Opposition — International Order of Job's Daughters v. Lindeburg & Co.

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MAY 26 196!

STCV

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NO. 80-1869

In the Supreme Court

oF THE

United States

Ocroser Term, 1980

INTERNATIONAL OrnpeEr or Jos's DAVOHTERS

Petitioner,

vs,

LinpKeBURG AND CoMPANy,

Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION

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Cuarues EF. Townsern, Jr.

Steuart St. Tower, 20th Floor

One Market Plaza

San Francisco, CA 94105

Attorney for Respondent

Of Counsel:

Grorce M. Scrwas

Townsenn anv Townsenn

Steuart Street Tower,

20th Floor

One Market Plaza

San Francisco, CA 94105

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TABLE OF CONTENTS

Summary of issues raised

II

The Ninth Circuit did not decide that a fraternal em-

blem could never function as a trademark ..............

Ii

There is no conflict between the Fifth and Ninth Cir-

cuit law on the subject of protectable trademarks

IV

This case does not merit a fact review by this court

V

Conclusion ;

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TABLE OF AUTHORITIES CITED

Cases

| Page

Boston Professional Hockey Ass’n, Inc. v. Dallas Cap

& Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975)

cert. denied, 423 U.S. 868 20... eeeeececececeeeeeneneeeeeee 2, 4,5

Cohens v. Commonwealth of Virginia (1821) 19 U.S.

264, 6 Wheat 264; 5 L.Ed 257 ................... 3

Kentucky Fried Chicken v. Diversified Packaging

Corp., 549 F.2d 368 (5th Cir. 1977) —.0222.22222-- een 2,5, 6

Statute

Lanham Act, Section 43(a) (15 U.S.C. § 1125(a)) ...... 4

NO. 80-1869

In the Supreme Court

OF THE

United States

Octroser Term, 1980

INTERNATIONAL ORDER OF JOB’s DAUGHTERS

Petitioner,

Vs.

LINDEBURG AND CoMPANY,

Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION

Respondent respectfully opposes granting of the Peti-

tion for Certiorari for reasons set forth hereinafter.

I

SUMMARY OF ISSUES RAISED

None of the “QUESTIONS PRESENTED” on page (i)

of the Petition merit this Court’s review.

The First question, whether the name or emblem of a

fraternal organization can ever serve as a trademark, is

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not in issue—the Ninth Circuit expressly acknowledged that

such emblems could serve as trademarks, but found that

in this case the Job’s Daughters emblem did not.

The Second question, whether the Ninth Cireuit correctly

rejected the Boston Hockey reasoning that a purely func-

tional use of an emblem violates the Lanham Act, is fal-

lacious because Boston Hockey is not based on any such

“reasoning”.’ Further, the rejection by the Ninth Circuit

of certain specific language in the Boston Hockey decision,

does not create a conflict between the Ninth and Fifth

Circuits.

The Third question, whether the sale of merchandise

bearing Petitioner’s emblem violates the purportedly ex-

clusive rights of Petitioner, requests this Court to decide

the correctness of the trial court Findings as well as the

correctness of the Ninth Circuit’s conclusions applying

universally followed principles of trademark law to said

Findings.

II

THE NINTH CIRCUIT DID NOT DECIDE THAT A

FRATERNAL EMBLEM COULD NEVER FUNCTION

AS A TRADEMARK ‘

Petitioner’s brief erroneously characterizes the Ninth

Circuit Opinion as excluding fraternal emblems from ever

being regarded as trademarks and protectable as such. The

Opinion of the Court states clearly that such an emblem

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

F.2d 368 (5th Cir. 1977), discussed infra.

ged

3

could function as a trademark, but under the facts as found

by the trial court, the Job’s Daughters emblem did not so

function as a trademark:

“Our holding does not mean that a name or emblem

could not serve simultaneously as a functional com-

ponent of a product and a trademark. [cit.] That is,

even if the Job’s Daughters name and emblem, when

inscribed in Lindeburg’s jewelry, served primarily a

functional purpose, it is possible that they could serve

secondarily as trademarks if the typical customer not

only purchased the jewelry for its intrinsic functional

use and aestheic appeal but also inferred from the in-

signia that the jewelry was produced, sponsored, or

endorsed by Job’s Daughters.” (Opinion, p. 10)

Ill

THERE IS NO CONFLICT BETWEEN THE FIFTH

AND NINTH CIRCUIT LAW ON THE SUBJECT OF

PROTECTABLE TRADEMARKS

Respondent disagrees that there is any conflict whatso-

ever between the legal test that would be applied to the

facts of this case by the Fifth or the Ninth Circuit or any

other Circuit. Rather, the only difference between cases in

the respective Circuits is their outcome, dependent neces-

sarily on the peculiar facts of each case. See Cohens v.

Commonwealth of Virginia (1821) 19 U.S. 264; 399-400; 6

Wheat 264; 5 L.Ed 257, 290.

“It is a maxim, not to be disregarded, that general

expressions, in every opinion, are to be taken in con-

nection with the case in which those expressions are

used. If they go beyond the case, they may be

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respected, but ought not to control the judgment in a

subsequent suit, when the very point is presented for

decision. The reason of this maxim is obvious. The

question actually before the court is investigated with

care and considered in its full extent. Other principles

which may serve to illustrate it are considered in their

relation to the case decided, but their possible bearing

in all other cases is seldom completely investigated.”

There is no difference whatsoever between applicable

law applied to cases of this type by the various Circuits.

