# Petition — Vision Center v. Opticks, Inc.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1980
- **Citation:** 444 U.S. 1016

## Text

IN THE

Supreme Court of the United States
OCTOBER TERM, 1979

“79-684

THE VISION CENTER,
Petitioner

versus

OPTICKS, INC., WILL ROSS, INC.
and G. D. SEARLE & CO.,
Respondents

PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT

William W. Messersmith, III

4700 One Shell Square

New Orleans 70139
Attorney for Petitioner

Bernard Marcus
Deutsch, Kerrigan & Stiles
Of Counsel

SCOFIELDS' QUALITY PRINTERS, P. 0. BOX 53096, N. O., LA. 70153 - 504/822-1611

— ~ es

INDEX

Page
ee eee rr eee ee eee 1
I ES I Oe ee 2
BOOST ETE TP TT Tee Ee EE 2
ee et ee cess becccccesccccess 3
bese edecsccesece 3
Reasons for Allowing the Writ .............0006- 5

1. The decision below, both in failing to

consider the issue of likelihood of con-

fusion and in holding that the addi-

tion of a prefix to a trade name ab-

solves the user from findings of decep-

tion and unfair competition, conflicts

with the guidelines set forth by this

Court in Hanover Star Milling Co. vs. Met-

calf, 240 U.S. 403 (1916), as well as

with decisions of the other Circuits

and the Fifth Circuit’s own earlier
EE 5

2. The decision below, in failing to pro-
tect a local first user’s trade name and
in holding that secondary meaning
cannot be established through long
usage, conflicts with this Court’s de-
cision in American Trading Co. vs. H. E.
Heacock Co., 285 U.S. 247 (1932), and
with decisions of the other Circuits. ...... 8

il

INDEX (Continued)

Page
3. The holding of the Court below, that
actual fraud must be established be-
fore a trade name may be protected, is
contrary to all law governing protec-
tion of trade names, and, unless re-
versed, will cause uncertainty and
confusion in the law governing trade
mame protectiON. .......eeeeeeeeee ceeees 9
PE oo 5c sao weeks cards keer dereaee res 11
CN oe oa an ab ea at he ee ARERR ees CFS 12
Appendix A — Opinion of the Court
ener re SAE ee ees ee yer ey la
Appendix B — Judgment of Court
Se ere rere rer rrr Terres a 20a
Appendix C — Court of Appeals’ Denial
Ler eer recor rrr rT rte tr. or 21a
Appendix D — Opinion of the District
OE ei isin oa 5 5i4 saws shape eseerenaetees 23a
AUTHORITIES
Cases:
Abercrombie & Fitch Co. vs. Hunting World,
Inc., 537 F.2d 4 (CA 2-1976) .......eeeee cence 8
American Trading Co. vs. H. E. Heacock Co.,
205 UG. BOF CAGE) 6 ods a iveieccisesesa see 3,8,9

ARATE a8

iii

AUTHORITIES (Continued)

Continental Motors Corp. vs. Continental
Aviation Corp., 375 F.2d 857 (CA 5-1967)...... 6

G. & C. Merriam Co. vs. Saalfield, 198 Fed.
369 (CA 6-1912) aff’d and modified, 238
Fed. 1 (CA 6-1917), cert. denied 243 U.S.

Oe CNT ohh ae ees Na eek RRR ek 9
Handy vs. Commander, 49 La.Ann. 1119, 22

i ee SEE CRCL Wii eke bine chdben been hae 11
Hanover Star Milling Co. vs. Metcalf, 240 U.S.

Se TAPE he bak kaw ckwinnesenateweeians y Fy Pe GI
Jenkins Publishing Co. vs. Metalworking Pub-

lishing Co., 315 F.2d 955 (CCPA-1963) ........ 7
Kellogg Co. vs. National Biscuit Co., 305 U.S.

Se Caner cet Chae kd BAAS Ge ee ore oak 9

Safeway Stores, Inc. vs. Safeway Properties,
Inc., 307 F.2d 495 (CA 2-1962) ....cccas ceess 6,9

Scarves By Vera, Inc. vs. Todd Imports, Ltd.
(Inc.), 544 F.2d 1167 (CA 2-1976) ....... 2.005. 6

Standard International Corp. vs. American
Sponge and Chamois Co., 394 F.2d 599

I ee ae ee ikas 9
Straus Frank Co. vs. Brown, 246 La. 999, 169
ee en ace baw ks 10

T.G.I. Friday’s Inc. vs. International
Restaurant Group, Inc., 569 F.2d 895 (CA 5-
1978), aff’g 405 F.S. 698 (MD La.-1975)_ ..... 10

ee ee

iv IN THE
AUTHORITIES (Continued) SUPREME COURT OF THE UNITED STATES
Page OCTOBER TERM, 1979

The Dynasty Room, Inc., d/b/a Whiskey A-

Go-Go vs. Whiskey A-Go-Go, 186 So.2d No

402 (La. App. € 2006) 2... .a55.i0 eee - |
Tisch Hotels, Inc. vs. Americana Inn, Inc., 350

F.2d 609 ECA 9-3008) ...5.ckcan sea 6 THE VISION CENTER,
Union Carbide Corp. vs. Ever-Ready, Incor- sirname

porated, 531 F.2d 366 (CA 7-1976) ............ 8

, versus
United Drug Co. vs. Theodore Rectanus Co.,

348-U-S. 90 (1918) ..0:6.0 ssiecativigweneeeanes 8 OPTICKS, INC., WILL ROSS, INC.,
Volkswagenwerk, AG vs. Rickard, 492 F.2d | and G. D. SEARLE & CO.,

£70 (CA S-1978) nc auatucunte eee 9 ere
World Carpets, Inc. vs. Dick Littrell’s New

World Carpets, 438 F.2d 482 (CA 5-1971) ...... 7 PETITION FOR A WRiT OF CERTIORARI TO
Statutes: THE UNITED STATES COURT OF APPEALS
28 U.S.C. 1256 ...<:::5550seulte een 2 ahs iota cial
Rule S2(a), PROP ...c.wiskcsnesdeaeeeueenee 3,9

Petitioner prays that a writ of certiorari issue to
review the judgment herein of the United States Court
4 of Appeals for the Fifth Circuit entered in the above-
entitled case on May 23, 1979, petition for rehearing
denied on August 1, 1979.

OPINIONS BELOW

The opinion of the District Court, granting a
preliminary injunction to Petitioner (hereinafter some-

2

times referred to as “The Vision Center”), with detail-
ed findings of facts and conclusions of law, is reported
at 461 F.S. 835 and is reproduced as Appendix D, pp.
23a-41a. The Court of Appeals reversed the District
Court with instructions that the preliminary injunc-
tion be dissolved and that an order issue requiring
Respondents to place the identifying prefix “Pearle” be-
fore the phrase “Vision Center” on all its signs and
advertisements in the New Orleans area. The opinion
of the Court of Appeals is reported at 596 F.2d 111 and
is reproduced as Appendix A, pp. 1a-19a, and the order
denying rehearing appears as Appendix C, pp. 21a-23a.

JURISDICTION

The opinion and judgment of the United States
Court of Appeals was entered May 23, 1979. Petition
for rehearing was denied on August 1, 1979. Jurisdic-
tion of this Court is invoked under 28 U.S.C. §1254(1).

QUESTIONS PRESENTED

1. Whether the opinion below failed to consider the
controlling issue of a trade name case — the likelihood
of confusion between the names, and whether the
opinion below violates the guidelines in Hanover Star
Milling Co. vs. Metcalf, 240 U.S. 403 (1916), in which this
Court held that the trade name “Hanover Tea Rose”
was entitled to protection by injunction against use of
the similar name “Steeleville Tea Rose”.

ME ep sone

Home RH PD.

3

2. Whether the findings of the District Court
should have been sustained inasmuch as (i) the name
“The Vision Center” was entitled to trade name pro-
tection because, as held in American Trading Co. vs. H. E.
Heacock Co., 285 U.S. 247 (1932), of its long use in the
local market, (ii) the name “The Vision Center” had ac-
quired a secondary meaning in its market area and (iii)
because those findings were not clearly erroneous.

3. Whether the holding in the opinion below, that
under Louisiana law actual fraud must be established
before a trade name may be protected is erroneous and
if permitted to stand will cause uncertainty and con-
fusion in the law governing protection of trade names.

STATUTE INVOLVED
Federal Rules of Civil Procedure, Rule 52(a) provides:

“ _. 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. . .”

- STATEMENT OF THE CASE

The Vision Center sued in state court in Louisiana for
injunction against Respondents’ use of the word com-
bination “Vision Center” in any part of Respondents’
trade name. After the case was removed, the United
States District Court for the Eastern District of

4

Louisiana, on August 25, 1978, enjoined Respondents’
use of the combination of the words “Vision” and
“Center” in their trade name and submitted support-
ing Findings of Fact and Conclusions of Law. It is the
reversal by the United States Court of Appeals for the
Fifth Circuit of this injunction which is the subject of
this petition for certiorari.

The Vision Center started using that trade name in
the New Orleans area in May 1955, at which time it
registered the name under the Louisiana Trademark
Law. The registration has been successively renewed
since that date.

