Appendix — Leathersmith of London, Ltd. v. Alleyn

la

DECISION OF THE UNITED STATES COURT OF

APPEALS FOR THE FIRST CIRCUIT

UNITED STATES COURT OF APPEALS

For the First Circuit

No. 82-1212 - Dated December 14, 1982

LEATHERSMITH OF LONDON, LTD.,

A NEW YORK CORPORATION,

Plaintiff, Appellant,

Vv.

PHILIP J.S. ALLEYN, ETC.,

‘Defendant, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT

COURT FOR THE DISTRICT OF MASSACHUSETTS

{Hon. David S. Nelson, U.S. District

Judge]

Before Davis*, Campbell and Bownes,

Circuit Judges.

Cameron K. Wehringer, with whom William

M. Braucher was on brief, for appellant

Jeffrey F. Jones, with whom Palmer & Dodge

was on brief, for appellee.

* Of the Federal Circuit, sitting by des-

ignation.

2a

DAVIS, Circuit Judge. Plaintiff-

appellant Leathersmith of London, Ltd.,

is the licensee and subsidiary of a Brit-

ish corporation whose leather prod-

ucts it markets in this country (includ-

ing Massachusetts) under the trademark

"Leathersmith" which is registered under

the Lanham Act, 15 U.S.C. §§ 1114,

1121, for infringement of the trademark

by defendant Philip J.S. Alleyn who had

been doing business in Cambridge, Massa-

chusetts as "TANTALUS Custom Leather-

smiths & Bookbinders." On cross-

motions for summary judgment, the Dis-

trict Court gave judgment for defendant-

appellee, holding that "leathersmith" is

a generic term for a leather craftsman

and therefore not properly registrable

as a trademark. We affirm, on somewhat

3a

narrower grounds also urged by appellee.

Alleyn is a ekilled leather crafts-

man and book binder. From 1975 until

very recently he operated a small shop in

Cambridge under the name given above;

from 1971 to 1975 he operated out of his

home in Boston under the name "TANTALUS

Custom Leathersmiths."" He has earned

approximately $8,000 per year from his

business. He has taught his craft, and

done custom business only--his products

are made to order. He sells only his

own products and has worked only at his

shop (or, previously, at his home). He

does no newspaper advertising (or any

significant advertising) or general mail-

ing. On some items he makes he has used

“TANTALUS" alone. He doee not use

“"Leathersmith" or "Leathersmiths" alone

4a

but always as part of the full name of

his business, “TANTALUS Custom Leather-

smiths and Bookbinders." Until this dis-

pute arose in 1979, he did not know of

plaintiff's trademark or business.

We need not decide whether "Leather-

smith" is wholly non-registrable because

generic; plaintiff cannot prevail

against this defendant even if that term

were considered a good and enforceable

trademark in other circumstances. The

grounds of our more limited holding are,

first, that there has been no showing of

a likelihood of confusion in this in-

stance, and, second, that defendant's use

of "Leathersmiths" in the name of his

business is a "fair use" exempted by the

Lanham Act from liability.

1. All footnotes are at end of Decision.

5a

I

The Lanham Act, under which this

suit lies, gives a remedy for infringe-

ment of a registered mark only if the

allegedly infringing use "is likely

to cause confusion, or to cause mistake,

or to deceive." 15 U.S.C. § 1114(1).

This element of confusion, mistake or

. deception is a prerequisite, in this

circuit and elsewhere, for relief under

that provision. Purolator, Inc. v.

EFRA Distributors, Inc., 687 F.2d 554,

559 (lst Cir. 1982); Pignons S.A. v.

Polaroid Corp., 657 F.2d 482, 486-87

(lst Cir. 1981); DeCosta v. Columbia

Broadcasting System, Inc., 520 F.2d 499,

513 (let Cir. 1975); Baker v. Simmons

Co., 307 F.2d 458, 461 (lst Cir. 1962);

Esquire, Inc. v. Esquire Slippers

6a

Manufacturing Co., 243 F.2d 540, 542

(lst Cir. 1957); Venetianaire Corp. of

America v. A&P Import Co., 429 F.2d

1079, 1081 (2d Cir. 1970); B&L Sales

Associates v. H. Daroff & Sons, 421

F.2d 352, 353-54 (2d Cir. 1970);

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

615 F.2d 252, 258-59, 265 (Sth Cir.

1980). The plaintiff has the burden of

showing this component--which is not a

defense but an essential element of

the claim of infringement. See Presi-

dent and Trustees of Colby College v.

Colby College - New Hampshire, 508 F.2d

804, 810 (lst Cir. 1975). We hold that

Leathersmith of London has plainly not

made that proof.

