# Petition — Gardner Bender, Inc. v. Ideal Industries, Inc.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1980
- **Citation:** 447 U.S. 924

## Text

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APR 24 1980

| MICHAEL RODAK, JR., CLERN

IN THE

Supreme Court of the United States

OCTOBER TERM, 1979

No. 79-1680

IDEAL INDUSTRIES, INC.,

Respondent,
vs.

GARDNER BENDER, INC.,
Petitioner.

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

George H. Solveson

735 North Water Street

Milwaukee, WI 53202
Attorney for Petitioner

Glenn O. Starke
Gary A. Essmann
ANDRUS, SCEALES, STARKE & SAWALL
Richard A. Kranitz
Of Counsel

—————SS

-i-
TABLE OF CONTENTS

PAGE
NE Oy Se or ee Oe eee ss 1
TU OIE kA e wubb sc bbb se veceat'e 2
i ee aa al cea ec kee pecs cba eee eben 2
EEE ESE ee 2
i Ce i Ei A bs dubs nw We 6s coescens 2
Reasons for Granting the Writ ...............0eeee cece 7

1. The decision below conflicts with principles
established iit this Court and uniformly followed
by the Courts of Appeal by abolishing the long
standing principle that in order for a series of
number-letter designations to achieve trademark
status, they must first be shown to have been
primarily adopted for use as trademarks ........ 8
2. The law relating to the grant of preliminary
injunctive relief articulated by the decision
below is sufficiently important and erroneous to
merit correction by this Court ................5- 17
A. The decision below conflicts with principles
established in this Court and uniformly
foliowed by the Courts of Appeal by
abolishing the heavy burden of proof placed
upon a movant claiming common law
SI EE Ss cece ssacccccsesccccsseces 17

B. The preliminary injunction should not have
been granted where “unique issues in the

law of trademarks” are involved ............ 19
C. The Court below totally misapplied the law

with respect to irreparable harm, balance of

hardships and status quo by granting the

preliminary injunction .............eeeeeeee 20
Ne he Rr beeen ea eb erates stadboesebepeves 24
Appendices:

A. Opinion in Ideal v. Gardner (7th Cir. 1979)

612 F. 2d. 1018, 204 U.S.P.Q. 177 ...........

B. Opinion in Ideal v. Gardner (E.D. Wis. 1979)
ES ai hoon 65s d0 6 OC eva c see

-ii-

TABLE OF AUTHORITIES

Cases: PAGE
Allan Wood Steel Co. v. Watson, 150 F.Supp. 861

a PONE AE CL OR SUR OEE LEE Ob eb ee i ewetewesces’s 19
Allison v. Froehlke, 470 F.2d. 1123 (5th Cir. 1972)........ 23
American Heritage Insurance Co. v. Heritage Co.,

RR ge Te GS es” Tie | SA 19
Amoskeag Mfg. Co. v. Trainer, 101 U.S. 51,

a EO Oe ae ere 9
Armco Steel Co. v. Watson, 188 F.Supp. 554

AB oe REP EY OP EES Pee eel PTE TEERE TELE 14
Blaich v. National Football League, 212 F.Supp.

a Pa en | ee 23
Campbell Soup Co. v. Armour & Co., 3 Cir.

8 eS Ss Pe ae ee a ee ee coe 12
Carter-Wallace, Inc. v. Procter & Gamble Co.,

FO lad Mae PED ROUEN. COVE 5c SES Si eee eee. 18
Chase Brass & Copper Co. v. Chase Metalcraft Corp.,

19 F.Sepe. 966 GiiN.Y. 194B) ee ccc cee ee 21
Clairdale Enterprises, Inc. v. C I Realty

Investors, 423 F.Supp. 261 (S.D.N.Y. 1976) ............ 23
Clairol Incorporated v. Gillette Company,

ee SR Se aera 15
Coats v. Merrick Thread Co., 149 U.S. 562,

Sa eG. My OF Eee AT QUOD See eee dee cece 9
Columbia Mill Co. V. Alcorn, 150 U.S. 460,

eG a Sey ar Gree. TIKE CIG9S) ok ee ec 8
Deering Harvester Co. v. Whitman & Barnes Mfg.

NR Be GP a A a re 14
Dennison Manufacturing Co. v. Scharf Tag, Label & Box

S0., 180-F i GED GOR. TOUR i ei ee eee Tt,
Dymo Industries, Inc. v. Tapeprinter, Inc.,

oe Oe ee ee ea ers ee 17
Diamond Match Co., v. Safe Harbor Match Co.,

ee th Bae UAE IE, UUPED C25 iS vee cw wcccccbeccces cs 19

Ex parte Estabrook Pen Co., 109 U.S.P.Q. 368,
NG I EE orsign Deve ciks SeSe seks ate valees Genes 13

-iii-

Farm Service, Inc. v. U.S. Steel Corp.,

149 U.S.P.Q. 861 Gdahe S.CR. TORR. cs ic. sai vencees 19
Fisher v. Holiday Inn of Rhinelander, Inc.,

181 U.S.P.Q. 796 (Wis: Cis. Ch. 1978). ae 4 Zi =| ® | & =

7

tor style and size. In all cases, Gardner’s labels bear Gard-
ner’s “GB” trademark prominently, in addition to Gard-
ner’s distinctive logo.

Further, Gardner did not employ the 71B designations in
its catalog as trademarks, but rather to designate the style
and size of the connectors to inform the customer of the
characteristics of the product.

On November 19, 1979, the United States Court of Ap-
peals for the Seventh Circuit affirmed with modification the
District Court’s preliminary injunction order by holding
that the District Court could properly “infer” that the 71B
series had acquired secondary meaning to justify trademark
protection, notwithstanding Ideal’s failure to meet the
primary adoption test.

REASONS FOR GRANTING THE WRIT
The reasons why this writ should be granted are:

that otherwise, the abolishment of the long standing
primary adoption test by the Court below will have a de-
leterious impact and effect upon the commercial practices of
all industries in the United States with respect to the con-
tinuance and formation of industry wide numbering sys-
tems commonly relied upon by consumers to compare
prices between otherwise similar products; and

that otherwise Gardner, without fair opportunity for trial
on the merits, will be deprived of valuable property by the
misapplication of substantive law in a fundamental area in
contravention of the legal principles laid down by this
Court.

1. The decision below conflicts with principles estab-
lished in this Court and uniformly followed by the Courts
of Appeal by abolishing the long standing principle that in
order for a series of number-letter designations to achieve
trademark status, they must first be shown to have been

8

primarily adopted for use as trademarks.

Heretofore, this Court and the various Circuits uniformly
hele. that in order for a party to claim exclusive trademark
rights in a series of numerals or numeral-letter designations
for a series of substantially identical products, it must first
demonstrate that such series of designations have been
primarily adopted for use as trademarks, rather than to
designate some feature or characteristic of the product it-
self. If a party meets the primary adoption test and the
numbering series is found to specifically describe a charac-
teristic or ingredient of the article, then such party must
meet the second test, namely of showing that such terms
have acquired secondary meaning.

In this case, the Court below abolished the long standing
primary adoption rule and held that the District Court
could “infer” that the 71B series numbers had acquired
secondary meaning.

The decision below will have grave consequences upon

the commercial activities of almost all companies which .

have primarily adopted extensive numbering and lettering
systems to designate their products to distinguish between
different sizes, styles, grades, quality, etc. Ideal did not
adopt and use the 71B series as trademarks, but rather the
designations were solely adopted and used by Ideal and the
trade to designate the size and model of the connectors.

This Court has spoken quite clearly concerning the pri-
mary adoption rule which the Seventh Circuit has now
abolished. In Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14
S.Ct. 151, 37 L.Ed. 1144 (1893), this Court stated at page
463:

‘. . .if the device, mark, or symbol was adopted or
placed upon the article for the purpose of identifying
its class, grade, style, or quality, or for any purpose
other than a reference to or indication of its owner-
ship, it cannot be sustained as a valid trademark.”

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9

In Coats v. Merrick Thread Co., 149 U.S. 562, 13 S.Ct. 966,
37 L.Ed. 847 (1893), this Court stated (at 37 L.Ed. 852):

4é

. it is clear that no such monopoly could be
claimed of mere numerals, used descriptively, and
therefore not capable of exclusive appropriation be-
cause they represent the number of the thread, and are
therefore, of value as information to the public, Amos-
keag Mfg. Co. v. Trainer, 101 U.S. 51 (25:993). Clearly,
the plaintiffs cannot, as patentees, claim a monopoly of
these numerals beyond the life of the patent and it is
equally clear, that, where used for the purpose of im-
parting information they are not susceptible of exclu-
sive appropriation as a trademark, but are the common
property of all mankind.” (emphasis added)

In Amoskeag Mfg. Co. v. Trainer, 101 U.S. 51, 25 L.Ed. 993
(1879), this Court stated at page 54:

“. . . letters or figures which, by the custom of trad-
ers, or the declaration of the manufacturer of the goods
to which they are attached are only used to denote
quality, are incapable of exclusive appropriation; but
are open to use by anyone, like the adjectives of the
language.”

Even the Seventh Circuit prior to this case followed the
primary adption rule set forth by this Court. Thus, in Wil-
liam H. Keller, Inc. v. Chicago Pneumatic Tool Co., 298 F. 52
(7th Cir. 1923), cert. denied, 265 U.S. 593, 44 S.Ct. 637, 68
L.Ed. 1196 (1924), the Seventh Circuit stated at page 59:

“There can be no question but what [sic] a number
may become a good trademark, if its primary adoption
be solely to indicate origin. On the other hand, if the
figures indicate a grade or a quality only, they may not
be the basis for a valid trade-mark.”