Since 1955, The Vision Center has placed its name
before the public to the maximum extent allowed by
the ethics of the optometric profession. Thus, it has
used the name on eyeglass cases, lens wipers, lens
cleaning solution, announcements, telephone book
yellow pages, letterheads, direct mailing materials and
the like. After media advertising became permissible by
Louisiana optometrists in early 1978, The Vision
Center engaged in extensive promotion of its name.

Until Respondents entered the New Orleans
marketing area, no one other than The Vision Center
had used the combination of words “Vision Center”. In
at least three prior instances, The Vision Center was
successful in having competing firms change their
trade names so as not to use the words“ Vision Center”
in combination.

5

On trial of the instant case, The Vision Center estab-
lished that there was actual confusion of identity
between itself and some of Respondents’ Pearle Vision
Centers located in other areas, and that use by
Respondents of the name “Pearle Vision Center”
would confuse customers and potential customers in
the New Orleans area. Some of Respondents’ estab-
lishments in other locations used eyeglass cases and
signs which were imprinted with the words “Vision
Center”, without the identifying name “Pearle”. Also
Respondents’ national television commercials (which
were intended for use in the New Orleans area) and ad-
vertisements in magazines contained the words
“Vision Center” without the prefix “Pearle”.

Respondents unsuccessfully tried to purchase Peti-
tioner and thereafter opened their establishments in
New Orleans in close proximity to Petitioner’s exist-
ing establishments. Each of Respondents’ establish-
ments featured large exterior signs with the name
“Pearle Vision Center” prominently displayed, and
advertised themselves in the telephone book, directly
under petitioner’s listing, as “VISION CENTER
PEARLE-See Pearle Vision Center”.

REASONS FOR ALLOWING THE WRIT

1.

The decision below, both in failing to con-
sider the issue of likelihood of confusion and

6

in holding that the addition of a prefix to a
trade name absolves the user from findings of
deception and unfair competition, conflicts
with the guidelines set forth by this Court in
Hanover Star Milling Co. vs. Metcalf, 240 U.S. 403
(1916), as well as with decisions of the other
Circuits and the Fifth Circuit’s own earlier
holdings.

Certiorari should be granted to review the Appellate
Court’s holding that, despite the District Court's find-
ings of fact to the contrary, the evidence “falls short of
establishing that in the mind of the consuming public
the primary significance of the term ‘Vision Center’ is
‘not the product but the producer’.” 596 F.2d at 118.

The controlling issue in a trade name case is whether
the use of a similar name is likely to cause confusion.
Scarves by Vera, Inc., vs. Todd Imports, Ltd., (Inc.), 544 F.2d
1167 (CA 2-1976); Continental Motors Corp. vs. Continental
Aviation Corp., 375 F.2d 857 (CA 5-1967); Tisch Hotels, Inc.
vs. Americana Inn, Inc., 350 F.2d 609 (CA 7-1965); Safeway
Stores Inc. vs. Safeway Properties, Inc., 307 F.2d 495 (CA 2-
1962). The District Court found actual confusion be-
tween Petitioner’s trade name and Respondents’ trade
name, and also found that there would be likelihood of
confusion between the names. The Court of Appeals
failed to consider these crucial findings.

The addition of a prefix does not absolve the user
from findings of deception and unfair competition.

VI OORT

|

7

In Hanover Star Milling Co. vs. Metcalf, 240 U.S. 403
(1916), this Court was faced with whether the trade
name “Hanover Tea Rose” should be protected against
the competing name “Steeleville Tea Rose”, and held
that:

“... Themere substitution of ‘Steeleville’ in
the place of ‘Hanover’ on the labels is not con-
vincing either that the intent was innocent or
that the result will be innocuous, since it is ac-
companied with the words ‘Tea Rose’ .. .”
(240 U.S. at 424).

Similarly, in World Carpets, Inc. vs. Dick Littrell’s New
World Carpets, 438 F.2d 482 (CA 5-1971), the trade
name, “World Carpets” was protected against use of
the name “New World Carpets”, because there was a
likelihood of confusion between the two names. The
court in the World Carpets case also emphasized that the
prior user of the name had a right to be defended
against the marketing of a lower or different grade or
standard of product by the competitor and the result-
ing possible loss of reputation.

In Jenkins Publishing Co. vs. Metalworking Publishing Co.,
315 F.2d 955 (CCPA-1963), the court protected the
term “METALWORKING” as against “WESTERN
METALWORKING”, because the addition of the pre-
fix did not eliminate likelihood of confusion.

Respondents’ use of the word “Pearle” as a prefix
does not absolve it from the likelihood of confusion of
its name with that of The Vision Center.

8

2.

The decision below, in failing to protect a
local first user’s trade name and in holding
that secondary meaning cannot be establish-
ed through long usage, conflicts with this
Court's decision in American Trading Co. vs.
H. E. Heacock Co., 285 U.S. 247 (1932), and with
decisions of the other Circuits.

It is undisputed that The Vision Center was first to
employ its trade name in the New Orleans market and
therefore had the prior right to use that name in that
market. United Drug Co. vs. Theodore Rectanus Co., 248 U.S.
90 (1918); The Dynasty Room, Inc. d/b/a Whiskey A-Go-Go
vs. Whiskey A-Go-Go, Inc., 186 So.2d 402 (La. App. 4-
1966).

Moreover, the name“ The Vision Center”, is capable
of full trade name protection. In fact, Respondents
themselves secured from the United States Patent Of-
fice a federal trademark of the name “Vision Center”,
the very mark which they now challenge as invalid. A
federally registered trademark is prima facie evidence
that the mark is distinctive. Abercrombie & Fitch Co. vs.
Hunting World, Inc., 537 F.2d 4 (CA 2-1976); Union Car-
bide Corp. vs. Ever-Ready, Incorporated, 531 F.2d 366 (CA 7-
1976).

In American Trading Co. vs. H. E. Heacock Co., 285 U.S.
247 (1932) it was held that because of the first user’s
long use in the local market of the name “Rogers” on

9

silverware, the local first user had acquired valuable
goodwill, and the name identifying its wares had be-
come distinctive and was entitled to trade name pro-
tection.

The District Court held that over a long period of
time the name “Vision Center” had become at least
suggestive of Petitioner’s business establishments, and
also that through Petitioner’s efforts, the name“ Vision
Center” had acquired a secondary meaning in the
minds of the public. When this occurs, the name is en-
titled to trade name protection. Kellogg Co. vs. National
Biscuit Co., 305 U.S. 111 (1938). Such a holding is a fact-
ual holding and will not be disturbed unless clearly
erroneous. Volkswagenwerk, AG vs. Rickard, 492 F.2d 474
(CA 5-1974); FRCP Rule 52(a). Similarly, in Standard
International Corp. vs. American Sponge and Chamois Co., 394
F.2d 599 (CCPA-1968), the name “DUST ’N WAX” was
protected by precluding use of the competing name
“DUST ‘N GLOW”.

The Appellate Court erred in holding that sec-
ondary meaning could not be established by long usage.
Safeway Stores, Inc. vs. Safeway Properties, Inc., 307 F.2d 495
(CA 2-1962); G. & C. Merriam Co. vs. Saalfield, 198 Fed.
369 (CA 6-1912), aff’d and modified, 238 Fed. 1 (CA 6-
1917), cert. denied 243 U.S. 651 (1917); and American
Trading Co. vs. H. E. Heacock Co., supra.

3.

The holding of the Court below, that actual
fraud must be established before atrade name

10

may be protected, is contrary to all law
governing protection of trade names, and, un-
less reversed, will cause uncertainty and con-
fusion in the law governing trade name pro-
tection.

The Court of Appeals acknowledges that both The
Vision Center and Respondents “relied on federal
precedents as announcing generally accepted prin-
ciples of substantive trademark law”. 596 F.2d at 115.
The Court then discussed Louisiana authorities, which
it erroneously read as requiring that actual fraud must
be proven before use of acompeting trade name may be
enjoined. 596 F.2d at 117 (fn. 16), 118-9. The Court re-
lied on Straus Frank Co. vs. Brown, 246 La. 999, 169 So.2d
77 (1977), and mistakenly failed to consider the
Louisiana court’s statement in that case, that fraud can
be reasonably inferred.

The Court below failed to consider the authorities
that hold an infringer’s conduct can “amount to fraud”
and be “tantamount” to fraud, which meets a fraud
standard. T.G.I. Friday's Inc. vs. International Restaurant
Group, Inc., 569 F.2d 895 (CA5-1978), aff’g 405 F.S. 698
(M.D. La.-1975).

There is ample evidence to support the District
Court’s holdings that Respondents’ conduct amount-
ed to and was tantamount to fraud and from that con-
duct fraud can be reasonably inferred. Respondents
tried unsuccessfully to purchase The Vision Center,

|

11

advertised themselves in the telephone directory pages
as “VISION CENTER PEARLE-See Pearle Vision
Center”, located their stores in close proximity to those
of The Vision Center and utilized large signs featuring
the words “Vision Center” in combination.

