cir., 1973, 481 F.2d 445. The question for us

is whether the District Court’s finding of likelihood of

confusion was clearly erroneous.

of a similar mark in connection with a product or busi-

ness wholly unrelated, or even alien, to that of the

trademark owner.

3 R. Callmann, The Law of Unfair Competition Trademarks and

Monopolies §80, at 539 (3d ed. 1969) (footnotes omitted) [herein-

after cited as Callmann]. See also Continental Motors Corp. v. Continental

Aviation Corp., 375 F.2d at 860 n. 8.

We decide the “confusion of whom” issue in terms of the

product's typical buyer. Kentucky Fried Chicken Corp. v. Diversified Pack-

aging Corp., 5 Cir., 1977, 549 F.2d 368, 369 n. 26; E. & J. Gallo Winery

v. Ben R. Goltsman & Co., M.D.Ala., 1959, 172 F.Supp. 826, 829.” The

general impression of the ordinary purchaser, buying under the

normally prevalent conditions of the market and giving the atten-

tion such purchasers usually give in buying that class of goods, is

the touchstone.” Callmann, supra, §81.2, at 577 (footnote omitted).

6 Armstrong would concede that when the alleged infringer is a

newcomer, the test for trademark infringement is not whether

there is a likelihood of confusion, but whether there is any possi-

bility of confusion. This Circuit has not adopted that position, and

we see no reason to add such a gloss to the language of 15 U.S.C.A.

§1114. Of course, the alleged infringer’s newcomer status, and

particularly his knowledge of the trademark owner’s prior use, are

relevant factors in determining the question of likelihood of con-

fusion. They do not, however, change the legal standard.

10a

A finding of fact of the District Court is clearly er-

roneous “when although there is evidence to support

it, the reviewing court on the entire evidence is left

with the definite and firm conviction that a mistake has

been committed.” United States v. United States Gypsum Co.,

1948, 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746.

In other words, we reverse when the result in a par-

ticular case does not reflect the truth and the right of

the case. W. R. B. Corp. v. Geer, 5 Cir., 1963, 313 F.2d

750, 753, cert. denied, 379 U.S. 841, 85 S.Ct. 78, 13

L.Ed.2d 47. We have such a result here. Having con-

sidered all the evidence in this case, we are convinced

that the District Court was mistaken when it found

that Armstrong’s use of its proposed corporate name

would create a likelihood of confusion with World,

World’s products, or any other aspect of World’s

business.

IV. The Standard Applied: Who's Confused? By What?

A finding of likelihood of confusion is based upon an

evaluation both of the marks themselves and of cer-

tain extrinsic conditions, such as the parties’ business

operations or the intent of the alleged infringer.”? The

evaluation of the marks themselves is of course the

most important consideration, for it is in their similar-

ity that the roots of confusion lie. See Kentucky Fried

Chicken Corp. v. Diversified Packaging Corp., 549 F.2d at 386;

B. H. Bunn Co. v. AAA Replacement Parts Co., 5 Cir., 1971,

451 F.2d 1254, 1261; I. T. S. Industria Tessuti Speciali v.

7 See Restatement Torts §729 (1938).

lla

Aerfab Corp., S.D.N.Y., 1967, 280 F.Supp. 581, 586; Cali-

mann, supra note 5, §80, at 538.

In this case, although the District Court found simi-

larities in Armstrong’s and World’s business opera-

tions, the Court based its finding of likelihood of con-

fusion primarily upon findings of similarities in the

companies’ products and marks.’ In particular, the

Court found that the companies’ carpets were, without

the federally required label, indistinguishable. Find-

ings of Fact No. 31. This factor, coupled with what the

Court considered to be the “substantial similarity” in

the companies’ marks, was the deciding consideration

leading to the Court’s finding of likelihood of con-

fusion: “The carpet products are so closely related that

use of substantially similar marks would create a

strong likelihood of confusion.” Id.

Of course, the findings of similar marks and products

are also governed by the clearly erroneous standard. In

this case, it is an error in one of these findings that tars

the finding of likelihood of confusion with the brush of

clear error. The Court’s finding that Armstrong's pro-

posed name and World’s trademark are “substantially

similar” is clearly erroneous, and without this finding,

the finding of likelihood of confusion cannot stand.