In Keller, supra., the Seventh Circuit held that although
the figures ‘50’, “60”, “80” and “90” were federally regis-

10

tered as trademarks, their primary adoption was not solely
to indicate origin and therefore they were not trademarks.

In this case it is undisputed that the 71B series designa-
tions were adopted and used by Ideal and the trade over
the years to solely indicate the model and size of electrical
connectors and were not considered to be trademarks by
either Ideal or the trade. The Seventh Circuit stated:

“The 71B series numbers are not’‘arbitrary” marks in
the trademark sense. Although the numbers were cho-
sen arbitrarily in the sense that they do not refer di-
rectly to a characteristic of the connectors, the progres-
sion of numbers was adopted, and is currently used,
to describe the relative sizes of the connectors.”

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“The 71B series numbers had no descriptive mean-
ing prior to their use by Ideal. However, over time
they came to have a descriptive meaning which appa-
rently is recognized and used throughout the market.”

+e%

“Ideal’s distributors said it indicates size, and Ideal’s
competitors only use it to indicate size. Even the af-
fidavits submitted by Gardner declared that the desig-
nations indicated the size of the connectors.”

Even Ideal’s own legal counsel admitted that when he
first became involved in this case, his initial reaction was
that numbers and letters could not be trademarks. Specifi-
cally, Ideal’s counsel stated:

“‘My first reaction when I took a look at this is num-
bers and letters couldn’t be trademarks. an instinctive
layman's reaction, I guess.”” Hearing Transcript, pages
28-29.

Thus when Ideal’s own legal counsel initially had a
layman’s reaction that numbers and letters such as the 71B

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series designations could not be trademarks, how could it
be expected that a non-legal layman, such as Gardner,
should have any other reaction.

Various other circuits have also followed the primary
adoption rule set forth by this Court.

The Ninth Circuit applied the primary adoption rule in
K-S-H Plastics, Inc. v. Carolite, Inc., 408 F.2d 54 (9th Cir.
1969), where it held that the alpha-numeric symbols K-4,
K-5, K-11 and K-12 were not used to primarily designate
origin but were rather used as pattern desig~ ations and
therefore generic. The Court stated at page 59

“. . .the trial court’s finding that the symbols had
become generic terms designating pattern and not
producer is fully supported by the evidence. A number
of fixture manufacturers testified that K-numbers had
become a shorthand industry expression for a given
panel configuration. Some fixture manufacturers actu-
ally quoted K-numbers as a part of their catalog al-
phanumeric designation for certain types of light fix-
tures.”” (emphasis added)

The Sixth Circuit in Dennison Manufacturing Co., v. Scharf
Tag, Label & Box Co., 135 F. 625 (6th Cir. 1905), applied the
primary adoption rule and held that a series of arbitrarily
selected numerals, namely 2001, 2002, 2003, 2004, 2005, 2006
and 2007, as applied to seven sizes or shapes of labels and
tags for designating the color and size of the labels, were
not trademarks. The Sixth Circuit recognized that the series
of arbitrarily selected numeral designations, as in the pres-
ent case, were used in distinguishing or designating the
style, color and size of each label by a separate numeral.

_ The Court stated at page 630:

“But in this case all of these difficulties are mag-
nified because the complainant has not adopted one
sign, symbol, or numeral as an unchanging indicia of

12

origin, but a multitude of arbitrary numbers, one such
number being applied to each article made by it which
is distinguishable from like articles of its manufacture
by reason of size, shape, color of border, or the pur-
pose for which it was designed. . . Extend this system
of distinguishing each style, color, and size of label by
a separate numeral, and how is it possible that such a
scheme can serve the office of designating the Denni-
son Company as the common source of origin? But
that is precisely what the complainant insists it has
done, and for such a multitude of numerals it is seek-
ing protection as valid trademarks.”

In refusing to recognize the series of arbitrarily selected
numerals as trademarks, the Sixth Circuit stated at page
633:

“The usual office of a number, whether one of a
series or one arbitrarily selected, is to indicate grade,
quality, quantity, or some other characteristic. These
numbers having been adopted and used for the ordi-
nary purpose of a numeral could point to origin only
in a secondary way, and used in this sense they are
not good trademarks.” (emphasis added)

The Fifth Circuit in Fram Corporation v Boyd, 230 F.2d 931
(Sth Cir. 1956), applied the primary adoption rule and held
that the designations C-4, C-21, C-100, C-130 and C-i34
were used to identify five different sizes of oil filter re-
placement cartridges and thus were not subject to a
trademark monopoly. The court stated at page 934:

“Finally, and as to the claim of infringement of
common-law trademark, we think it is plain that colors
or a combination of colors of themselves are not sub-
ject to trademark monopoly, Life Savers Corp. v. Curtiss
Candy Co., 7th Cir., 182 F.2d. 4, Campbell Soup Co. v.
Armour & Co., 3rd Cir. 175 F.2d. 795, and James Heddon’s
Sons v. Millsite Steel & Wire Words, Inc., 6th Cir. 128

13
F.2d. 6. Neither are numerals or symbols whenused to des-
ignate size or capacity. Dennison Mfg. Co. v. Scharf Tag,
Label & Box Co., 6th Cir. 135 F. 625’.

The Patent Office in Ex parte Estabrook Pen Co., 109
U.S.P.Q. 368, (Comr. Pats. 1956), applied the primary
adoption rule and held that a series of style numbers such
as 2668, 2555, 1551, 9559, 9668, 2556, 1550 and numerous
others were not trademarks. Estabrook used the trademark
“Estabrook” on its penpoints, it adopted different combina-
tions of numerals to differentiate each of its styles of points
from the others, it advertised the numbers as style num-
bers, the ordering and invoicing of Estabrook’s penpoints
was by the style number, and the users of Estabrook’s pens
knew that when they bought an “Estabrook” point number
as a replacement they would get the same style as the pre-
vious style number. Twelve affidavits from longtime deal-
ers in “Estabrook” pens stated that they had never known
of any other company using “2668” on a pen, that “2668”
was recognized in the trade as a pen point made only by
Estabrook, and that when resale customers asked for a
“2668” pen point, they understood that they were getting a
point made exclusively by Estabrook. It was noted that at
no time had the number “2668” been featured in any man-
ner different from the other style numbers. It was held that
the style numer 2668” did not perform the function of a
trademark. The Commissioner stated at page 370:

“Applicant uses “2668” as a style number and ad-
vertises it as a style number; and in light of all the
evidence submitted, it must be concluded that it is
recognized and used by purchasers — both dealers
and the public — as a style identification of one of
applicant’s ‘‘Estabrook’’ pen points. The number
“2668” does not, on the record here, appear to be used
as or perform the function of a trademark.” (emphasis
added)

14

Because Estabrook failed to meet the primary adoption
test, the Patent Office was not required to consider the evi-
dence of secondary meaning submitted by Estabrook.

The Sixth Circuit in Deering Harvester Co. v. Whitman &
Barnes Mfg. Co., 91 F. 376 (6th Cir. 1898), recognized that a
series of numeral/letter designations, i.e. ““F-13’, “‘B-410”,
etc., which were originally adopted and used for no other
purpose than to conveniently designate the size, shape and
capacity of an article and distinguish it from other parts,
sizes, shapes and adaptability with no intention or expecta-
tion to thereby indicate its origin of manufacture could not
become trademarks. The Sixth Circuit correctly recognized
that the inherent function of such a series of designations
in their customary use is primarily to designate a feature of
the connectors and any indication of origin is purely acci-
dental. The Sixth Circuit stated at page 380:

“Any office which these marks perform as designa-
tions of origin is purely accidental. The fact that no
two distinct parts in the same machine bear the same
numerals is altogether persuasive of the fact that their
purpose is not that of indicating the producer. Without
explanation, such a multitude of different marks would
convey no meaning. When explained, as they always
have been and always must be, the explanation is that
they are intended to designate size, shape, and place
in the machine, and are to be used to distinguish one
piece or part from another having a different function.
This purpose does not tend, in any but the most re-
mote way to indicate the producer or maker.”

The authority cited by the Court below does not support
the abolishment of the primary adoption rule. Quite to the
contrary, such authority supports petitioner’s view that the
primary adoption test should be applied in all cases.

In Armco Steel Co. v. Watson, 188 F.Supp. 554 (D.D.C.
1960), the Court noted in an oral decision that the

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numeral-letter designations were adopted by the claimant
with the intention “to designate the particular brands” as
trademarks. The claimant also had licensed others under
such trademarks. Because such terms were merely descrip-
tive of the product or characteristics thereof, the claimant
also had to satisfy the second test, namely of proving sec-
ondary meaning.

In re Standard Kollsman Industries, Inc., 156 U.S.P.Q. 346
(TTAB 1967) did not involve the issue of whether the
letter-numeral designations were valid trademarks, but
rather decided the issue of infringement by another desig-
nation. Obviously, the Trademark Office had previously
found that the primary adoption test had been met with re-
spect to the designations.

The Second Circuit’s decision in Clairol Incorporated v.
Gillette Company, 389 F.2d 264 (2d Cir. 1968) does not stand
for the proposition cited by the Seventh Circuit. Quite to
the contrary, the Second Circuit*held that the term “Inno-
cent Beige” was not a trademark and denied the grant of a
preliminary injunction. The Second Circuit stated at pages
270-271:

“Clairol seems to contend that any grade or style
mark which is intended to also serve as a trademark
will receive protection. We do not think that the opin-
ion in Kiekhaefer lays down any such proposition.”

+e

“We are cited to no cases in which a color or shade
designation has been held (at any level) as a valid
trademark.”