The discussion of the Louisiana authorities in the
opinion of the Court below drives a wedge between the
law of trade names as enforced throughout the United
States from that as enforced in Louisiana, a wedge not
justified by the Louisiana authorities. As held in Handy
vs. Commander, 49 La. Ann. 1119, 22 So. 230 (1897),
Louisiana long ago adopted the Federal common law of
trade marks and trade names. It is submitted that a
close reading of the Louisiana cases clearly shows that
the court below has misread those cases.

CONCLUSION

If the opinion of the Court below is allowed to stand,
the result on the law of trade names will be devastat-
ing. Local prior users of trade names will have little or
no protection against giant competitors who enter
their market areas with confusingly similar names. The
opinion of the Court below is contrary to uniformly
controlling decisions on the questions presented.

For the reasons assigned, Petitioner respectfully sub-
mits that this petition for certiorari should be granted.

William W. Messersmith, III
Attorney for Petitioner

12

Bernard Marcus
Deutsch, Kerrigan & Stiles
Of Counsel

CERTIFICATE

It is certified that copies of the foregoing petition
were served on Respondents this date by mailing same
to their counsel of record as required by Rule 33-1 of

this Court.

New Orleans, October , 1979.

William W. Messersmith, III

APPENDIX

a

la

APPENDIX “A”

THE VISION CENTER,
Plaintiff-Appellee,
Cross Appellant,

versus

OPTICKS, INC., Will Ross, Inc., and
G. D. Searle & Co.,
Defendants-Appellants,
Cross Appellees.

No. 78-2867

United States Court of Appeals,
Fifth Circuit

May 23, 1979

Rehearing Denied Aug. 1, 1979

Appeals from the United States District Court for
the Eastern District of Louisiana.

Before THORNBERRY, AINSWORTH and
MORGAN, Circuit Judges.

LEWIS R. MORGAN, Circuit Judge:

This is an expedited appeal from an order of the dis-
trict court granting a preliminary injunction which pre-

2a

vents Opticks, Inc.,! a Texas corporation, from using
the trade name “Pearle Vision Center” in the New
Orleans market area. The Vision Center,? a Louisiana
partnership, claimed that Opticks’ proposed use of the
words “vision” and “center” constituted trade name in-
fringement and unfair competition. The action was
originally filed in state court and was removed to fed-
eral court on the basis of diversity jurisdiction. The dis-
trict court? found that the name “vision center” was
either suggestive of the partnership’s services or, if
descriptive, had acquired a secondary meaning. More-
over, the court concluded that Opticks’ conduct was
tantamount to fraud. Opticks insists that these find-
ings are clearly erroneous and argues that the district
court erred in granting a preliminary injunction afford-
ing trade name protection to the phrase“ vision center.”
We agree and therefore reverse the district court.

I.

The phrase “vision center” was first used inthe New
Orleans area in 1955 when Dr. Ellis Pailet, a New

1 Both Opticks, Inc. and Will Ross, Inc. are subsidiaries of G. D.
Searle & Co., a Delaware corporation with its principal place of
business in Skokie, Illinois. A “ye all three corporate entities
- appellants in this action, we will refer to them collectively as
“ ptic “ag

2 Because this appeal involves a construction of the words
“vision center,” we will, in an effort to forestall possible con-
fusion, avoid calling plaintiff “The Vision Center” but will refer to
it as the “partnership.”

3 The court’s decision granting plaintiff’s motion for a prelimi-
nary injunction is reported at 461 F.Supp. 835.

a

3a

Orleans optometrist, adopted it as the name of his sole
proprietorship. Subsequently, Dr. Pailet hired addi-
tional optometrists and in 1967 formed a partnership
which continued, without interruption, to use “The
Vision Center” name. That partnership is the plaintiff
in this action. The partnership has six locations in the
New Orleans area, all operating under the name “The
Vision Center.”

Dr. Pailet first registered the trade name with the
Secretary of State of Louisiana under the Louisiana
Trademark Law on April 19, 1955.4 That registration
was renewed in March 1965 and again in February
1975. Over the years, the partnership engaged in the
limited advertising permitted under the ethics of the
optometric profession and, with a change in the law in
1978, began media advertising in newspapers, mag-
azines, and on the radio.

In 1969, Opticks acquired a New York Company
which had dispensed optical goods and services since
1952 under the name “Vision Center.” Opticks then
began to operate similar stores using this name and, at
present, operates a national chain of retail outlets for
optical services and goods under the trade names
“Vision Center,” “Pearle Vision Center,” “Rogers
Vision Center,” and “Hillman-Kohan Vision Center.”

4 La.R.S.51:211etseq. At present, noone else in the New Orleans
market area uses the combination of words “vision” and “center.”
On three separate occasions the partnership persuaded other op-
tical firms planning to use these words to change their walle
names to some other name. No legal action was necessary on any
of these occasions.

4a

On July 28, 1970, Will Ross, Inc. registered the words
“vision center” as both a service mark and a trademark
on the principal register of the U.S. Patent Office. Will
Ross later assigned its rights in these marks to Op-
ticks.

During 1977 Opticks formulated a plan to open three
outlets in the New Orleans area under the name
“Pearle Vision Center.”5 Opticks planned to identify its
stores by a large green exterior sign showing the words
“Pearle Vision Center” in large white letters, with
“Pearle” being the largest word. In promoting its new
stores, Opticks also planned to use its national adver-
tising program and materials, including television and
radio commercials, newspaper advertisements, and
direct mail flyers. Although a percentage of Opticks’
consumer-oriented advertising materials used in other
parts of the country employs the words “Vision
Center,” without an identifying prefix, the adver-
tising slated for use in New Orleans always used the
words “Pearle Vision Center.”© The partnership

5 Opticks was aware of the existence of “The Vision Center”
and, at one point, initiated negotiations to purchase the partner-
ship. The partners considered Opticks’ offer but declined to sell.

6 The district court found that Opticks had used the words
“Vision Center” on certain of its e pa. cases and had exhibited
no intention to abandon such use. The record indicates, however,
that the partnership obtained the eyeglass case introduced as an
exhibit from Opticks’ Biloxi, Mississippi store, and the partner-
ship offered no proof that any materials without the identifying
prefix “Pearle” would be used in New Orleans. Absent evidence to
the contrary, the district court should have accepted Opticks’
assertion that all of its New Orleans advertising will employ the
words “Pearle Vision Center” and that it will not use the words
“Vision Center” without the identifying prefix.

EE PET

5a

brought suit, and on August 25, 1978, the district court
entered a preliminary injunction enjoining Opticks
from using any combination of the words “vision” and
aa +™&

center” in the New Orleans area.

Il.

The granting or denying of a preliminary injunction
rests in the sound discretion of the district court, and
its decision will be overturned only for abuse. Johnson v.
Radford, 449 F.2d 115 (Sth Cir. 1971). A preliminary in-
junction is an extraordinary remedy, however, and the
boundaries within which the district court must exer-
cise its discretion are clearly marked. State of Texas v. Sea-
train International, S.A., 518F.2d175 (Sth Cir. 1975); Canal
Authority v. Callaway, 489 F.2d 567 (Sth Cir. 1974). The
district court should issue the injunction only if the
moving party clearly satisfies what we have recog-
nized as the four prerequisites to such relief.? These
are: (1) a substantial likelihood that the movant will
ultimately prevail on the merits; (2) a showing that the
movant will suffer irreparable injury unless the in-
junction issues; (3) proof that the threatened injury to

7 The gegen: - contends that the standard for appellate
review of the granting of a preliminary injunction recognized in
our opinions is inapplicable in a trade name case. We disagree. In
Compact Van Equipment Co. v. Leggett & Platt, Inc., 566 F.2d 952 (Sth Cir.
1978), a patent infringement and unfair competition case, we
examined the district court’s granting of a preliminary injunction
in the light of these four Py ewe A trade name infringe-
ment case does not require a different standard. See, ¢.g., Scientific
Applications, Inc. v. Energy Conservation Corp., 436 F Subp. 354
(N.D.Ga. 1977).

6a

the movant outweighs whatever damage the proposed
injunction may cause the opposing party; and (4) a
showing that the injunction, if issued, would not be ad-
verse to the public interest. Seatrain, supra, 518 F.2d at
179, and cases cited therein. The remedy should not be
granted unless the movant carries the burden of per-
suasion concerning all four of these criteria.

Because removal to federal court was premised en-
tirely upon diversity of citizenship, we look to state
substantive law in assessing the merits of both the
trade name infringement and unfair competition
claims. The fact that Opticks’ Lanham Act registration
may be a defense to a state trade name infringement
claim affords no basis for original federal question
jurisdiction. Gully v. First Nat'l Bank, 299 U.S. 109, 57
S.Ct. 96, 81 L.Ed. 70 (1936); La Chemise Lacoste v. Alligator
Co., 506 F.2d 339 (3rd Cir. 1974). Although we apply
Louisiana law, we note that both parties have relied on
federal precedents as announcing generally accepted
principles of substantive trademark law. Except where
we discern a difference between local law and the gen-
eral law on the subject, we will also employ relevant
federal decisions. See Kellogg Co. v. National Biscuit Co., 305
U.S. 111, 113 n. 1, 59 S.Ct. 109, 83 L.Ed. 73 (1938).

III.

