Petition — Amstar Corp. v. Domino's Pizza, Inc.

| Supreme Court, US.

FILED

80-155 JUL 31 1980

MICHAEL ROU, 2.

IN THE ponies Sad

Supreme Court of the United States

OCTOBER TERM 1980

No.

AMSTAR CORPORATION,

Petitioner,

Vv.

Domino’s Pizza, Inc.; ArLaAntA Pizza, Inc.; Pizza ENnTER-

pRISES, Inc.; Pizza Services, Inc.; and Hanna CREATIVE

E\NTERPRISES, INC.,

Respondents.

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

GeRaLp W. GRIFFIN

Norman H. Zrvin

Cooper, Dunham, Clark, Griffin & Moran

30 Rockefeller Plaza

New York, New York 10112

Tel. (212) 977-9550

Juutius R. Lunsrorp, Jr.

Hurt, Richardson, Garner, Todd & Cadenhead

1100 Peachtree Center Harris Tower

233 Peachtree Street, N.E.

Atlanta, Ga. 30303

Tel. (404) 525-1100

Attorneys for Petitioner

IN THE

Supreme Court of the United States

OCTOBER TERM 1980

AMSTAR CORPORATION,

- Petitioner,

Domrino’s Pizza, Inc.; ATLANTA Pizza, Inc.; Pizza ENTER-

PRISES, Inc.; Pizza Services, Inc.; and Hanna CREATIVE

ENTERPRISES, INC.,

Respondents.

$$$

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Questions Presented For Review

1. What Is The Meaning Of Likelihood Of Con.

fusion—The Test Of Trademark Infringement

Under The Lanham Trademark Act Of 1946, 15

U.S.C. §1114(1)?

2. Does An Action Lie For Trademark Infringe-

ment Under The Theory Of Likelihood of Confusion

As To Sponsorship Or Affiliation, Within The Mean-

ing Of The Lanham Trademark Act Of 1946?

3. Did The Court Of Appeals Err in Holding

That A Widely-Known, Distinctive Trademark For

Food Products Deserving Substantial Protection Is

Not Enforceable In An Action For Trademark In-

fringement Against Use Of A Virtually Identical

Mark For Related But Non-competitive Food Prod-

ucts Under The Theory Of Likelihood Of Confusion

As To Sponsorship Or Affiliation, Within The Mean-

ing Of The Lanham Trademark Act of 1946?

4. Did The Court Of Appeals Err In Holding

That Respondent’s Use Of The Mark Domrno’s In

Selling Food Products To The Public And In Oper-

ating And Franchising Fast-Food Stores Is Not

Likely To Cause Confusion As To Sponsorship Or

Affiliation In View Of Petitioner’s Use Of The

Widely Known, Distinctive Trademark Domino For

Related But Non-competitive Food Products Sold

To The Public And Used In Fast-Focd Restaurants,

Within The Meaning Of The Lanham Trademark

Act Of 1946?

TABLE OF CONTENTS

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Questions Presented For Review ..2...............::.::csceeeeeee-

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Reasons For Granting The Writ ..............0.......cecccesseeees

I. This Court Should Interpret The Meaning Of

BamesinOOd OF Confusion .........2..ccccccscssesesesseseoceees

Il. This Court Should Resolve The Conflicts

Between And Within The Circuits As To The

Meaning Of Likelihood Of Confusion ..............

Ill. This Court’s Protection Of Famous Marks

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I

Appendix

Opinion Of U.S. District Court, Including Findings

Of Fact, Conclusions Of Law And Final Judg-

EES AED TS TET ET

Amendment To Order And Final Judgment ............

Order Amending Final Judgment And Decree ........

Opinion Of U.S. Court Of Appeals -..0..000000000....

Order Denying Petition For Rehearing ....................

Judgment Of Court Of Appeals ...0.2..0....cccceeseeeeeeeeeee

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TABLE OF AUTHORITIES

Cases PAGE

American Sugar Ref. Co, v. Andreassen, 296 F.2d 783

SIE Wr ois” MOURN Scoxocssssditsnuntecpnlsiths Dou cia tac aianamseainbeniaeetooete 10

American Sugar Ref. Co. v. Continental Dist. Corp.,

138 U.S.P.Q. 649 (T.T.A.B. 1963) not otherwise

PIE iiccaissinsicencledsaicl ama daaitarinenintanianmametneees 10

American Sugar Co. v. Texas Farm Prods. Co., 159

U.S.P.Q. 679 (T.T.A.B. 1968) (not otherwise

TIED \isiciccscoshcstvcandhalebstdgcnnteticndiamiiagie sasanaglmancnsioers 10

Beef/Eater Restaurants, Inc. v. James Burrough,

Lid., 398 F.2d 637 (Sth Cir. 1968) .........22.....cccess.scses-s 10

California Fruit Growers Exchange v. Sun-Kist

Baking Co., 166 F.2d 971 (7th Cir. 1947) 2.000000... 11

Fleischmann Dist. Corp. v. Maier Brewing Co., 314

F.2d 149 (9th Cir.), cert denied 374 U.S. 830 (1963) S

James Burrough Ltd. v. Sign of the Beefeater, Inc.,

540 F.2d 266 (7th Cir. 1976); 572 F.2d 574 (7th

REL, PUNE D sacnedaiccncepletaasahcaleguncineataeianio tecamatiabaasantaaitbin 11

National Lead Co. v. Wolfe, 223 F.2d 195 (9th Cir.),

cert, denied 350 U.S. 883 (1955) ................sccceccesssseeoee 13

Pure Foods, Inc. v. Minute Maid Corp., 214 F.2d 792

(5th Cir.), cert. denied 348 U.S. 888 (1954) -.....0.2..... 11

Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d

et | NC Emre D pike am To 14

Turner v. HMH Publishing Co., 380 F.2d 224 (5th

Cir.), cert. denied 389 U.S. 1006 (1967) ou... 12

Union Carbide Co. v. Ever-Ready, Inc., 531 F.2d 366

(7th Cir.), cert. denied 429 U.S. 830 (1976) 0.0.0.2... 11

Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d

Sain. RUMIIED sseliianeisccinicdecnnsshtharnmeaeaivlasatniuaiaata ited estas. 8

rr

lil

Other PAGE

Callmann, Unfair Competition, Trademarks And

Momopotios (Srd Wid, 1967) ncn ccccnccccccccccccsccsccsensoeccsnse 11

Gilson, Trademark Protection and Practice (1974)... 11

Lunsford, Trademark Infringement And Confusion

Of Source—Need For Supreme Court Action, 35

Be Tc Me ID sseccenciccebsacacnvnsbtdincrnnacessecscsan 11

McCarthy, Trademarks and Unfair Competition

RD hast nares intnencsalichtcidasladdieanestnssnelaienscnencesheoccuanas 9

Statutes

OE EF EL ee ae ea NO AE eONO EAR a Oe 7

a Ra IE UE IMIS eeiciicdatshonnscemneacenccsmssninntuccdkacionennans 7

eI INCE D? sioasassninesicandeehtorinncasilertienanad sensoinasiie 2, 3, 7,9

SAREE Rape lorete nrc Sea 15

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IN THE

Supreme Court of the United States

OCTOBER TERM 1980

AMSTAR CORPORATION,

Petitioner,

Vv.

Domino’s Pizza, Inc.; Artanta Pizza, Inc.; Pizza ENnTER-

prises, Inc.; Pizza Services, Inc.; and Hanna CREATIVE

E\NTERPRISES, INC.,

Respondents.

$< a

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Petitioner Amstar Corporation prays that a Writ of

Certiorari issue to review the Judgment of the United

States Court of Appeals for the Fifth Circuit, reversing

the Judgment of the United States District Court for the

Northern District of Georgia, Atlanta Division, enjoining

respondents from continued trademark infringement and

unfair competition.

Petitioner is the owner and prior user of the famous

trademark Domino for many food products. Respondents

are using the mark Domrno’s for related, but non-competi-

tive food products. By refusing to grant injunctive relief

against respondents’ use of the mark, the Court of Appeals

has created a conflict within and among the circuits and

effectively has repealed a major purpose of the Lanham

Trademark Act of 1946, which establishes a claim for relief

for trademark infringement where there is likelihood of

confusion as to sponsorship or affiliation.

Opinions Below

The Opinion of the Court of Appeals is reported at 615

F.2d 252, and is reprinted in the Appendix (A67). ‘ihe

Findings of Fact and Conclusions of Law of the District

Court are reported at 205 U.S.P.Q. 128, and are reprinted

in the Appendix (A1).

Jurisdiction

The Judgment of the Court of Appeals was entered on

April 8, 1980 (A94). <A timely Petition for Rehearing was

denied on May 2, 1980 (A93). Jurisdiction of this Court

is invoked under 28 U.S.C. §1254(1).

Questions Presented For Review

1. What Is The Meaning Of Likelihood Of Con-

fusion—The Test Of Trademark Infringement

Under The Lanham Trademark Act Of 1946, 15

U.S.C. §1114(1)?

2. Does An Action Lie For Trademark Infringe-

ment Under The Theory Of Likelihood of Confusion

As To Sponsorship Or Affiliation, Within The Mean-

ing Of The Lanham Trademark Act Of 1946?

3. Did The Court Of Appeals Err in Holding

That A Widely-nown, Distinctive Trademark For

ood Products Deserving Substantial Protection Is

Not Enforceable In An Action For Trademark In-

fringement Against Use Of A Virtually Identical

Mark For Related But Non-competitive Food Prod-

ucts Under The Theory Of Likelihood Of Confusion

As To Sponsorship Or Affiliation, Within The Mean-

ing Of The Lanham Trademark Act of 1946?

4. Did The Court Of Appeals Err In Holding

That Respondent’s Use Of The Mark Domrno’s In

Selling Food Products To The Public And In Oper-

ating And Franchising Fast-Food Stores Is Not

Likely To Cause Confusion As To Sponsorship Or

Affiliation In View Of Petitioner’s Use Of The

3

Widely Known, Distinctive Trademark Domino For

Related But Non-competitive Food Products Sold

To The Public And Used In Fast-Food Restaurants,

Within The Meaning Of The Lanham Trademark

Act Of 1946?

Statute Involved

Section 32(1) of the Lanham Trademark Act of 1946, 15

U.S.C. §1114(1), states in relevant part as follows:

“Any person who shall, without the consent of the

registrant—

(a) use in commerce any reproduction, counter-

feit, copy, or colorable imitation of a registered

mark in connection with the sale, offering for sale,

distribution, or advertising of any goods or services

on or in connection with which such use is likely to

cause confusion, or to cause mistake, or to deceive

shall be liable in a civil action by the registrant for

the remedies hereinafter provided. .. .”

Statement Of The Case

The Facts

Petitioner Amstar Corporation (Amstar) is the owner of

the famous registered trademark Domino for sugar and

a host of other food products. It and its predecessors have

sold Domino sugar throughout the United States since 1885,

Amstar was a pioneer in the sale of packaged, branded

food products to the consuming public. It was the first to

take sugar out of the barrel and give it the benefit of brand

identity. It was among the first to prove that trademark

promotion can result in extensive sales of packaged foods.

Amstar owns ten federal registrations for its Domino

trademark.

Cumulative sales of Domino sugar products to food stores

and to industrial users have amounted to more than $14.6

4

billion from 1937 through 1978. Substantial sums have been

expended in advertising and promoting these products over

the years. As a result, Domino sugar is the No. 1 selling

branded food product in supermarkets throughout the coun-

try. There is nearly 100% consumer recognition of the

mark.

Beginning in about 1916, Amstar introduced single-por-

tion packages of Domino sugar to food-serving establish-

ments. It was the first to introduce single-service food

packages for restaurant use. These single-service portions

typically have the name of the restaurant on one side and

the Domino trademark on the other. They are used by

restaurants everywhere, including major chains of pizza

parlors such as “Pizza Hut”, “Pizza Inn” and “Shakey’s”,

the three largest chains. Sales of single-service portions

currently are at a rate of about 7.5 billion Domtno packages

per year. They are distributed nation-wide and found in

most restaurants and fast-food stores.

In the early 1960’s, Amstar observed that America’s eat-

ing habits were changing, and that the food-away-from-

home market presented a very attractive opportunity for

expansion. Amstar had an urtusual asset which permitted

easy entry into that market—the enormous goodwill of the

Domino mark to patrons of restaurants and fast-food

stores. Amstar entered that market first with Domrno salt,

pepper, mustard and ketchup, and later with jams and jel-

lies, salad dressings, mayonnaise and relish, honey, taco

sauce, cranberry sauce, tartar sauce, table syrup, coffee

creamer, barbecue sauce, mint jelly, malt vinegar, low-

calorie jellies, low-calorie salad dressings and beverage

mixes for the Spanish-ethnic market. In addition, Amstar

sells DomrnapE beverage mixes in various flavors and ice-

tea mix. The cumulative sales of Domino food products

other than sugar are substantial, and sales currently are at

a rate of about one billion Domino food servings per year.

5

Amstar’s entire line of Domino single-service portions is

the largest line of such products in this country.

Amstar is not content to sell only the Domino products

that it has sold to date. It has commissioned several

studies to determine areas of possible expansion in the

food products and services fields, including acquiring or

opening fast-food restaurants. Many of its competitors

operate such restaurants, and indeed, some of them operate

pizza parlors. For example, Great Western United, which

sells G.W. and GopcHaux sugars, owns the “Shakey’s”

chain; Campbell Soup owns “Pietro’s” pizza parlors; and

Pepsi-Cola owns the “Pizza Hut” chain of restaurants.

Other large food processors sell frozen pizza, for example,

Beatrice Foods, Quaker Oats, Pillsbury and General Mills.

Respondents, principally Domino’s Pizza, Ine. (DPI),

sell Domrno’s pizza and beverages through a chain of com-

pany-owned and franchised food stores. They sell a

limited line of food products to consumers, although there

are no restrictions on their sale of any particular food prod-

ucts. From time to time, some franchisees have sold sand-

wiches, frozen pizza and coffee. DPI also operates two

commissaries which purchase sugar, salt, pepper and other

food products in bulk from various suppliers, repackage

those items and sell them to pizza parlors. One such

product, comprising entirely sugar and salt, is sold under

the name Domrno’s dough packet mix. Although DPI was

a very small company owning or franchising about thirty

pizza parlors at the time this dispute began, in recent years

it has engaged in a substantial expansion effort, and cur-

rently there are more than 300 Domrno’s food stores

located throughout the country.

For at least the past decade, there have been no food

processors in the United States selling Domino food prod-

ucts to the American public other than Amstar and DPI.

The Proceedings Below

After a nine-day bench trial, the District Court made

extensive Findings of Fact and Conclusions of Law, and

entered Judgment in favor of Amstar, The District Court

found as fact that Amstar’s mark Domino is arbitrary and

distinctive as applied to food products (A7); that the

mark has obtained a great degree of fame (A11); and

that the mark has become exceedingly well-known to

patrons of restaurants and food service establishments as

a single source of many food products (A20). As a result,

it found as fact that consumers are highly likely to associ-

ate any food products sold in food stores under the Domino

mark with Amstar’s food products (A12); that the con-

suming public is very likely to believe that Dom1no’s pizza,

even if sold in a separate food store outside supermarkets,

is in some way sponsored by, associated with or connected

with, or emanates from Amstar (A22); and that the pur-

chasing public is likely to mistakenly believe that DPI’s

use of the name Domino’s is connected, associated with or

affiliated with Amstar’s use of Domino (A60). All these

findings were supported by substantial evidence.

Although likelihood of confusion is a fact question in

the Fifth Cireuit, the Court of Appeals disregarded the

District Court’s Findings of Fact, reversed the Judgment

and mandated Judgment in favor of respondents. The

Court of Appeals agreed that Amstar’s mark Domino, at

least as applied to sugars and related products, is a widely

known mark deserving substantial protection. (ASO, 92).

It did not disagree that the Domino mark is distinctive and

well-known, and that its application to sugar is arbitrary.

(ASO, 82). Nevertheless, the Court stated its own factual

opinion that there is no likelihood of confusion and that

the District Court’s result does not reflect the truth and

right of the case. (A77). The Court of Appeals errone-

7

ously concluded that a trademark is a monopoly, and

should not be extended to preclude the sale of non-com-

petitive goods. (A92).

Reasons For Granting The Writ

This Court has never interpreted the meaning of like-

lihood of confusion, the test of trademark infringement

established by the Lanham Trademark Act of 1946, 15

U.S.C. §1114(1). This is a recurring and significant issue

to all trademark owners and users. There is a special

need for this Court’s guidance in cases involving related

although non-competitive goods. The Court of Appeals’

decision conflicts both with those of other panels of the

same Court, and with those of other Courts of Appeals,

which have interpreted the test of likelihood of confusion

under the 1946 Act. The Court of Appeals’ decision

greatly restricts the rights of owners of well-known,

distinctive trademarks and has implications far beyond the

immediate parties.

I,

This Court Should Interpret The Meaning Of Likelihood

Of Confusion.

Modern trademark law began with the Lanham Trade-

mark Act of 1946, 15 U.S.C. §1051 et seq. Prior to that

statute’s enactment, there had been substantial diversity in

interpretation of the old Trademark Act of 1905, 15 U.S.C.

$96 et seq. The diversity was particularly notable in

cases of related but non-competitive goods. The 1905 Act

required for trademark infringement not only that the

respective marks be confusingly similar, but that the

respective goods have “substantially the same descriptive

properties”. In the absence of counterfeiting, it was nearly

8

impossible to make out a case of infringement. Many cases

so held.

Other Courts of Appeals, finding this test too restrictive

if literally applied, followed the lead of the famous case of

Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir.

1928). In that ease, which involved the sale of locks and

flashlights under the same trademark, Judge Learned Hand

said:

“.. [I]t has of recent years been recognized that

a merchant may have a sufficient economic interest

in the use of his mark outside the field of his own

exploitation to justify interposition by a Court. His

mark is his authentic seal; by it he vouches for the

goods which bear it; it carries his name for good or

ill. If another uses it, he borrows the owner’s

reputation, whose quality no longer lies within his

own control. This is an injury, even though the

borrower does not tarnish it, or divert any sales by

its use; for a reputation, like a face, is the symbol

of its possessor and creator, and another can use it

only as a mask.

And so, it has come to be recognized that, unless the

borrower’s use is so foreign to the owner’s as to en-

sure against any identification of the two, it is un-

lawful.” Jd. at 974.

With the Yale Electric decision, the law of trademarks

passed into a new era. Counterfeiting no longer was re-

quireu. Use of the same mark on related but non-competi-

tive goods could be actionable.

