Opposition — Vision Center v. Opticks, Inc.

nih Lei Al

Supreme Court of the Hnited States

OCTOBER TERM, 1979

NO. 79-684

THE VISION CENTER,

Petitioner

VERSUS

OPTICKS, INC., WILL ROSS, INC.

and G. D. SEARLE & CO.,

Respondents

BRIEF IN OPPOSITION TO PETITION

FOR A WRIT OF CERTIORARI TO THE UNITED

STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT

Harry S. Hardin, III

Jones, Walker, Waechter,

Poitevent, Carrere & Denegre

225 Baronne Street

New Orleans, Louisiana 70112

Gerald F. Slattery, Jr. Attorney for Respondents

Jones, Walker, Waechter,

Poitevent, Carrere & Denegre

Of Counsel

A B Letter Service, Inc., 327 Chartres St., New Orleans, La. (504) 581-5555

INDEX

PAGE

SEAT EOETS GE BE CAD: cwcceeneseuce sivnvunsne’s 1

REASONS FOR REFUSAL OF THE WRIT OF

oO ee ee er errr rr 4

ee PUUTTETITET EEE TCT eT er ere rere 12

er er ee re eee ee ey 13

eg eee ere ree ree ye ee re A-1

‘i

TABLE OF AUTHORITIES

CASES: PAGE

Aloe Creme Laboratories, Inc. v. Milsan, 423 F.2d

SO6,, OOD (Bale Ge: BOTS bs ois oKaeinns pi eee eee 5

American Heritage Life Insurance Co. v. Heritage Life Co.,

4946 P.26 S323 (Ot Ge. BOI cas iaencsaaoke tes 4

American Trading Co. v. H. E. Heacock Co., 285 U.S. 247,

S2 Bile. SOF Cs 66 ces 645400 esne seca 8

Couhig’s Pestaway Co. v. Pestaway, Inc., 278 So.2d 519

Cag. Oi CH. BOTS) «oon in ces cceannwenneeeeans 12

Flexitize, Inc. v. National Flexitize Corp., 335 F.2d

774, THD (HBG. BOs on ov nc 00s Gas ebenigs docu 8

Hanover Star Milling Co. v. Metcalf, 240 U.S. 403,

36 Se. SEP (AGES) 6.0 Sa cninds carver ¥asasasenae 5,6

Home Beverage v. Baas, 28 So.2d 481 (La. 1946)....... 11,12

Huddleston v. Dwyer, 322 U.S. 232, 233, 64 S.Ct.

S0b8, NOUR TED, ios oo eee 12

Jenkins Publishing Co. v. Metal Working Publishing Co.,

315 F.2d 955 (C.C.P.A. 1963)........ cece cence ceees 7

Kellogg Co. v. National Biscuit Co., 305 U.S. 111,

136, SD SCe. SOP, BED CHOI c 5 vc ce cn cesseasvui 4,9,10

Straus Frank Co. v. Brown, 169 So.2d 77 (La. 1964)... .11,12

iii

TABLE OF AUTHORITIES (continued)

CASES: PAGE

T. G. I. Friday’s, Inc. v. International Restaurant

Group, Inc., 569 F.2d 895, 899 (5th Cir. 1978). ........ 11

STATUTES:

15 U.S.C. § §1057(b), 1115 (a)(1976)..... 0. cee eee eee 7

OTHER:

3 R. Callman, The Law of Unfair Competition, Trademarks

and Monopolies § 77.3, at 359 (3d ed. 1969)............ 4

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1979

NO. 79-684

THE VISION CENTER,

Petitioner

VERSUS

OPTICKS, INC., WILL ROSS, INC.

and G. D. SEARLE & CO.,

Respondents

}

| BRIEF IN OPPOSITION TO PETITION

| FOR A WRIT OF CERTIORARI TO THE UNITED

| STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT

STATEMENT OF THE CASE

Petitioner is a partnership formed in 1967 for the prac-

tice of optometry in the New Orleans area by Dr. Ellis Pailet

and other optometrists. The name ‘The Vision Center” was

first used by Dr. Pailet when he began his practice of optometry

in New Orleans in 1955. The words “The Vision Center” or

“Vision Center” have been used by petitioner on eyeglass

ee a RS eS eee ee Se ee

cases, thank-you notes, birthday cards, annual recall notices,

stationery, and business forms given to patients or otherwise

used in petitioner’s business, and, since a change of the law

in 1978, have been used by petitioner in its advertising in

newspapers, magazines, and on the radio.