The threshold question in any trade name infringe-

ment action is whether the word or phrase was initial-

8 It is clear that Opticks’ federal registration is not a defense in
this case since, as the district court found, the partnership was a
prior user of the term” Vision Center” in the New Orleans market
area. See Burger King v. Hoots, 403 F.2d 904 (7th Cir. 1968).

ee em nt ety aa

7a
ly registerable or protectable.? American Heritage Life Ins.
Co. v. Heritage Life Ins. Co., 494 F.2d 3, 10 (Sth Cir. 1974).
To assist in making this determination, the courts have
traditionally divided the universe of potential trade
names into various categories of legal protectability. A
trade name is generally classified as being either (1)
generic, (2) descriptive, (3) suggestive, or (4) arbitrary
or fanciful.1° Miller Brewing Co. v. G. Heilman Brewing Co.,
561 F.2d 75, 79 (7th Cir. 1977), cert. denied, 434 U.S.
1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978); Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.
1976); American Heritage, supra, 494 F.2d at 11. Although
these categories are meant to be mutually exclusive,
they are spectrum-like and tend to merge impercep-
tibly from one to another. For this reason, they are

9 Louisiana law defines a trade name to be”“a word, name, sym-
bol, device or any combination thereof used by a person to identi-
fy his business, vocation or occupation and distinguish it from the
business, vocation, or —— of others.” La.R.S. 51:211. The
mere registration of a trade name does not grant the registrant
any substantive rights but confers only procedural advantages.
Buyers & Traders Service, Inc. v. Car Maintenance Specialists, 290 So.2d
753 (La.App. 1974); Gallo v. Safeway Brake Shops, 140 So.2d 912
(La.App. 1962). Although the Secretary of State’s decision re-
garding the registerability or protectability of a particular mark is
persuasive, his determination is not conclusive or binding on this
court. Couhig’s Pestaway Co. v. Pestaway, Inc., 278 So.2d 519 (La.App.
1973). The Louisiana trademark statute specifically authorizes the
courts to order cancellation of a registered mark when they deem
that registration to have been improvidently granted. (ars.
§1:219.

10 Although no Louisiana case has employed this precise classi-
fication scheme, both the district court below and the parties here
utilized it in analyzing this case. For this reason, and because we do
not think the Louisiana courts would question the usefulness of
the categories or reject the parties’ reliance on them, we adopt the
classification scheme as an aid in measuring the legal protect-
ability of the “vision center” name.

8a

difficult to define and, quite frequently, difficult to
apply. Miller Brewing Co. v. G. Heilman Brewing Co., supra,
561 F.2d at 79.

A generic term is the name of a particular genus or
class of which an individual article or service is but a
member. Most courts hold that a generic term is in-
capable of achieving trade name protection. A descrip-
tive term!! identifies a characteristic or quality of an
article or service and, though ordinarily not protect-
able, may become a valid trade name if it acquires a
secondary meaning. A suggestive term suggests,
rather than describes, a characteristic of the goods or
services and requires an effort of the imagination by
the consumer in order to be understood as descriptive.
General Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4th Cir. 1940).
A suggestive term requires no proof of secondary
meaning in order to receive trade name protection. An
arbitrary or fanciful term bears no relationship to the

11 Some courts see little difference between the generic and the
descriptive categories and tend to meld the two concepts into one.
American Heritage Life Ins. Co. v. Heritage Life Ins. Co., supra, 494 F.2d at
11; but see Aloe ees Laboratories, Inc. v. Milsan, 423 F.2d 845, 849 (Sth
Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d 90 (1970).
As one commentator has noted, the distinction between mong: a
tive and generic terms is necessarily one of degree. R. Callman, The
Law of Unfair Competition, supra, §70.4. The practical significance of
the distinction is seen in the courts’ refusal to allow proof of sec-
ondary meaning to elevate generic, as opposed to descriptive,
terms to trademark status. As noted below, however, under
Louisiana law a plaintiff depending on the secondary meaning of
his mark must prove fraud or unfair competition before the court
will enjoin the defendant's use. This unorthodox construction re-
sults in the practical elimination of the generic/descriptive dich-
otomy, since neither the owner of the generic mark nor the own-
er of the descriptive mark may rely solely on secondary meaning to
achieve trade name protection.

eee

9a
product or service and is also protectable without proof
of secondary meaning.

The partnership urges, and the district court found,
that “The Vision Center” name is suggestive and there-
fore entitled to full trade name protection without
proof of secondary meaning. We are convinced, how-
ever, that the trade name “Vision Center” is descrip-
tive!2 of a clinic providing optical goods and services,
and we hold that the partnership has failed to prove
secondary meaning as required under Louisiana law.
For these reasons, we reverse.

We begin with the proposition that “[t]he concept of
descriptiveness must be construed rather broadly” 3R.
Callman, The Law of Unfair Competition, Trademarks and
Monopolies, §70.2 (3d ed. 1969). Whenever a word or
phrase naturally directs attention to the qualities, char-
acteristics, effect, or purpose of the product or service,
it is descriptive and cannot be claimed as an exclusive
trade name. Id. at §71.1. Webster’s Third New Inter-

12 Weare unable to agree with Opticks that the phrase “vision
center” is a generic term. Although the phrase is deacrigtive of a
business that deals in optical goods, we do not think that it has be-
come a common, recognized name of such establishments. In con-
nection with this litigation, Opticks has offered to have its federal
registrations cancelled if we will find that these words are gener-
ic. While this court is neither disposed nor authorized to bargain
with legal ri hts, we note that in reality Opticks has provided us
with no quid pro quoin this case. Under slanhans Act, if a regis-
tered mark becomes the “common descriptive name” of an item
(i.e., becomes generic) it may be cancelled at any time. 15 U.S.C.
§1064. Therefore, if we were to find that the phrase is generic we
would not need Opticks’ permission to cancel its mark.

10a

national Dictionary (1964)!3 defines the word “vision”
as

the act or power of seeing; visual sensation or
the capacity for it.

The word “center” means

a concentration of requisite facilities for an ac-
tivity, pursuit, or interest along with various
adjunct conveniences [e.g. shopping center,
medical center, amusement center].

Used in combination, the words imply a place where
there is aconcentration of requisite facilities relating to
the power of seeing or the capacity for it. Because the
name does not require “imagination, thought and per-
ception to reach a conclusion as to the nature of the
goods” or services, it cannot be considered a sugges-
tive term. Stix Products, Inc. v. United Merchants & Mfrs.,
Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968).

Another test used by the courts to distinguish be-
tween descriptive and suggestive marks is “whether
competitors would be likely to need the terms used in
the trademark in describing their products.” Union Car-
bide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir.

13 “The dictionary definition of the word is an appropriate and
relevant indication ‘of the ordinary 5 and meaning o
words’ to the public.” American Heritage Life Ins. Co. v. Heritage Life Ins.
Co., supra, 494 F.2d at 11.

lla

1976). We agree with Opticks that the word “vision” is
virtually indispensable to the vocabulary of the optical
goods industry.!4 This word, along with such common
nouns as eye, sight, and optics, naturally occurs to one
in thinking of the goods and services provided by the
parties. Similarly, the word “center” is acommon term
found useful by a variety of commercial enterprises.

We are, of course, aware that common, ordinary
words can be combined in a novel or unique way and
thereby achieve a degree of protection denied to the
words when used separately. Although examining a
trade name’s individual words in isolation entails the
risk that the distinctiveness of the words in combina-
tion will be overlooked, we are not guilty of such an
oversight here. Rather, whether the words “vision”
and “center” are examined together or separately, we
are convinced that they lack the quality of inventive-
ness and imaginativeness characteristic of suggestive
trade names.

Yet another barometer of the descriptiveness vel non
of a particular name is the extent to which it has been
used in the trade names of others offering a similar
service or product. Shoe Corp. of America v. Juvenile Shoe
Corp., 266 F.2d 793, 796 (C.C.P.A. 1959). As the record
reveals, the name “vision center” has been adopted by a
large number of optical stores in other parts of the

14 We note that the word has been utilized in the trade name of
another optical store in New Orleans, the Vision Plaza.

12a

nation.!5 That the partnership is the only one to use the
term in New Orleans does not preclude us from find-
ing that its name is descriptive.

A number of federal and state cases construing simi-
lar trade names are consistent with our decision. In Car
Care, Inc. v. D. H. Holmes Co., 160 So.2d 272 (La.App.
1964), a Louisiana case, plaintiff sought to enjoin the
defendant’s use of the name “D. H. Holmes Car Care
Center” as an infringement of its name, “Car Care
Center.” The court concluded that the words “car care”
were descriptive of the automobile maintenance busi-
ness and therefore incapable of exclusive appropria-
tion. In Surgicenters of America, Inc. v. Medical Dental Sur-
geries Co., 196 U.S.P.Q. 121 (D.Or. 1976), plaintiff
claimed that the defendant’s use of the name “Medical
Dental Surgicenter” infringed its federally registered
mark, “Surgicenter.” The court disagreed and held that
“Surgicenter” was a generic term which should not be
given trade name protection. See also In re Executone Inc.,
191 U.S.P.Q. 57 (C.C.P.A. 1976) (“Nerve Center”);
Johnson & Johnson v. Saxton Adhesive Products, Inc., 185
U.S.P.Q. 245 (C.C.P.A. 1974) (“Tape Center”); Allens
Drug Co. v. Henry B. Gilpen Co., 180 U.S.P.Q. 327
(C.C.P.A. 1973) (“Drug Center”); Houston v. Berde, 211
Minn. 528, 2 N.W.2d 9 (1942) (“Food Center”).