Even the McCarthy treatise cited by the Court below in-
dicates that letters and numerals which are adopted as de-
signations of a particular style or grade are not valid
trademarks. 1 J.T. McCarthy, Trademarks and Unfair Compe-
tition, § 11.15, pp. 371-372 states:

16

“It has been held from an early date that words, let-
ters, numbers and symbols which are used as designa-
tions of a particular style or grade of product are not
valid trademarks in that they do noi serve the function
of identifying and distinguishing the goods (not
grades) of this seller from those of others. The term
“grade” designation has been held to be synonymous
with “model designation,” “type designation,” “style
designation,” “flavor designation,” “color and shade
designation,” and any other designation which may be
used by a manufacturer or seller to differentiate one
product in his line of goods from the other therein,
rather than to identify such goods and distinguish
them from like goods of other sellers.”’

In conclusion, the authority relied upon by the Court
below does not support its proposition that the primary
adoption rule should be abolished with respect to whether
numerals or numeral-letter designations such as the 71B
series in question should be deemed to be common law
trademarks.

The Court below totally ignored the strong public interest
against permitting a monopoly of numerals or numeral-
letter designations which, as in this case, have been com-
monly used throughout the industry to indicate common
sizes for a series of connectors.

The decision below will mean that every catalog number
or size designation used by thousand of companies to des-
ignate the characteristics of thousands of their products
will now be claimed as exclusive trademarks.

In following the logical progression of the decision be-
low, a manufacturer having one thousand different sizes of
an otherwise identically constructed product will claim one
thousand different numeral-letter trademarks for the single
product which only differs in size. As trademarks, such
numerals or letters may not be used by any other manufac-

.

turer in such industry. The result will be that new man-
ufacturers will be hard pressed to find simple numeral-
letter systems to indicate the type, style, size or other
characteristics of such product.

The decision below will have a significant impact by
dismantling presently existing industry-wide size indicat-
ing systems. The decision will have the chilling effect of
discouraging the adoption and use of common numbering
systems within industries so that consumers will not be
able to readily compare prices with respect to otherwise
identically constructed goods.

The granting of the preliminary injunction below does
not serve the public interest, and is contrary to the princi-
ples established by this Court.

2. The law relating to the grant of preliminary injunctive
relief articulated by the decision below is sufficiently im-
portant and erroneous to merit correction by this Court.

A. The decision below conflicts with principles estab-
lished in this Court and uniformly followed by the Courts
of Appeal by abolishing the heavy burden of proof placed
upon a movant claiming common law rights.

There are no presumptions which attach under the com-
mon law to the 71B etc. designations, and Ideal bears a
heavy burden in proving validity, Dymo Industries, Inc. v.
Tapeprinter, Inc., 326 F.2d. 141 (9th Cir. 1964); Time
Mechanisms, Inc. v. Qonaar Corp., 422 F.Supp. 905, 911
(D.N.J. 1976).

The court below, however, did not place any burden of
proof upon Ideal and held that:

“the district court could properly infer that the 71B
series numbers had acquired secondary meaning. See
W.E. Bassett Co. v. Revlon, Inc., 435 F.2d. 656, 661 (2d.
Cir. 1970)”. (emphasis added)

18

The case of W.E. Bassett Co., supra., however, did not
involve common law rights, but rather dealt with a feder-
ally registered mark having statutorily recognized presump-
tions of validity (15 U.SC. § 1057b). The Second Circuit
stated at page 661:

“Hence, there is ample evidence to support Judge
Frankel’s inference that Bassett’s “Trim” mark had at-
tained secondary meaning, especially in view of the
patent office’s registration of that mark.” (emphasis
added)

The Court below recognized the extensive industry wide
usage of the 71B series as standard connector size designa-
tions by both competitors and customers.

With such extensive third party usage, the Court below
erroneously inferred secondary meaning.

In Carter-Wallace, Inc. v. Procter & Gamble Co., 167
U.S.P.Q. 713 (9th Cir. 1970), the Ninth Circuit stated at
page 719:

“Plaintiff attempts to dismiss these third-party uses
as minimal or immaterial, but they indicate the obvi-
ous: that the term ‘sure’ is an oft-used one with no
special characteristics or distinctiveness of its own. In
the present context, such third party usage is relevant
to disprove the existence of trademark rights in the
plaintiff.” (emphasis added)

In Re Rockwell-Standard Co., 169 U.S.P.Q. 445 (TTAB
1971), the Trademark Office stated at p. 445:

“In this regard, the record in this case clearly estab-
lishes that at the very time the issue of registrability
was under consideration, others in the auotomotive
trade were using “fail-safe’’ in a purely descriptive
sense to properly describe their goods and this would
negate any secondary meaning in the term “fail-safe”
as an indicator of origin.”” (emphasis added)

19

Also see Alan Wood Steel Co. v. Watson, 150 F.Supp. 861
(D.D.C. 1957); Roselux Chemical Co. v. Parsons Ammonia
Co., 299 F.2d. 855 (CCPA 1962); McCormick & Company v.
Summers, 354 F.2d. 668 (CCPA 1966); American Heritage In-
surance Co. v. Heritage Co., 182 U.S.P.Q. 77 (Sth Cir. 1974).

With such third party usage, the Court below erred in
granting the preliminary injunction on the grounds of in-
ferred secondary meaning, Diamond Match Co., v. Safe Har-
bor Match Co., 109 F. 154 (E.D. Penn. 1901); Kraft Phenix
Cheese Corporation v. Levin, 29 F.Supp. 813 (E.C. Penn
1939); Farm Service, Inc. v. U.S. Steel Corp., 149 U.S.P.Q.
861 (Idaho S.Ct. 1966)

Proof of secondary meaning entails rigorous evidentiary
requirements, Kellogg Co. v. National Biscuit Co., 305 U.S.
111, 59 S.Ct. 109, 83 L.Ed. 73 (1938), and particularly when
asserted on a motion for preliminary injunction, Ralston

Purina Company v. Thomas ] Lipton, Inc., 341 F.Su
. , “s . 129
(S.D.N.Y. 1972). as

The decision below, by inferring secondary meaning,
improperly abolished the heavy burden of proof always

placed upon a movant for preliminary injunction alleging
common law rights.

B. The preliminary injunction should not have been

granted where “unique issues in the law of trademarks”
are involved.

The Court below prefaced its opinion by stating:

“This case brings up for decision unique issues in
the law of trademarks, especially the question whether
numbers may become common law trademarks.”

In order to arrive at its decision, the Seventh Circuit had
to abolish the long standing primary adoption trademark
rule which uniformly held that in order for numerals and/or
letters to be capable of functioning as trademarks, they

20

must be primarily adopted for use as trademarks rather
than to indicate the characteristics of the product, i.e. style,
size, type, etc.

The Court below should not have issued a preliminary
injunction when, admittedly, the plaintiff was advancing
“unique issues in the law of trademarks”, La Chemis Lacoste
v. General Mills, Inc., 487 F.2d. 312, 314 (2d Cir. 1973).

C. The Court below totally misapplied the law with re-
spect to irreparable harm, balance of hardships and status
quo by granting the preliminary injunction.

The grant of a preliminary injunction is an extraordinary
remedy and should only be resorted to in extreme cases
where there are little or no issues of law or fact, Willheim v.
Investors Diversified Services, Inc., 303 F.2d. 276 (2d Cir.
1972), The Court below found overwhelming irreparable
damage to the defendant Gardner with virtually no damage
to the plaintiff Ideal.

The Seventh Circuit has abolished, for all practical pur-
poses, the long standing, well-known rule that delay by a
plaintiff in seeking preliminary injunctive relief constitutes
significant evidence of the lack of irreparable damage to
such plaintiff.

The Court below mistakenly applied the law of laches to
such situation. The delay constituting grounds for laches is
considerably longer and should be distinguished from the
delay which constitutes evidence of the lack of irreparable
harm sufficient for denying preliminary injunctive relief,
Gillette Co. v. Ed. Pinaud, Inc., 178 F.Supp. 618 (S.D.N.Y.
1959); Peter Pan Foundations v. Beau-Bra Foundations, 125
F.Supp. 637 (S.D.N.Y. 1955). Such distinction was wholly
ignored by the Court below.

In the present case, Ideal waited almost thirteen months
before filing its brief in support of the preliminary injunc-
tion after it first learned of Gardner’s intention to enter the

21

market with the 71B series designations. Courts in other
Circuits have uniformly denied preliminary injunctive relief
where such delay occurs, Programmed Tax Systems, Inc. v.
Raytheon, 419 F.Supp. 1251 (S.D.N.Y. 1976) (A delay of four
(4) months from the time plaintiff first learned of the al-
leged infringement and ten (10) weeks after commencement
of the action); Chase Brass & Copper Co. v. Chase Metalcraft
Corp., 19 F.Supp. 966 (S.D.N.Y. 1948) (a delay of sixteen
(16) months from the time plaintiff became aware of defen-
dant’s use); Fisher v. Holiday Inn of Rhinelander, Inc., 181
U.S.P.Q. 794 (Wis. Cir. Ct. 1974) (eight (8) months).

In the present case, Gardner was required to continue in
its manufacture of connectors bearing the 71B series desig-
nations because of the extreme expense of permanently de-
facing its four hundred molds. The delay attributable to
Ideal resulted in the necessary buildup of substantial inven-
tory required to service the customers of Gardner.