In 1969, Opticks, Inc., a G.D. Searle & Co. subsidiary

incorporated in Texas with its principal place of business in

Dallas, acquired a New York City company that had dispensed

optical goods and services since 1952 under the name “‘Vision

Center”. Shortly after this acquisition, Opticks began operating

similar stores in other areas of the country using the words

“Vision Center,” usually with one of three prefixes: “Pearle”,

“Rogers”, or “Hillman-Kohan.”

At present, Opticks; Inc. owns and operates a national

chain of retail outlets for optical services and goods under the

trade names ‘Pearle Vision Center’’, ‘Rogers Vision Center”’,

and “‘Hillman-Kohan Vision Center.” Opticks, Inc. planned

to open three outlets in the New Orleans area under the name

“Pearle Vision Center” in late August, 1978; each store would

have been identified by a large green exterior sign showing the

words ‘Pearle Vision Center” in large white letters, with the

word “Pearle’’ in a legend twice as bold and twice as large

as the words “Vision Center”. In connection with the opening

of its New Orleans stores, Opticks, Inc. planned to use its

national advertising program and materials including television

and radio commercials, newspaper advertisements, and direct

mail fliers. Although a small percentage of consumer-oriented

advertising material used elsewhere in the country employs the

words “Vision Center” without an identifying prefix, the

advertising slated for use in the New Orleans area always used

only the words “Pearle Vision Center.”

Petitioner sued respondents in state court in Louisiana

for an injunction prohibiting respondents from using their

trade name ‘Pearle Vision Center.” Upon removal of the case

by respondents, a trial for a preliminary injunction was held

in the United States District Court for the Eastern District of

Louisiana on August 10-11, 1978. At trial, petitioner offered

into evidence national advertising used by respondents in other

areas of the country, respondents’ telephone listing, testimony

from seven of petitioner’s customers that ‘Vision Center”

connoted petitioner’s business to them, testimony showing

occasional receipt by petitioner of mail addressed to other

optical goods and services dispensaries with the word “‘vision”

in their names, and evidence that a person who had patronized

one of respondents’ stores in another city confused respondents

with petitioner.

Based on this evidence, the district judge issued a pre-

liminary injunction on August 25, 1978, prohibiting respon-

dents from using the words “vision” and “‘center’”’ together in

any of their signs or advertisements in the New Orleans area.

On May 23, ‘979, the United States Court of Appeals for the

Fifth Circuit 1eversed the district court and remanded the case

for further proceedings not inconsistent with its opinion,

printed at 596 F.2d 111 (Appendix A, pp. 1a-9a, petitioner’s

brief before this Court). Petitioner’s petition for rehearing was

4

denied on August 1, 1979, the mandate of the Court of Appeals

issued August 9, 1979, and the district court dissolved the pre-

liminary injunction on August 16, 1979 (see Appendix, infra).

Petitioner did not bring a motion to stay the mandate of the

Court of Appeals. Respondents are now doing business in the

New Orleans area under the name “Pearle Vision Center” in

accordance with the district court’s order.

REASONS FOR REFUSAL

OF THE WRIT OF CERTIORARI

The decision of the Court of Appeals, as it relates to

likelihood of confusion and secondary meaning, is not in con-

flict with decisions of this Court, those of other Courts of

Appeals, or its own earlier decisions.

The Court of Appeals, holding that petitioner had failed

to prove that secondary meaning had attached to the term

“vision center”, recognized that proof of secondary meaning

is a very heavy burden for a plaintiff to carry. Kellogg Co. v.

National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113

(1938); American Heritage Life Insurance Co. v. Heritage Life

Co., 494 F.2d 3, 12 (5th Cir. 1974); 3 R. Callman, The Law

of Unfair Competition, Trademarks and Monopolies §77.3,

at 359(3d ed. 1969). In addition, before a plaintiff may en-

join as allegedly infringing use of a mark he must also prove a

“likelihood of confusion”, which is difficult of direct proof

short of asurvey. Aloe Creme Laboratories, Inc. v. Milsan, Inc.,

423 F.2d 845, 849 (5th Cir. 1970).

The Court of Appeals held that the testimony of the

petitioner’s own seven patients, the instances of misdirected

mail, and the actual confusion of one of respondent's customers

was legally insufficient to establish secondary meaning. The

Court noted that the significant investment in the trade name

“Vision Center” by respondents for many years in connection

with their nationwide advertising campaign and network of

optical dispensaries made it predictable that respondents would

use the name “Pearle Vision Center” in the New Orleans area.