8 We recognize that a corporate name is technically not a mark,

but for simplicity’s sake, we will use the term “mark” to refer to

a $ proposed corporate name as well as to World's trade-

mark.

12a

The mere fact that Armstrong’s proposed corporate

name contains the word World does not, of itself, make

the name “substantially similar” to World’s trade-

mark. A mark must be viewed in its entirety and in con-

ext. It is the overall impression that counts. B. H. Bunn

Co. v. AAA Replacement Parts Co., 451 F.2d at 1262 n. 2;

Restatement of Torts §729, Comment b (1938).

Part of this “overall impression” includes the manner

in which a particular mark or designation is to be used.

Callmann, supra note 5, §82.2(e). In this case, the Court

attached significance to the fact that Armstrong would

use its corporate name on its carpet labels and that this

would likely cause confusion with World. Therefore, a

comparison of World’s carpet label? seems appropriate:

9 With the exception of the new corporate name, the proposed

label is identical to the label currently used by Armstrong. Al-

though Armstrong is not bound to use this proposed label on its

carpets, there is nothing, other than speculation, to suggest that it

will not be used. ae g the only avila on this point suggests

that Armstrong will use its new corporate name in the same

manner that it uses its present name. See ¢.g., Testimony of Arm-

strong Pres. Binns (“[Armstrong World Industries, Inc.’s] use, I

would think would be the same kind of use that we have made of

Armstrong Cork Company.”).

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Armstrong’s proposed carpet label.

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100% Armstrong approved polyester

fiber provides softness, rich texture, and

excellent resistance to abrasion.

Two-level cut-and-loop sculptured plush

construction produces a subtle design

with a distinctive textural dimension,

making Seclusion an ideal carpet for

living rooms, dining rooms, and bedrooms.

Autoclave heat-set yarn improves tip

retention under traffic and keeps the

Carpet new looking longer.

Bright-luster yarn adds to the beauty of

the carpet by keeping the colors

bright and fresh.

An examination of Armstrong’s proposed label

shows that the diminutive appearance of the word

World — in fine print at the bottom right of the label —

is obviously quite different from the appearance of

-mstrong -

15a

World’s bold WORLD. The attention-getting feature

in Armstrong’s label is unquestionably Armstrong’s

own trademark — Armstrong with acircled A. The im-

port of each label is altogether distinctive. With such

clearly dissimilar labels, we fail to see how the ordi-

nary purchaser of carpets would likely be confused

between the two companies’ products.?° Cf. Robinson Co.

v. Plastics Research & Development Corp., W.D.Ark., 1967,

264 F.Supp. 852, 861.11

Moreover, it must be emphasized that Armstrong

seeks merely to change its corporate name. There is no

showing that Armstrong is seeking to feature either

the new name in its entirety or, more significantly, the

term World to denominate or advertise its carpets.

There is nothing in the record that suggests that Arm-

10 This is particularly so since a person buying a “big ticket” item

such as carpetin wane ceaartie be eunhited to be a more care-

ful buyer than the impulse purchaser or the purchaser of a rela-

tively inexpensive item. See Callmann, supra, note 5, §81.2(a), at

584-88.

11 In Robinson, the Court held that the use of the term Rebel on

defendant’s minnow plugs did not infringe plaintiff's trademark

ights in REB-L lures. The Court found no substantial similarity

Dg marks, in large part because the marks were displayed in dis-

tinguishable manner:

The examples of Robinson’s trademark which were

introduced in evidence show that the mark is printed in

either black or green ink on a white background with the

printed words ats the most outstanding feature of the

whole trademark. Plastics Research’s mark is quite dis-

tinguishable in that it consists of black lettering on a

brightly colored (red, white and blue) circular fiel , with

its most outstanding features being, not the printed

words or the term “Rebel,” but a representation of a Con-

federate flag along with a caricature of a fish wearing

what appears to be a Confederate soldier's cap.

264 F.Supp. at 861.

OO

16a

strong will deviate from its present policy of pro-

moting its Own admittedly well-known and distinctive

trademark.!2 Under such circumstances, we believe

that the District Court was clearly erroneous in find-

ing that Armstrong’s proposed corporate name is sub-

stantially similar to World’s trademark.