When Congress enacted the 1946 Act, it adopted the Yale

Electric test and broadened the scope of protection accorded

to well-known trademarks, especially where confusion as to

affiliation or sponsorship is likely. Fleischmann Distilling

Corp. v. Maier Brewing Co., 314 F.2d 149, 151 (9th Cir.),

cert. denied 374 U.S. 830 (1963) (BLACK & WHITE

Scotch whiskey v. beer). Since 1946, trademark infringe-

9

ment is established if the public is likely to assume, because

of similarity of the marks identifying goods, that (i) the

goods emanate from the same source, (ii) the sources of the

goods are affiliated in some way, or (iii) one source of the

goods sponsors the other. 15 U.S.C. § 1114(1).

This Court, however, has never confirmed this interpreta-

tion of likelihood of confusion under the 1946 Act. Since

1946, this Court has not decided whether trademark in-

fringement may be shown in any situation involving spon-

sorship or affiliation of related but non-competitive goods.

As a result, the Courts of Appeals have been free to make

their own interpretations. At least forty cases have been

decided in the Courts of Appeals since 1946 on the issue of

whetiier likelihood of confusion exists where the same mark

is used in the sale of non-competitive goods. In addition,

there have been many conflicting decisions by the Court of

Customs and Patent Appeals on this issue. It is essential

that this Court clarify for trademark owners and users

whether the 1946 Act provides that trademark infringement

may be established upon a showing of likelihood of confu-

sion as to affiliation or sponsorship. Without that guidance,

the courts will continue to exhibit what has been referred to

as “judicial schizophrenia.” 2 McCarthy, Trademarks and

Unfair Competition, § 24.9 (1973).

This Court Should Resolve The Conflicts Between And

Within The Circuits As To The Meaning Of Likelihood Of

Confusion.

The Court of Appeals’ decision conflicts both with the

trademark law as generally interpreted by other Courts of

Appeals and with that expressed by other panels of the

Fifth Circuit. Importantly, the decision conflicts with other

decisions in that it holds the respective goods here (sugar,

10

beverage mixes and other food products v. pizza and bev-

erages) are so dissimilar as to produce no likelihood of

confusion. The Court of Appeals disagreed with the Dis-

trict Court’s factual findings of the relationship of the

goods (A381) and held that about the only thing that the

goods have in common is that they are edible. (AS84).

Under the 1946 Act, similarity of the respective marks

and goods are the two essential elements in a trademark

infringement action. As the marks here are virtually iden-

tical (Domino v. Domino’s), error by the Court in find-

ing dissimilarity of the goods was critical in its finding of

no likelihood of confusion as to affiliation or sponsorship.

The Court’s finding of dissimilarity of these related goods

sold under the Domino mark conflicts with decisions in

other courts. In American Sugar Ref. Co. vy. Andreassen,

296 F.2d 783 (C.C.P.A. 1961), Domino for pet foods was

found likely to cause confusion with Domrno for sugar. See

also American Sugar Co. v. Texas Farm Products Co., 159

U.S.P.Q. 679 (T.T.A.B. 1968) (not otherwise reported),

holding Domrno for fertilizer and livestock feed confusingly

similar to Domino for sugar, and American Sugar Ref Co.

v. Continental Distilling Corp., 138 U.S.P.Q. 649 (T.T.A.B.

1963) (not otherwise reported), holding Domrno for gin

confusingly similar to Domino for sugar. Tf Amstar’s

Domrno mark is entitled to protection against those non-

competitive goods, surely it must be enforceable against

DPI’s use of Domrno’s in the sale of related food products

for human consumption.

There is indirect conflict with other panels of the Fifth

Cireuit as to whether likelihood of confusion may exist

when the goods are related but non-competitive, particu-

larly with respect to foods. In Beef/Eater Restaurants, Inc.

v. James Burrough Ltd., 398 F.2d 637 (5th Cir. 1968), Beer/

Eater for restaurants which did not serve alcoholic bever-

ages was found confusingly similar to the well-known trade-

1

mark Beereater for gin, on the ground that both are

consumable. Jd. at 639. This very ground of similarity here

was found insufficient by the Court of Appeals. See also

Pure Foods, Inc. v. Minute Maid Corp., 214 F.2d 792 (5th

Cir.), cert. denied 348 U.S. 888 (1954), where Minute Map

frozen fruit juice concentrates and Minute Mape frozen

meats were found confusingly similar.

Indeed, the only case cited by the Court of Appeals in

support of its finding of dissimilarity of the respective

goods here was California Fruit Growers Exchange v. Sum-

Kist Baking Co., 166 F.2d 971, 973 (7th Cir. 1947), where

Sun-Kisr for bread was held not to infringe Sun-Kasr for

fruits and vegetables. The Sun-Kist case is an abberation,

which has been criticized repeatedly by commentators for

its overly restrictive approach. See 1 Gilson, Trademark

Protection & Practice, p. 5-36 (1974); 3 Callmann, Unfair

Competition, Trademarks and Monopolies, p. 970 (3rd Ed.

1967); Lunsford, Trademark Infringement and Confusion

of Source—Need for Supreme Court Action, 35 VA. L.

REV. 214, 225 (1949). Sun-Kist no longer reflects the state

of the law even in the Seventh Cireuit from which it ema-

nated. See James Burrough Ltd. v. Sign of the Beefeater,

Inc., 540 F.2d 266 (7th Cir. 1976); 572 F.2d 574 (7th Cir.

1978) (Brereater gin v. restaurant) ; Union Carbide Co. v.

Ever-Ready, Inc., 531 F.2d 366 (7th Cir.), cert. denied 429

U.S. 830 (1976) (Ever-Reapy batteries v. light bulbs).

The respective goods here are foods sold for human

consumption, which are for the most part non-competitive

(Amstar sells sugar, salt and beverage mixes and DPI

sells sugar/salt packet mixes and beverages). The test

which should have been applied is whether the public is

likely to believe either that the related goods have a

common source, or that the sources are affiliated in some

manner, or that one source sponsors the other, as for

example, by franchise or license, because of the virtually

12

identical marks they bear. By failing to apply the proper

test, and by applying an overly restrictive and outmoded

test, the Court of Appeals created conflict both with deci-

sions within the Fifth Cireuit and with decisions of other

Courts of Appeals, including the C.C.P.A. and the Seventh

Circuit.

The Court of Appeals’ decision further creates a conflict

both within the Fifth Cireuit and with other circuits

regarding the extent to which Amstar’s well-known Domino

mark is entitled to protection against use on non-competi-

tive goods. The Court found that Domino should be

afforded only limited protection apart from sugar and

related food products (assuming that pizza and beverages

are not related). (A81). The rationale was that several

third parties had used and registered Domino. The Dis-

trict Court had held the third-party registrations to have no

bearing on Amstar’s rights and had given little weight to

the third-party uses. All the third-party uses were long-

abandoned or “ancient”; remote as to goods or geography;

small, obscure and localized; or used only in shipments to

the trade. The Court of Appeals did not believe that third-

party uses and registrations could be so readily dismissed.

(A79).

The Fifth Cireuit’s prior understanding of the effect of

third-party registrations (not uses) had been that such

registrations cannot negate likelihood of confusion. In

Turner v. HMH Publishing Co., 380 F.2d 224, 228 (5th

Cir.), cert. denied 389 U.S. 1006 (1967), where PLaysoy for

magazines and Atlanta’s PLaysoy Club for nightclubs were

held confusingly similar, the Court held:

“We will not assume any knowledge on the part of

the purchasing public by mere registrations in the

Patent Office, nor will we assume that the marks

are in continuing use, so as to have any effect on

the mind of the purchasing public merely because

they have been so registered.”

13

Even if third-party registrations are relevant to the

scope of protection to be afforded the Domrno mark, only

one of the third-party registrations cited here has issued

since the 1946 Act for a food product and that one reflects

use in foreign commerce. Amstar is seeking to uphold its

rights in the Domino trademark in the sale of food to the

American public. Its’ right to the symbol of its reputa-

tion in this field should not be limited by registrations

which are long expired, outside this field and not known

to the American public,

The Court of Appeals was more interested in the number

of third-party uses than in their effect upon the public’s

perceptions. Third-party uses are probative only to the

extent that they are presently known to a large number of

consumers who have been exposed to them over a substan-

tial period of time. Under those circumstances, it may be

said that the distinctiveness of the mark is adversely

affected, or that the public has become educated to distin-

guish related products bearing similar marks by exposure

to many uses, thereby precluding any likelihood of confusion.

Even DPI admitted in its appeal brief that the “third-party

usage of Domino is less than pervasive and of questionable

renown”. Amstar’s rights in the Domrno mark established

over generations should not be limited because others have

sold Domino cigarettes and matches, or because still others

operate a single restaurant or donut shop under the name

Domino, or because another has sold flour mix to the bhak-

ery trade. This is especially true where all such uses have

been miniscule. To do so is to ignore the marketplace real-

ity that only Amstar and DPI make and sell Domino food

products to any significant segment of the public.

Other cireuits have given little weight to evidence of

third-party uses for the very reasons stated by the District

Court. See National Lead Co. v. Wolfe, 223 F.2d 195, 204

(9th Cir.), cert. denied 350 U.S. 883 (1955) (protecting the

14

mark Dutcn Boy for paint desvite 39 third-party uses for

the reasons relied upon by the District Court here) ; Tisch

Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 614 (7th

Cir. 1965) (protecting the mark Americana for hotels

despite many other uses).

As the Court of Appeals decision conflicts with the deci-

sions of other circuits, including the Seventh and Ninth

Cireuits, and with other panels of the Fifth Cireuit protect-

ing well-known trademarks against uses on related but non-

competitive goods, a decision by this Court is needed to

resolve the conflicts.

Il.

This Court’s Protection Of Famous Marks Is Essential.

There is no question that Amstar’s Domino mark is fa-

mous. The Court of Appeals agreed with the District Court

that the mark is “widely known” and that there is “wide

public recognition of the mark”. (A72, 92).

Amstar has built up a substantial food business under the

Domino trademark and is entitled to the exclusive use of

the mark for foods, ineluding the exclusive right to fran-

chise and license use of its mark to others. Although the

decision confirms the strength of the Domino mark for the

foods which Amstar has sold, Amstar may be precluded

from expanding its food line under its Domtno mark, an

avtion necessitated by expansion undertaken by many of its

large competitors.

On the other hand, DPI and its franchisees will not be

forced out of business if they cannot use the Domrno’s

name. They may continue operations under their alterna-

tive name Pizza Disparcu, adopted after the District

Court’s injunction and used successfully in connection with

at least some of their stores. In the absence of any food

processors selling Domino food products to American

15

consumers other than Amstar and DPI and its franchisees,

and in view of Amstar’s clear prior rights to the mark,

anu injunction should have issued prohibiting DPI’s con-

tinued use. (Amstar sought no damages for past infringe-

ment). 15 U.S.C. § 1116.

If this decision is permitted to stand, the rights of other

trademark owners similarly will be restricted. For

example, the Coca-Cola Company may be precluded from

enforcing its well-known mark against Coca-CoLa pizza, or

Kraft l’oods may be precluded from enforcing its house

mark against Krart pizza, because those companies do not

sell pizza under those marks. Obviously, this decision has

implications beyond the parties to this suit.

Of course, consumers do not believe they are buying

sugar, or cola, or cheese, when they purchase a pizza. But,

they may well believe that they are buying a food product

sponsored by the same high-quality souree from which

their family has for generations purchased other foods, or

from a franchisee or subsidiary of it. They recognize the

famous mark and purchase the product without pondering

over their decision. If famous trademarks are not to be

protected against use on velated but non-competitive goods,

trademarks surely wil! become meaningless.

Trademarks are symbols of the reputations of their

owners, and assist the public in distinguishing products of

different origin. Trademarks stimulate competition; they

are not monopolies. For the Court of Appeals to so

narrowly restrict a famous trademark is to debilitate these

functions to the detriment of both the owner and the

public. Important property rights and publie confusion

cannot be so easily disregarded. The decision below has

placed a damper not only upon Amstar’s Domino trade-

mark, but upon all other famous, well-known marks. This

Court’s review and intervention are mandatory.

16

CONCLUSION

Upon the facts and authorities set forth above, Amstar

respectfully submits that a Writ of Certiorari issue to

review the Judgment of the Court of Appeals for the

Fifth Circuit.

Respectfully submitted,

Geratp W. GRIFFIN

Norman H. Zivon

Cooper, Dunham, Clark, Griffin & Moran

30 Rockefeller Plaza

New York, New York 10112

Tel. (212) 977-9550

Jutius R. Lunsrorp, Jr.

Hurt, Richardson, Garner, Todd & Cadenhead

1100 Peachtree Center Harris Tower

233 Peachtree Street, N.E.

Atlanta, Ga. 30303

Tel. (404) 525-1100

Attorneys for Petitioner

July 31, 1980

APPENDIX

Opinion

UNITED STATES DISTRICT COURT

N.D. Georota, ATLANTA Drv.

AmstTAR CorPORATION

v.

Domino’s Pizza, Inc. et al.

No. 75-1895A

Decided Sept. 11, 1979

Freeman, District Judge.

This case, tried to the court without a jury on January

15, 16, 17, 18, 19, 22, 23, 24 and 29, 1979, arises out of claims

for trademark infringement, unfair competition, false

designation of origin and false description or representa-

tion, violation of the Georgia Anti-Dilution Statute and

violation of the Georgia Uniform Deceptive Trade Prac-

tices Act. Plaintiff has expressly abandoned its claim for

damages and attorneys’ fees without prejudice, and seeks

injunctive relief only. Defendants have denied plaintiff’s

claims and have counterclaimed against plaintiff to have its

Domino registration for salt cancelled because of alleged

fraud in obtaining it and for a declaration that all of plain-

tiff’s Domino registrations are unenforceable and not incon-

testable as a result of alleged misuse and abuse of same

in bringing this action. Defendants have expressly aban-

doned their claim for damages without prejudice, but insist

upon their claim for attorneys’ fees.

The court has carefully considered and reviewed all of

the pre-trial orders, briefs and memoranda, as well as post-

trial submissions consisting of briefs, memoranda, and

revised proposed special findings of fact and conclusions

of law. In considering the evidence and applicable law,

A2

Opinion

the court has reviewed its trial notes and the aforesaid

submissions filed by the parties, and has read virtually

every case cited and relied upon by the parties in support

of their respective positions. It has also reviewed the

numerous documents admitted into evidence and_ the

transcript of the testimony taken during the trial. Having

reviewed this mass of materials, it is now prepared to

enter findings of fact and conclusions of law, and to order

judgment thereon. In doing so, however, the court feels

compelled to point out that it has separately and_ indi-

vidually considered and adopted as its own, in most

instances verbatim, the proposed findings of fact and con-

clusions of law submitted by the prevailing party because

the court believed them to be factually and legally correct.

The court could have re-written, but such would have

amounted to no more than a paraphrasing of the fact find-

ings and conclusions submitted. Such an act of pretense

would serve absolutely no purpose. Accordingly, the court

hereby makes the following special findings of faet and

conclusions of law, and orders judgment consistent there-

with.

A3

Findings of Fact

A, The parties and jurisdictional basis.

1,

Plaintiff Amstar Corporation (hereinafter “Amstar”) is

a corporation organized and existing under the laws of the

State of Delaware, having its principal place of business

in the City of New York, New York. It is a large producer

and distributor of sugar and sugar related products, as

well as other food products, including sugar, manufactured

and distributed in portion control packets. Most, if not

all, of plaintiff's produets are marketed and sold under

the trademark Domrno,

9)

Defendant Domino’s Pizza, Inc. (hereinafter “DPI”) is

a corporation organized and existing under the laws of

the State of Michigan, having its principal place of busi-

ness in the City of Ann Arbor, Michigan, and being author-

ized and licensed to do business in the State of Georgia.

[t franchises or owns a chain of pizza stores known as

Domino’s or Domino’s Pizza in approximately 24 states

and, in addition, operates several commissaries across the

country which serve the pizza stores.

3.

Defendant Atlanta Pizza, Inc. at the time this action

was commenced was a corporation organized and existing

under the laws of the State of Georgia, having its principal

place of business in Atlanta, Georgia and doing business

in this district and division under the names Domrno’s and

A4

Findings of Fact

Domino's Pizza. In August, 1976, the pizza restaurant

doing business for this corporate entity changed its name

to “The Original Pizzaman”. It was the predecessor in

interest to defendant Pizza Services, Inc.

4.

Defendant Pizza Enterprises, Inc. at the time this action

Was commenced was a corporation organized and existing

under the laws of the State of Florida, with its principal

place of business situated in Gainesville, Florida, but quali-

fied to do business in the State of Georgia and doing busi-

ness in this district and division. It was an area distribu-

tor of defendant DPI and franchised defendant Atlanta

Pizza, Ine., to operate a pizza store in Atlanta, Georgia.

D.

Defendant Pizza Services, Inc, at the time this action was

commenced was a corporation organized and existing under

the laws of the State of Florida, with its principal place of

business in Gainesville, florida, and qualified to do business

in the State of Florida and the State of Georgia and doing

business in this district and division. It was the suecessor

in interest to defendant Atlanta Pizza, Ine. In March of

L976, it changed its corporate name to K2, Ine, a.k.a. Kilby

KXompanies, Ine,

6,

Apparently, defendants Atlanta Pizza, Inc., Pizza Enter-

prises, Ine, and Pizza Services, Ine, are now defunct corpo-

rations.

A5

Findings of Fact

7.

Defendant Hanna Creative Enterprises, Ine, at the time

this action was commenced was a corporation organized

and existing under the laws of the State of Georgia having

its principal place of business in Atlanta, Georgia. Prior

to September 1978 it was doing business in Atlanta,

Georgia and in this district and division under the name

“The Original Pizzaman”. At that time it changed the name

of that pizza restaurant back to Domino’s and Domtno’s

Pizza, It is a franchisee of defendant DPI and operates

two pizza stores in Atlanta, Georgia.

8.

The court has jurisdiction over the parties and the sub-

ject matter of this action because of the diversity of citizen-

ship between plaintiff and defendants and because this

action arises and is brought under the trademark laws of

the United States and the Trademark act of July 5, 1946,

15 U.S.C. § § 1051, et seq. pursuant to 28 U.S.C. § § 1331(a),

1332(a) and 1338(a). Venue properly lies in this district

and division under 28 U.S.C. § § 1391(b) and 1391(¢). The

amount in controversy exceeds the sum or value of $10,000.00

exclusive of interest or costs.

9.