596 F.2d at 118. In addition, the Court noted, the emphasis

placed by respondents on the word ‘‘Pearle”’ in their trade name

further absolved them from any charge of deception or unfair

competition. Id.

Nothing in Hanover Star Milling Co. v. Metcalf, 240 U.S.

403. 36 S.Ct. 357 (1916), compels a different result. This

Court there held that the substitution of an identifying prefix

before a mark was not sufficient to allay the likelihood of con-

fusion, but expressly based this holding upon a finding that the

respondent had deliberately attempted to trade on the good will

of the petitioner, a factor not present in the instant case:

[Respondent’s] purpose to take advantage of

the reputation of the [petitioner’s] Tea Rose

flour is so manifest, and the tendency of the

similarity of the brand and accompanying

design, and of the makeup of the packages, to

mislead ultimate consumers, is so evident that

it seems to us a case of unfair competition is

made out. The circumstances strongly indicate

a fraudulent intent to palm off the Steeleville

Tea Rose flour upon customers as being the

same as the Tea Rose flour made by com-

plainant, the reputation of which is shown

to be so well established.

36 S.Ct. at 364. This passage, in fact, immediately preceded

the excerpted sentence quoted by petitioner on p. 7 of its

brief before this Court. Apart from the obvious difference

between “Tea Rose” as applied to flour and ‘‘vision center’’ as

applied to an optical goods store, this Court’s holding in Han-

over Star Milling Co., supra, was also based on a finding that the

words “Tea Rose” had acquired a secondary meaning. Id.

Nor is World Carpets, Inc. v. Dick Littrell’s New World

Carpets, 438 F.2d 482 (5th Cir. 1971), in any way in conflict

with the holding of the Court of Appeals below. In that case,

the conflicting marks were “World” and “New World’’, not,

as stated on p. 7 of petitioner’s brief before this Court, ‘“‘World

Carpets” and “New World Carpets.” The Court of Appeals’

holding there that the use of the mark “New World” infringed

upon the mark “World” was expressly premised upon a holding

that the term ‘World’? was not a descriptive term, contra the

Court’s view of the mark ‘‘Vision Center” in the instant case.

Id. at 486-87.

And in Jenkins Publishing Co. v. Metal Working Publish-

ing Co., 315 F.2d 955 (C.C.P.A. 1963), the affirmance by the

Court of Customs and Patent Appeals of the cancellation from

the Supplemental Register of the mark “Western Metal Work-

ing’”’ as infringing upon the mark “Metal Working” was founded

upon that court’s unquestioning acceptance of the registration

of the term ‘Metal Working” on the Principal Register as

conclusive evidence of procf of secondary meaning, an element

not present in the instant case. Id. at 957.

In sum, the holding below was squarely in accord with

the law of trademark infringement as reflected in relevant

decisions.of this Court, other Courts of Appeals, and the Fifth

Circuit Court of Appeals’ own prior holdings.

The decision of the Court of Appeals, which recognized

that an inherently descriptive term is incapable of trademark

protection without secondary meaning, and that such secondary

meaning cannot be proved through long usage alone, does not

conflict with the decisions of this Court, those of the Courts

of Appeals of other Circuits, or its own earlier decisions.

Although petitioner correctly represents on p. 8 of its

brief before this Court that the federal registration of a trade-

mark is prima facie evidence of the distinctive character of a

mark, it fails to point out that this rebuttable statutory pre-

sumption of trademarkability under the Lanham Act, 15 U.S.C.

§ §1057(b), 1115(a)(1976), may be overcome by establishing

the generic or descriptive nature of the mark. Flexitize, Inc. v.

National Flexitize Corp., 335 F.2d 774, 779 (2d Cir. 1964),

cert. denied, 380 U.S. 913, 85 S.Ct. 899 (1965), cited in

Vision Center v. Opticks, Inc., 596 F.2d 111, 119 (5th Cir.

1979).

Petitioner’s reliance on American Trading Co. v. H. E.