There is, first of all, no confusion

as to the separate and unrelated character

7a

of the businesses of the two parties.

The District Court so held, and plain-

tiff does not claim otherwise. Plain-

tiff is a large, international concern,

with wide marketing, while defendant is

small, local to the Boston area, and

deals only in his own custom work. The

word "Leathersmith” does not appear on

defendant's products, nor is it used in

connection with those products except as

it appears in defendant's name, ‘'TANTA-

LUS Custom Leathersmiths and Bookbind-

ers."" In that name, "Leathersmiths" is

obviously employed to describe one of

defendant's crafts--worker in leather--

parallel to the other term in the name

"Bookbinders". (The District Court so

found, wholly correctly.) There is no

likelihood that purchasers or shippers

8a

would consider the two businesses con-

nected in any way.

Nor is there likelihood of confu-

sion or mistake as to the source or ori-

gin of Alleyn's goods.” As we have said,

"Leathersmith" did not appear on, or in

connection with, defendant's goods (ex-

cept with respect to the name of the

business); Alleyn's goods, while made

of leather, were all custom-made for the

particular customer who would know that

they came from defendant, not plaintiff

or some other source; plaintiff's leather

goods, on the other hand, were pre-

fabricated and sold at retail by a

company called "Leathersmith of London"'

Alleyn's only use of "Leathersmith", in

the name of his business, shows clearly

that that word refers to the craft, not

9a

to the source or origin of the products,

and that business name ("TANTALUS Custom

Leathersmiths and Bookbinders") is quite

different from either "Leathersmith"

alone or plaintiff's name, "Leathersmith

of London." Moreover, there is no over-

lap between the marketing channels used

by plaintiff and chess of defendant.

Alleyn sells his own custom-made products

through his shop and does not sell the

products of any other person (including

plaintiff and plaintiff's parent). This

absence of convergent marketing channels

or of competition serves to decrease the

likelihood of confusion. Cf. AMF, Inc.

v. Sleekcraft Boats, 599 F.2d 341, 353

(9th Cir. 1979); Fairway Foods v. Fairway

Markets, 227 F.2d 193 (9th Cir. 1955);

Griesdeck Western Brewing Co. v. Peoples

10a

Brewing Co., 149 F.2d 1019, 1022-23

(8th Cir. 1945).

Plaintiff's only response is that,

since its mark is valid and incontestable,

defendant's use of the very words

“Leathersmith" or "Leathersmiths" is

enough to show likelihood of confusion

or mistake. That might be true where the

goods are identical and are marketed in

the same channels of trade (see American

Home Products v. Johnson Chemical Co.,

589 F.2d 103, 106-07 (2d Cir. 1978)), but

the rule is quite inappropriate here

where the circumstances differ so marked-

ly: the goods are not identical and there

are no converging market channels;

"Leathersmiths" is used only in defendant's

business name and indisputably refers to

Alleyn's craft, not to the goods; even

lla

then, "Leathersmiths" appears only as

one part of that business name which as

a whole is unmistakably different from

the trademark or from "Leathersmith of

London."

In sum, the record permits no con-

clusion other than that there is no

likelihood of eieiitidalleds: mistake, or

deception.

II

Alternatively, plaintiff falls

afoul of the so-called "fair use" de-

fense given by the Lanham Act. That

statute provides (15 U.S.C. § 115(b)

(4)) that, in the case of a registered

mark that has become incontestable,”

registration "shall be conclusive

evidence of the registrant's right to

use the registered mark * * * except

12a

when one of the following defenses or

defects is established:

kKkKKEK

(4) that the use of the name,

terms, or device charged to be

an infringement is a use, other-

wise than as a trade or service

mark, of the party's individual

name in his own business, or of

the individual name of anyone in

privity with such party, or of

a_term or device which is descrip-

tive of and used fairly and in

good faith only to describe to

users the goods or services of

such party, or to their geo-

graphic origin; * * *," (Emphasis

added).

This case fits within the empha-

sized words of this statutory defense.

Alleyn did not adopt “Leathersmith"

(or "Leathersmiths") as a trade or ser-

vice mark, but rather, as the court

below specifically found, "as a generic

description of his craft." The finding

as to intent is supported by defendant's

l3a

affidavit, not contravened by anything

else, and is binding. "Leathersmith"

can easily be such a description of

the craft of working with leather; it

is a combination of the ordinary words

"leather" and "smith", * comparable

to "tunesmith", “jokesmith", "song-

smith", and “wordsmith" (which appear

in Webster's Third New International

Dictionary of the English Language

(1968)). Defendant's innocent good

faith without any knowledge of plain-

tiff's trademark or business, was also

found below, and is not now contested.