15 E.xg., Royal Vision Center, Chicago Vision Center, Vision
Center and Optical Clinic of Baton Rouge, Vision Center Op-
ticians, Professional Vision Center, Vision Center of South
Boston, Vision Center at Harvard Square, Plymouth Vision
Center, Konrad Vision Center, Total Vision Center, Belmont
Vision Center, Livonia-Mall Vision Center, V.I.P. Vision Center,
American Vision Center, United Vision Center, 20/20 Vision
Center, Plain Vision Center and Harvey Rubin Vision Center.

ee ee Se rT ee Te a Te tye ee ee aan See eT ee Ma eR ee ee ae

13a

The partnership questions the applicability of these
cases and attempts to distinguish them on the ground
that, unlike here, their identifying words describe the
goods or services provided by their respective estab-
lishments. In order to more precisely identify the serv-
ice provided by an optical store, the partnership’s name
should read “Vision Care Center.”1¢ While this may be
regarded as the full name of such an establishment, to
pretend that the abbreviated name “Vision Center”
cannot substitute in its stead ignores our “universal
habit of shortening full names — from haste or lazi-
ness or just economy of words.” Application of Abcor
Development Corp., 588 F.2d 811 (C.C.P.A. 1978) (Rich, J.,
concurring). It simply does not require an effort of the
imagination to decide that a “vision center” is a place
where one can get glasses. Consequently, we find
either name to be descriptive of the service provided by
a business that deals in optical goods.17

16 The descriptive nature of this term is, of course, beyond per-
adventure.

17 As evidence that its chosen trade name is distinctive and not
generic or descriptive, the partnership points out that a patient in
need of eyecare is unlikely to say or think, “I am going to my vision
center.” T his reasoning is unacceptable. Few consumers would call
a grocery store a “food center” or a pharmacy a “drug center,” yet
these names have been held descriptive af the establishment’s
identity. Thus, the fact that “vision center” is not the only or most
common name for an optical goods store is not determinative, for
“there is no legal foundation that a product has only one common
descriptive name.” Roselux Chemical Co. v. Parsons Ammonia Co., 299
F.2d 855 (C.C.P.A. 1962). Also, “the absence of a word or expres-
sion from dictionaries is not controlling on the question of regis-
terability.” In re Cooper, 196 U.S.P.Q. 182 (1977).

14a

IV.

The case law uniformly requires that we refuse trade
name protection to a descriptive term unless it has ac-
quired a secondary meaning.!* In order to establish
secondary meaning the plaintiff “must show that the
primary significance of the term in the minds of the
consuming public is not the product but the producer.”
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59
S.Ct. 109, 113, 83 L.Ed. 73 (1938). The burden of proof
rests at all times with the plaintiff, and“[a] high degree
of proof is necessary to establish secondary meaning
for a descriptive term.” R. Callman, The Law of Unfair
Competition, supra, §77.3 at 359; American Heritage, supra,
494 F.2d at 12.

Most courts hold that once the plaintiff establishes
secondary meaning he need only show a likelihood of
confusion in order to enjoin an infringing use. E.g., Aloe
Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845 (5th
Cir. 1970); R. Callman, The Law of Unfair Competition,
supra, §77.1. The Louisiana courts, however, continue
to hold that the plaintiff who depends on secondary
meaning for his trade name cannot obtain injunctive
relief unless he proves fraud or unfair competition on
the part of the defendant. Home Beverage Service v. Baas,
210 La. 873, 28 So.2d 481, 484 (1946); Straus Frank Co. v.
Brown, 246 La. 999, 169 So.2d 77 (1964); Couhig’s Pest-

18 “The terms, primary and secondary, may be somewhat mis-
leading since a secondary meaning entitled to protection must
have become the primary meaning to the consumer.” Aloe Creme
Laboratories, Inc. v. aes Inc., supra, 423 F.2d at 848 n. 9.

15a

away Co. v. Pestaway, Inc., 278 So.2d 519 (La.App. 1973).
Under this rule, the law of unfair competition effec-
tively swallows up the secondary meaning doctrine. Al-
though Callman expressly disapproves of the Louisiana
case law and considers it erroneous, we are not at
liberty to do so.19

The partnership, however, relies on the district
court’s finding that Opticks’ conduct amounted to or
was at least tantamount to fraud. The Louisiana courts
have “always been reluctant to presume fraud.” Straus
Frank Co. v. Brown, supra, 169 So.2d at 80. In the Straus
Frank case the plaintiff, operating under the trade name
“Lake Auto Parts,” sued to enjoin the defendant from

using the name “Lake Auto Supply.” The court ob-
served:

One other charge leveled at defendant is
that he knew of plaintiff's trade name and by
adopting a similar one it may be inferred his
motive was fraudulent. But we are not con-
vinced of this. To the contrary, aside from the
words “Auto Supply” which describes his
business, we feel defendant was motivated by
the geographical location in the selection of
the name Lake Auto Supply, situated as the
business is in the town of Lake Arthur which
lies on the shores of Lake Arthur.

19 R. Callman, The Law of Unfair Competition, supra, §77.1. The
Louisiana courts are not unaware of the controversy surround-
ing the requirement that the plaintiff who relies on secondary

meani rove fraud. See St k Co. v.
ay Sooty raus Frank Co. v. Brown, 246 La. 999, 109

16a

169 So.2d at 81. Having used the “vision center” trade
name for many years in connection with its network of
similar stores and its national advertising campaign,
Opticks has a significant investment in the name. It
was predictable that Opticks would choose to use the
name “Pearle Vision Center” in New Orleans. The
emphasis placed on the word “Pearle”2° further ab-
solves Opticks from any charge of deception or unfair
competition, and under Louisiana law the addition of
this identifying prefix is legally sufficient to dis-
tinguish Opticks’ business from the partnership’s.?1
Home Beverage Service v. Baas, supra; Couhig’s Pestaway Co. v.
Pestaway, Inc., 278 So.2d 519 (La.App. 1973). We are con-
vinced that the district court’s finding of fraud was in-
correct.

As the above discussion indicates, even if we were to
concede that the partnership’s name had acquired a
secondary meaning we could not prevent the fair use of
the descriptive term “vision center.” Home Beverage Serv-

20 Although we hold that Opticks is free to use the words
“vision center” in New Orleans, the corporation is obligated “to
identify its product lest it be mistaken for that of the plaintiff”. Kel-
logg Co. v. National Biscuit Co., 305 U.S. at 120, 59 S.Ct. at 114. Op-
ticks, therefore, must honor its pledge to place the identifying pre-
fix “Pearle” in front of the phrase “Vision Center” on all its signs
and advertisements in the New Orleans area.

21 The prefix is not only legally sufficient but is legally necessary
in order to distinguish Opticks’ business and prevent unfair
competition. For this reason, Opticks should desist from listing its
establishment in the telephone directory under the heading
“Vision Center Pearle—See Pearle Vision Center.” See Home Bever-
age Service v. Baas, supra, 28 So.2d at 486, where the court, in finding
no likelihood of confusion between plaintiff's Home Beverage
Service name and defendant’s Victory Home Beverage Service
name, noted that the defendant listed its name only under the
letter “V” in the telephone directory and not under the letter “H.”

17a

ice v. Baas, supra. We are convinced, however, that the
partnership failed to shoulder the substantial eviden-
tiary burden necessary to establish the secondary
meaning of this descriptive name.

In assessing a claim of secondary meaning,

the chief inquiry is the attitude of the con-
sumer toward the mark; does it denote to him
a, “single thing coming from a single source”?
Short of a survey, this is difficult of direct
proof.

Aloe Creme Laboratories, Inc. v. Milsan, Inc., supra, 423 F.2d at
849. The partnership presented no evidence involving
an objective survey of the public’s perception of its
name. Instead, the only evidence offered to show
secondary meaning was the testimony of seven of the
partnership’s customers that “Vision Center” meant
the partnership’s business to them, testimony that the
partnership had occasionally received mail addressed to
other establishments that had “vision” in their name,
and evidence that a customer of one of Opticks’ stores
in another city believed the partnership and Opticks
were associated.

We think this evidence falls short of establishing that
in the minds of the consuming public the primary sig-
nificance of the term“ vision center” is “not the product
but the producer.” Additionally, the recognition of the
partnership’s long use of the term does not require a
different result since the “courts have summarily re-

18a

jected claims of secondary meaning predicated solely
upon the continued use of the mark for many years.”22
R. Callman, The Law of Unfair Competition, supra, §77.3.

V.