Plaintiff has alleged five causes of action in its complaint,

to wit: trademark infringement, unfair competition, false

designation of origin and false description or representa-

tion, violation of the Georgia Anti-Dilution Statute and vio-

lation of the Georgia Uniform Deception Trade Practices

A6

Findings of Fact

Act. Plaintiff claims that long after its first use of its

widely celebrated trademark Domino in association with the

sale of food products, defendants began using and continue

to use the names Domrino’s and Domrno’s Pizza relative to

their business of operating, franchising and supplying pizza

restaurants. Plaintiff contends that the sale of pizza and

beverages under the names Domino’s and Domino’s Pizza is

likely to cause confusion, mistake or deception and dilutes

the distinctiveness of plaintiff's mark. Defendants have

denied all of plaintiff’s claims and have counterclaimed ask-

ing that plaintiff’s Domino registration for salt be cancelled

as a result of plaintiff’s alleged fraud in securing that regis-

tration and for a declaration that all of plaintiff’s Domro

trademark registrations are unenforceable and not incon-

testable as a result of alleged misuse and abuse of same in

bringing this action.

B. DOMINO is a famous and celebrated trademark

for sugar.

10.

For almost a century plaintiff and its predecessors in

interest have continuously engaged in the importation aud

purchase of raw sugar and the refining and selling of sugar

and sugar related products under and in association with

the trademark Domino. Plaintiff adopted the trademark

Domino prior to 1900 and has used and still is using the same

in connection with the sale of numerous items of sugar and

sugar related products in individual packages and in bulk,

which are distributed in interstate commerce in Georgia

and throughout the United States. The plaintiff’s prede-

AT

Findings of Fact

cessor was the first to use the Domino trademark for any

food product.

11.

Plaintiff’s trademark Domrno is arbitrary and distinctive

as applied to food products, The mark Domino has no obvi-

ous suggestive or descriptive significance in and of itself

with respect to...” plaintiff’s food products. See American

Sugar Refining Co. v. Continental Distilling Corp., 138

USPQ 649, 650 (T.T.A.B. 1963).

12.

Plaintiff is the owner of the following subsisting trade-

mark registrations issued by the U.S. Patent and Trade-

mark Office for the Domrno mark in various forms in asso-

ciation with sugar and sugar related products

Registration

Trademark Reg. No. Date Goods

Domino design 37,082 9/17/01 Hard

(renewed 1931, sugar

1951, 1971)

Domino 37,177 10/8/01 Hard

(renewed 1931, sugar

1951, 1971)

Domino 73,099 3/16/09 Hard

(renewed 1929, sugar

1949, 1969)

13.

Plaintiff sells Domino sugar to food stores, including

grocery stores, supermarkets, restaurants, fast food out-

lets and institutional users, and to industrial users, through

its Grocery, Food Service and Industrial sales units.

A8

Findings of Fact

14.

Plaintiff’s grocery line of sugar and sugar related pro-

duets is sold in packaging wherein the Domino mark is the

most conspicuous feature. On the packaging, the trade-

mark Domino almost always is presented on a bias with

respect to the horizontal.

15.

Plaintiff’s grocery product line is distributed to the con-

suming public at retail throughout much of the United

States under the Domino mark in grocery stores, super-

markets and convenience food stores. These Domino pro-

ducts include: granulated sugar, confectioner’s sugar, light

brown sugar, liquid brown sugar, dark brown sugar, golden

light brown sugar, hostess tablets, deluxe superfine sugar,

crystal tablets, dots, sugar ’n cinnamon and handi-paks.

16.

Plaintiff’s sales of Domino sugar products have exceeded

$300,000,000 in every year since 1953. Cumulative sales of

DomINo sugar products to the food store trade and to indus-

trial users for the years 1937 through 1978 amount to more

than $14,600,000,000.

17.

Plaintiff has extensively advertised its DoMINo sugar pro-

ducts in virtually every available medium, including nation-

ally circulated magazines, newspapers, trade journals,

radio, television, store displays, posters and outdoor dis-

plays.

AQ

Findings of Fact

18.

Domino sugar is the single largest selling item in groceries

and supermarkets throughout the country, both in unit

volume and in dollar volume.

19.

Plaintiff has spent about $54,000,000 since 1947 in adver-

tising and promoting its sugar products under the Domrno

trademark.

20.

Plaintiff was one of the first consumer product companies

to extensively promote its trademark. Advertisements for

Domino sugar products have appeared in such nationally

circulated popular magazines as Better Homes & Gardens,

Good Housekeeping, Woman’s Day, Redbook, American

Home, Ladies Home Journal, Family Circle, Reader’s

Digest, MeCall’s, Life and Look and in local newspapers.

21.

Domino sugar products have been promoted in institu-

tional and industrial trade journals such as Modern Grocer,

Hospitality, Chain Store Age, Fast Foods, Food Service

Magazine and Volume Feeding Management.

22.

In addition, plaintiff’s Domino sugar is advertised exten-

sively by supermarkets and grocery stores in newspapers,

flyers, store displays and posters. By way of example, Big

Apple, Feod Giant and Winn-Dixie stores in Atlanta have

A10

Findings of Fact

advertised Domino sugar in The Atlanta Journal and The

Atlanta Constitution. Domrno sugar is featured in the

advertisements and is used to attract traffic into stores.

23.

Domino sugar products have been promoted extensively

in national and local radio and television spots. Plaintiff’s

Domino sugar products have been sponsors of such televi-

sion programs as the “Tonight Show”, the “Today Show”

and “Dick Cavett Show.” Domrno is the only sugar on net-

work television every week.

24.

Because of the fame and quality reputation of the

Domino mark, plaintiff’s DomMryo sugar cartons and bags

have been used to advertise and promote other products.

The Domino name serves to attract attention to such other

products as Nabisco breakfast cereal, HersHry’s cocoa and

Ricw’s non-dairy creamer.

25.

Plaintiff extensively promotes its Domino grocery sugar

products to the trade. Brokers and distributors selling

Domino sugar produets to retail grocers have been supplied

with and make use of Domino promotional catalogs, promo-

tional fact sheets, product fact sheets, grocery product data

books and promotional mailers,

26.

Plaintiff promotes its Domino grocery sugar product

line to the consuming publie by supplying retail grocers

All

Findings of Fact

and supermarkets with in-store promotional materials fea-

turing Domino sugar and with special promotional

materials which advertise Domino sugar products in con-

nection with a partieular theme.

rf

Plaintiff also sells nationally all grades and styles of

industrial sugar and sugar related products under the

mark Domino. Domino industrial sugars are distributed to

food processors and manufacturers and to beverage

bottlers such as The Coca-Cola Company. Domino indus-

trial sugar is sold in 50 and 100 pound hags which promi-

nently display the Domino mark.

28.

The Domino trademark also is featured prominently on

‘ailroad tank cars and trucks used in the distribution of

plaintiff’s industrial sugar sold in bulk. Large signs at

plaintiff's refineries in Boston, Brooklyn, Philadelphia,

Baltimore and New Orleans are visible at great distances

and promote the Domino mark to both the trade and

consuming publie,

9G

Asa result of the long and widespread use of the fanciful

Domino mark in association with sugar products for nearly

one hundred years, the expenditure of millions of dollars

in advertising and promotion of the Domino mark through

every available medium, and the sale of billions of dollars

of Domino sugar, plaintiff's Domrno trademark has

obtained a great degree of fame and has long been accepted

A112

Findings of Fact

by consumers and the trade as a symbol of the source of

quality sugar and sugar related products. Plaintiff’s

Domino sugar and sugar related products have achieved a

well-deserved reputation for consistent high quality, to

which has attached enormously valuable good will. It is

not disputed that plaintiff is the owner of the trademark

Domino for its wide range of sugar products and that

Domino is a famous and celebrated trademark for sugar.

30.

Consumer studies conducted for plaintiff by independent

market research companies have shown that close to 100%

of the public recognizes the Domino mark as the source of

plaintiff’s sugar products. Studies also indicate that

Domino sugar users place considerably more importance

on the reputation of that brand name than purchasers of

other brands. These consumer studies have been under-

taken over a long period of time as part of plaintiff’s

regular course of business in monitoring consumer recog-

nition of its Domino mark and consumer perception of the

quality of plaintiff’s products.

3l.

Defendants have admitted that Domino is a famous mark

for sugar. Consumers are highly likely to associate any

food products sold or available for sale in supermarkets,

groceries or other food stores under the Domino mark with

the Domino food products sold by plaintiff,

C. DOMINO is widely known for many food products.

A138

Findings of Fact

32.

Since about 1916, plaintiff has sold continuously Domino

sugar products in packets and in wrapped tablets to eat-

away-from-home establishments. The establishments dis-

tribute the tablets and the packets to customers purchasing

food. The public has become accustomed to seeing the

Domino mark prominently featured on the packets and

wrapped tablets in every type of away-from-home eating

establishment, including restaurants, fast-food chains,

pizza parlors and chains, institutional cafeterias, plant

cafeterias, drive-in restaurants, hospitals, hotels, dining

clubs, take-out food stores and airlines.

30.

Many of these eat-away-from-home establishments use

“erested” Domino sugar packets and wrapped tablets. The

“crested” Domino sugar packets and tablets have the name

and logo of the restaurant or fast-food establishment

printed on one side and the mark Domino prominently dis-

played on the other. Domrno sugar is one of the very few

branded products which regularly appears on the table in

many quality restaurants throughout the country.

34.

Many Italian restaurants, pizza parlors and pizza chains

use “crested” Domino packets and tablets, and their patrons

recognize the Domino mark as an indication of the source

of plaintiff’s food products. Some of the major chains of

pizza restaurants which use “crested” Domino packets

and/or wrapped tablets are “Pizza Hut”, “Pizza Inns”,

“Shakey’s Pizza Parlors”, “Pizza Planet” and “Gino’s

Pizzerias.”

A 14

Findings of Fact

35.

The commercial acceptance and quality image of the

Domino mark has been recognized by numerous companies

which have contracted for their products and services to be

advertised on the side panels of Domino sugar packets. In

addition to advertising on Domino sugar bags and cartons,

some of the products and services which are advertised on

Domino sugar packets include 7-UP beverages, V-8 vege-

table juice, A&P supermarkets, YORK candies, the New

York Telephone Company and Ringling Brothers- Barnum

& Bailey Cireus.

36.

In about 1960, plaintiff commenced selling and continues

to sell Domino sugar packets in transparent cellophane

envelopes together with a napkin and beverage stir stick.

These packages, known as “Drinkits”, prominently display

the Domino mark, which is visible on the sugar packet

through the transparent envelope. The packets were and

are extensively distributed by fast food and take-out estab-

lishments to customers purchasing beverages.

37.

In the early 1960’s, plaintiff expanded its food service line

and introduced Domino sugar substitute in packet form.

This Domino product is extensively sold by plaintiff to food

service establishments for distribution to their customers.

38,

Plaintiff’s sugar packets, wrapped tablets and sugar sub-

stitute packets are distributed nationwide under the Domino

A115

Findings of Fact

trademark and can be found in a great number of restau-

rants and food-away-from-home establishments in the

United States.

39.

Cumulative sales of Domino sugar and sugar substitute

products to food service establishments have exceeded

$450,000,000 since 1968. Current sales are running at a

rate of about 7.5 billion packets per year.

40.

Tn about 1960, plaintiff began planning for the expansion

of its food product line to other products which could be

sold to the food-away-from-home market. The Food Ser-

vice Division was formed to supply the growing needs of

that vast potential market which long had been familiar

with Domino sugar packets and wrapped tablets.

41.

Commencing in about August 1963, plaintiff used the

Domino mark in connection with the sale and distribution

of paper placemats and napkins to restaurants and food

service establishments. Plaintiff discontinued the sale of

Domino placemats and napkins in the early 1970's.

42.

Tn late 1964, plaintiff commenced selling and continues to

sell Domino “Sugar ’N Lemon” flavored sugar in packets

nationwide to food service establishments for distribution

to their customers purchasing hot or chilled beverages.

A116

Findings of Fact

43,

On March 4, 1964, plaintiff made the decision to use the

Domino mark on a new line of portion control food products

sold to the food service industry. These are individually

packaged, small quantities of food especially designed for

food service use. The line initiaily comprised salt, pepper,

mustard and ketchup.

44,

Commencing shortly after March 4, 1964 and continuing

until March 23, 1965, plaintiff designed, ordered and

installed the necessary machinery for full scale processing

and packaging of salt and pepper and contracted with sup-

pliers for the packaging of mustard and ketchup. During

that period, plaintiff undertook a development program to

create products especially suitable for the food service

trade. Plaintiff also created advertising and promotional

materials and packaging designs. Plaintiff made initial

contacts with commercial customers and organized its food

service sales program. Domrno salt and pepper were ready

for shipment in January 1965, as a prelude to full-scale

sales to customers a few months later.

45,

The first sale of Domrno salt was on June 4, 1964 to Caro-

linda Fine Foods, Greenwich, Conn. The second and third

sales of Domino salt were on June 25, 1964 to G.M.C. Paper

Supply, Boston, Mass. and to Empire Appetizing Co., Mt.

Vernon, N.Y., respectively. Each of these sales was made

for monetary consideration to a bona fide commercial cus-

tomer for food service products.

Al7

Findings of Fact

46.

On March 23, 1965, plaintiff commenced deliveries of

Domino salt, pepper, mustard and ketchup in commercial

quantities.

47.

Thereafter, plaintiff extended use of the Domino mark to

jam, jellies, salad dressings, mayonnaise, relish, taco sauce,

honey, tartar sauce, table syrup and cranberry sauce. Each

of these products is sold to the food service trade for distri-

bution to the consuming public.

48.

Plaintiff recently has added to its food service product

line by introducing Dominape beverage mixes in various

flavors, Domrnapr iced tea mix and Domino coffee creamer.

Plaintiff is in the process of introducing Domino “Delicioso”

beverage mixes to be sold in food stores, and Domrno bar-

becue sauce, mint jelly, malt vinegar, low-calorie jellies and

low-calorie salad dressings in portion control packets. These

food products also are sold to the food service trade for dis-

tribution to the consuming public.

49.

On February 19, 1965, plaintiff filed an application to

register the mark Domino for salt in the U.S, Patent and

Trademark Office. The application alleged a date of first

use on June 4, 1964. That allegation was proper and the

date is supported by the evidence.

A18

Findings of Fact

50.

Plaintiff is the owner of seven subsisting trademark reg-

istrations issued by the U.S. Patent and Trademark Otlice

for the Domino mark in association with food products

other than sugar, These registrations are:

Reg. Issue

No Date Goods

812,656 8/9/66 Mustard packaged in individual

servings

812,657 8/9/66 Ketchup packaged in individual

servings

813,101 8/16/66 Salt

813,113 8/16/66 Pepper packaged in individual

servings

920,834 9/21/71 Jams and Jellies

927,856 1/25/72 Salad dressing, mayonnaise and

cucumber relish

1,108,831 12/12/78 Non-dairy powdered cream sub-

stitute

ol.

Plaintiff has advertised and promoted Domino food ser-

vice products in portion control packets ut least since 1964,

These products have been advertised to the public on net-

work television and in major newspapers, In trade mag-

azines, a “Domino man” theme was used for the introduction

of these products from about 1965 to about 1968. The

“Domino man” was the person who could supply all the

needs of the restaurant and food service industry for por-

tion control food products. Plaintiff has promoted Domino

food service products through direct mail to the trade, pre-

sentations to food brokers and distributors and printed

Al19

Findings of Fact

materials provided to food brokers and distributors selling

Domino food products. As a result of this advertising and

promotional effort, plaintiff has become known as the source

of a complete range of food products distributed to and in

food-away-from-home establishments, and is the largest

distributor of portion control products in the United States.

52.

The complete line of Domino food products is sold

throughout the United States to all types of food-away-

from-home establishments for distribution to their patrons.

Domino portion control products are seen in such restau-

rants as “Big Boy’s” and “Lyon’s”; such pizza parlors and

pizza chains as “Pizza Inns”, “Pizza Hut”, and “Shakey’s

Pizza Parlors”; institutional cafeterias such as the Los

Angeles Zoo; amusement parks such as Busch Gardens;

hospitals such as St. Luke’s Hospital and New York Uni-

versity Medical Center; department store eating facilities

such as “Woolworth Harvest House” and “Korvettes Cof-

fee Shops”; and take-out food stores such as “Pup ’n Taco.”

53.

While sales of Domino food products other than sugar

are less than that for sugar, the cumulative sales of Domino

portion control food products exceed $40,000,000 since 1971.

They currently are running at the rate of about $14,000,000

per year, or 1.8 billion packets annually.

54.

As a result of the widespread use of the Domrno mark on

food products which are distributed wherever food is sold

A 20

Findings of Fact

away-from-home, the mark DomMrno has become exceedingly

well-known to patrons of restaurants and food service es-

tablishments as a single source of many food products.

There is hardly an adult living in the United States today

who has not encountered plaintiff’s Domino trademark on

restaurant tables and counters.

5d.

Defendants admit that plaintiff is the owner of the trade-

mark Domino for sugar and for use in connection with sev-

eral condiments.

D. Plaintiff's future expansion under the DOMINO

trademark.

56.

Plaintiff changed its corporate name in 1970 from Ameri-

ean Sugar.Company to Amstar Corporation. Under the

Domisehagneyy” plaintiff's operations have expanded well

beyond its beginnings in sugar refining.

57.

Plaintiff has had since at least 1960 a policy of deliberate

expansion into new products and market areas. Plaintiff

continuously has created and marketed new food products.

Studies have also been conducted by plaintiff into the pos-

sibility of entering the complete meal market and into the

possibility of acquiring or opening a fast-food restaurant

chain to serve the expanding needs of the food-away-from-

home market. Plaintiff continues to have serious interest in

making acquisitions in the food distribution area.

A 21

Findings of Fact

58.

The consuming public recognizes that as a result of diver-

sification and consolidation, food processing and distribut-

ing companies engage in the manufacture and sale of many

food products. Large food companies manufacture and dis-

tribute pizza, particularly frozen pizza, and dry, packaged

pizza mixes, sold in grocery stores and supermarkets. By

way of example, Pillsbury manufactures pizza under the

Totino’s mark; Beatrice Foods under the LaMBrecut mark;

Quaker Oats under the CeLeste mark; Fairmont Foods un-

der the Arriveperci, CoLompo and Gino’s marks; General

Mills under the SaLuto mark; and International Multifoods

under the Gusto mark (in Canada),

oo.

The public also realizes that major food companies pro-

vide restaurant services in addition to the processing and

sale of food products. Ifor example, Consolidated Foods

operates Lyon’s restaurants and sells Union sugar; Gen-

eral l‘oods operates Burcrer Cuer fast-food restaurants

and sells Koo.-Aip drink mixes; Heublein operates Ken-

TuCKY Frirp Cuicken fast-food restaurants and _ sells

ITALIAN Swiss CoLtony wine; Pet operates Sruckry’s road-

side stores and sells Per dairy products; Pillsbury operates

Burcer Kina fast-food restaurants and sells Sweet 10 arti-

ficial sweeteners and Pitussury flour; Ralston-Purina oper-

ates JACK-IN-THE-Box fast-food restaurants and sells Rat-

STON cereals; Quaker Oats operates Macic Pan restaurants

and sells Quaker Oats cereals; and Royal Crown operates

Arsy’s fast-food restaurants and sells RC cola beverages.

