# Opposition — International Order of Job's Daughters v. Lindeburg & Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385007_1702%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition - **Published:** January 1, 1981 - **Citation:** 452 U.S. 941 ## Text FIUrY. ‘ MAY 26 196! STCV CLLK 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 aie ae 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 ‘a eer Seen neo Sa ae ene Sa ee ee eee ee a BOWNE.PERNAU WALOM © 190 MINTM GY. © 6... CA 94108 © (418) 864.8900 SR rae Se ae Mai i | Mie © RS ie OU Nas a AN ; 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 ; Soe faa . et, ¥ yd fT, 24 a ii 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 LA f gk « wir g es S 2 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 ~~? 4 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 . ae 5 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. i Sg WAY; or. ae Ay: ta 8 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 ") --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385007_1702%3A2. Public record. Not legal advice.