We now address, perhaps somewhat belatedly, the
partnership’s assertion that Opticks’ federal registra-
tion of the words “vision center” is prima facie evi-
dence that the name is distinctive and not generic or
descriptive. The partnership finds itself in the unusual
posture of asserting the validity of Opticks’ federal
registration, while Opticks, instead of seeking to de-
fend its mark, challenges its initial registerability or
protectability. Assuming arguendo that the prima facie
evidence provision of the Lanham Act was designed to
benefit the partnership in this case, we nevertheless
adhere to our conclusion that the “vision center” name
is merely descriptive.

Although a statutory presumption of validity is ac-
corded to marks registered under the Lanham Act, 15
U.S.C. §§1057(b), 1115(a), this presumption is re-
buttable and may be overcome by establishing the
generic or descriptive nature of the mark. Flexitized, Inc.
v. National Flexitized Corp., 335 F.2d 774, 779 (2d Cir.
1964), cert. denied, 380 U.S. 913, 85S.Ct. 899, 13L.Ed.2d

22 The partnership has used the “Vision Center” name in New
Orleans for over 20 years. During most of this period, however, it
was precluded by the ethics of the profession from engaging in
media advertising. Although extensive advertising would not
have assured the partnership’s success, this circumstance no
doubt significantly affected its efforts to develop a secondary
meaning for its name.

aN ale A 0 tS

OS LEPTIN IOS tl SNR RN

Rt Na ee a oo »

19a

799 (1965). The partnership maintains that Opticks
failed to show that the name is descriptive. We dis-
agree. Our previous discussion indicates that in this
case Opticks has argued persuasively, not merely with
equal force, that the partnership’s name is a term
descriptive of the products and services provided by an
optical store. Aluminum Fabricating Co. v. Season-All Win-
dow Corp., 259 F.2d 314, 316 (2d Cir. 1958); Scientific
Applications, Inc. v. Energy Conservation Corp., 436 F.Supp.
354, 360 (N.D.Ga. 1977). The weight of these argu-
ments is more than sufficient to rebut the prima facie
presumption that the name is suggestive rather than
merely descriptive.

VI.

Because the partnership has not shown a substan-
tial likelihood that it would ultimately prevail on the
merits, it is not entitled to the extraordinary relief of a
preliminary injunction. We find it unnecessary to en-
gage ina discussion of the other three criteria, except to
note that the partnership has also not shown that the
injury it will suffer by denying the injunction out-
weighs the damage that Opticks will suffer if the in-
junction is granted.

We reverse the district court and remand with in-
structions that the court dissolve the preliminary in-
junction and issue an order requiring Opticks to place
the identifying prefix “Pearle” before the phrase
“Vision Center” on all its signs and advertisements in
the New Orleans area.

REVERSED AND REMANDED.

20a

APPENDIX “B”

UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT

OCTOBER TERM, 19

No. 78-2867

D.C. Docket No. CA 78-2458 “E”

THE VISION CENTER,
Plaintiff-Appellee,
Cross-Appellant,

versus

OPTICKS, INC., WILL ROSS, INC.
and G. D. SEARLE & CO.,
Defendants-Appellants,
Cross-Appellees.

Appeal from the United States District Court for the
Eastern District of Louisiana

Before THORNBERRY, AINSWORTH and
MORGAN, Circuit Judges.

lh A MPR Cale eat

21a
JUDGMENT

This cause came on to be heard on the transcript of
the record from the United States District Court for
the Eastern District of Louisiana, and was argued by
counsel;

ON CONSIDERATION WHEREOF, It is now here
ordered and adjudged by this Court that the order of
the District Court appealed from, in this cause be, and
the same is hereby, reversed; and that this cause be, and
the same is hereby remanded to the said District Court
in accordance with the opinion of this Court;

It is further ordered that the plaintiff-appellee pay to
the defendants-appellants the costs on appeal, to be
taxed by the Clerk of this Court.

May 23, 1979

ISSUED AS MANDATE: AUG. 9, 1979

APPENDIX “C”

UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT

No. 78-2867

|

22a

THE VISION CENTER,
Plaintiff-Appellee,
Cross-Appellant,

versus

OPTICKS, INC., WILL ROSS, INC.,
and G. D. SEARLE & CO.,
Defendants-Appellants,
Cross-Appellees.

Appeals from the United States District Court for the
Eastern District of Louisiana

ON PETITION FOR REHEARING
(August 1, 1979)

Before THORNBERRY, AINSWORTH and
MORGAN, Circuit Judges.

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.

23a

ENTERED FOR THE COURT:

ls) ROBERT AINSWORTH, JR.
United States Circuit Judge

APPENDIX “D”

THE VISION CENTER,
Plaintiff,

versus
OPTICKS, INC., WILL ROSS, INC.,

and G. D. SEARLE & CO.,
Defendants.

Civ. A. No. 78-2458

United States District Court
E.D. of Louisiana

Aug. 25, 1978

MOTION FOR PRELIMINARY
INJUNCTION

CASSIBRY, District Judge:

24a

INTRODUCTION

This is an action for injunctive relief by The Vision
Center, a Louisiana partnership, against Opticks, Inc.,
a Texas corporation with its principal place of business
in Dallas, Texas; Will Ross, Inc., a Delaware corpora-
tion with its principal place of business in Milwaukee,
Wisconsin and G. D. Searle & Co., aDelaware corpora-
tion with its principal place of business in Skokie, Illi-
nois. Plaintiff seeks to enjoin defendants from using
the words “Vision Center” in the name of three places
of business about to be opened in the Greater New
Orleans area under the name “Pearle Vision Center.”

The action was originally filed in state court and was
removed by the defendants to federal court on the basis
of diversity of citizenship of the parties and the re-
quired jurisdictional amount involved. The court has

jurisdiction by virtue of citizenship of the parties. 28
U.S.C. §1332.

Plaintiff’s demand for a preliminary injunction was
tried by this court on August 10 and 11, 1978.

Having heard the evidence presented at trial, having
reviewed the documents, photographs and other items
introduced as exhibits, and having considered the argu-
ments of counsel, I make the following findings of fact
and conclusions of law:

I << Y

25a
FINDINGS OF FACT

1. Plaintiff, The Vision Center, is a Louisiana part-
nership organized pursuant to Articles of Partnership,
dated September 15, 1967, effective as of October 1,
1967.

2. The trade name, “The Vision Center,” has been
in continuous and uninterrupted use in the Greater
New Orleans area since May, 1955 — a period of over
twenty-three years — by plaintiff and its predecessor.

3. The first use of the trade name, “The Vision
Center,” in the New Orleans area was by Dr. Ellis
Pailet, plaintiff's managing partner, who commenced
using that name in May, 1955, as a sole proprietor en-
gaged in the practice of optometry. Subsequently, Dr.
Pailet hired other optometrists to work for The Vision
Center, and, in September, 1967, he granted partner-
ship status to some of the salaried optometrists. Pur-
suant to the Articles of Partnership, the partnership
carried on the name, “The Vision Center.” The part-
nership thereafter and without interruption con-
tinued, and still continues, the practice of optometry
under that name.

4. The trade name, “The Vision Center,” was first
registered by Dr. Ellis Pailet with the Secretary of State
of Louisiana under the Louisiana Trademark Law (R:S.
51:211 et seq.) on April 19, 1955. The registration was
renewed on March 29, 1965, and again on February 14,

26a

1975. The cost of the last renewal was borne by the
plaintiff partnership.

5. The Vision Center, since its inception as a sole
proprietorship in 1955, and from 1967 as a partner-
ship, until the current time, placed its name before the
public to the maximum extent allowed by the ethics of
the optometric profession by use of eyeglass cases, lens
wipers, lens cleaning solution, announcements of
office openings, telephone book yellow pages, recall
notices, letterheads, birthday cards, business cards,
appointment notices, statements, other direct mail-
ings and signs on and in front of offices. Over the years,
The Vision Center has spent considerable sums on
such items, and in the year 1977 alone spent over $30,-
000 for that purpose.

6. In 1978, since media advertising became per-
missible by optometrists, The Vision Center has adver-
tised on radio and in newspapers and magazines. The
Vision Center has, so far during the year 1978, spent
about $15,000 for such “media advertising.”

7. Plaintiff's volume of business has grown over
the years and it has succeeded in expanding from one to
six offices, with offices now located at 3901 Veterans
Boulevard, Metairie, Jefferson Parish, Louisiana; 4301
Elysian Fields Avenue in the Gentilly section or neigh-
borhood of New Orleans; 9235 Lake Forest Boulevard
in the Eastern section of New Orleans; 2901 General
De Gaulle Drive, in the Algiers section of New Orleans;

pee SEES NEN SAE ST 4 aie anata

REO 8 SAB fee wh

27a

Uptown Square, in the uptown section of New Orleans
and Hammond Square, Hammond, Tangipahoa Parish,
Louisiana.

8. Plaintiff is planning to expand its offices to:
Slidell, St. Tammany Parish, Louisiana; Laplace, St.
John the Baptist Parish, Louisiana; and to the Central
Business District in New Orleans.

9. Plaintiff’s market area includes the Louisiana
Parishes of Orleans, Jefferson, St. Bernard, Plaque-
mines, St. Tammany, Tangipahoa, St. Charles and St.
John the Baptist.