A 22

Findings of Fact

60.

Major food competitors, including sugar competitors of

plaintiff, operate chains of pizza stores which compete

with defendants. “Shakey’s Pizza Parlors” are owned by

Great Western United (G-W and GopcHavux sugars) ;

“Pictro’s Pizza Parlors” are owned by Campbell Soup Co.;

aud “Pizza Hut” is a division of Pepsico (Pepsi Cola bev-

erages and I*ritos snack foods). Many of these competi-

tive pizza restaurants serve coffee together with Domino

sugar, or purchase other Domino portion control products,

e.g., salt and pepper for application to the pizza.

61.

As a result of plaintiff's widespread use, advertising and

promotion of the Domino trademark on a great variety of

food products, the consuming publie is very likely to be-

lieve that Domino’s Pizza, sold in a separate food store

outside of the supermarket, is in some way or manner spon-

sored by or affiliated with, or connected with, or emanates

from plaintiff.

EF. Defendants’ business and plaintiff’s trademark

DOMINO.

62.

Prior to 1965, defendant DPT was in the business of

operating three or four pizza restaurants in the Ypsilanti,

Michigan area under the name “Dominick’s Pizza King.”

Tt had never used the name Domrno or Domrtno’s. On

March 24, 1965, it filed an assumed name certificate in the

A 23

Findings of Fact

Washtenaw County, Michigan Courthouse, showing a

change in the name of the restaurants to Domrno’s.. De-

fendant’s advertising of the Domrno’s pizza restaurants

commenced about April 27, 1965. The first use by defen-

dant of the Domino’s mark was long subsequent to plain-

tiff’s use of the mark Domino for sugar and after plaintiff's

expansion of the use of its Domino mark from sugar and

sugar related products to other food products distributed

to the food service trade.

63.

The marks or names Domino’s and Domino’s Pizza are

so similar to plaintiff’s famous mark Domino in sound and

appearance that the public cannot always perceive any dif-

ferences between them, The possessive form of Domino's

is almost synonymous with Domino. Indeed, defendant

DPI’s own advertising and documents frequently do not

use the possessive form.

64,

Defendant DPT was not incorporated as Domino’s Pizza,

Ine. until 1967 when its corporate name was changed from

Dominick’s Pizza King, Inc. to Domino's Pizza, Ine. In

1969, defendant DPI changed its name to Domino’s, Ine. In

1972, it changed the name back to Domino’s Pizza, Ine.

Defendant DPI has caused to be incorporated a prolifera-

tion of corporations for carrying out its business, some of

9499

which include the name “Domino’s”.

65.

When it first adopted the Domino’s mark in 1965, de-

fendant DPI, through its founder and president Thomas

A 24

Findings of Fact

Monaghan, was well aware of plaintiff’s use of its famous

Domino mark. At that time defendant DPI did not seek

advice of counsel as to whether the name Domrno’s was

available for adoption and use, nor did it obtain a trade-

mark search.

66.

Although defendants’ retail stores have sold and con-

tinue to sell primarily made-to-order pizza pies and carbo-

nated heverages, from time to time some of defendants’

stores have sold other food products, such as sandwiches.

Indeed, DPI changed its name to “Domino’s, Inc.” because

the word “pizza” was considered too limiting. There are

no restrictions in defendant DPI’s franchise agreements

preventing franchisees from expanding the line of products

to include frozen pizza or coffee with sugar.

67.

Defendants’ modest initial suecess from 1965 to 1968 in

selling its food products under the Domrno’s name was fol-

lowed by a sharp financial decline from 1969 to 1972. From

the initial three pizza parlors using the Domino’s name in

the Ypsilanti area, defendant DPI expanded to 42 stores

in three states by 1969. Only one of those stores was out-

side Michigan and Ohio. Many of them were franchised

stores, However, the popularity of the Domrno’s pizza

parlors dropped significantly, and by the end of 1970, only

32 stores: were still in operation. This period of near

bankruptey continued until about late 1972.

A 25

Findings of Fact

68.

In June 1968, defendant DPI applied to register in the

U.S. Patent and Trademark Office the marks Domrno’s and

Domino’s and Design for “restaurants and catering serv-

ices” and for “rendering technical assistance to others in

all phases of establishing and operating restaurant and

catering services.” Plaintiff learned of these applications

in about June 1970 when they were published for opposition

in the Official Gazette of the Patent and Trademark Office.

Plaintiff promptly filed Notices of Opposition to the ap-

plications. Defendant DPI defaulted and judgment was

granted to plaintiff.

69,

Having learned of defendant DPI from the publication

of the applications for registration, plaintiff sent defend-

ant DPI a notice in January of 1971 suggesting that de-

fendant change the names Domino’s and Domrno’s Pizza

and advised that plaintiff was prepared to take steps to

avoid the unauthorized use of its trademark. Defendant

received the communication but failed to respond to the

notice and continued to use the names.

70,

After receiving and failing to respond to plaintiff’s notice

of January 1971, defendant DPI was able to alleviate its

financial problems and commenced an aggressive expansion

program. With full knowledge of plaintiff’s trademark

rights, defendant DPT opened about 200 stores following

its receipt of plaintiff's letter. It opened about 55 stores in

A 26

Findings of Fact

the last six months before the trial. Since 1976, it has

opened over 125 stores.

71.

Defendant DPT made another attempt in October of 1972

to register in the U.S. Patent and Trademark Office the

mark Domrno’s Pizza and Design. Although the applica-

tion initially was rejected as likely to cause confusion with

several of plaintiff’s Domrno registration, defendant’s at-

torney handling the application for registration, in a tele-

phone conversion with an examiner in the U.S. Patent and

Trademark Office apparently managed to persuade the

examiner to permit the application to be published for any

opposition. Plaintiff learned of the application and gave

defendant DPT notice in November of 1974 that it intended

to oppose the application. Before the period for filing the

Notice of Opposition had run, however, defendant DPI

withdrew its application thereby preventing for the second

time a determination of the right to register the mark in

the Patent and Trademark Office. At the same time, that

is, in November of 1974 plaintiff again advised defendant

DPI that it was prepared to take legal action to protect its

trademarks. Defendant DPI refused to discontinue the use

but did withidraw its application.

72.

Plaintiff never aequieseed in the use of Domryo’s or

Domrino’s Pizza by defendants. Plaintiff never gave de-

fendants any assurance, whether express or implied, that

it would not assert its trademark rights. To the contrary,

A 27

Findings of Fact

plaintiff threatened legal action and sought on two oceca-

sions to pursue defendant DPI before the tribunals of the

Patent and Trademark Office, but defendant DPT avoided

a determination of the right to register the marks.

oo.

~l

In 1975 and 1976, after this action was brought by plain-

tiff, defendant DPI instituted a large-scale program to

change substantially all the signs, printed materials and

decorations in all its company-owned and franchised stores.

The cost of the sign changes for the franchised stores was

borne by their owners, not by defendant DPT.

74,

Defendants use the names Domrino’s and Domino’s Pizza

on their packaging and printed materials, including pizza

cartons, beverage cups and napkins.

75.

The name Domtno’s frequently is used by defendants as

such and without the use of the word “pizza” in connection

with the sale of pizza, beverages and ingredients for mak-

ing pizza. Defendants’ menus and promotional coupon

flvers in some instances refer to Domino’s alone and in

letters far larger than the words which follow. Defend-

ants’ employees are instructed to answer the telephone

referring only to “Domino’s”. Several of defendants’ stores

have exterior signs which read only “Domtno’s” without

reference to “Pizza”. Defendant DPI’s “Operations

Manual” suggests that the store be referred to a;

“DomIno’s”.

A 28

Findings of Fact

76.

More than 80% of defendants’ business is delivery.

Therefore, the Domtno’s Pizza mark is viewed by the public

primarily in its telephone directory listings, on its pizza

cartons and beverage cups when the pizza pies and bever-

ages are delivered, and in local newspaper advertisements.

The recommended delivery area for a store is limited to

114 mile radius.

77.

Defendants’ volume of business has increased substan-

tially since adopting the name Domrno’s. The current aver-

age gross sales of each of defendant’s stores is about

$260,000 per year. The use of the name Domrno’s is a

substantial asset in selling pizza and heverages, just as it

is in selling plaintiff's food products.

78.

Defendant DPI sells and arranges for the sale of

supplies, including sugar, salt and pepper, to both its

company-owned stores and franchises. To this end, de-

fendant DPI operates or controls kitchens and/or commus-

saries including “Domino’s Ohio Commissary, Ine.” and

“Domino’s Pizza Commissary, Ine.”, which sell such sup-

plies. The kitchens and/or commissaries sell dough, cheese,

tomato sauce, pepperoni, mushrooms, sausage, cups, boxes

and napkins, among other products. The kitchens and/or

commissaries purchase their supplies of food products,

including sugar, salt and pepper, in bulk from various sup-

A 29

I'indings of Fact

pliers and repackage the items for sale under the marks

Domrno’s and Domrno’s Pizza. Plaintiff’s Domino sugar

is sometimes used by defendants in making pizza, but de-

fendauts do not purchase the sugar direetly from plaintiff.

79.

Defendant DPI also arranges with others, such as Sea-

soning Mills, Ine. of Detroit, Michigan, to use the Domrno’s

name in selling food products to DPI company-owned

stores and franchises. Defendant DPI has provided Sea-

soning Mills with its so-called “secret formulas” for pizza

sauce and dough. Dough mix, dough packet mix and sauce

mix prepared by Seasoning Mills contain substantial

amounts of salt and pepper. Two-thirds of the sauce mix

comprises sugar, salt and pepper. The dough packet mix,

sold under the name “Domrno’s dough packet mix”, is com-

prised entirely of salt (57% by weight) and sugar (43%

by weight).

80.

Defendant DPI competes with plaintiff in the sale of

sugar and sugar related products to defendant’s franchised

stores. The franchisees have an option of purchasing such

food products from anyone,

81.

In May 1970, defendant Pizza Enterprises, Inc. was

authorized by defendant DPT to operate, license and fran-

chise others to operate Domrno’s pizza restaurants in the

State of Georgia. Pursuant to that authorization, Pizza

A 30

Findings of Fact

Enterprises licensed others, including operators of restau-

rants in Atlanta, Athens, and Thomasville, to use the name

in Georgia. It also operated stores and licensed others to

do so in Florida and Alabama. The Atlanta store was

operated by defendant Atlanta Pizza, Inc. In July 1975,

defendant Pizza Knterprises purported to assign its fran-

chise agreement and distributor rights to defendant Pizza

Services, Inc., a related company. Defendant DPT did not

acquiesce in the assignment, but took no action with respect

to the continued use of the name. Defendant Pizza Ser-

vices subsequently changed its corporate name to IX2, Ine.

a/k/a Kilby Kompanies, Inc. Defendant Pizza Services also

provided supplies to those stores. In August 1976, defend-

ants Pizza Enterprises, Pizza Services and Atlanta Pizza

ceased use of the names Domino’s and Domino’s P1zza in

Georgia, and changed the names of at least some of their

facilities to “The Original Pizzaman.” Nevertheless, in

September 1978, defendant Hanna Creative Enterprises,

Tne., which had taken over operation of the Atlanta store

formerly operated by defendant Atlanta Pizza, changed the

name of that store hack to Domtno’s, pursuant to license

from defendant DPT. Defendant Hanna presently operates

a Domrno’s pizza restaurant at 1405 Oxford Road, N.F..,

Atlanta, Georgia. David K, Kilby was, or is, the principal

and controlling officer of each of defendants Pizza Enter-

prises, Pizza Services and Atlanta Pizza, and currently is

director of franchising of defendant DPT.

F. Plaintiff's products and defendant’s products as

related qoods and services,

A. 31

Findings of Fact

82.

The products sold by plaintiff under the Domino mark

are related to the products sold by defendants under the

Domino’s mark. Sugar, salt and pepper are ingredients

used in making pizza dough and sauce, and sugar is a

principal ingredient in beverages distributed by defendants

such as Coca-Cota, Salt and pepper also are condiments

customarily used together with pizza pies, although not dis-

tributed by defendants.

83.

Condiments such as those distributed by plaintiff under

the Domino mark may be used on sandwiches such as those

sold in the past in at least one of defendants’ restaurants.

Many of defendants’ stores distribute Domrno’s Pizza coffee

cups supplied by defendant DPT for use as premiums.

84,

The consuming public considers sugar to be a related

food product to pizza and has become accustomed to seeing

sugar and frozen pizza (and dry pizza mixes) sold together

under the same brand name, particularly in supermarkets.

Grand Union and Pathmark are two large supermarket

ehains which sell both sugar and frozen pizza under

the same trademark, Granp Unton and ParaMark,

respectively.

85.

Defendant DPT has considered the sale of and has sold

experimentally frozen pizzas to the public in restaurants

A 32

Findings of Fact

and bars operated by others. At least one of defendant

DPI’s franchisees sold frozen pizza for a period of time.

86,

Patrons of restaurants, pizza parlors and fast-food

chains have come to recognize plaintiff’s Domino sugar and

condiments which are distributed in a great many such

restaurants, pizza parlors and fast-food establishments

throughout the country. Plaintiff justifiably is concerned

that its customers will associate defendants’ food products

with plaintiff.

87.

In light of the publie’s knowledge of the propensity of

food companies to expand their businesses into a wide

variety of food products and food-related services, the pur-

chasing public is likely to mistakenly believe that defend-

ants’ use of the name Domrno’s in connection with sugar

and other food products customarily distributed in restau-

rants, pizza parlors and fast-food establishments are some-

how connected, associated or affiliated.

88.

In recent years, there has been a trend toward the sale of

hot prepared pizza and other fast foods by supermarkets.

The same class of consumers purchase fast foods and shop

in supermarkets,

G. Actual Confusion.

89.

Evidence of actual confusion is difficult to uncover, par-

ticularly when relatively low-priced consumer products are

A 33

, Findings of Fact

involved, because the public is less likely to take the time

to complain. ‘Three instances of actual confusion are

known here. First, a former employee of defendant DPI

was asked by an individual if defendant DPI had any con-

nection with the Domino sugar company. Second, a state-

ment was received by an officer of Domino’s Pizza

Commissary, Ine., misaddressed to “Domino Sugar.”

Third, customers of a franchisee of defendant DPI have

inquired whether its operation was that of Domino sugar

or a part thereof.

90.

At the request of plaintiff's attorneys, but without any

guidance by plaintiff or its attorneys, Russ Haley & Asso-

ciates, Inc. conducted consumer research to determine the

nature and extent of the products, if any, that consumers

associate with the company that makes Domino's pizza.

(a) In August 1977, Dr. Haley, Professor of Marketing

at the University of New Ilampshire, retained an inde-

pendent organization to conduct a personal intercept study.

This was to insure that neither any of the interviewers nor

any of the interviewees had any knowledge of the purpose

of the study or the identity of the client.

(b) The study was conducted among a “universe” of the

persons who are primarily responsible for the food-buying

decisions in their households. Personal interviews were

conducted in ten geographically dispersed markets east of

the Mississippi River, i.e., Atlanta; Boston; Chattanooga;

Cleveland; Harrisburg, Pennsylvania; Indianapolis; Louis-

ville; Pittsburgh; Portland, Maine; and Westchester

County, New York.

A 34

Findings of Fact

(¢) From the relevant universe, Dr. Haley selected a

“random sample” of 525 persons to be interviewed. The

random sample obtained properly represented the universe

of customers being studied.

(d) The study was conducted in the homes of the inter-

viewees—the place where they are most likely to see

Domino’s Pizza. Each qualified interviewee was shown an

actual Domino’s box, and then asked the foundation ques-

tion, “Do you believe that the company which makes this

pizza makes any other products?” 44.2% responded affir-

matively. Those respondents answering “Yes” to the ques-

tion were then asked, “What products other than pizza do

you think are made by the company that makes Domino’s

Pivza?” 72% of this “yes” grovp thought that the other

product was “sugar.”

(e) A very significant number of consumers—31.6% of

all 525 respondents and 72% of those respondents who

believe that the company that makes Domino's pizza makes

products other than pizza—mistakenly believe that the com-

pany that makes Domino’s pizza also makes sugar. The

results suggest substantial confusion between Domrno’s

Pizza and Domino sugar. This properly conducted and

fair survey is entitled to substantial weight as evidence of

confusion among the consuming publie.

91.

At the request of defendants’ attorneys, Darden Re-

search Corporation conducted a survey among purchasers

of Domrno’s pizza. The design and conduet of this survey

was such that any likelihood of confusion was minimized.

Findings of Fact

(a) The study was prepared with the close cooperation

and guidance of defendant DPI and its attorneys. Defend-

ants’ attorneys helped formulate the questionnaire, selected

the universe of persons to be studied, and directed Mr.

Darden to make basic assumptions which pertain to the

validity of the survey.

(b) The universe of persons studied by Darden was not

the food-purchasing public generally but rather the cus-

tomers of Domrno’s pizza who had placed orders during the

period when the study was being conducted. The universe

did not inelude all of the pizza purchasing public or even

the persons familiar with Domrno’s pizza.

(c) The sample of persons who were interviewed was

not a “random sample.” 700 interviews were conducted in

seven small market areas: Virginia Beach, Va.; Fairborn,

Ohio; Whitehall, Ohio; Coral Gables, Fla.; North Canton,

Ohio; Ann Arbor, Mich.; and Syracuse, New York. The

sample comprised 63.6% of interviewees under the age of

25, 45.1% students, 61.9% single persons, and 63.3% males,

Heavier users of Domrno’s pizza had a higher probability

of being interviewed than more infrequent customers. The

sample generally comprised persons who would be expected

to be more aware of Domrno’s pizza, but less likely to be

aware of Domino sugar or other food products than the

purchasing public. Indeed, only 42.3% of the interviewers

had even heard of Domino sugar (as determined by an aided

awareness question), and only 43% had purchased any

brand of sugar within the last six months. Mr. Darden

admitted that the sample in no way represents any cross-

section of the American population,

A 36

Findings of Fact

(1) The manner in which the interviews were conducted

was improper. Mr. Darden’s own employees, some of

whom were told the purpose of the survey and all of whom

suspected the identity of the client, conducted the inter-

views. Defendants’ employees who cooperated with the

study also were aware of the desired results. The risk of

bias is very high under these circumstances.

(e) The locations where the interviews were held were

contaminated. As to the interviews taxen in the homes,

the results were contaminated because defendants’ em-

ployvees were present during the interviews. In the inter-

views taken in the stores, the results are biased because the

interviewees could look around and determine what was

being sold in the store. Large menus on the walls were

visible during the course of the interviews. Under the

circumstances, it is extremely unlikely that anyone would

have thought that sugar is a product sold in a Domino's

pizza store in which he or she was present.