The Seventh Circuit erroneously followed the long dis-
carded Second Circuit rule whereby the Courts of yes-
teryear implied or inferred irreparable harm under a prima
facie showing of infringement. While such doctrine may
have doubtful applicability to federally registered marks
under statutorily defined presumptions of ownership and
validity as involved in Helene Curtis Industries v. Church &
Dwight Co., 560 F.2d. 1325 (7th Cir. 1977), it has long been
rejected with respect to common law terms. In Selchow &
Righter Co. v. Book-of-the Month Club, Inc., 192 U.S.P.Q.
530, 533 (S.D.N.Y. 1976), the Court stated:

“relying on Yale Electric Corp. v. Robertson, 26 F.2d
972 (2d Cir. 1928), plaintiffs assert that in a trademark
case a prima facie showing of infringement is suffi-
cient to support the issuance of injunctive relief.”

+e

“a review of the more recent cases in this Circuit re-
veals that the Second Circuit has not adhered to the

22

view expressed in that case. Rather, the decisions in this
Circuit in trademark cases have consistently stated that in
addition to a probability of success on the merits a party
moving for a preliminary injunction must demonstrate pos-
sible irreparable injury.”

The Seventh Circuit thus rejected the standard of requir-
ing proof of irreparable damage and reverted to the long re-
jected theory of implying irreparable harm where the terms
are identical.

On the other hand, the Court below recognized the sub-
stantial damage that would be inflicted upon Gardner by
the imposition of the preliminary injunction. Such damage
includes the shutdown of Gardner's manufacturing opera-
tions for a substantial period of time, the loss of current in-
ventory of connectors constituting approximately one half
of Gardner's net worth, the recall of connectors from deal-
ers, the infliction of irreparable damage upon Gardner’s re-
lations with its dealers, and the creation of substantial re-
placement costs.

Notwithstanding all of the above, the Court below recog-
nized that Gardner had prominantly utilized its trademark
and logo to clearly represent to the customers the source or
origin of such connectors. The Court below stated in perti-
nent part:

‘Gardner carton labels ... bear Gardner’s “GB”
trademark prominantly, in addition to Gardner's dis-
tinctive logo.”

In total, the Court below recognized the extreme hard-
ships and irreparable damage that would occur to Gardner
whereas the Court improperly inferred irreparable damage
to Ideal. The resurrection of the long out-moded and ex-
Pressly discarded Second Circuit theory of implying ir-
reparable injury constitutes clear reversible error.

The Seventh Circuit has abandoned the previously well-

23

established principle that a preliminary injunction should
not be granted when such disproportionate hardship is
caused to the defendant, Munters Corp. v. Burgess Industries,
Inc., 535 F.2d. 210 (2nd Cir. 1976); Allison v. Froehlke, 470
F.2d. 1123 (5th Cir. 1972); Clairdale Enterprises, Inc. v. C I
Realty Investors, 423 F.Supp. 261 (S.D.N.Y. 1976); Merrill
Lynch, P.F. & Smith, Inc. v. E.F. Hutton, Inc., 403 F.Supp.
336 (E.D.Mich. 1975); Blaich v. National Football League, 212
F.Supp. 319 (S.D.N.Y. 1962); Mount Sinai Med Center of -
Greater Miami, Inc. v. Mathews, 425 F.Supp. 4 (S.D. FI.
1976); State of Texas v. Seatrain, International, S.A., 518 F.
2d. 175 (5th Cir. 1975).

The Court below totally failed to balance the hardships in
this case. Further, the preliminary injunction ordered by
the Court below destroys the status quo by forcing Gardner
to permanently disfigure its 400 molds and, in effect, grants
to Ideal the full relief which it seeks at trial. In effect, the
Seventh Circuit has reversed its previous decision, W.A.
Mack, Inc. v. General Motors Corporation, 260 F.2d. 886 (7th
Cir. 1958), where the Seventh Circuit stated:

“A preliminary injunction does not issue which
gives to the plaintiff the actual advantage which would
be obtained in a final decree.”’

24

CONCLUSION

For the reasons stated, the petition for a writ of certiorari
should be granted.

Respectfully submitted,

George H. Solveson
735 North Water Street
Milwaukee, Wisconsin

Glenn O. Starke

Gary A. Essmann

ANDRUS, SCEALES, STARKE & SAWALL
Richard A. Kranitz

Of Counsel 3

Appendices

la
Appendix A

Jn the
United States Court of Appeals
Hor the Sebenth Circuit

No. 79-1060

IDEAL INDUSTRIES, INC.,

Plaintiff-Appellee,
vs.

GARDNER BENDER, INC.,
Defendant-Appellant.

Appeal from the United Sates District Court for the
Eastern District of Wisconsin
No. 76-C-317 — John W. Reynolds, Judge

ARGUED APRIL 24, 1979 - DECIDED NOVEMBER 19, 1979

Before FAIRCHILD, Chief Circuit Judge, MOORE, Senior Cir-
cuit Judge,* and WOOD, Circuit Judge.

MOORE, Circuit Judge: This case brings up for decision
_ unique issues in the law of trademarks, especially the ques-
tion whether numbers may become common law

* The Honorable Leonard P. Moore, Senior Circuit Judge of the United
States Court of Appeals for the Second Circuit, is sitting by designation.

2a Appendix A No. 79-1060

trademarks. Defendant Gardner Bender, Inc. (‘’Gardner’’)
appeals from an order dated January 10, 1979 of the United
States District Court for the Eastern District of Wisconsin,
Honorable John W. Reynolds, Chief Judge, which granted
plaintiff Ideal Industries, Inc’s (“Ideal”) motion for a pre-
liminary injunction. Gardner was enjoined from selling any
electrical connectors bearing the numbers claimed by Ideal
to be its trademarks and using the numbers on the labels of
cartons or on sales literature. Gardner also was ordered to
recall cartons and connectors in the hands of distributors
once modified cartons and connectors become available.
The district court stayed enforcement of its order on
January 15, 1979; this court continued the stay pending
resolution of Gardner's appeal.

Ideal is a Delaware corporation with its principal place of
business in Sycamore, Illinois. Gardner is a Wisconsin cor-
poration which has its principal place of business in Glen-
dale, Wisconsin. Both parties are in the business of making
and selling various electrical products. The district court's
subject matter jurisdiction rested on the diversity of citi-
zenship of the parties. 28 U.S.C. § 1332 (1976).

I,

Understanding of the present controversy requires a brief
review of the past. Early in the 1930’s Ideal began to market
the product now at issue: barrel-shaped, screw-on electrical
connectors. These connectors have a hard outer shell made
of an electrically-insulating material which is molded
around a coiled spring. They connect two or more wires
securely when they are screwed onto the bared ends of the
grouped wires. Such connectors are usually sold in a range
of sizes. Ideal has sold, and continues to sell, a range of six
sizes under the trademark ‘Wire Nut’.

3a Appendix A No. 79-1060

Beginning in 1936, Ideal adopted an arbitrary series of
numbers to designate the different sizes. The number “71”
was applied to the smallest, followed by numbers 72, 73, 74
and 76. There are no records which show whether these
numbers corresponded to some characteristic of the connec-
tors other than relative size. In 1946, Ideal began to make
these connectors with a Bakelite rather than phenolic shell
and added a capital “B” to each of the numbers to indicate
the new material. The connectors were identified as 71B,
72B, 73B, 74B, and 76B (hereinafter referred to as the “71B
series’). A sixth, larger size was added in 1966 and was
designated “78B’. Although Ideal has long used a different
material than Bakelite, the 71B series numbers have con-
tinued to appear on the connectors, on carton labels, in ad-
vertising, and in catalogs since 1946.

In 1965 or 1966, Ideal redesigned the cartons, and their
labels, in which the connectors were sold. Besides modern-
izing the look of the label, Ideal increased the size of the
71B series designations so that they became the largest
symbol on the labels. Ideal claims that this change was
made because the company realized that the 71B series
numbers had come to stand for the source of the connec-
tor.' The labels continued to carry the registered

'We reproduce here the labels of Ideal and Gardner for one size of con-
nector.

es Ker _ FAST. EASY, SIMPLE - >
. = [ills “2 colorcoded="
rece! Ball te 1S

“CATALOG NGL

oG =uwreqe@ +

076:

4a Appendix A No. 79-1060

trademarks “Ideal”, “Wire Nut’ and a registered crow’s-
foot design logo representing Ideal. Underneath the 71B
series designation appeared the word “model” in parenth-
eses. In 1969 the connectors and carton labels were color-
coded to indicate size differences but this change had no
effect on the label design or the relative prominence of the
71B series designations.

The 71B series numbers appear on the tops of the connec-
tors themselves to satisfy the requirements of Underwriters
Laboratories, Inc. (“UL”) and the Canadian Standards As-
sociation (“CSA”) that electrical connectors be marked with
a type or catalog-number designation. The imprints of UL
and CSA also appear on the top of Ideal’s approved connec-
tors, along with the trademark “Ideal” and numbers which
indicate the range of wire sizes which the connector can ac-
commodate. All these markings satisfy the CSA and UL re-
quirements.

Ideal is the dominant firm in the market for barrel-
shaped, fixed-spring electrical connectors. Its chief com-
petitors are Hi-Scale Products Corp., Inc. (“Hi-Scale’”’), ITT
Holub Industries (“Holub”), Eagle Electric Mfg. Co.
(“Eagle”), and Gardner. Holub sells its connectors under its
trademark “Hi” and the size designation series “No. Hi-3”,
“No. Hi-4” and ‘‘No. Hi-6”’. Beginning around 1972
Holub’s carton labels displayed a 7iB series number along
with the word “size” in a blue circle to indicate the size
comparability between Ideal’s and Holub’s products.
Holub’s own number series was still the most prominent
label designation and contined to appear on the connectors
themselves.