Once the Court's finding of similarity of marks is

rejected, the other factors supporting the Court’s

determination appear insignificant. The only other fac-

tors cited by the Court in its findings were the simi-

larities in the companies’ business operations and

products. These findings, standing without the critical

finding of trademark similarity, are hardly sufficient to

support a determination of likelihood of confusion.

Indeed, much other evidence at trial seems to sup-

port a contrary finding. For example, the existence of

eighty-five different carpet companies using without

objection from World the word World in their business

12 Admitting as typical Armstrong’s exhibits showin romi-

nent use of the Armstrong mark, World further admitted that “in

the past, in print, the name Armstrong frequently appeared in

larger size type than the remainder of theco rate name and that

the corporate name has been accompanied by prominent refer-

ences to Armstrong, per se.” Statements of Armstron officials

indicate nothing other than an intention to maintain this policy:

_ }he name we use is Armstrong in all of our adver-

tising, and everything. That is it. The small corporate

identification is eres for legal corporate use. That

would become the corporate name, but the one word

Armstrong is what we have used, and that is all we would

— that is what we would continue to concentrate on. . Le

— of Harry Jensen, Exec. Vice Pres., Armstrong Cork

o.

——

17a

— not to mention World’s toleration of Armstrong’s

own use of the terms INDOOR WORLD and Pacific

World — militates against the finding of likelihood of

confusion.!3 Restatement of Torts §729, Comment (g),

at 596 (1938) (“The greater the number of identical or

more or less similar trade-marks already in use. . . the

less is the likelihood of confusion.”).

World, however, contends that there is evidence

showing not merely likelihood of confusion, but even

actual confusion. First, World points to commentary in

a trade magazine that purportedly suggests that Arm-

strong might have acquired World. This information

came into the record via Armstrong’s answer to

World's interrogatory.14 The commentary itself was

properly excluded as hearsay. We find this evidence to

be practically useless. From the interrogatory, it is of

course impossible to know exactly what was written in

the trade magazine. It is also impossible to determine

13 World, however, tries to distinguish between the use of World

by retailers as opposed to manufacturers. Insofar as consumers

are concerned, the distinction seems tenuous. On at least one

prior occasion, World apparently shared this view. See World

Carpets, Inc. v. Dick Littrell’s New World Carpets, 5 Cir., 1971, 438 F.2d

482.

14 The interrogatory, introduced into evidence at trial, reads as

follows:

Please state whether Plaintiff Corporation is aware of

any instance where the name Armstrong World Indus-

tries Inc. has generated oral or written comment in the

soft floor covering industry or its trade journals or by

customers of that industry as to whether the plaintiff and

the defendant have merged or have, in some way, become

affiliated with each other.

The answer, “Floorcovering Weekly, Exhibit 4.”

18a

whether the author of the comments was actually con-

fused, merely speculating, or attempting to be humor-

ous about whatever it was he or she was writing about.

World also cites the testimony of two businessmen

who stated that upon first learning of Armstrong’s

proposed name change they entertained short-lived

impressions that Armstrong had acquired or merged

with World.15 To the extent that this evidence shows

confusion at all, it is insufficient to tip the scales in

World’s favor. The fact that there might have been

some evidence to support a particular finding does not

make that finding impervious to F.R.Civ.P., 52(a) re-

versal if the reviewing court is convinced that a mistake

has nonetheless been made. W. R. B. Corp. v. Geer, 313

F.2d at 752; Sanders v. Leech, 5 Cir., 1946, 158 F.2d 486,

487.

15 The first of these businessmen to testify, Patrick Shaw,

currently World's Director of Marketing, responded to question-

ing by counsel for World:

Q: [Please limit yourself to your first impression that

you formed when you first heard of the proposed name

change of Armstrong Cork Company... .

A: That the two firms might possibly have merged. But,

again, realizing that the Armstrong philosophy of sell-

ing carpet and where they were at in the market place,

that it could not exist.

The second businessman, Truett Lomax, Director of Ad-

ministration of the Carpet & Rug Institute, Dalton, Georgia, testi-

fied that his first impression upon learning of the name change

was that Armstrong had acquired World, but he added on cross-

examination that he inirnad relatively quickly that it was “just a

rumor.”

sY

19a

V. Conclusion

Our evaluation of the evidence adduced at trial con-

vinces us that the District Court was clearly errone-

ous in its finding of similarity of marks and that

without this finding there was no evidence from which

one could reasonably find that Armstrong’s adoption of

the name Armstrong World Industries, Inc. would

create a likelihood of confusion with World Carpets,

Inc., its products, or whatever. Hence, there is no

trademark infringement.1¢

We reverse in part and affirm in part, upholding only

that portion of the District Court opinion denying

World monetary damages and relief under state law.