(f) The Darden questionnaire was not prepared in ac-

cordance with generally accepted standards of objective

research. In the first question of the complicated question-

naire, the interviewees were each asked:

“Some companies make one product only; other

companies make more than one product. Have you

ever thought that Domrino’s Pizza made any other

product besides pizza?”

If the interviewer answered “Yes” to the first question, he

or she was then asked question la:

“What other products have you thought Domino

Pizza has been making?”

A 37

Findings of act

Mr. Darden did not refer to the “company” behind Domt-

No’s pizza, which term was in his original draft question-

naire, but was deleted at the request of defendants’ at-

torneys. The revised question predisposes the interviewees

to think in terms of a neighborhood pizza store, rather than

in terms of a larger sponsoring or franchising entity mak-

ing more than one product.

(g) The second question of the Darden study was:

“Here is a list of products. Please look over it care-

fully. Have you ever seen or heard the name ‘Domi-

no’ being used as a Name or Brand Name for any

of these products?”

The list of products which included “sugar” was prepared

by defendants’ attorneys. If the answer to the question

was “Yes”, the interviewee was asked question 2a, “Which

Ones?”. If “sugar” was one of the ones mentioned, then

the interviewee was asked question 2c:

“Does the same company that makes Domrno’s P1zza

make Domino Sugar?”

If he or she answered “Yes” or “Don’t Know” to question

2c, question 2d was asked:

“Were you influenced in any manner whatsoever in

purchasing Domino’s Pizza by the possibility it

might be made by the same company that makes

sugar?”

Of the 412 persons asked question 2a, 296 mentioned

“sugar” (72% of those asked the question). Question 2c

was asked only of the 296 persons who mentioned “sugar”

A 38

Findings of Fact

in question 2a, and of those, 13 thought there was a connec-

tion between the company that makes Domrno’s pizza and

the one that makes Domino sugar, and therefore, were “con-

fused”. 105 persons of the 296 interviewees asked question

2c did not know whether the same company makes both

products. Disregarding the “Don’t Know” responses, 15

persons out of the 191 persons (6.8% ) who answered ques-

tion 2e either “Yes” or “No” were confused, a significant

number.

(h) In the Darden study, there were a substantial nuin-

ber of erasures and changes in the recorded answers.

There was a deliberate failure to record the answers of per-

sons who obviously were confused. Interviewees were

counted who should have been disqualified as a result of

young age, relationship with defendants, or knowledge of

this litigation. This unfair and biased survey is not enti-

tled to any weight or credibility as evidence of confusion.

IT. Defendants’ cited third-party uses.

92.

Defendants rely upon various third-party uses of the

mark Domino in seeking to show that plaintiff’s rights in

the mark Domino are limited, or that plaintiff’s mark has

lost some of its distinctiveness. All of the cited uses are

long abandoned, remote as to goods or geography, or small,

obscure and localized. None of these uses have had any

effect on the publie’s perception of plaintiff’s Domino trade-

mark as the source of food produets bearing that mark.

There is no national, or even regional, food company today

which uses the mark Domino for any food products sold for

A 39

I’indings of Fact

human consumption to the consuming public in the United

States other than plaintiff and defendants, and there have

been no other users for more than a decade.

93.

The following third-party uses cited by defendants do

not relate to food products or services, and are irrelevant

to the scope of plaintiff’s rights in the Domino trademark:

(a) Larus & Brother Co. sold Domino tobacco and cigar-

ettes from about 1885 until 1974. At that time, it licensed

this declining brand having very limited distribution to

another tobacco company. ‘There has been no advertising

at least since 1933, except for one billboard. Sales have

declined to a rate of less than 4,000 cartons per month.

(b) Diamond International Corp. has sold Domino wood-

stick matches since about 1905. The matches are of the

strike-anywhere type which are prohibited by various local

laws. There has been no advertising directed to the publie

for decades. It is a declining brand.

(¢) Viviane Woodard Corp. sold Domino men’s toiletries

and fragrances through door-to-door salespersons during

the 1968 Christmas season. The left-over stock was sold

off during a few subsequent seasons. ‘The product was

unsuccessful and there was no national advertising.

Viviane Woodard was abandoned by its owner and weut

out of business in 1976.

A 40

Findings of Fact

94.

The following “ancient” third-party uses have long been

abandoned, and hence do not affect the scope of plaintiff's

rights in the Domino mark.

(a) California Packing Corp. and predecessor companies

sold Domino canned fruits and vegetables in limited quanti-

ties in California from about 1920 until about 1940. The

products never were advertised. The mark Domino has not

been used since that time.

(b) Domino Danzero, Springfield, Missouri, operated a

“Domino’s Bakery” in that city from about 1912 until the

early 1920’s, when it closed. His Burrer Krust and Honry

Nut bread was delivered only within 60 miles of Spring-

field. He and subsequent owners also sold macaroni under

the name “Domino’s Bakery & Macaroni Co.” from about

1916 to 1943, when the plant burned down, The marketing

area and extent of sales of the macaroni products are

unknown, although it was shipped to several adjacent

states. There is no evidence of any advertising. The name

ae

“Domino’s” was never used again after 1943,

(¢) Lookout Oil & Refining Co. sold Domino shortening

and cooking oil in Tennessee and surrounding states, prin-

cipally to state institutional customers, such as homes for

the aged, from about 1918 to 1966. The mark was abandoned

at that time and the plants were sold. There was no

advertising other than in local newspapers and trade

magazines.

(d) Myles Salt Co. sold Domino salt in Louisiana from

about 1941 to about 1947, The marketing area and extent

A4l

Findings of Fact

of sales of the product are unknown. There is no evidence

of any advertising. The mark was abandoned in about

1947, when the company was bought out.

(e) Domino Citrus Association and Domino Canning As-

sociation, Bradentown, Florida, and their predecessor or

related companies, sold Domino citrus fruits and fruit

juices from about 1924 until about 1958, primarily on the

Fast Coast. Use of the mark was then discontinued and

the plant was closed. Advertising expenditures were

minimal.

95,

The following third-party uses are very small, obscure

and localized, are not engaged in interstate commerce, and

are known by such few people as to not affect plaintiff’s

Domino trademark rights:

(a) Vineent and Theresa Claps, Chicago, Tllinois, oper-

ate “Domino’s Pastries”, a small bakery in a residential

neighborhood of Chicago.

(b) Philip Klinsky, Chieago, Illinois, operates “Domino

Foods”, a small convenience store in the basement of an

apartment building in a Chicago residential neighborhood.

(c) Sam Domino, Metairie, Louisiana, operates “Domi-

no’s Restaurant and Pizzeria”, a small restaurant in a New

Orleans suburb.

(d) Dominick Leuci, Brooklyn, N.Y. operates “Domino’s

Pizza”, a small pizza parlor in the residential area of

Canarsie, Brooklyn.

A 42

Findings of Fact

(e) Jeffrey Resnick, Bronx, New York operates two mod-

est “Domino Supermarkets” in outlying residential neigh-

borhoods in the Bronx.

(f) Vineent Mazzola, Brooklyn, New York, operates

“Domino Foods”, a small luncheonette and donut shop in

a warehouse district of Manhattan.

96.

The following third-party uses do not come to the atten-

tion of the American public and have no bearing on the

extent of plaintiff’s rights in the Domino mark:

i £

(a) Seald-Sweet Growers, Tampa, Florida and predeces-

sor companies, functioned as a marketing agency for ecoop-

eratives of Florida citrus growers. Since 1958, Seald-Sweet

had sold Domtino citrus fruits and canned fruit juices exclu-

sively for export from the United States. The consuming

publie in this country does not see the Domino trademark

in association with citrus fruits and canned juices.

(b) General Mills Corp. has sold Domino yeast raised

donut mix in 50 and 100 pound bags since about 1959. This

is a specialized product sold only to the bakery trade for

use in making donuts to be sold under other names and

marks. The consuming public never sees the Domino trade-

mark in association with the donuts. This is a minor brand

for General Mills with very minimal sales and trade

advertising.

A 43

Findings of Fact

97.

Plaintiff has not acquiesced in the use of Domrno by third-

party users. Plaintiff objected to many of these uses and

filed successful oppositions against others in the Patent and

Trademark Office.

98.

“Homino” is not primarily merely a surname. Even if it

is a surname, this does not affect the publie’s perception

and recognition of Domrno as a trademark for food prod-

ucts. Indeed, only one witness in this action has the sur-

name “Domino.” No one associated either with plaintiff or

defendants bears that surname. It is also irrelevant that

“lominoes” is the name of a game.

A 44

Conclusions of Law

A. Plaintiff is entitled to relicf.

:

This court has jurisdiction over the subject matter and

the parties to this action and venue properly lies in this

district. 15 U.S.C. § 1121; 28 U.S.C. §§ 1338(a) and (b),

1391 (b) and (e).

2.

Plaintiff is the owner of the trademark Domrno, which is

arbitrary and fanciful as applied to food products and is a

strong and famous mark which distinguishes the source of

such food products. American Sugar Ref. Co. v. Continen-

tal Distilling Corp., 188 USPQ 649, 650 (T.T.A.B. 1963) ;

Tisch Hotels, Inc. v. Americana Inn, Ine., 350 I°.2d 609, 611,

146 USPQ 566, 567-568 (7th Cir. 1965).

3.

By virtue of plaintiff’s long use, extensive sales, promo-

tion and advertising, and nearly 100% public recognition,

the distinetive mark Domino has come to indicate plaintiff

as the source of many food products. Beef/Kater Restau-

rants, Ine. v. James Burrough Ltd., 398 F.2d 637, 639-40,

158 USPQ 562, 568-565 (Sth Cir. 1968); Turner v. HMH

Publishing Co., 380 F.2d 224, 227-28, 154 USPQ 330, 331-333

(Sth Cir. 1967), cert. denied, 389 U.S, 1006, 156 USPQ 720

(1967).

4.

Plaintiff is the owner of the trademark Domino for food

products sold to the food service trade, ineluding restau-

A 45

Conclusions of Law

rants, cafeterias, pizza parlors and other fast-food estab-

lishinents, throughout the United States for distribution to

consumers. Carling Brewing Co., Ine. v. Philip Morris,

Ine., 297 F.Supp. 1330, 160 USPQ 308 (N.D. Ga. 1968) ;

Tisch Hotels, Ine. v, Atlanta Americana Hotel Corp., 254

F.Supp. 748, 749, 149. USPQ 256, 260-261 (N.D. Ga, 1966).

D.

Plaintiff is the owner of the following registrations for

the trademark Domino issued by the U.S. Patent and

Trademark Office, each of which is valid and enforceable:

Reg.

Reg. No. Date Goods

37,082 9/17/01 Hard sugar

37,177 10/8/01 Hard sugar

73,099 3/16/09 Hard sugar

812,656 8/9/66 Mustard packaged in :ndividual

servings

812,657 8/9/66 Ketchup packaged in individual

servings

813,101 8/16/66 Salt

816,113 8/16/66 Pepper packaged in individual

servings

920,834 9/21/71 Jams and jellies

927,856 1/25/72 Salad dressing, mayonnaise and

cucumber relish

1,108,831 12/12/78 Non-dairy powdered cream substitute

6.

Each of plaintiff’s registrations is “incontestable” (ex-

cept the last) within the meaning of the Trademark Act and

constitutes conclusive evidence of plaintiff’s exclusive right

A 46

Conclusions of Law

to use the registered marks for the stated food products.

15 U.S.C. §§ 1065, 1115(b); Rells-Rovee Motors Ltd. v.

A&A Fiberglass, Inc., 428 F.Supp. 689, 694-915, 193 USPQ

35, 41-43 (N.D. Ga. 1977); Stembridge Products, Ine. v.

Gay, 335 F.Supp. 8638, 864, 172 USPQ 169, 170-171 (M.D.

Ga. 1971).

7,

As the prior users and owner of the famous and cele-

brated trademark Domino for many food products, plain-

tiff has the exclusive right to use that mark for those food

products and all other products and services which the pub-

lie would expect to emanate from the same source. Con-

tinental Motors Corp, v. Continental Aviation Corp., 375

F.2d 857, 861, 153 USPQ 3138, 315-316 (5th Cir. 1967) ;

Carling Brewing Co., Ine. v. Philip Morris, Ine., 297

F.Supp. 1330, 1337, 160 USPQ 303, 808-309 (N.D. Ga. 1968) ;

American Sugar Ref. Co, v. Continental Distilling Corp.,

138 USPQ 649, 651 (T.T.A.B. 1963).

8.

The test of trademark infringement is likelihood of con-

fusion, mistake or deception. If the publie is likely to be

confused either that defendants’ goods emanate from plain-

tiff or that defendants are sponsored by, endorsed by, or

affiliated with plaintiff, then plaintiff is entitled to relief.

15 U.S.C. § 1114(1); Abramson v. Coro, Ine., 240 F.2d 854,

856-7, 112 USPQ 307, 308-309 (5th Cir. 1957); Roto-Rooter

Corp. v. O’Neal, 513 F.2d 44, 186 USPQ 73 (Sth Cir. 1975) ;

Kentucky Fried Chicken Corp. v. Diversified Packaging

Corp., 549 F.2d 368, 388, 198 USPQ 649, 666-667 (5th Cir.

1977).

A47

Conclusions of Law

9.

Defendants have committed trademark infringement be-

cause long after plaintiff’s first use of Domino in associa-

tion with the sale of food products, defendants commenced

using and continue to use the names Domrno’s and Domrno’s

Pizza in connection with the sale of pizza, beverages, sauce

mix, dough mix, dough packet mix, and other pizza ingre-

dients, and in operating, franchising and supplying pizza

restaurants using those names, and such use is likely to

cause confusion, mistake or deception as to both source and

sponsorship. Beef/Kater Restaurants, Inc. v. James Bur-

rough, Ltd., 3898 F.2d 637, 639-40, 158 USPQ 562, 563-565

(5th Cir, 1968); Turner v. HMH Publishing Co., 380 F.2d

224, 228-29, 154 USPQ 330, 332-334 (Sth Cir. 1967), cert.

denied 389 U.S. 1006, 156 USPQ 720 (1967).

10.

Use of virtually identical marks for food products dis-

tributed to and in food stores to the conswning public is

likely to result in confusion, mistake or deception. Ameri-

ean Foods, Ine, v. Golden Flake, Ine., 312 F.2d 619, 624, 136

USPQ 286, 289, 290 (5th Cir. 1963) (potato chips, horse

radish, roasted peanuts, cooked popeorn, peanut butter and

cheese-cracker sandwiches, and dinner rolls); Pure Foods,

Ine. v. Minute Maid Corp., 214 F.2d 792, 797, 102 USPQ 271,

274 (5th Cir, 1954), cert. denied 348 U.S. 888, 108 USPQ 424

(1954) (frozen fruit juice concentrates and frozen meats) ;

American Sugar Refining Co. v. Andreassen, 296 F.2d 783,

784, 182 USPQ 10, 11 (C.C.P.A. 1961) (sugar and pet

food); American Sugar Refining Co. vy. Continental Dis-

tilling Corp., 188 USPQ 649, 651 (T.T.A.B, 1963) (sugar

A 48

Conclusions of Law

and gin); American Sugar Co. v. Texas Farm Products

Co., 159 USPQ 679, 681 (T.T.A.B. 1968) (sugar, cattle feed

and fertilizer); Roush Bakery Products Co, v. Ridlen, 190

USPQ 445, 448 (T.T.A.B. 1976) (restaurant services and

bread); Filper Corp. v. Fripesca-Frio Pesea Commercio

Industria S/A, 195 USPQ 735, 757 (T.T.A.B. 1977) (canned

peaches, tuna and other fish); Arnold Bakers, Ine. v, Food

Catering, Inc., 128 USPQ 511 (T.T.A.B. 1959) (restaurant

services, and bread, rolls and cookies).

i.

Plaintiff’s sugar, condiments and beverage mixes and de-

endants’ pizza, beverages, sauce mix, dough mix, dough

packet mix and other pizza ingredients are related food

produets distributed to the same class of consumers seeking

food prepared away from home. Pure Foods, Ine. v. Minute

Maid Corp., 214 F.2d 792, 797, 102 USPQ 271, 274 (5th

Cir. 1954), cert. denied, 348 U.S. 888, 1083 USPQ 424 (1954) ;

In re HI. J. Seiler Co., 289 F.2d 674, 129 USPQ 347

(C.C.P.A. 1961) (eatering services and meat); In re

Dominick’s Finer Foods, Ine., 184 USPQ 507, 509 (T.T.A.B.

1974) (supermarkets and frozen pizza).

12,

There is a symbiotic relationship between plaintiff’s

sugar, salt and pepper, important ingredients used in mak-

ing pizza and beverages, and defendants’ pizza, beverages,

dough mix, sauce mix and dough packet mix. Kentueky

Fried Chicken Corp, v. Diversified Packaging Corp., 549

F.2d 368, 388, 198 USPQ 649, 666-667 (5th Cir. 1977) (fried

chicken and paper supplies); Cudahy Co. v. Manion, 189

USPQ 56, 57 (T.T.A.B, 1975) (pizza and salami),

A 49

Conclusions of Law

13.

As many major food companies, including sugar com-

panies, operate restaurants and pizza parlors or distribute

frozen or packaged pizza, and as the public realized that

major companies have diversified their businesses into re-

lated and even unexpected fields, it is likely that the public

believes, mistakenly, that Domino’s pizza parlors are

owned, licensed or sponsored by plaintiff. Carling Brew-

ing Co., Ine. v. Philip Morris, Inc., 297 F.Supp. 1830, 160

USPQ 38083 (N.D. Ga. 1968); Scientifie Applications, Ine.

v. Mnergy Conservation Corp. of America, 436 F.Supp.

354, 358, 195 USPQ 379, 383 (N.D. Ga. 1977).

14,

All consumers should be protected from confusion, mis-

take or deception, from the experienced and the intelligent

to the naive and gullible. Armstrong Cork Co, v. World

Carpets, Inc, 448 Supp. Lo72, 199 USPQ 50 (N.D. Ga.

1978), rev'd on other grounds, 597 F.2d 496, 208 USPQ

19 (oth Cir, 1979); Augusta National, Ine. vy. Northwestern

Mutual Life Ins. Co., 198 USPQ 210, 221 (S.D. Ga, 1976).

15.

A consumer study conducted by a market research

expert, Dr, Russel Haley, established that a significant

number of consumers—31.6% of the total sample studied

—helieved that the company that makes Domrno’s pizza

also makes Domino sugar. Such a study is entit.ed to

substantial weight as evidence of likelihood of confusion.