In Boston Professional Hockey Ass’n, Inc. v. Dallas Cap

& Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975) cert.

denied, 423 U.S. 868, the Fifth Circuit found that pur-

chasers would likely be confused as to the origin or spon-

sorship of merchandise sold bearing the emblems of

various hockey teams. Here, the Ninth Circuit found that

purchasers would not be confused as to the origin or spon-

sorship of merchandise bearing the Job’s Daughters

emblem. The legal test for trademark infringement is the

same in both cases, namely, whether a “likelihood of con-

fusion” exists as to origin or sponsorship. This is the

statutory test of Section 43(a) of the Lanham Act [15

U.S.C. 1125(a)]. |

It is true that the Ninth Circuit did reject certain

specific language contained in the Boston Hockey decision,

refusing to interpret that decision as a broad extension of

trademark principles. However, as noted by the Ninth

Circuit in Footnote 10 of the Job’s Daughters Opinion, any

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such broad reading of the Boston Hockey decision had

already been rejected by the Fifth Circuit in its subsequent

decision in Kentucky Fried Chicken v. Diversified Pack-

aging Corp., 549 F.2d 368 (5th Cir. 1977). In Kentucky

Fried Chicken the Fifth Cireuit explained its earlier

Boston Hockey decision as follows:

“Trademark infringement occurs only when the use

sought to be enjoined is likely to confuse purchasers

with respect to such things as the product’s source, its

endorsement by the plaintiff, or its connection with the

plaintiff [citations omitted]. Our cases demonstrate

unbroken insistence upon likelihood of confusion, and

by doing so they reject any notion that a trademark is

an owner’s ‘property’ to be protected irrespective of

its role in the operation of our markets. [citation

omitted ]

These principles were not altered by our recent

decision in Boston Professional Hockey Association,

Inc., v. Dallas Cap & Emblem Manufacturing, Inc., 510

F.2d 1004 (5th Cir. 1975), cert. denied, 423 U.S. 868,

96 S.Ct. 132, 46 L.Ed 2d 98 (1975). Acknowledging

that the confusion question there was conceptually

difficult, we found the confusion requirement satisfied

by the ‘certain knowledge of the buyer that the source

amd origin of the trademark symbols were in Boston

Hockey.’ 510 F.2d at 1012 (certain emphasis added).

In the case at bar the buyers undoubtedly possess

certain knowledge that the source and origin ‘of the

trademark symbols’ is in Kentucky Fried. By empha-

sizing this one phrase from our comprehensive opinion,

Boston Hockey could therefore be read to dispose of

the confusion issue here.

6

‘We decline, however, to adopt that reading. Boston

Hockey also reiterated our unbroken insistence on a

showing of confusion, and we believe that our opinion

must be read in that context.” 549 F.2d 368, 388-389.

In deciding the case at bar, the Ninth Circuit, (like the

Fifth Cireuit in Kentucky Fried Chicken, supra) deter-

mined that there was no confusion or likelihood of con-

fusion as to origin or sponsorship:

“We conclude that Job’s Daughters did not meet its

burden of proving that a typical buyer of Lindeburg’s

merchandise would think that the jewelry was pro-

duced, sponsored, or endorsed by the organization.

(Opinion p. 12)

Therefore, if asked to decide this case on its particular

facts, the Fifth Circuit would apply the exact same legal

test and thereby reach the same result as the Ninth Circuit

—i.e., lack of likelihood of confusion as to source or

sponsorship.

IV

THIS CASE DOES NOT MERIT A FACT REVIEW BY

THIS COURT

Petitioner requests, in effect, that this Court review the

undisputed facts of this case, and reach an independent

judgment as to whether the Ninth Circuit correctly decided

that Respondent Lindeburg’s sale of merchandise bearing

Petitioner’s name or emblem does not give rise to a likeli-

hood of confusion or origin or sponsorship—the proper

test to be applied in all trademark cases. It is submitted

that this type of analysis does not merit Supreme Court

7

review, particularly in view of the Ninth Circuit’s definitive

examination and adoption of the trial court’s Findings in

this case:

“We conclude from our examination of the trial

judge’s findings and of the underlying evidence that

Lindeburg was not using the Job’s Daughters name

and emblem as trademarks. The insignia were a promi-

nent feature of each item as to be visible to others

when worn, allowing the wearer to publicly express her

allegiance to the organization. Lindeburg uever desig-

nated the merchandise as ‘official’ Job’s Daughters’

merchandise or otherwise affirmatively indicated spon-

sorship. Job’s Daughters did not show a single

instance in which a customer was misled about the

origin, sponsorship, or endorsement of Lindeburg’s

jewelry, not that it received any complaints about

Lindeburg’s wares. Finally, there was evidence that

many other jewelers sold unlicensed Job’s Daughters

jewelry, implying that customers did not ordinarily

purchase their fraternal jewelry from only ‘official’

sources.” (Opinion, p. 12)

V

CONCLUSION

This case does not merit Supreme Court review because

it represents merely the application of established trade-

mark principles to the peculiar facts of this case. Any

contention that a conflict exists between the Circuits as to

the legal principles to be applied to the facts of this case

is an illusion—there is no conflict in the law to he applied.

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The Circuits have reached different results in different

cases because the facts, and not the applicable law, were

different.

Dated: May 26, 1981

Respectfully submitted,

Cuarues KE. Townsenp, JR.

Steuart St. Tower, 20th Floor

One Market Plaza |

San Francisco, CA 94105

Attorney for Respondent

Of Counsel;

Gerorce M. Scuwas

TOWNSEND AND TOWNSEND

Steuart Street Tower,

20th Floor —

One Market Plaza

San Francisco, CA 94105

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