REVERSED IN PART; AFFIRMED IN PART.

16 We caution that our holding is a narrow one. We merely hold

that Armstrong may change its corporate to Armstrong World

Industries, Inc. without infringing upon World’s tra !emark

rights. Our holding does not give Armstrong carte blanche to use

its new name in such a manner that it infringes upon World's

rights. Therefore, to this extent, the District Court's Finding of

Fact No. 28 is misleading (“Armstrong . . . would not be restrict-

ed, by law or self-control, to any particular use, alone or in combi-

nation, of either ‘Armstrong’ or ‘World’.”). Should Armstrong in

future use its new name in such a manner that it infringes upon

World’s trademark rights, World will of course be free at that time

to seek redress. In addition, although there is no evidence now to

support a finding of common law unfair competition, should Arm-

strong subsequently attempt to “palm off” its products as those of

World, such a cause of action might lie. For discussion of the law of

unfair competition in this Circuit, see Kentucky Fried Chicken Corp. v.

Diversified Packaging Corp., 549 F.2d at 381-86; Boston Professional

Hockey Ass'n. v. Dallas Cap & Emblem Mfg., Inc., 5 Cir., 1975, 510 F.2d

1004, 1010; B. H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d at

1262-67.

a ee

20a

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 78-1919

ARMSTRONG CORK COMPANY and

ARMSTRONG WORLD INDUSTRIES, INC.,

Plaintiffs-Appellants,

Cross-Appellees,

versus

WORLD CARPETS, INC., ET AL.,

Defendants-Appellees,

Cross-Appellants.

Appeals from the United States District Court for the

Northern District of Georgia

ON PETITION FOR REHEARING

Filed: Aug. 10, 1979

Before BROWN, Chief Judge, COLEMAN and

TJOFLAT, Circuit Judges.

21a

PER CURIAM:

IT IS ORDERED that the petition for rehearing filed

in the above entitled and numbered cause be and the

same is hereby DENIED.

ENTERED FOR THE COURT:

Is} JOHN R. BROWN a

CHIEF JUDGE

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF GEORGIA

ROME DIVISION

ARMSTRONG CORK CO.

versus CA No. C77-49R

WORLD CARPETS, INC., ET AL.

OPINION

STATEMENT OF THE CASE

1. This matter is before the Court asa declaratory

judgment action. The plaintiff, Armstrong Cork Com-

pany, (“Armstrong”) is seeking a determination that

the name “Armstrong World Industries, Inc.” does not

infringe or unfairly compete with the defendant's

22a

name, World Carpets, Inc. (“World Carpets”). The ac-

tion arises under a Federal statute dated July 5, 1946,

and commonly referred to as “The Lanham Trade-

Mark Act”. The defendant has counterclaimed alleg-

ing that the name Armstrong World Industries, Inc. is

an infringement upon the trademark owned by the

defendant and would constitute a form of unfair

competition. Additionally, the defendant has alleged

that the plaintiff's use of the name will dilute the dis-

tinctive qualities of the defendant’s trademark and

registered tradename, would violate the Uniform

Deceptive Trade Practices Act of the State of Georgia,

and would falsely designate a source of origin of the

plaintiff’s goods as emanating from the defendant.

2. A trial was held before this Court during the

week of December 12, 1977. A jury was impanelled for

a determination as to World Carpets’ counterclaim for

damages. The jury found that World Carpets was en-

titled to no exemplary or punitive damages. The jury

also made advisory findings of fact.

FINDINGS OF FACT

The Parties

3. The plaintiff, Armstrong Cork Co., is a Penn-

sylvania corporation that manufactures home fur-

nishing products, namely, resilient flooring (also re-

ferred to as hard surface flooring), ceiling materials,

23a

furniture, carpeting, and a line of specialties. The

products are offered under various marks such as Arm-

strong, Brinton, Thomasville, and Evans & Black

(E & B).