Grotian, Helfferich, Schulz, Th, Steinweg Nachf, v. Stein-

A 50

Conclusions of Law

way & Sons, 523 F.2d 1331, 186 USPQ 486 (2d Cir, 1975);

Humble Oil Refining Co. v. American Oil Co., 405 I'.2d

803, 817, 160 USPQ 289, 299-300 (Sth Cir. 1969), cert.

denied 395 U.S. 905, 161 USPQ 882 (1969); James Bur-

rough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266,

278, 192 USPQ 555, 564-565 (7th Cir. 1976); Zippo Mfg.

Co. v. Rogers Imports, Inc., 216 F.Supp. 670, 187 USPQ

413 (S.D.N.Y, 1963); General Foods Corp. v. Borden, Inc.,

191 USPQ 674 (N.D. Tl. 1976).

16.

Although actual confusion is most difficult to discover in

cases involving relatively low-priced consumer products,

and is unnecessary in proving likelihood of confusion, some

evidence of actual confusion or mistake has been found

here. Volkswagenwerk A.G. v, Rickard, 492 F.2d 474, 478,

181 USPQ 611, 614 (5th Cir. 1974); World Carpets, Ine.

v. Dick Littrell’s New World Carpets, 458 F.2d 482, 489,

168 USPQ 609, 614-615 (5th Cir. 1971); Rolls-Royce Motors

Ltd. v. A&A Fiberglass, Ine., 428 F.Supp. 689, 695, 193

USPQ 35, 42-48 (N.D. Ga. 1977); Scientifie Applications,

Ine. v. Energy Conservation Corp of America, 436 F.Supp.

354, 358, 195 USPQ 379, 383 (N.D. Ga. 1977); Stembridge

Products, Ine. v. Gay, 335 F.Supp. 868, 865, 172 USPQ 169,

171 (M.D. Ga. 1971).

17.

Decisions of the tribunals of the Patent and Trademark

Office in inter partes or other adversarial proceedings on

the issue of likelihood of confusion are entitled to weight in

A 51

Conclusions of Law

trademark infringement actions. On the other hand, ex

parte determinations where the rationale behind the de-

cisions are not of record, are entitled, if any at all, to con-

siderably less weight. Merely because the Office passed

defendant DPI’s trademark application to publication for

any oppositions does not mean that there is no likelihood

of confusion with respect to plaintiff’s use of its Domino

trademark. American Heritage Life Ins. Co. v. Heritage

Life Ins, Co., 494 F.2d 3, 10, 182 USPQ 77, 81-82 (5th Cir.

1974); Carling Brewing Co., Inc. v. Philip Morris, Inc.,

297 F.Supp. 1330, 1337, 160 USPQ 303, 308-309 (N.D. Ga.

1968).

18,

Whether or not defendants acted in good faith in select-

ing and using the name Domino’s is not important inas-

much as good faith is not a defense to trademark infringe-

ment. American Foods, Ine. v. Golden Flake, Ine., 312

F.2d 619, 626, 1836 USPQ 286, 291-292 (5th Cir. 1963) ; Sei-

entific Applications, Inc. v. Energy Conservation Corp, of

America, 436 F.Supp. 354, 359, 195 USPQ 379, 383-384 (N.D.

Ga. 1977).

19.

Defendants have falsely designated or represented the

sponsorship or endorsement of their pizza restaurants by

employing plaintiff’s distinguishing mark Domino. 15

U.S.C. §1125a; Alum-A-Fold Shutter Corp. v. Folding

Shutter Corp., 441 F.2d 556, 170 USPQ 68 (5th Cir. 1971) ;

Boston Pro, Hockey Ass’n, Inc. v. Dallas Cap & Emblem

Mfg. Co., Ine., 510 F.2d 1004, 1013, 185 USPQ 364 (5th Cir.

A 52

Conclusions of Law

1975), cert. denied 423 U.S, 868, 187 USPQ 480 (1975),

rehearing denied 423 U.S. 991 (1975); Rolls-Royce Motors

Ltd. v. A&A Fiberglass, Inc., 428 F.Supp. 689, 697, 193

USPQ 35, 44-45 (N.D. Ga. 1977).

20.

Defendants have unfairly competed with plaintiff by sell-

ing franchises, operating pizza restaurants and selling food

products using plaintiff’s celebrated trademark Domino.

Whether Domino is used as a trademark in the sale of goods

or a trade name in the rendering of services or both, as

here, the law affords plaintiff protection against its appro-

priation. American Steel foundries v. Robertson, 269 U.S.

372, 380 (1926); Howard Stores Corp. v. Howard Clothing,

Inc., 808 F.Supp. 70, 165 USPQ 230 (N.D. Ga. 1969).

21.

Defendants have engaged in unfair competition under

Georgia common law by using plaintiff’s mark Domino in

a manner such as to be likely to cause confusion, mistake

or deception. Kay Jewelry Co. v. Napiloff, 204 Ga, 209,

49 §,E.2d 19, 81 USPQ 293 (1948).

22.

Defendants have committed deceptive trade practices in

violation of the Georgia Uniform Deceptive Trade Prac-

tices Act Ga. Code Ann. § 106-702; Rolis-Royce Motors Ltd.

v. A&A Fiberglass, Inc., 428 F.Supp. 689, 698, 193 USPQ

35, 45-46 (N.D, Ga. 1977); Baker Realty Co, v. Baker, 228

Ga. 766, 187 S.E.2d 850, 174 USPQ 36 (1972).

A 53

Conclusions of Law

23.

Defendants have diluted the distinctive quality of plain-

tiff’s trademark Domino, Plaintiff is entitled to protec-

tion of its famous and celebrated trademark Domino, even

in the absence of a relationship between the goods or lack-

ing a showing of likelihood of confusion. Ga. Code Ann.

§ 106-115; Augusta National, Inc. v. Northwestern Mutual

Life Ins. Co., 198 USPQ 210, 221 (S.D. Ga. 1976); Yale

Electrie Corp, v. Rohertson, 26 F.2d 972, 974 (2d Cir. 1928).

B. Defendants’ affirmative defenses are of no avail.

24.

Plaintiff is not chargeable with laches. Indeed, fairly

and sensibly construed, plaintiff demanded that defendant

DPI cease-and-desist from all use of the names Domino's

and Domino’s Pizza, but defendant did not bother to

respond and continued to use the names. If anything, this

reflects an intent to deceive on the part of defendant, rather

than laches on the part of plaintiff. Scientific Applica-

tions, Ine. v. Mnergy Conservation Corp. of America, 436

F.Supp. 354, 359, 195 USPQ 379, 383-384 (N.D. Ga. 1977).

25,

Plaintiff is not chargeable with laches because on three

occasions it sought to oppose or opposed attempts by

defendant DPI to register the names Domino’s and Domi-

no’s Pizza in the Patent and Trademark Office, but

defendant prevented a determination by that Office by

defaulting and abandoning its applications. Alfred Dunhill

of London, Ine. v. Kasser Distillers Products Corp., 350

A 54

Conclusions of Law

F.Supp. 13841, 1364-68, 175 USPQ 586, 602-605 (E.D. Pa.

1972), aff’d per curiam 480 F.2d 917, 178 USPQ 449 (3rd

Cir. 1973).

26.

Laches does not bar a permanent injunction, which is the

only relief sought by plaintiff. MeLean v. Fleming, 96 U.S.

245, 251 (1877) ; Menendez v. Holt, 128 U.S. 514, 523 (1888) ;

Eastman Kodak Co. v, Fotomat Corp., 317 F.Supp. 304,

316, 165 USPQ 444, 452-453 (N.D. Ga. 1970); Rolls-Royce

Motors Ltd. v. A&A Fiberglass, Ine., 428 F.Supp. 689, 696,

193 USPQ 35, 48-44 (N.D. Ga, 1977); Little League Base-

ball, Inc. v. Daytona Beach Little League, Inc., 193 USPQ

611, 614 (M.D. Fla. 1977).

27.

Even if plaintiff delayed for a short period of time in

bringing suit and defendants expanded their business dur-

ing the interim, any delay was not of a duration sufficient to

create legally protectable rights in defendants. Roto-Rooter

Corp. v. O'Neal, 513 F.2d 44, 46, 186 USPQ 73, 74-75 (Sth

Cir. 1975); Blue Bell, Inc. v. Ruesman, 335 F.Supp. 236, 170

USPQ 450 (N.D. Ga. 1971).

98

Registrations of the Domino mark by third parties are

irrelevant to the issue of whether the defendants here

should be enjoined from using the names Domino's and

Domrno’s Pizza. Turner v. HMH Publishing Co., 380 F.2d

224, 228 n.2, 154 USPQ 330, 332-333 n.2 (Sth Cir. 1967), cert.

A 55

Conclusions of Law

denied, 389 U.S. 1006, 156 USPQ 720 (1967); Chips ‘n

Twigs, Ine. v. Chip-Chip, Ltd., 414 F.Supp. 1005, 1017, 190

USPQ 361, 374-375 (E.D. Pa. 1976).

29.

Third-party uses of a trademark generally are irrelevant

or entitled to little weight in cases of trademark infringe-

ment. Armstrong Cork Co. v. World Carpets, Inc., 448

F.Supp. 1072, 1078, 189 USPQ 30, 35-36 (N.D. Ga, 1978).

30.

The third-party uses relied upon by defendants are long

abandoned and “ancient”; remote as to goods or geogra-

phy; small, obscure and localized; or do not come to the

public’s attention. They do not limit plaintiff's right to

relief against these defendants. None of them has had any

effect on the purchasing public’s perceptions. National

Lead Co, v. Wolfe, 225 F.2d 195, 204, 105 USPQ 462, 468-

469 (9th Cir. 1955), cert. denied 350 U.S. 883, 107 USPQ

362 (1955); Fleischmann Distilling Corp. v. Maier Brewing

Co., 314 F.2d 149, 154, 186 1 3PQ 508, 512-513 (9th Cir.

1963), cert. denied 374 U.S. 830, 187 USPQ 913 (1965) ;

Tisch Hotels, Inc. v. Americana Inn, Ine., 350 F.2d 609, 614,

146 USPQ 566, 570-571 (7th Cir. 1965); Tisch Hotels, Ine.

v. Atlanta Americana Hotel Corp., 254 F.Supp. 748, 748-49,

149 USPQ 256, 260-261 (N.D. Ga. 1966); American Sugar

Co. v. Texas Farm Products Co., 159 USPQ 679, 651

(T.T.A.B. 1968).

dl,

Plaintiff is and was under no obligation to bring infringe-

ment actions against all users of its mark to preserve its

A 56

Conclusions of Law

right to bring such an action against these defendants. Mc-

Neil Labs, Inc. v. American Home Products Corp., 416

F.Supp. 804, 808, 193 USPQ 486, 490 (D.N.J. 1976) ; Couneil

of Better Business Bureaus, Ine. v. Better Business Bureau

of South Florida, Inec., 200 USPQ 282, 294, 295 (S.D. Fla.

1978).

32.

Plaintiff properly obtained Registration No. $13,101 for

the trademark Domino for salt and defendants have not

established any fraud. 15 U.S.C. §§ 1065, 1115(b) ; L’il Red

Barn, Ine. v, Red Barn System, Ine., 322 F.Supp. 98, 105,

167 USPQ 741, 745-746 (N.D. Ind. 1970), aff'd per curiain

174 USPQ 193 (7th Cir, 1972).

33.

Plaintiff made several bona fide sales of Domino salt to

regular commercial customers prior to its application for

registration of the mark Domino for salt and this was

promptly followed by full-scale production and marketing

efforts. This is a common and usual procedure. Each such

sale was sufficient in and of itself to properly support plain-

tiff’s application for trademark registration. Blue Bell,

Ine. v. Farah Mfg, Co., Inc., 508 F.2d 1260, 1265, 185 USPQ

1, 4-5 (Sth Cir. 1975).

34,

In any event, the validity of plaintiff’s Domino salt regis-

tration does not affect plaintiff's common law rights in the

mark for those goods. Alfred Dunhill of London, Ine. y.

Kasser Distillers Products Corp., 350 F.Supp. 1341, 1369,

A 57

Conclusions of Law

175 USPQ 586, 605-606 (K.D. Pa. 1972), aff’d per curiam

480 F.2d 917, 178 USPQ 449 (3rd Cir. 1973).

30.

Plaintiff has not engaged in any misuse which would ren-

der its registrations unenforceable and not incontestable.

Bringing a trademark infringement action to enforce a fed-

erally cognizable right does not constitute misuse or abuse

of the registrations. Drop Dead Co. v. 8S, C. Johnson & Son,

Ine., 326 F.2d 87, 95-96, 189 USPQ 465, 470-471 (9th Cir.

1963), cert. denied 377 U.S. 907, 141 USPQ 949 (1964) ;

James Burrough Ltd. v. Lesher, 309 F.Supp. 1154, 1161, 163

USPQ 208, 213-214 (S.D. Ind. 1969).

36.

Defendants’ claim of misuse, even if proven, and it has

not been, affects only the incontestability of one trademark

registration and not the enforceability of plaintiff’s com-

mon law rights in the mark Domrno for salt, or any of

plaintiff's other Domino trademark registrations or com-

mon law trademark rights in Domino. Carl Zeiss Stiftung

v. V.IE.B. Carl Zeiss, Jena, 298 F.Supp. 1309, 1313, 116

USPQ 414, 417-418 (S.D.N.Y. 1969), aff’d 433 F.2d 686, 167

USPQ 641 (2d Cir. 1970), cert. denied 403 U.S, 905, 170

USPQ 1 (1971).

(', Plaintiff is entitled to a permanent injunction,

37.

Plaintiff is entitled to a permanent injunction against

defendants’ use of the names Domtno’s and Domino’s Pizza

A 58

Conclusions of Law

in association with the sale of pizza, beverages, dough mix,

sauce mix, dough packet mix and other pizza ingredients,

and franchising, operating and supplying pizza restaurants,

15 U.S.C. § 1116; Ga, Code Ann, § 106-115; Ga, Code Ann,

§ 106-703(a); Abramson vy, Coro, Ine., 240 F.2d 854, 857, 112

USPQ 307, 808-309 (5th Cir, 1957); Pure Foods, Ine. v.

Minute Maid Corp., 214 F.2d 792, 797, 102 USPQ 271, 274

(5th Cir. 1954), cert. denied 3848 U.S. 888, 108 USPQ 424

(1954).

38,

Plaintiff is entitled to recover its costs,

D. Defendants DPT is not entitled to relief on its

counterclaims,

39,

Defendant has no basis for its first counterclaim seeking

cancellations as a result of plaintiff's alleged fraud in se-

curing trademark Registration No. 818, 101 for Domino for

salt, as plaintiff did not engage in any improper or fraudu-

lent behavior,

40),

Defendant has no basis for its second counterclaim seek-

ing a declaration that plaintiff's Domino trademark regis-

trations are unenforceable and not incontestable as a result

of alleged misuse and abuse of same in bringing this suit

because plaintiff has not misused or abused its trademark

registrations by bringing this suit. Drop Dead Co, v. S.C,

Johnson & Son, Ine,, 826 F.2d 87, 189 USPQ 465 (9th Cir,

1963), cert. denied 877 U.S, 907, 141 USPQ 949 (1964),

41,

Each of defendants’ counterclaims should be dismissed.

A 59

Final Judgment and Decree

Having made the within and foregoing findings of fact

and conclusions of law, it is hereby Orperep, ApyupGED and

Decreep that after three (3) months from this date, de-

fendants, their attorneys, agents, employees, servants,

representatives, licensees, franchisees, successors and as-

signs, and all others in privity with them, as well as any

and all other persons acting pursuant to, through, by, or

under the authority of any of the above, are hereby per-

manently Exsorep from using the names Domrno’s and/or

Domino’s Pizza in association with the sale of pizza, bever-

ages, dough mix, sauce mix, dough packet mix and other

pizza ingredients; from franchising, licensing, operating

and supplying pizza restaurants using the names Domrno’s

and/or Domrno’s Praza; from performing any other act

likely to confuse the public into believing that defendants’

products or services emanate [rom plaintiff or that defend-

ants are in any way connected, associated, sponsored, or

affiliated with or sanctioned or approved by plaintiff; and

from doing any act likely to dilute plaintiff’s trademarks ;

provided, however, that during the aforesaid three (3)

months defendants are hereby allowed to expend in the

regular course of their business usage any existing supplies

of expendable materials such as cartons, cups, napkins and

the like containing the names Domrino’s and/or Domrno’s

Pizza; provided further, that when such supplies are ex-

hausted, or at the expiration of the aforesaid three (3)

months, whichever first occurs, the names Domrno’s and/or

Domino’s Pizza shall not appear on same,

Defendants’ counterclaims are hereby DISMISSED and

the Clerk of Court is hereby ORDERED to enter final judg-

ment in favor of plaintiff and against defendants, plaintiff

to have its costs.

It Is So Ordered,

A 60

Amendment to Order and Final Judgment

of September 11, 1979

UNITED STATES DISTRICT COURT

Norraern District or Grorata

ATLANTA Division

Civin, AcTiON

No. 75-1895A

AMSTAR CORPORATION,

v.

Domino’s Piazza, Inegy AtLANtA Pizza, [nc,; Pizza Enrer-

prises, [INc.; Pizza Services, [xc.: and HANNA CREATIVE

MN TERPRISES, ENC,

Defendants.

The Orpver ann Irina Jupament of this court entered

September 11, 1979, consisting of Findings of Fact, Con-

clusions of Law and Final Judgment and Decree, is hereby

amended because of an inadvertent omission in paragraph

S7 of the l’indings of Fact, so that the aforesaid paragraph

87 is deleted in its entirety and a new paragraph 87, in lieu

thereol, is substituted as follows:

87,

In light of the publie’s knowledge of the propensity of

food companies to expand their businesses into a wide vari-

ety of food products and food-related services, the purchas-

ing publie is likely to mistakenly believe that defendants’

A 61

Amendment to Order and Final Judgment

of September 11, 1979

use of the name Domrno’s in connection with “food store

services” and plaintiff's use of Domino in connection with

sugar and other food products customarily distributed in

restaurants, pizza parlors and fast-food establishments are

somehow connected, associated or affiliated,

In all other respects, the Orper anp F'rnat JupamMent of

September 11, 1979 remains unchanged,

Irv Is So OrprERED.

This, the 19th day of Oetober, 1979.

Ricnarp C, FreemMan

United States Distriet Judge

A 62

Order Amending Final Judgment and Decree

UNITED STATES DISTRICT COURT

NortTHEeRN District oF GEORGIA

“TLANTA Division

Civi. AcTION

No. 75-1895A

Amstar CorPORATION, ;

Plaintiff,

VS.

Domrno’s Pizza, Inc.; Atuanta Pizza, Inc.; Pizza Enter-

prises, Inc.; Pizza Services, Inc.; and Hanna CrkeaATIVE

ENTERPRISES, INc.,

Defendants.