10. Plaintiff is engaged in the practice of full scope
optometry which includes complete visual analysis (in-
cluding external and internal diagnosis of eye disease,
and refractions) and includes dispensing of eyeglasses,
contact lenses, eyeglass frames and other visual aids,
and all things which optometrists are permitted by law
to do.

11. The nature of plaintiff’s profession is such that
many patients seek out plaintiff as a result of patient
and professional referrals. These referrals are normal-
ly made to “The Vision Center” or “Vision Center,”
rather than to a particular optometrist. However,
when referrals are made to a particular optometrist,
generally, the connection is made to identify that prac-
titioner as a part of plaintiff’s office (e.g., “See Dr.

28a

at ‘The Vision Center,’ or at ‘Vision

Center’ ”).

12. Plaintiff has over the years obtained and
presently obtains patients from its listings in the tele-
phone book yellow pages and from signs on and in front
of its offices.

13. During 1978, plaintiff's media advertising of its
name has attracted business.

14. Plaintiff’s name, “The Vision Center,” is well
established and is, and has been, well known to the
public in its market area for over twenty-three years.

15. No one else in plaintiff's market area uses the
combination of the words “Vision” and “Center.”

16. There have been instances of confusion be-
tween plaintiff’s name and the name of others in sim-
ilar businesses using only the word “Vision” as part of
the trade name, including mail being delivered to the
wrong place; e.g., such confusion with “Vision Plaza.”

17. There has been confusion between plaintiff's
business and certain of defendants’ Pearle Vision
Centers; e.g., there was actual confusion in the mind of
a witness who confused defendants’ Biloxi, Mississippi
facility as being a “Vision Center” connected with
plaintiff, and there was confusion by someone who

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29a

tried to have plaintiff, The Vision Center, honor an
eyeglass guarantee of defendants’ Pearle Vision

Center.

18. Plaintiff’s partners first heard rumors that
defendants may be opening facilities in the New
Orleans area in August, 1977 and, through its attor-
ney, wrote to defendants asking if this were the case. In
March, 1978, defendants responded to that inquiry and
informed plaintiff that they did intend to open such
facilities.

19. By letter dated May 25, 1978, plaintiff, through
its attorney, made formal demand on defendants not to
use both the words “Vision” and “Center” in its trade
name in plaintiff's market area, and by letter of June 21,
1978, plaintiff's attorney made a follow-up demand on
defendants therefor.

20. Defendant G. D. Searle & Company is the
parent corporation of defendants Will Ross, Inc., and
Opticks, Inc. Opticks is considered Searle’s “Optical
Group” and is doing business unde: the names Vision
Center, Pearle Vision Center, and other Vision
Centers.

21. In 1969 Opticks, Inc., acquired a New York City
company which had done business since 1952 under
the name “Vision Center.” This company continued to

30a

dispense optical equipment and services after its ac-
quisition by Opticks, Inc.

22. Shortly after the acquisition, Opticks, Inc.,
began operating similar stores in other areas of the
country using the words “vision center” as a trade
name or in combination with a prefix.

23. In 1969 Opticks, Inc., was merged into Will
Ross, Inc.

24. On July 28, 1970 Will Ross, Inc., registered the
words “Vision Center” as a service mark in the princi-
pal register of the United States Patent & Trademark
Office (No. 895,663). On November 17, 1975 affi-
davits pursuant to Section 8 and Section 15 of the Lan-
ham Act were filed and accepted with respect to the
service mark.

25. On July 13, 1971 Will Ross, Inc., registered the
words “Vision Center” as a trademark on the principal
register of the U.S. Patent Office (No. 916,280). On
November 23, 1976 a Section 15 Affidavit was filed
with the U.S. Patent Office with respect to the trade-
mark. On October 5, 1976 a Section 8 Affidavit was ac-
cepted by the U.S. Patent Office with respect to the
trademark.

26. Opticks, Inc., was recently spun off as a sep-
arate corporate entity, and Service mark No. 895663

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3la

and Trademark No. 916,280 were assigned by Will
Ross, Inc., to Opticks, Inc., as recorded in the U.S. Pat-
ent Office on October 1, 1977.

27. Defendant Opticks, Inc., owns and operates
over 300 retail outlets for optical goods and services
throughout the United States under the trade names
“PEARLE Vision Center,” “ROGERS Vision Center,”
and “HILLMAN-KOHAN Vision Center.”

28. Defendants use, anywhere, of the words —
“Vision Center” as part of a trade name was subse-
quent to plaintiff's use of the words “The Vision
Center” as a trade name — plaintiff and its prede-
cessors having used it since May, 1955.

29. Defendants have not heretofore used the
words “Vision Center” as part of a trade name in the
plaintiff’s market area.

30. Defendants are in the business of selling op-
tical goods such as eyeglass frames and lenses, and
employ opticians to fit and sell such eye-wear goods.

31. Defendants use eyeglass cases with only the
words “Vision Center” within an oval imprinted on
them. Plaintiff, since its inception and since the incep-
tion of its predecessor, has used, and now uses, eye-
glass cases containing the words “The Vision Center.”
Defendants have not shown any intention to change
their use of such eyeglass cases.

32a

32. Defendants conduct national advertising using
only the words “Vision Center” in magazine adver-
tisements, in television commercials (e.g., now in At-
lanta, Georgia, the television commercial uses just
“Vision Center” more than once in the middle of it, and
“Pearle Vision Center” at the end), on store signs, and
in some of defendants’ eyeglass warranty (guarantee)
certificates.

33. Opticks, Inc., plans to open three outlets in the
New Orleans area under the trade name “Pearle Vision
Center” in the near future.

34. Defendants are locating their facilities as
follows:

(a) One at 3544 Veterans Boulevard, Met-
airie, Louisiana, just six-tenths (0.6) of a mile
from plaintiff's office located on the same
street at 3901 Veterans Boulevard, Metairie,
Louisiana;

(b) One at 4801 Chef Menteur Highway in
the Gentilly section of New Orleans, just one
and six-tenths (1.6) miles from plaintiff’s Gen-
tilly office located at 4301 Elysian Fields
Avenue, New Orleans;

(c) One at 1523 Tulane Avenue, New
Orleans, just three and eight-tenths (3.8)
miles from plaintiff’s Elysian Fields office.

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33a

35. The opening of the “Pearle Vision Center”
stores will be extensively advertised on local tele-
vision, radio, in newspapers, and in direct mail flyers.

36. Each Pearle Vision Center location will have a
large exterior sign showing the company name in large
white letters on a green background. One sign, for
example, will be 28 ft. wide by 8% ft. high. The word
“Pearle” will be in white letters 33 inches high and
directly below it will be the words “Vision Center” in 19
inch white letters.

37. Defendants have known of plaintiff’s exis-
tence in New Orleans for many years.

38. Defendants, through one of the defendants’
real estate departments, conducted a market survey of
the New Orleans area prior to entering the market.

39. Prior to entering the market and expending
funds in connection therewith, defendants knew of the
locations of plaintiff’s offices and knew that plaintiff in-
tended to assert its rights to protect its name.

40. The combination of the words, or the phrase,
“The Vision Center,” i.e., plaintiff's trade name, is not
generic or descriptive.

41. Plaintiff’s trade name is suggestive of the busi-
ness it is engaged in. It has come to be well known in

34a

plaintiff’s market area by reason of its long usage of the
name in the market, the valuable goodwill of the name
and the identification of the name with plaintiff's busi-
ness.

42. Even if plaintiff's trade name were descriptive,
the evidence is clear that the trade name has acquired a
secondary meaning, because after long use (twenty-
three years) in the market area, the public has come to
identify and associate the trade name with the plaintiff,
and not with the services plaintiff renders. The words
“The Vision Center” have come to mean in the minds of
the public, the identity of plaintiff.

43. Actual confusion has been shown to exist
between plaintiff's offices and some of defendants’
facilities which are outside plaintiff's market area.

44. Actual confusion has been shown to exist
between plaintiff's offices and other similar local
offices using just the word “Vision” in the name.

45. There was uncontradicted testimony by in-
dependent witnesses that they would confuse defend-
ants’ new establishments to be called “Pearle Vision
Center” and plaintiff's offices.

46. Persons who would go to The Vision Center by
referrals or by reason of advertisements would be con-

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35a

fused because of the similarity in names between plain-
tiff’s, The Vision Center, and defendants’, Pearle
Vision Center, particularly since the locations estab-
lished by defendants are in such close proximity to
plaintiff’s existing offices.

47. The use of the word combination of “Vision
Center” by defendants in connection with their optical
stores in the Greater New Orleans area is likely to
cause confusion to the public and cause plaintiff to lose
business.

48. Sometime ago, defendants initiated negotia-
tions with plaintiffs partners to purchase The Vision
Center.

49. The facts hereinabove set forth clearly estab-
lish that defendants are attempting to compete unfair-
ly with plaintiff and to infringe upon plaintiff’s long-
established trade name and goodwill, some of which
are: (i) defendants knew of plaintiff’s long use of its
trade name in the market; (ii) defendants attempted to
purchase plaintiff’s business; (iii) defendants obvious-
ly had knowledge of the value of plaintiff's long-estab-
lished name and goodwill; (iv) defendants have and/or
are locating their new facilities in plaintiff's market
area (even on the same street and in the same neigh-
borhood); and (v) the public already has been confused
by defendants’ out-of-the-market locations doing busi-
ness as Pearle Vision Center.