4. Armstrong is a domestic corporation with sub-

sidiaries and affiliates in eight foreign countries and

sales in approximately one hundred countries. With the

exception of Brinton Carpets in Canada, none of the

plaintiff’s foreign subsidiaries or affiliates manufac-

ture carpet.

5. Armstrong is best known for its hard surface

flooring products. However, in the past plaintiff has

made temporary ventures into the rug business. In the

early part of this century, Armstrong manufactured or

sold rugs under names such as Quaker Rugs, Fetterolf

Rugs, and finally under the Deltox label which was dis-

continued in the early 1960’s. Plaintiff acquired Brin-

ton Carpets in Canada in 1966, a woven and tufted pro-

ducer of carpeting, and Evans & Black of Texas and

Georgia in 1967, a tufted carpet producer. Armstrong

began and expanded its carpeting interests through

purchase and acquisition.

6. Armstrong is owner of the following federal

registrations for the trademarks THE INDOOR

WORLD and INDOOR WORLD:

24a

Class Granted

Goods/ Date

Registration

Number

Interior decorating June 20, 1972

services — namely,

advice and consultation to

others in the use

of floors, carpets, furniture,

wall coverings and

ceilings provided by

applicant and others.

Class 35.

Woven fabrics

in the piece made

of cotton.

Class 24.

936,299

1,007,135 March 18, 1975

7. These registrations are not for carpeting. The

INDOOR WORLD registrations are not used for any

specific product and do not appear on any carpet labels.

8. Armstrong is a large advertiser and has expend-

ed 180 million dollars in advertising over a number of

years. This total includes 40 million dollars in which

there was a reference to its “Indoor World” interior

decorating services and cotton piece goods marks.

However, only two million dollars has been spent in ex-

clusive carpet advertising. Presently the plaintiff and

its subsidiaries are one of the larger producers of

carpet.

9. Since 1973, Armstrong has been operating a

wholly owned subsidiary under the name Pacific

World. Pacific World acts as the wholesale distributor

of Armstrong carpets in California and surrounding

areas. Pacific World does approximately six to seven

million dollars of sales annually.

25a

10. Armstrong has been considering a name

change for some time. The name “Armstrong Cork”

does not reflect the fact that cork material is no longer a

significant ingredient in Armstrong’s product line.

11. Among the names considered by Armstrong

before settling on “Armstrong World Industries, Inc.”

were:

Armstrong International

Armstrong Industries

Armstrong Indoor World Industries

Armstrong Industries and Armstrong International

could not be cleared for use in certain states because of

existing companies with identical names. Armstrong

Indoor World Industries was not adopted because it

was considered too restrictive.

12. Armstrong has incorporated in Delaware a

name holder company, “Armstrong World Industries,

Inc.” and received permission to do business in that

name in each of the fifty states.

13. Armstrong seeks a court determination

through this action that the use of the name

“Armstrong World Industries, Inc.” as its corporate

identification would not infringe on the rights of

defendant, World Carpets.

14. Defendant, World Carpets, Inc., is a Georgia

corporation which manufactures one product, tufted

26a

Registration

Number Goods/Class Date Granted

767,616 Textile carpeting March 30, 1965

Class 42

1,044,266 Textile carpeting July 20, 1976

Class 27

18. Registration Number 787,616 has become in-

contestable pursuant to 15 U.S.C. §1065.

19. Through defendant’s national consumer

magazine advertising, national trade magazine adver-

tising, and national circulation of other advertising

materials, the word “WORLD” has come to denomi-

nate and identify only World Carpets, Inc., of Dalton,

Georgia in the field of manufacturing and distribution

of carpeting.

20. World Carpets has been first or among the first

in developing a float manufacturing system, a trans-

porter system, flat aad rotary printing systems, tak

dyeing systems, electronic dyeing systems, one of the

first to manufacture artificial turf, one of the first to es-

tablish diversified warehouse system, and the first to

print Oriental and Rya rug patterns. World Carpets’

manufacturing innovations serve to illustrate the

extremely competitive nature of the tufted carpet

market. ,

Product and Distribution Overlap

21. Both Armstrong and World Carpets manufac-

ture, wholesale and distribute tufted carpet products to

27a

textile carpet. World Carpets was organized in 1954 at

the inception of technical breakthroughs in the tufted

carpet industry and is a closely held corporation with

subsidiaries in seven metropolitan areas throughout

the United States. World Carpets began on a rather

small scale but has grown with the carpet industry and

is now a multi-million dollar corporation with annual

sales in excess of 100 million dollars.