Defendants’ Motion to Suspend Injunction and to Defer

Costs Pending Appeal, and plaintiff’s Motion to Amend

Final Judgment and Decree, were argued before the court

on November 2, 1979 commencing at 2:00 P.M. in chambers.

The hearing was reported and a transcript of same is

expected momentarily. After due consideration, the

parties’ motions are each granted in part and denied in

part.

By their motion, defendants seek to stay the court’s

injunction of September 12, 1979, thus maintaining, in

their words, the “status quo” pending appeal so as to allow

them to continue to franchise, license or open new, or

additional, restaurants under the names Domrno’s and/or-.. _

Domrino’s Pizza. Plaintiff opposes the motion and moves

instead for a clarification of the September 12 injunction

to immediately enjoin the franchising, licensing or opening

A 63

Order Amending Final Judgment and Decree

of any new, or additional restaurants under the names

Domrno’s and/or Domrno’s Pizza, contending that the clear

import and intent of the September 12 injunction was to

maintain for a specified period of time the status quo as

of September 12 and to prohibit the opening of any new

restaurants under the names Domrno’s and/or Domrno’s

Pizza. The court’s firm intention was to maintain the

status quo as of September 12, 1979 for a period of three

months, but concedes that the decree is susceptible to

defendants’ interpretation that for a period of three months

after September 12, 1979, defendants could continue to

franchise, license and open new, or additional, restaurants

under the proscribed names. Apparently in reliance upon

their interpretation, defendants have opened or authorized

others to open ten (10) new restaurants under the names

Domrno’s and/or Domrno’s Pizza between September 12,

1979 and November 2, 1979.

At the November 2 hearing, plaintiff made certain con-

cessions with respect to defendants’ use of the names, and,

during a conference held with the court on November 6,

1979, offered to make further concessions for defendants’

use of the names Domrno’s and/or Domrno’s Pizza in

connection with restaurants existing as of November 2,

1979, but continues to oppose strenuously any new, or addi-

tional, restaurants sought to be franchised, licensed or

opened after November 2, 1979. Defendants continue to

seek a stay of the court’s injunction of September 12, 1979

to the extent that they be allowed to continue in operation

all of the restaurants existing as of November 2, 1979 as

well as new, or additional, restaurants franchised, licensed

A 64

Order Amending Final Judgment and Decree

or opened in the regular course of their business after

November 2, 1979 under the names Domrno’s and/or

Domino’s Pizza pending appeal.

After due consideration of the oral and written argu-

ments of the parties, statements and representations made

by counsel to the court, the Orper anp FrnaL JupGMENT

entered September 12, 1979 is hereby AMENDED as follows:

A 65

Amended Final Judgment and Decree

Having made the findings of fact and conelusions of law

set out in the OrpeR AND FrnaL JupGMENT entered Septem-

ber 12, 1979, and having heard defendants’ motion to stay

the injunction contained therein pending appeal and plain-

tiff’s motion for a clarification of same, it is hereby Orprren,

ApsupGcep and Drcrerp that after November 2, 1979, de-

fendants, their attorneys, agents, employees, servants,

representatives, licensees, franchisees, successors and

assigns, and all others in privity with them, as well as any

and all other persons acting pursuant to, through, by, or

under the authority of any of the above, are hereby per-

manently Enzornep from using the names Domrno’s and/or

Domino’s Pizza or any colorable imitation thereof in asso-

ciation with the sale of pizza, beverages, dough mix, sauce

mix, dough packet mix and other pizza ingredients; from

franchising, licensing, operating and supplying pizza res-

taurants using the names Domrno’s and/or Domrno’s Pizza

or any colorable imitation thereof; from performing any

other act likely to confuse the public into believing that

defendants’ products or services emanate from plaintiff or

that defendants are in any way connected, associated, spon-

sored, or affiliated with or sanctioned or approved by plain-

tiff; and from doing any act likely to dilute plaintiff’s

trademarks; Provipep, however, that during the pendency

of any appeal of this decision, defendants are hereby al-

lowed to operate under the names Domino’s and/or Dom-

1No’s Pizza those restaurants opened or in operation on

November 2, 1979 and to use at said restaurants the names

Domrno’s and/or Domino’s Pizza.

Ir Is FurtHer Provinep, that in the event defendants

should fail to appeal this court’s order or should they

A 66

Amended Final Judgment and Decree

abandon same, for a period of eight (8) months from No-

vember 2, 1979, defendants are hereby allowed to use the

names Domino’s and/or Domino’s Pizza in connection with

the operation of those restaurants opened and operating on

November 2, 1979 and during a transitional period at the

aforesaid restaurants for a period of four (4) months there-

after, such latter period to allow defendants to engage in

transitional advertising and labelling to identify its new

marks and tradename as, for example, “formerly Domtno’s

Pizza”, or words or phrases to that effect.

Defendants’ counterclaims are hereby Dismissep and the

Clerk of Court is hereby Orverep to enter final judgment in

favor of plaintiff and against defendants, plaintiff to have

its costs but payment of same Drrerren pending entry

of a final order by the Fifth Cireuit Court of Appeals or

the withdrawal or abandonment of such appeal.

Ir Is So Orperen, this 7th day of November, 1979.

Ricuarp C, FreEMAN

United States District Judge

A 67

Opinion of U.S. Court of Appeals

UNITED STATES COURT OF APPEALS,

Kirra Circuit.

April 8, 1980.

No. 79-3650.

AMSTAR CORPORATION,

Plaintiff-Appellee,

Vv.

Domino’s Pizza, Inc. and Aruanta Pizza, Inc., Pizza EntTErR-

prises, Inc. and Pizza Services, Inc.. HANNA CREATIVE

E\NTERPRISES, INC.,

Defendants-A ppellants.

Before Arnswortu and Hrenprerson, Circuit Judges, and

Hunter,* District Judge.

ArnswortH, Circuit Judge:

Amstar Corporation brought this suit asserting trade-

mark infringement and unfair competition against Domi-

no’s Pizza, Inc. (DPI) and several of its franchisees' to

enjoin their use of Amstar’s federal registration of the

“Domino” trademark. The complaint is based on allega-

tions that defendants’ use of the mark “Domino’s Pizza”

in connection with the sale of fast-food delivered hot pizza

pies constitutes trademark infringement and a_ false

designation of origin or representation in violation of the

* District Judge of the Western District of Louisiana, sitting by

designation.

1. Atlanta Pizza, Inc.; Pizza Enterprises, Inc.; Pizza Services,

Inc.; and Hanna Creative Enterprises, Inc. As found by the district

court, all the foregoing corporations with the exception of Hanna

Creative Enterprises, Inc., are now defunct. Findings of Fact

Nos. 6, 7.

A 68

Opinion of U.S. Court of Appeals

Trademark Act of 1946, 15 U.S.C. § 1051 et seq.;? also that

said use constitutes unfair competition in violation of the

2. Provisions of the Trademark Act pertinent to this litigation

provide:

Any person who shall, without the consent of the

registrant—

(a) use in commerce any reproduction, counterfeit, copy,

or colorable imitiation of a registered mark in connection

with the sale, offering for sale, distribution, or advertising of

any goods or services on or in connection with which such

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

deceive; or

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

registered mark and apply such reproduction, counterfeit,

copy, or colorable imitation to labels, signs, prints, pack-

ages, wrappers, receptacles or advertisements intended to be

used in commerce upon or in connection with the sale, offer-

ing for sale, distribution, or advertising of goods or services

on or in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive.

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

hereinafter provided. Under subsection (b) of this section, the reg-

istrant shall not be entitled to recover profits or damages unless the

acts have been committed with knowledge that such imitation is

intended to be used to cause confusion, or to cause mistake, or to

deceive.

15 U.S.C, § 1114(1).

Any person who shall affix, apply, or annex, or use in connection

with any goods or services, or any container or containers for goods,

a false designation of origin, or any false description or representa-

tion, including words or other symbols tending falsely to describe

or represent the same, and shall cause such goods or services to

enter into commerce, and any person who shall with knowledge of

the falsity of such designation of origin or description or representa-

tion cause or procure the same to be transported or used in com-

merce or deliver the same to any carrier to be transported or used,

shall be liable to a civil action by any person doing business in the

locality falsely indicated as that of origin or in the region in which

said locality is situated, or by any person who believes that he is or

is likely to be damaged by the use of any such false description or

representation.

15 U.S.C.§ 1125(a).

A 69

Opinion of U.S. Court of Appeals

Georgia Uniform Deceptive Trade Practices Act, Ga.Code

Ann. § 106-701 et seq., and dilutes the distinctive quality of

plaintiff’s mark “Domino” in violation of the Georgia anti-

dilution statute, Ga.Code Ann, § 106-115. Defendants

3. The Georgia Uniform Deceptive Trade Practices Act provides

in part:

(a) A person engages in a deceptive trade practice when,

in the course of his business, vocation, or occupation, he:

(1) Passes off goods or services as those of another;

(2) Causes likelihood of confusion or of misunderstand-

ing as to the source, sponsorship, approval, or certification

of goods or services;

(3) Causes likelihood of confusion or of misunderstand-

ing as to affiliation, connection, or association with, or cer-

tification by, another;

(4) Uses deceptive representations or designations of

geographic origin in connection with goods or services;

(5) Represents that goods or services have sponsorship,

approval, characteristics, ingredients, uses, benefits, or quan-

tities that they do not have or that a person has a sponsor-

ship, approval, status, affiliation, or connection that he does

not have;

(6) Represents that goods are original or new if they

are deteriorated, altered, reconditioned, reclaimed, used, or

secondhand;

(7) Represents that goods or services are of a particular

standard, quality, or grade, or that goods are of a particular

style or model, if they are of another;

(8) Disparages the goods, services, or business of another

by false or misleading representation of fact;

(9) Advertises goods or services with intent not to sell

them as advertised;

(10) Advertises goods or services with intent not to supply

reasonably expectable public demand, unless the advertise-

ment discloses a limitation of quantity;

(11) Makes false or misleading statements of fact con-

cerning the reasons for, existence of, or amounts of price re-

ductions; or

?

A 70

Opwmion of U.S. Court of Appeals

denied that plaintiff was entitled to any equitable relief,

asserted trademark misuse by plaintiff, and counterclaimed

for cancellation of plaintiff’s registration of the “Domino”

mark for salt.4 The district court ruled in favor of plain-

tiff, dismissed defendant’s counterclaim, and permanently

enjoyed defendants’ use of the names “Domino” or “Domi-

no’s Pizza.” Defendants then filed this appeal. We reverse

(12) Engages in any other conduct which similarly cre-

ates a likelihood of confusion or of misunderstanding.

(b) In order to prevail in an action under this Chapter, a

complainant need not prove competition between the parties

or actual confusion or misunderstanding.

(c) This section does not affect unfair trade practices

otherwise actionable at common law or under other statutes

of this State. (Acts 1968, pp. 337, 338.)

Ga.Code Ann. § 106-702.

The Georgia anti-dilution statute provides:

Every person, association, or union of working men adopt-

ing and using a trademark, trade name, label or form of

advertisement may proceed by suit and all courts having

jurisdiction thereof shall grant injunctions, to enjoin subse-

quent use by another of the same or any similar trade-mark,

trade name, label or form of advertisement if there exists a

likelihood of injury to business reputation or of dilution of

the distinctive quality of the trade-mark, trade name, label,

or form of advertisement of the prior user, notwithstanding

the absence of competition between the parties or of con-

fusion as to the source of goods or services; except that the

provisions of this section shall not deprive any party of any

vested lawful rights acquired prior to the effective date of this

section. (Acts 1955, pp. 453, 454.)

Ga.Code Ann. § 106-115.

4. Defendants’ counterclaim for cancellation of the “Domino”

mark for salt is based on its contention that the registration was

obtained through false representations concerning the date of first use

in commerce of-“Domino” salt on June 4, 1964. Defendants con-

tend they are damaged by this registration because it is the only

“Domino” registration for non-sugar products which purports to

show a first use date prior to that of the first use date of the mark

“Domino’s Pizza” by DPI on February 12, 1965.

A 71

Opinion of U.S. Court of Appeals

because we find that the district court’s decision was funda-

mentally erroneous since it was predicated on a holding

that there was a likelihood of confusion between the use

of “Domino’s Pizza” by defendants in connection with pizza

store services and the use of “Domino” by plaintiff in

connection with the sale of sugar and individual packets of

condiment items.

I, Background of Dispute

Amstar Corporation holds several federal registrations

for the widely known “Domino” trademark,’ and the mark

5. Plaintiff is the owner of the following trademark registrations

issued by the U.S. Patent and Trademark Office:

Trademark Reg. No. Registration Date Goods

DOMINO 37,082 9/17/01 Hard sugar

design (renewed

1931, 1951,

1971)

DOMINO 37,177 10/8/01 Hard sugar

(renewed

1931, 1951,

1971)

DOMINO 73,099 3/16/09 Hard sugar

(renewed

1929, 1949,

1969)

DOMINO 812,656 8/9/66 Portion-control

mustard

DOMINO 812,657 8/9/66 Portion-control

ketchup

DOMINO 813,101 8/16/66 Salt

DOMINO 813,113 8/16/66 Portion-control

pepper

DOMINO 920,834 9/21/71 Jams and jellies

DOMINO 927,856 1/25/72 Salad dressing,

mayonnaise,

cucumber relish

DOMINO 1,108,831 12/12/78 Non-dairy

powdered

cream substitute

Findings of Fact Nos. 12, 50.

Opinion of U.S. Court of Appeals

has been used since the turn of the century on plaintiff's

various sugar products. Since 1965, plaintiff has also pack-

aged single-serving (portion-control) envelopes of. salt,

pepper, sugar, mustard, ketchup, mayonnaise, jams and

je'lies, salad dressings, taco sauce, honey, cranberry sauce,

tartar sauce and table syrup under the “Domino” mark.

Plaintiff has spent more than $54 million sinee 1947 in

advertising and promoting its “Domino” products, and as

a result there is wide public recognition of the mark as a

source of sugar products, Amstar’s non-sugar, single-sery-

ing condiment packages introduced in 1965 have become the

nation’s largest line of portion-control items, with sales

currently running at a rate of about $14 million per year.

Defendant DPI is the nation’s largest chain of fast-food

delivered pizza pie outlets, with 287 stores in 30 states and

current sales exceeding $48 million annually, The chain

has used the name “Domino Pizza” since early in 1965,

Prior to that date, the pizzeria from which the chain grew

was known as “Dominick’s,” named after its founder, Domi-

nick Devarti. Devarti sold his pizzeria located in Ypsilanti,

Michigan to Thomas Monaghan in December of 1960, In

1963 Devarti withdrew his permission to use the name

“Dominick’s,” and for an interim period Monaghan called

the store “Ypsilanti Dominick's.” During this period Mon-

aghan searched for a suitable new name for his pizzeria.

Tn 1965 an employee suggested the name “Domino's Pizza,”

and Monaghan adopted the name immediately. At trial,

Monaghan stated that he selected the name because it

sounded Italian, it resembled “Dominick’s,” and he was

unaware of any other pizzerias using the name, The com-

pany initially prospered, and in 1967 the first “Domino’s

Pizza” franchise was sold. By the end of 1969, there were

42 “Domino’s Pizza” stores in operation in three states.

A

Opinion of U.S. Court of Appeals

The plaintiff first became aware of DPT on June 24, 1970

when defendants’ “Domino’s” and “Domino’s plus design”

marks were published in the Official Gazette of the Patent

Office, pending registration of the marks by the U. S. Pat-

ent Office. Pursuant to 15 U.S.C. § 1068, plaintiff filed

notices of opposition to registration of the marks. DPI

at the time was in serious financial difficulty, and the oppo-

sitions were not answered. Registration of the marks was

therefore refused by the Patent Office.

In early 1971 plaintiff’s counsel wrote to DPI’s predeces-

sor, Domino’s Ine., requesting that the “Domino’s Pizza”

mark be changed. Domino’s Ine. did not respond to the

letter, and plaintiff took no further action at that time.

Plaintiff did, however, order credit reports on DPI for the

next three years which were used in monitoring DPI’s busi-

ness.

In 1972 and 1974 DPT again sought to register the trade-

mark “Domino’s Pizza” with the U. S. Patent Office. The

mark was passed for publication in the Official Gazette of

the Patent Office on each occasion, signifying that an exam-

iner of the office had concluded that the mark was entitled

to registration, 15 U.S.C. §1062(a). Plaintiff filed notices

of opposition to each of the foregoing applications, and

defendant withdrew each application. Plaintiff ultimately

filed this suit against DPT in September 1975.

In a lengthy memorandum of Findings of Fact and Con-

clusions of Law, the district court held that the defendants

were guilty of trademark infringement (15 U.S.C, § 1114

(1)), false designation of origin (15 U.S.C. §1125(a)),

and dilution, unfair competition and deceptive trade prac-

tices under Georgia law. The court detailed at length the

plaintiff’s use of the “Domino” trademark in connection

with sugar, and more recently with portion-control items,

A 74

Opinion of U.S. Court of Appeals

It found that “[c]onsumers are highly likely to associate

any food products sold or available for sale in super-

markets, groceries or other food stores under the DOMINO

mark with the DOMINO food products sold by plaintiff.”

Finding of Fact No. 381. It further concluded that “[a]s a

result of plaintiff's widespread use, advertising and promo-

tion of the DOMINO trademark on a great variety of

food products, the consuming public is very likely to believe

that DOMLINO’s Pizza, sold in a separate food store outside

of the supermarket, is in some way or manner sponsored

by or affiliated with, or connected with, or emanates from

plaintiff.” Finding of Fact No. 61. The court found that

the mark “Domino’s Pizza” is “so similar to plaintiff's

famous mark DOMINO in sound and appearance that the

public cannot always pereeive any difference between

them.” Finding of Fact No. 63. The court eoneluded that,

as a matter of law, “[u]se of virtually identical marks for

food products distributed to and in food stores to the con-

suming publie is likely to result in confusion, mistake or

deception.” Conclusion of Law No, 10.

On appeal, defendants contend the distriet court erred in

concluding that use of virtually identical marks for food

products is likely to result in confusion or deception, and

defendants also contend that the court erred “by misapply-

ing or failing to apply the eritical factors to be weighed in

assessing likelihood of confusion.” Brief for Appellants

at 10. Plaintiff Amstar contends that the court’s finding

of likelihood of confusion or mistake is not clearly errone-

ous, and must therefore be sustained by this court. Plain-

tiff contends that this finding is substantiated by many

factors, including the notoriety and strength of the “Dom-

ino” mark, the confusing similarity of the marks “Domino’s

Opinion of U.S. Court of Appeals

Pizza” and “Domino,” the related nature of defendants’

goods and services to those of plaintiff, the fact that eus-

tomers for both plaintiff’s and defendants’ goods are the

general consuming public, the existence of some actual con-

fusion, and the results of two surveys which tend to confirm

the likelihood of confusion,

Based on the record before us, we are convinced that the

trial court erred in enjoining defendants’ use of the mark

“Domino’s Pizza.” We therefore reverse the decision of

the district court, and vacate the injunction entered against

defendants.