Prior to 1975, Hi-Scale’s labels bore Hi-Scale’s own series
numbers, such as ‘’HS-18’ or “HS-7” as well as the ap-
propriate 71B series number in smaller print adjacent to the
word “‘size’’. The connectors displayed Hi-Scale’s own

5a Appendix A No. 79-1060

series designations. In 1976, after Gardner entered the mar-
ket, the 71B series number began to appear on Hi-Scale
labels in approximately the same size print as the Hi-Scale
series numbers. The 71B series numbers were still accom-
panied by the adjacent words “Approx. Size’”’.

This case arises from the entry of Gardner into the elec-
trical connector market in 1976. Instead of creating its own
series numbers, Gardner adopted the 71B series as the sole
type designation for its connectors. In addition, the catalog
numbers for each size are similar. While Ideal uses the
catalog number “30-073” to represent its 73B connector,
Gardner uses “10-073” to represent its own 73B connector.
Since Gardner also adopted Ideal’s color coding scheme for
the connectors, the only way to tell a Gardner connector
from one made by Ideal is the presence of a “GB” in place
of “IDEAL” on the top of the connectors. All else on the
connector is the same. The Gardner carton labels are the
same color as Ideal’s although they bear Gardner’s “GB”
trademark prominently, in addition to Gardner's distinctive
logo. The word ‘style’ appears next to the 71B series
number on the carton labels.

Ideal commenced this action in May 1976, charging that
Gardner was engaged in unfair competition and common
law trademark infringement. The complaint sought pre-
liminary and permanent injunctive relief and damages.
Ideal filed its brief and exhibits in support of its motion for
a preliminary injuncttion in January, 1977. Not until
November 30, 1978, did the district court hold a hearing on
the motion. Ideal relied only on its claim that Gardner was
infringing its alleged common law trademark rights in the
71B series; the unfair competition claim was not pressed as
support for the for the preliminary injunction. The motion
was considered on the affidavits, deposition transcripts and
exhibits submitted by the parties as well as the pleadings

No. 79-1060

and the arguments made at the hearing. The district court
expressly absolved Ideal of fault for the long delay between
the filing of the motion and the hearing. The district court
rendered its decision and order in favor of Ideal on January
10, 1979; Gardner appeals. We affirm with modifications
and remand for further proceedings.

6a Appendix A

II.

The scope of review at this stage is quite restricted. An
order granting a preliminary injunction in a trademark case
“will not be set aside by a Court of Appeals unless it is
contrary to the principles of equity or the result of impro-
vident exercise of judicial discretion’. Doeskin Products, Inc.
v. United Paper Co., 195 F.2d 356 (7th Cir. 1952). This court
recently reaffirmed its view that “abuse of discretion” is
the proper standard. Helene Curtis Industries v. Church &
Dwight Co., 560 F.2d 1325 (7th Cir. 1977), cert. denied, 434
U.S. 1070 (1978). Furthermore, the district court’s findings
of fact will not be upset unless they are “clearly errone-
ous”, as provided by Fed.R.Civ.P 52(a). Fleetwood Co. v
Hazel Bishop, Inc., 352 F.2d 841 (7th Cir. 1965). Therefore,
the following discussion of the legal principles governing
the alleged trademarks is merely to aid in explaining the
court’s view that the district court did not abuse its discre-
tion in evaluating the likelihood of Ideal’s succeeding on
the merits.

The basic issue is whether it is likely that Ideal’s 71B
series numbers are common law trademarks. Gardner’s
chief argument on this appeal is that numbers which origi-
nally were adopted to indicate different sizes of a product
rather than its origin cannot be trademarks. Gardner relies
heavily on this court’s statements in William H. Keller, Inc.
v. Chicago Pneumatic Tool Co., 298 F. 52 (7th Cir. 1923), cert.
denied, 265 U.S. 593 (1924):

SHER RRERRRRRRERE

No. 79-1060

“There can be no question but what [sic ]anumber
may become a good trade-mark, if its primary adoption
be solely to indicate origin. On the other hand, if the
figures indicate a grade or a quality only, they may not
be the basis for a valid trade-mark.” 298 F. at 59.

The numbers at issue in the case indicated the length of
a piston stroke in a riveting hammer. The quoted statement
was a restatement of the Supreme Court's holding in Coats
v. Merrick Thread Co., 149 U.S. 562 (1893), that numbers in-
dicating the size of thread cannot be trademarks. Other
courts have made similar general statements. See, e.g., Fram
Corp, v. Boyd, 230 F.2d 931 (5th Cir. 1956); Dennison Mfg.
Co. v. Scharf Tag, Label & Box Co., 135 F. 625 (6th Cir.
1905), cert. denied, 201 U.S. 648 (1906). Apparently these
courts did not have before them the question whether the
numbers indicating style or grade had achieved a secon-
dary meaning as symbols of the source of the goods.

7a Appendix A

The general rule with respect to descriptive terms was
stated by this court as follows:

“A merely descriptive term specifically describes a
characteristic or ingredient of an article. It can, by ac-
quiring a secondary meaning, i.e., becoming ‘distinc-
tive of the applicant’s goods’ (15 U.S.C. § 1150(f), be-
come a valid trademark.”’ Miller Brewing Co. v. G.
Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir. 1977),
cert. denied, 434 U.S. 1025 (1978).

Substantial authority supports the idea that terms which
were originally descriptive of style or grade ought to be
treated the same way as any merely descriptive term.
Clairol, Inc. v. Gillette Co., 389 F.2d 264 (2d Cir. 1968); 1 J.T.

_ McCarthy, Trademarks and Unfair Competition, § 11:15, pp.

371-375 (1973). Thus numbers which describe the size of a
product, an aspect of the product’s grade, ought to be cap-

8a Appendix A No. 79-1060

able of becoming trademarks if the proponent of the mark
can prove secondary meaning. In Armco Steel Co. v. Wat-
son, 188 F.Supp. 554 (D.D.C. 1960), the court ordered the
Commissioner of Patents to register the numbers 17-4PH
and 17-7PH as trademarks designating brands of stainless
steel products. The Patent Office had originally denied re-
gistration of the marks because the letters “PH” stood for
“precipitation hardening”, a process used in making the
steel, and the numbers described the proportions of metals
comprising the stainless steel alloy. The court found that
the marks had developed a secondary meaning through
long use and advertising, and had thus become trademarks,
as well as descriptive terms. In another case, the Trademark
Trial and Appeal Board denied registration to a mark which
would have infringed the previously registered marks
“SK-97", “SK-128", “SK-98”", “SK-58” as applied to audio
speakers. Although the case did not involve secondary
meaning, the Board declared that letter marks are entitled
to the same scope of protection as other registered marks.
In re Standard Kollsman Industries, Inc., 156 U.S.P.Q. 346
(TTAB 1967). The fact that the 71B series designations are
numbers descriptive of size does not prevent them from
becoming trademarks if they have acquired secondary
meaning.

Gardner further argues that the 71B series designations
have become generic or common descriptive terms, which
by their nature cannot become trademarks. Miller Brewing
Co. v. G. Heileman Brewing Co., supra, 561 F.2d at 79-80. In
light of Gardner’s numerous assertions that the 71B series
numbers describe the size of a connector, this argument is
difficult to understand. “A generic or common descriptive
term is one which is commonly used as the name or de-
scription of a kind of goods.” Miller Brewing Co. v. G. Heile-
man Brewing Co., supra, 561 F.2d at 79 (emphasis added). If

9a Appendix A No. 79-1060

there is any candidate for a generic or common descriptive
term among Ideal’s marks, its is the registered trademark
“Wire Nut”, which designates the kind of electrical connec-
tor characterized by a barrel shape and a fixed, coil spring,
yet this term has not, as far as we know, passed into com-
mon usage. The term “wire connector’ is a generic or
common descriptive term which probably could not be-
come the exclusive property of any one producer; other-
wise, it would be impossible to tell the buyer what the
product is.? Since these characteristics do not apply to the
71B series numbers, they do not fit into the category of
generic or common descriptive terms.

Pd

The 71B series numbers are not “arbitrary’’ marks in the
trademark sense. Although the numbers were chosen arbi-
trarily in the sense that they do not refer directly to a
characteristic of the connectors, the progression of numbers
was adopted, and is currently used, to describe the relative
sizes of the connectors. Hence, they are merely descriptive,
not arbitrary, terms.

Ideal concedes that proof of secondary meaning is neces-
sary and argues that there is enough proof in the record to
support the district court’s finding that the 71B series num-
bers do have secondary meaning.

When evaluating alleged proof of secondary meaning, a
court should be chiefly concerned with the attitudes of pur-
chasers towards the mark. Union Carbide Corp. v. Ever-ready
Inc., 531 F.2d 366, 380 (7th Cir.), cert. denied, 429 U.S. 830
(1976). Ideal submitted seven affidavits and eight deposi-
tions of its customers from widely separated areas of the

'? For an excellent presentation on the difference between a merely de-

scriptive term and a common descviptive term, see the example of the
“Deep Bowl Spoon” in Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 10 n.11 (2d Cir. 1976), quoting Fletcher, Actual Confusion as to
Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260 (1974).

10a Appendix A No. 79-1060

country. Twelve of these were from independent wholesal-
ers of electrical equipment, firms which buy connectors
from several manufacturers. Three statements came from
electrical contractors, the normal end-users of electrical
connectors. The district court found that all the persons
who gave affidavits or responded to deposition requests
stated that they were familiar with the electrical industry,
that they regarded Ideal as the source when they saw the
71B series numbers used in relation to electrical connectors,
and that they believed that Ideal would be identified as the
source of such connectors throughout the industry.? The
only challenges to these proofs were thirteen affidavits of
“individual manufacturer’s representatives”, and two
depositions of officers of Ideal’s competitors. The gist of
these statements was that the 71B series was used com-
monly throughout the industry to indicate the size of a
connector, regardless of its source.