15. World Carpets has established a reputation in

the industry as a trend setter and innovator of tech-

nology, distribution techniques, carpet coloring, and

styles. World Carpets manufactures Oriental rugs, Rya

rugs, and carpeting in seventy styles of ten to twenty

colors each. Nationwide, World Carpets has expended

approximately 18 million dollars on newspaper, mag-

azine and television advertising.

16. The defendant actively participates in foreign

trade shows and is a major exporter of carpets. Adver-

tising and sales are made in 25 countries, including

Japan, England, Australia, and Germany. World

Carpets’ exports account for thirteen percent of all

tufted carpet exported from this country by all manu-

facturers of tufted carpet.

17. Defendant is the owner of the following fed-

eral registrations for the trademarks WORLD and

WORLD with a globe:

28a

laminate the same with similar rubber or latex products

onto jute. Many of the major rubber companies are in

the tufted carpet business. Both Armstrong and World

Carpets have integrated manufacturing processes

which spin their own fibers into yarn. Both parties tuft,

back and ye carpeting products using the same gen-

eral methods. Basically, the manufacturing processes

of the plaintiff and defendant are the same.

25. Because of similarity of manufacturing

processes, styles and colors, there is relatively a low

manufacturer identification with a particular fabric

style of the tufted carpet produced. This low identifi-

cation level is enhanced by the fact that when carpet-

ing is installed no identification labels and marks can be

seen.

"3. Product identification is required of the manu-

facturer, however. The Federal Trade Commission and

the FHA require the corporation’s name or identifica-

tion number to appear on every label affixed to carpet-

ing samples and goods made by a manufacturer. The

Magnuson-Moss Act requires identification of the

manufacturer on labels on carpet which is warranted.

27. The Armstrong corporate name appears on

every label of carpet marketed by Armstrong. The

Armstrong name also appears on private labels of

carpeting manufactured by Armstrong for others.

28. Armstrong would use the name “Armstrong

World” for the purpose of company identification, but

29a

distributors and retailers. Neither the plaintiff nor the

defendant sell these products directly to the public.

Armstrong and World Carpets are major competitors

in the market with similar types of floor covering

products, and to the extent that carpeting competes

with hard surface flooring, plaintiff and defendant also

compete in this area. Further, plaintiff’s and defend-

ant’s distribution subsidiaries compete with each other

in a market to retailers.

22. The competition assumes many forms.

Armstrong and World Carpets seek to sell to the same

consumers and the same markets. They have the same

or similar sales and distribution methods. They adver-

tise in the same magazines, often on adjacent pages. In

many instances Armstrong and World Carpets market

through the same retail stores and use the same toll

free telephone number advertising service for con-

sumer inquiries.

23. Both Armstrong and World Carpets furnish

distributors and retailers with sample books which are

binders containing carpet styles and sample colors, dis-

play racks known as falls or waterfalls containing

styles, samples and colors together with styling book-

lets, notebooks, posters, circulars and other promo-

tional and sales aid materials.

24. Armstrong and World Carpets manufacture

their carpeting products out of the same fibers or same

types of fibers acquired from the same sources and

30a

it would not be restricted, by law or self-control, to any

particular use, alone or incombination, of either “Arm-

strong” or “World”.

29. The nominative sense of the word “World” is

arbitrary when used with carpet. It is not descriptive of

the characteristics of goods or services of a carpet man-

ufacturer and it does not indicate geographic origin.

World Carpets, Inc. v. Dick Littrell's New World Carpets, 438

F.2d 482, 486 (Sth Cir. 1971).

30. When used with respect to the manufacture

and distribution of tufted carpeting products, the word

“WORLD” and“WORLD?” with a globe signifies to the

public the defendant and no other.

31. The carpet of the plaintiff is substantially

similar to that of the defendant. Without a label the or-

dinary consumer could not distinguish between the

products of carpet manufacturers. The carpet products

of Armstrong and World Carpets have certain basic

similarities. The products of each party are marketed in

the same manner; in certain instances they are offered

for sale by the same retailer. The carpet products are so

closely related that use of substantially similar marks

would create a strong likelihood of confusion.