Il. Standard of Review

Initially, we must determine the appropriate standard of

review applicable to the district court’s finding of likelihood

of confusion. The determination as to whether confusion

is likely has been held to present a question of law, Fleisch-

man Distilling Corp. v. Maier Brewing Co., 314 F.2d 149,

152 (9th Cir. 1963), cert. denied, 374 U.S. 830, 83 S.Ct. 1870,

10 L.Ed.2d 1053 (1968); a mixed question of law and fact,

B. H. Bunn Co, vy. AAA Replacement Parts Co., 451 F.2d

1254, 1261 (5th Cir. 1971), and a question of facet, 7.G./.

Fridays y. International Restaurant Group, Ine., 569 F.2d

895, 899 (5th Cir. 1978). This cireuit has held that likeli-

hood of confusion is a question of fact which can only be

set aside if clearly erroneous. 7.G./. Fridays, supra; Fed.

R. Civ.P. 52(a). The record in the present case indicates

that the district court’s finding of likelihood of confusion

is clearly erroneous.

The court’s 54-page memorandum of Findings of Fact

and Conclusions of Law was copied almost verbatim from

proposed Findings of Fact and Conclusions of Law sub-

A 76

Opinion of U.S. Court of Appeals

mitted by plaintiff’s counsel. While the practice of allow-

ing counsel for the prevailing party to write the trial

judge’s opinion has not been proscribed by this circuit, it

should nevertheless be discouraged. Even though the

court, in adopting plaintiff’s findings and conclusions, stated

that it had “individually considered” them and adopted

them because it “believed them to be factually and legally

correct,” a cursory reading of the district court’s memoran-

dum leaves one with the impression that it was indeed

written by the prevailing party to a bitter dispute. While

the “clearly erroneous” rule of Fed.R.Civ.P. 52(a) applies

to a trial judge’s findings of fact whether he prepared them

or they were developed by one of the parties and mechan-

ically adopted by the judge, “we can take into account the

District Court’s lack of personal attention to factual find-

ings in applying the clearly erroneous rule.” Wilson v.

Thompson, 593 F.2d 1375, 1384 n.16 (5th Cir. 1979). See

also James v. Stockham Valves & Fittings Co., 559 F.2d

310, 314 n.1 (5th Cir. 1977); Volkswagen of America, Inc.

v. Jahre, 472 F.2d 557, 559 (5th Cir. 1973). As was stated

in James:

“(T]he appellate court can feel sligitly more con-

fident in concluding that important evidence has been

overlooked or inadequately considered” when factual

findings were not the product of personal analy-is

and determination by the trial judge. 559 F.2d at

314 n.1, quoting Louis Dreyfus & Cie. v. Panama

Canal Co., 298 F.2d 733, 738 (5th Cir. 1962).

A finding of fact is clearly erroneous “when although

there is evidence to support it, the reviewing court on the

entire evidence is left with the definite and firm conviction

that a mistake has been committed.” United States vy.

A777

Opinion of U.S. Court of Appeals

United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525,

542, 92 L.Ed. 746 (1948). “In other words, we reverse when

the result in a particular case does not reflect the truth

and the right of the ease.” Armstrong Cork Co. v. World

Carpets, Inc., 597 F.2d 496, 501 (5th Cir. 1979). Such is

the case here. Having reviewed all the evidence in this

ease in light of established legal precedent, we are left with

the definite and firm conviction that the district court was

mistaken in econeluding that defendant’s use of the mark

“TDomino’s Pizza” is likely to cause confusion, mistake or

deception.

TIT. Likelihood of Confusion

Infringement of a registered mark is governed by the

provisions of 15 U.S.C. §1114(1), which imposes liability

against “use ... likely to cause confusion, or to cause mis-

take, or to deceive.” The same test is applicable to the

deceptive trade practices claim, Ga.Stat.Ann. § 106-701 ef.

seq.; Baker Realty Co. v. Baker, 228 Ga. 766, 187 S..2d 850,

852 (1972), and common law unfair competition, Holiday

Inns, Inc. v. Holiday Out in America, 481 F.2d 445, 449 (5th

Cir. 1973); B. H. Bunn Co. v. AAA Replacement Parts Co.,

451 F.2d 1254, 1262 (5th Cir. 1971). Likewise, defendants’

use of the mark “Domino’s Pizza” can represent a false

designation of origin or false deseription, proseribed by 15

U.S.C. § 1125, only if defendants’ use of the mark is likely

to be confused with plaintiff’s “Domino” mark. Boston

Professional Hockey Ass’n, Inc. vy. Dallas Cap and Emblem

Mfg., Inc., 510 F.2d 1004, 1013 (5th Cir.), cert. denied, 423

U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975). Plaintiff’s

claims against defendants, except the dilution claim, there-

fore, turn on the determination of whether defendants’ use

A 78

Opinion of U.S. Court of Appeals

of the mark “Domino’s Pizza” is likely to cause confusion,

mistake, or deception.

In this cireuit likelihood of confusion is determined

by evaluating a variety of factors including the type

of trademark at issue; similarity of design; simi-

larity of product; identity of retail outlets and

purchasers; identity of advertising media utilized;

defendant’s intent; and actual confusion.

Roto-Rooter Corporation v. O’Neal, 513 F.2d 44, 45 (5th

Cir. 1975), citing Continental Motors Corp. v. Continental

Aviation Corp., 375 F.2d 857 (5th Cir. 1967); American

Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619 (5th Cir.

1963); Sears, Roebuck & Co. v. All States Life Inswrance

Co., 246 F.2d 161 (5th Cir.), cert. denied, 355 U.S. 894, 78

S.Ct. 268, 2 L.Ed.2d 192 (1957). See also Restatement of

Torts § 729 (1938).°

An evaluation of these factors leads us to conclude that

defendants’ use of the trademark “Domino’s Pizza” presents

no likelihood of confusion, mistake, or deception.

6. The Restatement of Torts lists the following as important fac-

tors in determining confusing similarity:

(a) the degree of similarity between the designation and

the trade-mark or trade name in

(i) appearance;

(ii) pronunciation of the words used;

(iii) verbal translation of the pictures or designs involved;

(iv) suggestion;

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between

the goods or services marketed by the actor and those mar-

keted by the other;

(d) the degree of care likely to be exercised by purchasers.

Restatement of Torts § 729 (1938).

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Opinion of U.S. Court of Appeals

1. Type of trademark

We consider, first, whether “Domino” is a “strong” or a

“weak” mark since the strength and distinctiveness of plain-

tiff’s mark is a vital consideration in determining the scope

of protection it should be accorded. “Strong marks are

widely protected, as contrasted to weak marks.” Lunsford,

Julius R., Jr., “Trademark Basics,” 59 Trademark Rep.

873, 87S (1969).

At trial, defendants introduced into evidence or tendered

into court some 72 third-party registrations of the mark

“Domino” in the U. 8. Patent Office. Brief for Appellant

at 18-24. These registrations were for such products as

eanned fruits, citrus, cigarettes, cheese, wheat flours,

chrome-tanned leather, canned sardines, animal feed, enve-

lopes, pencils, fishing line, candy mints, whiskey, ladies’

hosiery and haireream. In addition, defendants presented

extensive evidence of 15 third-party uses of the “Domino”

mark from 1885 until the present. These uses included

“Domino” cigarettes and matches, which are currently sold

in grocery stores, two restaurants currently operating

under the “Domino’s” mark, a small chain of supermarkets

in the Bronx, New York, with sales of $3,900,000 in 1976,

and a “Domino Donut Mix” distributed by General Mills to

commercial bakers since 1959. The district court dismissed

these and other third-party uses as either long abandoned;

remote as to goods or geography; small, obscure and local-

ized; or used only in shipments to the trade. We do not

believe that such extensive third-party use and registration

of “Domino” can be so readily dismissed. The impact of

such evidence is not dispelled merely because “Domino”

cigarettes and matches are not leading brands, or because

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Opinion of U.S. Court of Appeals

some uses of the mark “Domino” by third parties have not

been related to food products. As was stated by one com-

mentator, “If the owner of Kopax should permit its use by

others on washing powders, shoes, candy bars, or cosmetics,

or if The Coca-Cola Company should permit Coca-CoLa or

Coxe to be used for rain coats, cigarette lighters, golf balls,

or jewelry not of its manufacture, it would not take long for

even these giants in the trademark world to be reduced to

pigmy size.” Lunsford, supra at 878-79. As stated in com-

ment to the Restatement of Torts § 729 (1938), “The greater

the number of identical or more or less similar trade-marks

already in use on different kinds of goods, the less is the

likelihood of confusion... .” The extensive third-party

uses documented in this case were entitled to much greater

weight than were accorded them by the district court. See

Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496,

505, (5th Cir. 1979) (multiple uses of mark “World” discus-

sed in denying injunctive relief); American Heritage Life

Ins. Co. v. Heritage Life Ins, Co., 494 F.2d 3, 13 (5th Cir.

1974) (multiple uses of “Heritage” discussed in denying

injunetive relief); Holiday Inns, Inc. v. Holiday Out in

America, 481 I°.2d 445, 448 (5th Cir. 1973) (multiple uses of

“Holiday” discussed in denying injunctive relief).

Defendants do not contend, nor does this court hold, that

plaintiff’s mark is not a distinctive, well-known mark for

its sugar and related products. The third-party uses and

registrations discussed above merely limit the protection to

be accorded plaintiff’s mark outside the uses to which plain-

tiff has already put its mark. American Sugar Co. v. Texas

Farm Products Co., 159 U.S.P.Q. 679, 681 (T.T.A.B.1968) 3?

7. In American Sugar Co. v. Texas Farm Products Co., 159

U.S.P.Q. 679, 681 (T.T.A.B.1968), American Sugar (predecessor

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Opinion of U.S. Court of Appeals

Scott Paper Co. v. Scott’s Liquid Gold, Inc., 598 F.2d 1220

(3rd Cir. 1978) (plaintiff’s ownership of the mark “Scott”

as applied to paper products does not preclude defendant's

use of “Seott” on furniture polish).

Additional support for the conclusion that the mark

“Domino” should be accorded only limited protection out-

side of plaintiff’s sugars and related food products can be

derived from the nature of the mark itself. “Domino,” in

spite of the district court’s finding that it is “not primarily

a surname,” Finding of Fact No. 98, is indeed the surname

of a good number of people, as a glance at a local telephone

directory can verify. The word is a common English name

in interest to Amstar) opposed registration by Texas Farm Products

of the mark “Domino” for use on its cattle feed. The evidence

established that American Sugar sold various sugar syrups and by-

products (principally blackstrap molasses) under the “Domino”

mark, which were used in conjunction with or alone as cattle feed.

The Trademark Trial and Appeal Board refused registration by

Texas Farm Products, holding that both American Sugar’s “Domino”

products and Texas Farm Products’ feed went through the same

channels of trade to the same consumers. Texas Farm Products

had contended that third-party uses of “Domino” limited American

Sugar’s rights in the mark. The Appeal Board’s response to that

argument is instructive here:

Applicant also contends that “DOMINO” is a weak mark

as evidenced by the third party registrations and uses thereof

hereinbefore referred to. This contention would be relevant,

however, only if opposer were seeking protection of the mark

in a field other than that in which it had previously been

used, and such is not here the case.

159 U.S.P.Q. at 681. Thus, the Appeal Board, while denying

registration to Texas Farm Products, acknowledged that extensive

third-party use of the mark “Domino” might mandate a different

result if Amstar sought protection of the mark in a field “other than

that in which it had previously been used.” As Amstar has never

used the “Domino” mark in connection with the sale of fast-food

delivered pizzas, this is such a case.

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Opinion of U.S. Court of Appeals

for a game, a hooded costume, a type of mask, and a theory

of political expansion. Thus, “Domino” is not a coined

word, is not purely fanciful, and while its application to

sugar may be arbitrary,’ it is still not to be aecorded the

same degree of protection given such coined and fanciful

terms as “Kodak” or “Xerox.” Armstrong Cork Co. v.

World Carpets, Inc., 597 F.2d 496, 505 (5th Cir. 1979) (wide

use of mark “World” results in little likelihood of confu-

sion); Holiday Inns, Inc. v. Holiday Out in America, 481

F.2d 445, 448 (5th Cir. 1973) (eommon word “Holiday” is

of weak trademark significance) ; Fl Chico, Inc. v. El Chico

Cafe, 214 F.2d 721, 725 (Sth Cir. 1954) (27 trademark regis-

trations of “El Chico,” along with fact it was the name of

a Moorish king of Granada in 1482, and is the name of a

Mexican town and a river in the Philippines, make the term

a weak trade name deserving limited protection).

2. Similarity of design.

“Similarity of appearance is determined on the basis of

the total effect of the designation, rather than on a com-

parison of individual features.” Restatement of Torts

§ 729, comment b (1938). Considering the total effect of

the respective marks, there is little similarity between

plaintiff’s and defendants’ marks. As shown below, and as

found by the district court, plaintiff’s mark “almost always

is presented on a bias with respect to the horizontal.”

Finding of Fact No. 14. Defendants’ mark, far from sug-

gesting plaintiff’s mark, is stylistically and typographically

distinguishable.

We must also consider the commercial impression created

by the mark as a whole. Seabrook Foods, Inc. v. Bar-Well

8. At one time, “Domino” as applied to plaintiff's sugar was

descriptive, not arbitrary. There is evidence that. near the turn of

the century, plaintiff sold domino-shaped pieces of hard sugar in half

bales. Tr. 213-14.

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Opinion of U.S. Court of Appeals

Foods, Ltd., 568 F.2d 1342, 1846 (Cust. & Pat.App. 1977) ;

Colgate-Palmolive Co. v. Carter-Wallace, Inc., 482 F.2d

1400, 1402, 56 CCPA 973 (1970). “It is the overall impres-

tion that counts.” Armstrong Cork Co, v. World Carpets,

Inc., 597 F.2d 496, 502 (Sth Cir. 1979). “Domino,” in pos-

sessive form, next to the word “pizza,” produces a comnmer-

cial impression quite different from the same mark placed

next to “sugar.” “Domino” is derived from Latin, is an

Italian surname, and in combination with “pizza” creates

an Italian connotation. “The setting in which a designation

is used affects its appearance and colors the impression

conveyed by it.” Restatement of Torts § 729, comment b

(1938). The impression conveyed by defendants’ use of

“Domino’s Pizza” is substantially different from that cre-

ated by plaintiff’s use of “Domino Sugar.”

Additionally, the U.S. Patent Office has made, on three

separate occasions, an initial determination that DPI is

entitled to register the mark “Domino’s Pizza.” DPI ap-

plied to register “Domino’s” or “Domino’s Pizza” plus cor-

responding designs three different times. Each time, a

trademark examiner in the office determined that DPI

was entitled to have the mark registered. See 15 U.S.C.

§ 1062(a). The trademark examiner on one of these occa-

sions wrote that “[a] search of the Office records fails to

show that the mark, when applied to applicant’s services,

is confusingly similar to any registered mark.” Record on

Appeal at 2815. At the time this search was made, plaintiff

had registered “Domino” for sugar, mustard, ketchup, salt

and pepper. Id.

3. Similarity of products

The district court stated in some detail its view of the

similarities between defendants’ pizza and plaintiff’s sugar,

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Opinion of U.S. Court of Appeals

salt, mustard, ketchup and other condiments. The court at

one point went so far-as to state the “consuming publie con-

siders sugar to be a related food product to pizza.” Find-

ing of Fact No. 84. However, we fail to see any great

similarity between the respective parties’ wares, “About

the only things they have in common are that they are edi-

ble.” California Fruit Growers Exchange v. Sunkist Bak-

ing Co., 166 F.2d 971, 973 (7th Cir. 1947).

4, Identity of retai’ outlets and purchasers

Dissimilarities between the retail outlets for and the pre-

dominant consumers of plaintiff’s and defendants’ goods

lessen the possibility of confusion, mistake, or deception.

The dissinilarities here are substantial.

Plaintiff’s “Domino” sugar preducts are distributed to

the public primarily through grocery stores; defendants’

pizzas and soft drinks are distributed exclusively through

fast-food outlets specializing in home delivery or customer

pickup, but offering no facilities for sit-down service.

Plaintiff attempts to narrow the gap between itself and

defendants by arguing that its single-serving sugar packets,

and more recently its line of single-serving condiments, are

widely used in fast-food outlets and restaurants. Thus, it

argues, the public has come to associate the mark “Domino”

with restaurants and fast-food establishments. While the

argument carries some weight, it is insufficient to overcome

basic differences between plaintiff’s and defendants’ modes

of distributing their products.

Although “Domino” sugar and individual condiment pack-

ages are distributed to the public through restaurants and

fast-food chains, they are not sold to the publie by plaintiff

but are generally distributed to customers by the restaurant

owners. <Amstar is not engaged in the direct sale of condi-

ment packages to the public. In contrast, ““Domino’s Pizza”

products are sold directly to the public through “Domino’s

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Opinion of U.S. Court of Appeals

Pizza” outlets. While the public may decide to purchase

a pizza based on its perception of “Domino’s Pizza” quality,

it is unlikely anyone would choose to frequent or avoid a

restaurant because of the brand of condiment packages

carried by the restaurant. Thus, while Amstar might

broadly be classified as “in the restaurant business,” it is in

that business at a different level than defendants.

There are substantial dissimilarities between the pre-

dominant purchasers of plaintiff’s and defendants’ prod-

ucts. According to surveys presented at trial, “Domino’s

Pizza” patrons are primarily young (85.6% under 35 years

of age), single (61%) males (63.3%). This coincides with

the fact that 75% of the “Domino’s Pizza” stores through-

out the country are situated in college campus towns or

around military bases where the advertising for “Domino’s

Pizza” is directed to the 18- to 34-year-old single male. In

contrast, “Domino” sugar purchasers are predominantly

middle-aged housewives.

_

5. Identity of advertising media utilized

The district court made extensive findings of fact regard-

ing plaintiff’s advertising of its “Domino” mark. The

eourt found Amster advertised extensively in nationally

circulated magazines, newspapers and trade journals, and

spent substantial sums of money on radio and television

commercials. It stated “Domino is the only sugar on net-

work television every week.” Finding of Faet No. 23. In

contrast to plaintiff’s broadly based national advertising,

defendants’ advertising has a completely different focus.

Because over 80% of defendants’ pizza sales involve free

delivery, defendants’ advertising is of two principal types:

(i) store signs, flyers, delivery car signs and o

This text is long and has been trimmed here. Open the source document for the complete record.