The district court quite properly discounted the value of
the Gardner affidavits because the affiants were Gardner's
sales representatives and thus had an interest in belittling
the trademark value of the 71B series numbers. The same is
true of the depositions by the officers of ideal’s com-
petitors. Furthermore, the exhibits submitted by Ideal rep-
resented the opinions of purchasers of the product in con-
trast with Gardner’s exhibits. The Union Carbide case stres-
sed the importance of purchasers’ attitudes. When these
statements are added to the fact that Ideal has marketed its
connectors with the 71B series designations for over 30

* Olin Blocker, an electrical distributor from Atlanta Georgia, described
in a deposition his perception of the 71B series as follows:

“Well, I don’t recall anybody using these numbers other than Ideal,
and it has been, I guess, one of the leaders in the field, and if any-
body would say 73B wire nuts, I think that the trade generally thinks
of Ideal wire nuts.”

lla Appendix A No. 79-1060

years and that during that period Ideal has been the
dominant firm (over 80% of the market in 1976) in the
market, we conclude that the district court could properly
infer that the 71B series numbers had acquired secondary
meaning. See W.E. Bassett Co. v. Revion, Inc., 435 F.2d 656,
661 (2d Cir. 1970) (properly supported inference of secon-
dary meaning for a merely descriptive term is enough to
justify trademark protection).

Of course, at trial Ideal must substantiate the inference
that the 71B series designations have come to have a sec-
ondary meaning according to the standard stated by Judge
Denison in G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373
(6th Cir. 1912), cert. denied, 243 U.S. 651 (1917):

“So it was said that the word had come to have a sec-
ondary meaning, although this phrase ‘secondary mean-
ing’ seems not happily chosen, because, in the limited
field [the particular trade and branch of the purchasing
public ], this new meaning is primary rather than sec-
ondary; that is to say, it is, in that field, the natural
meaning.”

See also Restatement of Torts § 716, Comment b (1938);
Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). We
decide now only that the district court had before it enough

evidence to conclude that Ideal was likely to succeed on the
merits.

The last issue which relates to the likelihood of Ideal’s
succeeding on the merits is the question whether Gardner's
use of the 71B series numbers will create a likelihood of
confusion as to the source of the goods. Gardner’s argu-
ment that no proof of actual confusion was submitted is

. unavailing. No evidence of actual confusion is required in

order to prove a likelihood of confusion. Helene Curtis In-
dustries v. Church & Dwight Co., supra, 560 F.2d at 1330;

12a Appendix A No. 79-1060

W.E. Bassett Co. v. Revlon, Inc., supra, 435 F.2d at 662. Sev-
eral factors are important in determining the likelihood of
confusion: the similarity of the marks, the similarity of the
products, the area and manner of concurrent use, the de-
gree of care likely to be exercised by consumers, the
Strength of the complainant’s mark, actual confusion, and
intent on the part of the infringer to palm off his products
as those of another. Helene Curtis Industries v. Church &
Dwight Co., supra, 560 F.2d at 1330; Union Carbide Corp. v.
Ever-Ready, Inc., supra, 531 F.2d at 381-382.

Looking at the facts here, we see that the marks are the
same, the products are the same, the manner of use of the
marks is the same, and the geographical markets overlap or
are identical. As if this were not enough, there is evidence
that customers are not very careful in ordering the connec-
tors. Two witnesses stated in depositions that sometimes a
customer would ask for connectors by the 71B series
number alone, without mentioning a producer. Gardner
disingenuously argues that these customers are merely in-
dicating indifference as to the source of the goods. The con-
trary inference is more likely when one remembers that
Ideal has been the dominant supplier of connectors using
the 71B series numbers for over thirty years. The likelihood
of confusion is almost obvious, and is not reduced by
Gardner’s decision to copy Ideal’s color coding scheme in
addition to using the 71B series numbers. This issue is sub-
ject to further proof at trial but, for present purposes, the
likelihood of confusion is strong enough to justify a pre-
liminary injunction.

Ill.

In order to obtain a preliminary injunction, a plaintiff
must show, in addition to a likelihood of success on the
merits, that it will be irreparably injured unless steps are

13a Appendix A No. 79-1060

taken to preserve the status quo. Helene Curtis Industries v.
Church & Dwight Co., supra, 560 F.2d at 1330. The trial
judge must also weigh the relative hardships to the parties.
Id. The district court found that Ideal was in danger of los-
ing business and losing its current identification as the
source of the 71B series connectors and that if Ideal should
prevail on the merits the burdens of eradicating impermis-
sible uses of its trademarks would be substantially in-
creased were a preliminary injunction not granted. Ap-
parently Gardner failed to produce evidence of the hard-
ships it would suffer if limited, preliminary injunctive re-
lief were granted. The issue is whether the district court
abused its discretion in granting the requested preliminary
relief. Helene Curtis Industries v. Church & Dwight Co.,
supra.

Gardner argues that Ideal’s long delays in commencing
and prosecuting this action have vitiated Ideal’s claim that
it will be irreparably injured unless a preliminary injunc-
tion is granted. Ideal filed its complaint seven month after
learning of Gardner’s intention to enter the market. Eight
months later, after accumulating seven affidavits and eight
depositions from independent distributors, Ideal filed the
brief and supporting papers on its motion for a preliminary
injunction. Twenty-two months after this second filing the
district court held the hearing on the motion. In its deci-
sion and crder the district court stated that the twenty-two
month delay after the motion papers were filed was “‘not
fairly attributable to the plaintiff”. Apparently the delay re-
sulted from the condition of the district court’s calendar.

Gardner is correct in arguing that the plaintiff's delay in
moving for a preliminary injunction has been considered

_ by some courts in assessing the probability of irreparable

injury. W.E. Bassett Co. v. Revlon, Inc., supra, 354 F.2d at
874 n.4; Programmed Tax Systems, Inc. v. Raytheon, 419
F.Supp. 1251, 1255 (S.D.N.Y. 1976). However, delay is only
one among several factors to be considered; these cases do not

14a Appendix A No. 79-1060

support a general rule that irreparable injury cannot exist if
the plaintiff delays in filing its motion for a preliminary in-
junction. On the contrary, this court has stated that mere
passage of time cannot constitute laches. Helene Curtis In-
dustries v. Church & Dwight Co., supra, 560 F.2d at 1334. In
evaluating the defense of laches, the Helene Curtis court
looked to whether the defendant had been lulled into a
false sense of security or had acted in reliance on the plain-
tiff’s delay. The delay attributable to Ideal in this case
neither lulled Gardner nor caused it to act in reliance on
the delay. Hence, the district court was within its discre-
tion when it refused to apply the laches defense in its
analysis of Ideal’s claim of irreparable injury.

The existence of irreparable injury is positively supported
by the fact that the alleged trademark and the infringing
use are identical, that the products are the same, and that
the markets are the same. These factors by themselves are
indicative of irreparable injury. One commentator has
noted:

“Also essential to trademark law is the presumption
that use of a trademark or trade name identical with
that of a competitor, on similar goods and in a similar
business, causes deception and confusion of the pub-
lic.” Nims, The Law of Unfair Competition in Trademarks
1078 (4th ed. 1947).

And, as this court has already said, “the damage to the
goodwill and prominence of the [plaintiff’s] trademark
through public confusion of it with the [defendant’s]
trademark is, in itself, an irreparable injury”. Helene Curtis
Industries v. Church & Dwight Co., supra, 560 F.2d at 1332.
See also Omega Importing Corp. v. Petri-Kline Camera Co.,
451 F.2d 1190, 1195 (2d Cir. 1971). This readiness to find ir-
reparable injury arises, in part, from the realization “that
the most corrosive and irreparable harm attributable to
trademark infringement is the inability of the victim to con-

15a Appendix A No. 79-1060

trol the nature and quality of the defendant's goods”’ 4
Callman, Unfair Competition, Trademarks and Monopolies §
88.3(b) at 205 (3d ed. 1970). Monetary damages are likely to
be inadequate compensation for such harm.

The district court has an obligation to weigh the relative
hardship to the parties in relation to its decision to grant or
deny a preliminary injunction, even when irreparable in-
jury has been shown. Gardner’s brief presents an array of
costs which it will have to bear if the preliminary injunc-
tion is imposed. Elimination of the 71B series numbers
from Gardner’s connector molds would shut down its man-
ufacturing operations for at least one month, if Ideal’s con-
tentions are accepted, or up to seven months, if Gardner's
claims are correct. Gardner’s current inventory of connec-
tors, worth approximately $180,000, would be a total loss.
This amount is one-half of Gardner’s net worth. Ideal’s
claim that such a high inventory level is the product of
mismanagement may be correct; nevertheless, the inven-
tory is a fact which must be considered. Finally, the re-
quirement that all connectors be recalled from the posses-
sion of Gardner’s dis‘ributors would irreparably damage
Gardner's relations with its dealers and would create sub-
stantial replacement costs.