Heacock Co., 285 U.S. 247, 52 S.Ct. 387 (1932), is also mis-

placed. In that case, unlikethe present case, the infringing trade

name was identical to the trade name sought to be protected - -

“Wm. A. Rogers, Ltd.” - - and the goods covered by the trade

name used by both petitioner and respondent were also vir-

tually identical:

The evidence is conclusive that the wares for

which the American Trading Company has been

taking and filling orders are very similar in ap-

pearance, design, and material to the wares

which have been advertised and sold in this

country by Heacock Company since 1905. It

is true that a dealer in such wares could and

would see the distinction between them, but

even so, in the ordinary course of business, the

average public to whom they are sold could

not and would not distinguish one from the

other.

Id. at 255, 52 S.Ct. at 389. As a consequence, only one user of

the mark could be protected: the addition of an identifying

prefix before a descriptive term to eliminate the likelihood of

confusion was simply not an issue there.

In addition, the contention by petitioner that long usage,

without more, is legally sufficient to prove secondary meaning

is, as this Court has earlier recognized, incorrect. In Kellogg

Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109 (1938),

this Court addressed the contention by a manufacturer of

shredded wheat cereal that its long use of the term “shredded

wheat” entitled it to the exclusive use of that name in com-

merce:

It is contended that the plaintiff has the exclu-

sive rights to the name ‘shredded wheat’ because

those words acquired the ‘secondary meaning’

of shredded wheat made at Niagara Falls by the

plaintiff's predecessor. There is no basis here for

applying the doctrine of secondary meaning.

The evidence shows only that “ue to the long

period in which the plaintiff or its predecessor

were the only manufacturer of the product,

many people have come to associate the pro-

duct, and as a consequence the name by which

the product is generally known, with the plain-

tiffs factory at Niagara Falls. But to establish

a trade name in the term ‘shredded wheat’ the

plaintiff must show more than a subordinate

meaning which applies to it. It must show

that the primary significance of the term in the

minds of the consuming public is not the pro-

)

10

duct but the producer. This it has not done.

The showing which it has made does not entitle

it to the exclusive use of the term ‘shredded

wheat’ but merely entitles it to require that the

defendant use reasonable care to inform the

public of its source of its product.

Id. at 118-19, 59 S.Ct. 113-14 (emphasis added). The holding

of the Court of Appeals in the decision below, 596 F.2d at 119,

was therefore in harmony with this Court’s pronouncement in

Kellogg Co. that the long, unopposed usage of a term, without

more, is legally insufficient to establish secondary meaning.

Il.

The requirement that fraud or conduct tantamount to

fraud be proved in order to entitle the petitioner to injunctive

relief is an integral part of his cause of action under Louisiana

law. This requirement was correctly applied by the Court of

Appeals in the decision below.

This case was originally filed in state court, and was re-

moved to the United States District Court for the Eastern Dis-

trict of Louisiana on the grounds of the diversity of the citizen-

ship of the parties. Therefore, of course, Louisiana law gov-

erned this case. The Court of Appeals for the Fifth Circuit

applied Louisiana law, relying also, as do the Louisiana courts,

on federal precedents where there is no difference between

Louisiana law and the general law.

11

The Court of Appeals in its decision below properly

applied Louisiana law in this case, which requires that, before

an allegedly infringing use of a trade name be enjoined, the

plaintiff must prove fraud or conduct tantamount to fraud

on the part of the defendant. Whatever the difference peti-

tioner postulates between “‘actual fraud” and “conduct tan-

tamount to fraud”, it is clear beyond cavil that the gravamen

of this requirement is that petitioner prove that respondents

attempted to pass off their own goods and services as his.

T.G.I. Friday’s, Inc. v. International Restaurant Group, Inc.,

569 F.2d 895, 899 (5th Cir. 1978); Straus Frank Co. v. Brown,

169 So.2d 77 (La. 1964); Home Beverage v. Baas, 28 So.2d

481 (La. 1946).

As the Court of Appeals recognized, the evidence intro-

duced by petitioners at the trial of the preliminary injunction

was simply too weak to warrant the extraordinary remedy of

injunctive relief. Whatever significance petitioner attaches to

the use of large signs by respondents in advertising their busi-

ness, or their attempts to purchase its business, it cannot be

denied that the significant investment in the ‘Pearle Vision

Center” trade name nationwide, and the extensive advertising

program devoted to the promotion of that name, makes it more

than reasonable to expect that this name would be used in the

New Orleans area. Further, the emphasis placed by respon-

dents on the word “Pearle” as opposed to the words “Vision

Center”, and the fact that the words ‘“‘Vision Center’ were

never used in the New Orleans area without the identifying pre-

fix, establish that the conduct of respondents in the New

Orleans area did not even approach being fraudulent.