CONCLUSIONS OF LAW

32. This action arises under the Lanham Trade-

Mark Act, as amended, 15 U.S.C. §1501 et seq. Jurisdic-

a HS

3la

tion is invoked pursuant to 28 U.S.C. §2201 and 15

U.S.C. §1121.

33. The trademarks “WORLD” and “WORLD”

with a globe are valid, subsisting, owned by defendant

and the use of the name “Armstrong World Industries,

Inc.” would constitute an infringement. See, New World

Carpet, supra.

34. The federal trademark registration for

WORLD has become incontestable under 15 U.S.C.

§1065 and World Carpets is entitled to the benefits of

15 U.S.C. §1115(b).

35. Registration creates the presumption that

World Carpets has the exclusive right to use the

trademark “WORLD” in connection with carpets. 15

U.S.C. §1057(b); American Express Co. v. Lyons, 193 USPQ

96 (E.D. Cal. 1976).

36. The owner of a registered trademark does not

have to prove secondary meaning. Roto-Rooter Corporation

v. O'Neal, 513 F.2d 44, 46 (Sth Cir. 1975); Glamorene

Products Corp. v. Boyle-Midway, Inc., 188 USPQ 145, 164

(S.D.N.Y. 1975).

37. The central issue before the Court is whether

plaintiff's new name would create a likelihood of con-

fusion. That issue is a question of fact. T.G.I. Friday’s,

Inc. v. International Restaurant Group, No. 76-1633 (Sth Cir.

March 17, 1978); Holiday Inns, Inc. v. Holiday Out in

America, 481 F.2d 445, 447 (Sth Cir. 1973).

32a

38. The Court’s inquiry must consider the likeli-

hood of confusion of all purchasers, from the experi-

enced and intelligent to the naive and gullible. Stork

Restaurant, Inc. v. Sahati, 166 F.2d 348, 359 (9th Cir.

1948); Jockey International, Inc. v. Burkard, 185 USPQ 201,

207 (S.D. Cal. 1975).

39. Considerations relevant to the likelihood of

confusion include the similarity of design, similarity of

products, identity of retail outlets and purchasers,

identity of advertising media utilized, the degree of

care likely to be exercised by purchasers, and the exis-

tence of actual confusion. Union Carbide Corp. v. Ever-

Ready Inc., 531 F.2d 366, 381-82 (7th Cir. 1976); Roto-

Rooter, supra, 513 F.2d at 45.

40. A party need not show actual confusion to

prevail on a claim of trademark infringement; likeli-

hood of confusion is, of course, sufficient. Scarves by

Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1175 (2nd

Cir. 1976); Beef/Eater Restaurants, Inc. v. James Burrough

Limited, 398 F.2d 637, 639 (Sth Cir. 1968); Fotomat Cor-

poration v. Cochran, 437 F.Supp. 1231, 1244 (D. Kan.

1977).

41. Oneseeking to utilize aname already in useina

particular area and with respect to a particular product

has a duty to name his goods so as to avoid all possi-

bility of confusion. AMP Inc. v. Foy, 540 F.2d 1181, 1187

33a

(4th Cir. 1976); Harold F. Ritchie, Inc. v. Chesebrough-Pond’s,

Inc., 281 F.2d 755, 758 (2nd Cir. 1960)!

42. The grant of acorporate charter in Delaware to

“Armstrong World Industries, Inc.” and clearance of

that name for use in all fifty states does not constitute a

license to infringe defendant’s trademark nor will it

provide a defense. Little League Baseball v. Daytona Beach Lit-

tle League, 193 USPQ 611, 614 (M.D. Fla. 1977). See,

Seaboard Finance Company v. Martin, 244 F.2d 329, 331-32

(Sth Cir. 1957).

43. Third party uses of the word “World” are, at

most, but one of the elements to be weighed in a deter-

mination of likelihood of confusion. Continental Motors

Corp. v. Continental Aviation Corp., 375 F.2d 857, 861 (Sth

Cir. 1967).?

Fair Use

44. Armstrong contends the addition of the word

“World” to the Armstrong name is statutorily protect-

ed. As provided in 15 U.S.C. §1115(b)(4), it is a defense:

1 The rationale for this rule has been best expressed by Judge

Learned Hand. “Of course, the burden of proof always rests upon

the moving party, but having shown the adoption of a similar

trade name, arbitrary in character, Icannot see why speculation as

to the chance that it will cause confusion should be at the expense

of the man first in the field.” Lambert Pharmacal Co. v. Bolton Chemical

Corp., 219 F. 325, 326 (S.D.N.Y. 1915).