36a

50. The defendants have not successfully shown
that the harm of an injunction to them outweighs the
threatened injury to plaintiff.

CONCLUSIONS OF LAW

1. Plaintiff, as first user of the trade name “The
Vision Center” in its market area, has established a
priority of appropriation in that market area. Handy v.
Commander, 49 La.Ann. 1119, 22 So. 230 (1897); Dynasty
Room, Inc. (d/b/a Whiskey-A-Go-Go) v. Whiskey-A-Go-Go,
Inc., 186 So.2d 402 (La.App. 4th-1966); and Gallov. Safe-
way Brake Shops of Louisiana, Inc., 140 So.2d 912 (La.App.
4th-1962).

2. By virtue of plaintiff’s prior appropriation of the
trade name and because a federal trademark and use of
such trade name or mark in other locations cannot dis-
place a locally acquired trade name, plaintiff has a pro-
prietary interest in and a superior right to the trade
name in its market area. Dynasty Room, Inc.(d/b/a Whis-
key-A-Go-Go) v. Whiskey-A-Go-Go, Inc., 186 So.2d 402
(La.App. 4th-1966); American Trading Co. v. H. E. Heacock
Co., 285 U.S. 247, 52 S.Ct. 387, 76 L.Ed. 740 (1932); and
United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39
S.Ct. 48, 63 L.Ed. 141 (1919).

3. State law being applicable to this action, the
plaintiff is entitled to injunctive relief upon a prima facie
showing that irreparable injury would result absent

37a

the injunction order. Albrecht v. Del Bondio, 188 La. 502,
177 So. 587 (1937); see also Creppel v. Parish of Jefferson, 352
So.2d 297 (La.App. 4th-1977), writ denied, La., 354
So.2d 201. However, even if federal trade name law is
applied it is clear that plaintiff is entitled to issuance of a
preliminary injunction thereunder upon a showing
that confusion is possible and likely. P. Daussa Corp. 0.
Sutton Cosmetics, Inc., 462 F.2d 134 (CA 2-1972).

4. The fact that the United States Patent Office
accepted the trade name “Vision Center” for registra-
tion on its principal registry is prima facie evidence of
“the distinctiveness” of “Vision Center” as a trade
name. Abercrombie and Fitch Co. v. Hunting World, Inc., 537
F.2d 4, 11 (CA 2-1976); Union Carbide Corp. v. Ever-Ready,
Inc., 531 F.2d 366, 378 (CA 7-1976) cert. denied 429 U.S.
830, 97 S.Ct. 91, 50 L.Ed.2d 94.

5. I find that plaintiff’s trade name is “suggestive”
of the services and products it provides and is capable
of, and entitled to, full trade-name protection. Aber-
crombie and Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11
(CA 2-1976). It does not fall within those names de-
nied trademark protection. The trade name is not
generic. It does not name plaintiff's products or serv-
ices. Nor is it descriptive of plaintiff’s products and
services.

The definitions of the words “vision” and“center” do
not clearly imply a facility or group of facilities related
to eye care and its associated products as defendants
suggest.

38a

“Vision” is defined as “The act or power of seeing:
visual sensation or the capacity for it.”

The word “vision” does not imply eye care services or
products for the improvement of vision, and adding the
word “center” to “vision” does not supply the implica-
tion.

The word “center” is defined as:

“a place, area, person, group or concentration
marked significantly or dominatingly by an
indicated activity, pursuit, interest or appeal;
... a concentration of requisite facilities for
an activity, pursuit or interest along with vari-
ous adjunct conveniences . . . [e.g.] shopping
center, medical center, amusement center.”

6. Plaintiff has established that its trade name has
acquired a secondary meaning, and accordingly, plain-
tiff’s trade name, if descriptive, is capable of, and is en-
titled to, full trade name protection. Handy v. Com-
mander, 49 La.Ann. 1119, 22 So. 230 (1897); Kellogg Com-
pany v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83
L.Ed. 73 (1938); American Aloe Corp. v. Aloe Cream Labora-
turies, Inc., 420 F.2d 1248 (CA 7-1970), cert. denied 400
U.S. 820, 91 S.Ct. 37, 27 L.Ed.2d 47 (1971); Beef/Eater
Restaurants, Inc. v. James Burrough, Ltd., 398 F.2d 637 (CA
5-1968); Safeway Stores, Inc. v. Stephens (d/b/a Save-Way Food
Center and Dairy Bar), 281 F.Supp. 517 (W.D. La.-1967);
Kelly Girl Services, Inc. v. Roberts, 243 F.Supp. 225 (E.D.
La.-1965).

39a

7. Defendants’ federally registered trade name is
not incontestable as to plaintiff because plaintiff has
established prior appropriation and use in the local
market area; therefore plaintiff is entitled to full trade
name protection. 15 U.S.C. §1065 (The Lanham Act);
American Trading Co. v. H. E. Heacock Co., 285 U.S. 247,52
S.Ct. 387, 76 L.Ed. 740 (1932); Holiday Inv 0. Holiday Inns,
Inc., 534 F.2d 312 (Cust. & Pat.App.-1976).

8. Defendants’ use of the term or phrase “Pearle
Vision Center” in the Greater New Orleans area
amounts to trade name and trade mark infringement
and unfair competition; and the public is likely to be,
and has been, confused by such use. Handy v. Com-
mander, 49 La.Ann. 1119, 22 So. 230 (1897); Boogie Kings
v. Guillory, 188 So.2d 445 (La.App. 3d-1966), writ. ref.,
249 La. 761, 191 So.2d 140 (1966); American Trading Co.
v. H. E. Heacock Co., 285 U.S. 247, 52 S.Ct. 387, 76 L.Ed.
740 (1932); Beef/Eater Restaurants, Inc. v. James Burrough,
Lid., 398 F.2d 637 (CA 5-1968); and Safeway Stores, Inc. v.
Stephens (d/b/a Save-Way Food Center and Dairy Bar), 281
F.Supp. 517 (W.D.La.-1976).

9. The use of a trade name or a part thereof by a
latecomer after receipt of notice from the existing user
that such use violated or would violate the existing
user’s trade name gives rise to a presumption of intent
to deceive. Kelly Girl Services, Inc. v. Roberts, 243 F.Supp.
225 (E.D. La.-1965).

40a

10. From the facts found, the Court concludes that
the conduct of defendants constitutes fraud and that
fraud can be “reasonably inferred” from the conduct
and practices and proposed conduct and practices of
defendants. The conduct and practices of defendants
“amount to” fraud and are, at least, “tantamount” to
fraud. Straus Frank Co. v. Brown, 246 La. 999, 169 So0.2d 77
(1964); T.G.I. Friday's Inc. v. International Restaurant Group,
Inc., 569 F.2d 895 (CA 5-1978); T.G.I. Friday's Inc. v. Inter-
national Restaurant Group, Inc., 405 F.Supp. 698 (M.D.La.-
1975).

11. Thelatecomer into the market area, in this case,
the defendant, must bear the burden of avoiding con-
fusion, mistake, and deception, and the defendant has
failed to meet such a burden. Telechron, Inc. v. Telicon
Corp., 198 F.2d 903 (CA 3-1952); Safeway Stores, Inc. v.
Stephens (d/b/a Save-Way Food Center and Dairy Bar), 281
F.Supp. 517 (W.D.La.-1967); and Kelly Girl Services, Inc. v.
Roberts, 243 F.Supp. 225 (E.D.La.-1965).

12. The expenditure of considerable sums of
money by plaintiff (i) to advertise its name to the gen-
eral public, (ii) to protect its acquired goodwill, and (iii)
to protect its own exclusive use of its trade name, is a
substantial element in the maintaining of its burden of
proof, in showing that the issuance of a preliminary in-
junction is called for, to prevent irreparable injury. Kelly
Girl Services, Inc. v. Roberts, 243 F.Supp. 225 (E.D. La.-
1965); Beef/Eater Restaurants, Inc. v. James Burrough, Ltd.,
398 F.2d 637 (CA 5-1968).

th ms alk

4la

13. Plaintiff will suffer irreparable harm and in-
jury if defendants are allowed to commence business
using the trade name, “Pearle Vision Center.” Since the
damages resulting from defendants’ use of that name
cannot be quantified, no award of damages could
properly compensate plaintiff and, therefore, plaintiff
has no adequate remedy at law. P. Daussa Corp. v. Sutton
Cosmetics, Inc., 462 F.2d 134 (CA 2-1972); American Trad-
ing Co. v. H. E. Heacock Co., 285 U.S. 247,52S.Ct. 387, 76
L.Ed. 740 (1932); Handy v. Commander, 49 La.Ann. 1119,
22 So. 230 (1897); Dynasty Room, Inc. (d/b/a Whiskey-A-Go-
Go) v. Whiskey-A-Go-Go, Inc., 186 So.2d 402 (La. App.
4th-1966); Louisiana Revised Statutes 51:223.

The plaintiff's motion for preliminary injunction is
GRANTED.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1161%3A1. Public record. Not legal advice.