The district court did not fully discuss the relative hard-
ships of the parties but seems to have been handicapped
by Gardner’s failure to present all the facts prior to the is-
suance of the injuncion. In light of the facts presented to
us, we affirm the issuance of an injunction but remand for
modification of the order for reasons stated below. The
hardships which Gardner will suffer do not warrant denial
of all preliminary relief to Ideal. One entering a field al-

ready occupied by another has a duty to select a trademark

that will avoid confusion. Watkins Products, Inc. v. Sunway
Fruit Products, Inc., 311 F.2d 496, 499 (7th Cir. 1962), cert.

l6a Appendix A No. 79-1060

denied, 373 U.S. 904 (1963). See also Helene Curtis Industries
v. Church & Dwight Co., supra, 560 F.2d at 1333-4. Gardner
surely knew that both Hi-Scale and Holub only used the
71B series as size designations and that they used their
own series numbers on the connectors and the cartons to
indicate the source of the products. In spite of this know-
ledge, Gardner chose a course which it must have realized
would create buyer confusion. Gardner could easily have
invented its own series numbers for use on the connectors
and thus fulfilled its duty to avoid confusion. Having
adopted its course, Gardner cannot now complain that hav-
ing to mend its ways will be too expensive.

Nonetheless, the facts necessitate a different balance in
the hardships suffered by the parties. Prior to and during
the long delay before a hearing was held on the prelimi-
nary injunction motion, Gardner continued to produce the
offending connectors to a point where its current inventory
contitutes almost half of its net worth. A remedy like the
injunction at issue, which renders this inventory a total
loss, seems overly harsh. Gardner claims that there is a risk
that it will become insolvent. Ideal would be reasonably
protected if the district court fashioned a modification to its
order, allowing Gardner to make normal sales from its in-
ventory during the time necessary for Gardner to alter its
machinery. Ideal claims the changes can be made in one
month; Gardner says they will take seven. This is a ques-
tion for the district court. The district court should exercise
its discretion to ensure that Gardner’s sales from inventory
will be made in good faith and will not subvert our intent
by flooding the market with connectors which may confuse
buyers. This modification is necessary to maintain Gard-
ner’s cash flow and prevent financial disaster to Gardner
from loss of its total inventory.

17a Appendix A No. 79-1060
IV.

Although the record contains sufficient evidence to sup-
port a preliminary injunction with the modification
suggested above to protect Ideal’s alleged trademarks, addi-
tional evidence apparently not considered by the district
court calls for a further modification of the injunction or-
der. Gardner has raised the defense that its use of the 71B
series designations is a “fair use” of the numbers in their
descriptive sense only. In situations where a mark has both
a trademark function and a descriptive funcion, the “fair
use” defense allows a junior user of a mark to use the mark
in good faith in its descriptive sense, as opposed to its
trademark sense. J. T. McCarthy, Trademarks and Unfair
Competition, § 11:17 at 377 (1923). The analytical focus of
the defense, which exists under both the Lanham Act, 15
U.S.C. § 1115(b)(4) (1976), and the common law, is on how
the term is being used. Venetianaire Corp. of Amrica v. A. &
P. Import Co., 429 F.2d 1079 (2d Cir. 1970). The typical case
involves a term having a descriptive meaning in popular
usage which is adopted by some firm to denominate cer-
tain of its products. Even though the term has become a
trademark as to those products, it may still be used in its
original descriptive sense if the use is in good faith. See
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
12-13 (2d Cir. 1976) (use of word “safari’’ with respect to
clothing).

This case is a slight variant of the typical case. The 71B
series numbers had no descriptive meaning prior to their
use by Ideal. However, over time they came to have a de-
scriptive meaning which apparently is recognized and used
throughout the market. The district court found that it is
probable that the 71B series numbers have come to have, in
addition, a secondary meaning distinguishing Ideal’s prod-
ucts from those of its competitors. These two aspects of

18a Appendix A No. 79-1060

the mark can be recognized. Ideal may prevent use of the
terms by others in their trademark sense as symbols of the
goods of a single producer such that buyers are likely to be
confused, but may not claim an exclusive right to use of the
marks in their generally accepted descriptive role. See J.T.
McCarthy, Trademarks and Unfair Competition, § 11:17 at 379
(1973); Restatement of Torts, § 727, Comment a (1938).

Gardner argues that it only uses the 71B series numbers
in a descriptive sense, as indicative of size or style. It
claims that its packaging and advertising clearly show use
of the terms “size” and/or “style” in conjunction with the
71B. series designations. An examination of the reproduc-
tion of Gardner’s packaging and advertising contained in
the briefs and appendices reveals that the word “style” ap-
pears on the carton labels and in the advertising; nowhere
does Gardner show that it is using the 71B series to de-
scribe ‘size’. Yet Ideal said that the series in part desig-
nates size, Ideal’s distributors said it indicates size, and
Ideal’s competitors only use it to indicate size. Even the af-
fidavits submitted by Gardner declared that the designa-
tions indicated the size of the connectors. No one but
Gardner thinks the series numbers are descriptive of
“style’”’ or type.

On the evidence in the record, we conclude that to the
extent the 71B series numbers are descriptive, they are de-
scriptive only of size, not of a “style’’ or “type”. When
Ideal uses the numbers with the word “model” on Ideal’s
carton labels, the numbers are being used in their
trademark sense. However, in light of the “fair use” doc-
trine, the district court’s order goes too far in prohibiting
Gardner from using the 71B series numbers in any way on
its cartons. For the purposes of establishing fair prelimi-
nary protection for Ideal’s alleged trademarks, Gardner
should be allowed fairly to use the numbers on Gardner

19a Appendix A No. 79-1060

labels, adjacent to the word “size”, to inform buyers of the
size of the connectors. A final determination of the scope of
the “fair use’ defense must await the trial.

Ideal appears to have implicitly accepted this limited use
of the numbers in the course of defending the nature of
Holub’s use of the 71B series numbers in contrast to Gard-
ner’s use. It seems that as long as Holub uses its own series
numbers on the connectors and in a dominant manner on
the carton labels, Ideal has no strong objection to Holub’s
discreet use of the numbers on the carton as indicators of
the size of the connectors. Ideal, of course, condemns Hi-
Scale’s expanded use of the 71B series numbers, which
began on the heels of Gardner’s appropriation of the series
numbers. In any event, Holub began using the 71B series
numbers as size designations on its carton in 1972 and
Ideal was aware of that use. Not until five years later, after
Ideal commenced this suit, did Ideal object to such use of
its alleged trademarks. In all fairness, Gardner should not
be preliminarily enjoined from engaging in a use which
Ideal allowed to Holub for five years. This conclusion is
particularly appropriate where the prior use by Holub ap-
pears to be within the scope of the “fair use” defense.

The district court properly enjoined Gardner’s use of the
numbers on the tops of the connectors to indicate its type,
as required by UL and CSA standards. Gardner’s decision
to adopt Ideal’s color coding scheme as well as Ideal’s series
numbers increases the likelihood of customer confusion.
Gardner will have to create its own series designations for
use on the connectors in compliance with the UL and CSA
requirements until such time as this case comes to final
judgment after trial.

In summary, the preliminary injunction should be mod-
ified to allow Gardner to sell connectors from its inventory
until it can produce connectors without the infringing

20a Appendix A No. 79-1060

numbers on top and to use the 71B series numbers on car-
tons fairly to describe the size of the connectors. We re-
mand the case to the district court for it to exercise its dis-
cretion ir modifying its order consistent with this opinion
and for trial.

A true Copy:
Teste:

Clerk of the United States Court of
Appeals for the Seventh Circuit

USCA 4512-Midwest Law Printing Co., Inc., Chicago—11-19-79—300

1b
Appendix B

In the
United States District Court

Lastern District of Wisconsin

IDEAL INDUSTRIES, INC.,
Plaintiff

DECISION AND ORDER
vs. Civil Action
No. 76-C-317

GARDNER BENDER, INC.,
Defendant

This is an action for unfair competition arising out of the
alleged infringement by the defendant Gardner Bender,
Inc., of plaintiff's claimed trademark designations 71B, 72B,
73B, 74B, 76B, and 78B upon its electrical connectors. The
court has jurisdiction in diversity.

On November 30, 1978, oral argument was held on the
motion of the plaintiff Ideal Industries, Inc., for a prelimi-
nary injunction. Plaintiff seeks an order restraining Gard-
ner Bender from selling any containers or cartons or from

2b Appendix B 76-C-317

distributing any literature using such designations on its
connectors, and requiring Gardner Bender to recall any
such connectors, cartons, or literature which it or its dis-
tributors presently have available for sale.1 For the reasons
hereinafter stated, plaintiff's motion will be granted.

The evidence in the record reveals that Ideal has used the
number designations at issue since 1936 as arbitrary size
designations. It added the B in 1946 to reflect the “Bakelite”
composition of the connectors and has continued to date to
use the B in conjunction with the letter series although the
connectors are no longer made of Bakelite. (Affidavit of
William J. Scott, filed May 19, 1976.) There appears to be
no dispute that Ideal was the first company to use the al-
phanumeric series 71B-74B, 76B, and 78B, and that the ear-
liest use of the series by another company occurred in the
middle or late 1960's.

Numerals or letters used as size or grade designations
only are not entitled to trademark protection. William H.
Keller, Inc. v. Chicago Pneumatic Tool Company, 135 Fed. 52
(7th Cir. 1905); Dennison Mfg. Co. v. Scharf Tag, Label & Box
Co., 135 Fed. 625 (6th Cir. 1905); Fram Corporation v. Boyd,
230 F.2d 931 (5th Cir: 1956). They can, however, have
trademark status if they have or have acquired a secondary
meaning as to source, even though they may originally

_ |! The original motion and brief in support thereof requested far more

extensive relief. Plaintiff at the oral argument and in a subsequent letter
to the court dated December 4, 1978, stated that it is modifying its de-
mand to encompass only the use by the defendant of the letter B in con-
junction with the number series 71-74, 76, and 78, and also that “Ideal
requests that only those connectors currently in boxes in the hands of
distributors need be recalled and replaced with new connectors.” (Letter
from Mr. McSweeney dated December 4, 1978, at page 2.)