2 For the proposition third party uses would be completely ir-_

relevant to plaintiff's infringement of the WORLD trademark, ©

see, AMF Incorporated v. American Leisure Products, 474 F.2d 1403, 1406

(CCPA 1973); Tisch Hotels Inc. v. Americana Inn, Inc., 350 F.2d 609, 614

— Cir. _— Admiral Corp. v. Penco, Inc., 203 F.2d 517, 521 (2nd

ir. 1953).

34a

That the use of the name, term, or device

charged to be an infringement is a use, other-

wise than as a trade or service mark, of the

party’s individual name in his own business, or

of the individual name of anyone in privity

with such party, or of a term or device which is

descriptive of and used fairly and in good faith

only to describe to users the goods or services

of such party, or their geographic origin. . . .

45. The “fair use” defense protects the use of an

otherwise unavailable mark if the use is only for a

descriptive purpose. See, Q-Tips, Inc. v. Johnson & Johnson,

206 F.2d 144, 148 (3rd Cir. 1953).

46. A fair use is a descriptive use of a name to in-

dicate the nature, quality, and purpose of the goods

themselves and not the name of the manufacturer or

the distributor of the goods. Use of the name

“Armstrong World Industries, Inc.” would be

nominative and as a trademark. Abercrombie & Fitch Co. v.

Hunting World, Inc., 537 F.2d 4, 12 (2nd Cir. 1976). See,

Drexel Enterprises, Inc. v. Richardson, 312 F.2d 525, 527

(10th Cir. 1962); Safeway Stores, Inc. v. Safeway Properties,

Inc., 307 F.2d 495, 499 (2nd Cir. 1962).

47. At most, the addition of “World” to

“Armstrong” would serve to describe the potential

range of plaintiff’s business, not the goods or services

of that business. See, Venetianaire Corp. of America v.

A & P Import Co., 429 F.2d 1079, 1082 (2nd Cir. 1970).

35a

48. The word “World” is far too broad to suggest

any identifiable geographic place of origin. New World

Carpets, supra, 438 F.2d at 486.

Secondary Meaning

49. As an alternative basis for a finding of in-

fringement, it is to be noted that trademark protection

is afforded by focusing upon the “use of words, not on

their nature or meaning in the abstract”. (emphasis in

original). Venetianaire, supra, 429 F.2d at 1082; Aber-

crombie & Fitch, supra, 537 F.2d at 12.

50. If, through use and association over a period of

time, a word has come to stand in the minds of the

public as aname or identification for a particular party’s

product, that word has acquired a secondary meaning

and is entitled to protection. Miss Universe, Inc. v.

Patricelli, 408 F.2d 506, 509 (2nd Cir. 1969); Safeway

Stores, supra, 307 F.2d at 498-499. As noted, in division

30, the name “WORLD” when used with respect to

carpet manufacturers signifies the defendant and its

carpet.

State Law Violations

51. World Carpets has counterclaimed, alleging

violation of the Georgia “Fair Business Practices Act of

1975” and, specifically, Ga. Code Ann. §106-1203.

World Carpets has enumerated the violation as in-

volving the following subsections:

36a

(1) Passing off goods or services as those of

another;

(2) Causing actual confusion or actual mis-

understanding as to the source, spon-

sorship, approval or certification of

goods or services;

(3) Causing actual confusion or actual mis-

understanding as to affiliation, connec-

tion, or association with, or certification

by, another. ...

52. The evidence adduced at trial disclosed no ac-

tual confusion or actual misunderstanding. This was a

declaratory judgment action and plaintiff never used

the name “Armstrong World Industries, Inc.” in con-

nection with its products. The jury expressly held

defendant @as not entitled to an award of damages and

that determination is supported by the evidence.

IT IS THEREFORE ORDERED, that the plaintiff,

Armstrong Cork Company, and its attorneys, agents,

employees, representatives, and all others in privity

with them, be enjoined and restrained from using the

name “Armstrong World Industries, Inc.”

This the 23rd day of March, 1978.

Is) HAROLD L. MURPHY

UNITED STATES DISTRICT

JUDGE

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