12

If there exists ‘“‘a wedge between the law of trade names

as enforced throughout the United States from that as enforced

in Louisiana”, as represented on p. 11 of petitioner’s brief

before this Court, it is a wedge not placed there by the United

States Court of Appeals for the Fifth Circuit. As that Court

recognized, 596 F.2d at 118 n.19, the law of Louisiana denies

injunctive relief to a plaintiff alleging trademark infringement

unless he can prove fraud on the part of the alleged infringer.

Straus Frank Co. v. Brown, 169 So.2d 77 (La. 1964); Home

Beverage Service v. Baas, 28 So.2d 481, 484 (La. 1946);

Couhig’s Pestaway Co. v. Pestaway, Inc., 278 So.2d 519 (La.

App. 4th Cir. 1973). The Court recognized that this require-

ment for injunctive relief is peculiar to Louisiana, but, under

the Erie doctrine, it of course applied Louisiana law.

CONCLUSION

The complete absence in this case of any of the factors

enunciated in Supreme Court Rule 19(1)(b), as well as the

obviously judicious consideration of the facts and accurate

application of the law by the United States Court of Appeals

for the Fifth Circuit, makes this case unworthy of the issuance

of a writ of certiorari. As this Court has before stated, ‘‘ordin-

arily we accept and therefore do not review, save in exceptional

cases, the considered determination of questions of state law

by the intermediate federal appellate courts.’’ Huddleston v.

Dwyer, 322 U.S. 232, 233, 64 S. Ct. 1015, 1018 (1944). The

petition for a writ of certiorari therefore should be denied.

13

Respectfully submitted,

Harry S. Hardin, Il

Jones, Walker, Waechter,

Poitevent, Carrere & Denegre

225 Baronne Street - 18th Floor

New Orleans, Louisiana 70112

Telephone: (504) 581-6641

Attorney for Respondents

Gerald F. Slattery, Jr.

Jones, Walker, Waechter,

Poitevent, Carrere & Denegre

Of Counsel

CERTIFICATE

It is certified that copies of the foregoing Brief in Opposi-

tion to Petition for Writ of Certiorari were served on Petitioner

this date by mailing same to their counsel of record as re-

quired by Rule 33(1) of this Court.

New Orleans, Louisiana, this 27th day of November,

1979.

Harry S. Hardin, III

A-1

APPENDIX

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF LOUISIANA

THE VISION CENTER CIVIL ACTION

versus NO. 78-2458

OPTICKS, INC.; WILL ROSS, SECTION “E” (4)

INC.; and G. D. SEARLE & CO.

MOTION TO DISSOLVE PRELIMINARY INJUNCTION

NOW INTO COURT, through undersigned counsel, come

defendants, Opticks, Inc., Will Ross, Inc., and G. D. Searle &

Co., who, on representing to the Court that counsel for plaintiff

has no objection to the form of this motion, respectfully move

this Court for an order in accordance with the mandate issued

by the United States Court of Appeals, Fifth Circuit in V ision

Center vs. Opticks, Inc., 596 F.2d 111, 120 (5th Cir., 1979).

ORDER

CONSIDERING THE FOREGOING, it is ordered that

the Order for Preliminary Injunction entered by this Court on

August 25, 1978 be, and the same is hereby, dissolved.

It is further ordered that Opticks, Inc., Will Ross, Inc.,

and G. D. Searle, & Co., Inc. must place the identifying prefix

“Pearle’’ before the phrase “Vision Center” every time the

phrase ‘‘Vision Center” appears in any of their signs and ad-

iia |

A-2

vertisements in the New Orleans area.

New Orleans, Louisiana, August 16, 1978.

s/ Morey L. Sear

JUDGE

RESPECTFULLY SUBMITTED,

s/ Gerald F. Slattery, Jr.

HARRY S. HARDIN, III

GERALD F. SLATTERY, JR.

Jones, Walker, Waechter,

Poitevent, Carrere & Denegre

225 Baronne Street

New Orleans, Louisiana 70112

Telephone: (504) 581-6641

Attorneys for Defendants

NO OBJECTION AS TO FORM, ALL RIGHTS RESERVED:

s/ William W. Messersmith, III

WILLIAM W. MESSERSMITH, III

Deutsch, Kerrigan & Stiles

4700 One Shell Square

New Orleans, Louisiana 70112

Telephone: (504) 581-5141

Attorneys for Plaintiff