3b Appendix B 76-C-317

have been used only to indicate size.? See, eg., William H.
Keller, Inc., supra, at 59; Standard Brands, Inc. v. Smidler, 151
F.2d 34 (2d Cir. 1945); Armco Steel Corporation v. Watson,
188 F.Supp. 554 (D.C. D.C. 1960); K-S-H Plastics, Inc. v
Carolite, Inc., 408 F.2d 54 (9th Cir. 1969).

In determining whether a symbol has trademark status,
one of the primary evidentiary sources is the attitude of
purchasers toward the symbol. Union Carbide Corporation v.
Ever Ready Incorporated, 531 F.2d 366, 380 (7th Cir. 1976),
cert. denied 429 U.S. 830 (1976). The evidence of indepen-
dent customers is particularly valuable because of the diffi-
culty of obtaining such evidence. Gehl v. Hebe Co., 276 Fed.
271 (7th Cir. 1921); Photoplay Pub. Co. v. LaVerne Pub. Co.,
Inc., 269 Fed. 730 (3d Cir. 1921). In contrast, the testimony
of nonindependent company distributors or representatives
is of little value. Application of Duvernoy & Sons, Inc., 212
F.2d 202 (C.C.P.A. 1954); G.D. Searle & Co. v. Chas. Pfizer
& Co., Inc., 231 F.2d 316 (7th Cir. 1956); Norm Thompson
Outfitters, Inc. v. General Motors Corporation, 448 F.2d 1293
(9th Cir. 1971).

The record in this case contains seven affidavits and
eight depositions of the following persons who claim to be
independent customers of Ideal: affidavits filed January 21,
1977, of Morton J. Finkel, Robert E. Oswell, Michael R.
Celiceo, Philip Stahlman, Donald J. Folger, Joseph A. Pfab,
and Burlyn G. Haber (‘Ideal Exhibit Book IV’’); deposition
transcripts filed January 21, 1977, of Olin B. Blocker, Victor

? Defendant argued at the oral argument held on November 30, 1978,
that the alphanumeric series at issue is merely a “generic or common de-
scriptive term” for electrical connectors and therefore under no cir-
cumstances can become a trademark. Miller Brewing Company v. G.
Heileman Brewing Company, Inc., 561 F.2d 75, 79 (7th Cir. 1977). At this
time, the series appears rather to be an “arbitrary” term, Miller, supra, at
79, see also affidavit of William J. Scott filed May 19, 1976, and therefore
would be capable of having trademark status even without a secondary
meaning as that term is used in trademark law.

4b Appendix B 76-C-317

P. Kester, William H. Kent, Richard D. Guyer, Gersil N.
Kay, Donald R. Lumsden, Eugene K. Halley, and James M.
Fowler (“Ideal Exhibit Book V”). All of said persons state
that they are familiar with the electrical industry, that they
pesonally regard Ideal as the source when they see the al-
phanumeric series 71B-74B, 76B, and 78B used in relation to
electrical connectors, and that they believe that industry-
wide Ideal would be identified as the source of such con-
nectors. Defendant suggests that this evidence should be
discredited because it was obtained from “a few of IDEAL’s
favorite electrical distributors and contractors.” (Defen-
dant’s answering brief, filed August 1, 1977, at page 28.)
There is no competent evidence in the record, however, to
show that the witnesses are other than what they claim to
be, i.e., independent customers.

In contrast, defendant's witnesses, all of whom state that
they regard the 71B-74B, 76B, and 78B series as indicating
the sizes of electrical connectors generally and not as indi-
cating that Ideal is the source of the connectors, identify
themselves as “‘individual manufacturer’s represen-
tatives[s].’’ See affidavits filed August 1, 1977, of Gene
Aberoutte, Philip J. Hersh, Jack Grattan, John S. McGee,
Arthur Model, Bernard Rosenblum, Fred W. Stokes, Vernon
Walsh, Wiley D. Jones, Gerald N. DePerro, George Finn,
Tom C. David, and Carl Bonfert. Defendant also refers to
them as its sales representatives. (Defendant's answering
brief, filed August 1, 1977, at page 38.) Defendant has also
submitted affidavits, filed June 2, 1977, from Paul A. Hauck
and Gordon P. Polley who are officers of competitors of
plaintiff. In view of plaintiff's claim that said competitors
are also infringing its trademark series 71B-74B, 76B, and

. 78B on their connectors (see Ideal’s Exhibit Book VIII, filed

August 29, 1977, Tabs A and F), the Court considers that
the two affidavits, which state that the series does not indi-
cate origin, are entitled to little weight.

5b Appendix B 76-C-317

In sum, based on the evidence presently before it, the
Court is persuaded that the weight of that evidence sup-
ports Ideal’s claim of trademark status for its alphanumeric
series 71B-74B, 76B, and 78B, for use in connection with
electrical connectors.

Defendant argues that even if the series has trademark
status, plaintiff has unduly delayed in seeking injunctive
relief and therefore cannot claim irreparable injury. A party
is entitled to sufficient time for discovery to permit it to
gather the evidence which it needs to support a claim for
injunctive relief prior to filing a motion for said relief, see
Re: McNeil Laboratories Incorporated v. American Home Pro-
ducts Corporation, 416 F.Supp. 804 (D.C. D.N.J. 1976); Nes-
ter Johnson Mfg. Co. v. Alfred Johnson Skate Co., 144 N.E.
787 (Ill. S.Ct. 1924), and the Court is satisfied that Ideal was
not delinquent in pursuing its discovery. (See plaintiff's
reply brief, filed August 29, 1977, at pages 28-29.) Delays
which occurred subsequent to January 21, 1977, when Ideal
filed its brief in support of its motion for injunctive relief,
are not fairly attributable to the plaintiff.

The Court is also satisfied that plaintiff will suffer ir-
reparable injury if a preliminary injuncion is not granted. It
therefore need not decide whether or not, as plaintiff ar-
gues, such a showing is not in any event required. See,
e.g., Wawak & Co., Inc. v. Kaiser, 129 F2d 66 (7th Cir. 1942).
There is unrebutted testimony in the record that customers
frequently order connectors by number-letter combination
(71B, 72B, etc.) without specifying the manufacturer of the
connectors. (See, e.g., affidavits filed January 21, 1977, of
Morton J. Finkel, Michael R. Celiceo, Donald J. Folger,
Joseph A. Pfab, and Burlyn G. Haber.) There is also evi-
dence tending to show beginning use of the 71B-74B, 76B,
and 78B series by manufacturers other than Gardner Bender

6b Appendix B 76-C-317

at or about and subsequent to the time that Gardrer Ben-
der commenced using the series on its connectors. In the
Court’s opinion, the fair implication of both such types of
evidence is that the plaintiff is presently in danger of losing
business and of losing in the future its presently held iden-
tification as the source of the 71B-74B, 76B, and 78B connec-
tors, and, further, that should plaintiff ultimately prevail on
the merits of the suit, its burden of eradicating impermis-
sible uses of its trademarks will be substantially increased
if the present use by the defendant, which is the major
present infringer, is not enjoined.

Defendant has submitted two affidavits from William E.
Gardner, filed May 9, 1977 and August 1, 1977, detailing
the injuries which defendant will suffer if an injunction is
granted. Those affidavits do not, however, address the
issue of the injury, if any, which defendant will suffer if
the limited type of relief which plaintiff now seeks is
granted, nor is there any other evidence in the record
which addresses that point. In consequence, the Court
finds no irreparable injury to defendant from its granting of
the injunction.

The foregoing shall, pursuant to Rule 52(a) of the Federal
Rules of Civil Procedure, constitute the Court's findings of
fact and conclusions of law.

IT IS THEREFORE ORDERED that the motion of the
plaintiff Ideal Industries, Inc., for a preliminary injuncion
is granted, and the defendant Gardner Bender, Inc., its
agents, successors, and assigns and all persons acting in
privity or concert with them, or any of them, are hereby
enjoined and restrained, effective immediately and until

_ further order of this court, except for purposes of compara-

tive advertising, from:

7b Appendix B 76-C-317

1. Selling any connectors containing the designation 71B,
72B, 73B, 74B, 76B, or 78B thereon;

2. Selling any cartons on which the designation 71B, 72B,
73B, 74B, 76B, or 78B appear;

3. Selling any cartons on which catalog numbers contain-
ing the number 71, 72, 73, 74, 76, or 78 appear; and

4. Distributing any literature, including without limiting
the foregoing, brochures and/or price lists containing the
designation 71B, 72B, 73B, 74B, 76B, or 78B for Gardner
Bender connectors, or catalog numbers containing the de-
signations 71, 72, 73, 74, 76, or 78 for Gardner Bender con-
nectors.

IT IS FURTHER ORDERED that as soon as new brochures
and price lists are available, they will be distributed to
Gardner Bender’s customers, and those customers shall be
requested to destroy copies of prior brochures and price
lists.

IT Is FURTHER ORDERED that as soon as Gardner Ben-
der, Inc., has its cartons and connectors modified as or-
dered above, it will call back the cartons and connectors
currently in the hands of distributors and replace them
with the revised cartons and connectors.

IT Is FURTHER ORDERED that Ideal Industries, Inc.,
shall file a surety bond in due form in the amount of
$25,000 within three working days of the filing date of this
decision and order.

Dated at Milwaukee, Wisconsin, this l0th day of January,
1979.

John W. Reynolds, Chief Judge

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_2027%3A1. Public record. Not legal advice.