Similarly, there is no evidence of any

intent to deceive customers or to ap-

propriate plaintiff's good will.

It follows that Alleyn has de-

cisively proved that he has fairly and

l4a

in good faith used "Leathersmith", not

as a trade or service mark, but only

as descriptive, to describe to users

the type of goods he provides. This

usage is wholly within the terms and

meaning of 15 U.S.C. § 1115(b) (4),

supra. He has therefore a full de-

fense for his employment of "Leather-

smith". Cf. M.B.H. Enterprises, Inc.

v. WOKY, Inc., 633 F.2d 50 (7th Cir.

1980); Abercrombie & Fitch Co. v.

Hunting World, Inc., 537 F.2d 4, 12-13

(2d Cir. 1976).

For these reasons, the decision be-

low is

Affirmed.

15a

FOOTNOTES

1. We leave open the question

whether "Leathersmith" is too generic

to be registered. We note, too, that

the District Court did not consider

plaintiff's claim that this should be

a class action; nor need we do so in

the light of our holding.

2. There was obviously no decep-

tion since defendant innocently adopted

his business name, without knowledge

of plaintiff's trade name or trademark.

In addition, it is relevant that plain-

tiff made no showing whatever of actual

confusion. See Inc. v. Fay, 540

F.2d 1181, 1485-86 -(Ueh Cle 199 Cir. 1976).

3. We assume, though there is

some dispute on the point, that plain-

tiff's mark has become incontestable

under 15 U.S.C. § 1065.

4. Webster's Third New Interna-

tional Dictionary defines "smith" as in-

cluding “one who constructs, builds,

or produces something; maker--often

used in combination (skismith) (tune-

smith) ."

Plaintiff has claimed that the word

was originally derived by plaintiff's

English parent (T. J.&J. Smith, Ltd.)

through a combination of its trade

(leather) with that company's name

(Smith), but the District Court cor.

l6éa

rectly noted that courts must look,

not to the owner's subjective intent,

but to the natural interpretation the

public would give to the word. "We

are dealing here with the common use of

language." Application of Automatic

Radio Mfg. Co., F. ,

(CCPA 1968).

17a

DECISION OF THE UNITED STATES

DISTRICT COURT, DISTRICT OF

MASSACHUSETTS

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

LEATHERSMITH OF LONDON, LTD.,

)

a New York Corporation, )

)

Plaintiff, )

)

Vv. )

)

PHILIP J. S. ALLEYN, doing )

business as Tantalus Custom )

Leathersmiths & Bookbinders, )

as an individual defendant )

and as representative of a )

class, )

)

Defendant. )

CIVIL ACTION

NO, 79-2040-N

MEMORANDUM AND ORDER

NELSON, D. J. JANUARY 26, 1982

Plaintiff brought this trademark

action under the Lanham Act, 15 U.S.C.

§ 1051 et seq., and seeks to enjoin

18a

defendant from infringing its regis-

tered trademark and engaging in unfair

practices. Plaintiff also seeks like

sanctions against all members of the

class who, allegedly, similarly infringe

plaintiff's rights.* Both parties have

moved for summary judgment and have sub-

mitted extensive affidavits.

The essential facts are not in dis-

pute, and I find as follows. Plaintiff,

Leathersmith of London, Ltd., is a New

York corporation, and a subsidiary of

T. J. & J. Smith, Ltd. of London,

England.” Plaintiff merchandises

leather products throughout the United

States, including Massachusetts. Plain-

tiff adopted the trademark "Leathersmith"

1. All footnotes are at end of Decision.

19a

in 1949, and subsequently registered

it with the United States Patent Of-

fice for use on its various leather

products. Since 1975, defendant has

conducted a business in Cambridge,

Massachusetts under the name "'TANTALUS

Custom Leathersmiths and Bookbinders."

Prior to that time, from 1971-1975,

defendant conducted his business in

Boston and out of his home as "TANTALUS

Custom Leathersmiths." Defendant is a

skilled leather craftsman and book-

binder. He teaches his craft and sells

his goods on a custom basis out of his

only shop in Cambridge. He services

an exclusive clientele who desire custom-

made leather goods. Defendant does no

significant advertising. He earns ap-

proximately $8,000 per year from his

20a

business. Until the commencement of

this action, defendant was unaware of

plaintiff's trademark or business.

Plaintiff does not, and could not

reasonably, claim that the two names

“Leathersmith of London" and “TANTALUS

Custom Leathersmiths and Bookbinders"

could lead the public to confuse the

two businesses, and conclude that

they are related. Rather, plaintiff

claims that its mark "Leathersmith" is

a registered trademark entitled to pro-

tection. Defendant responds that

“leathersmith" is a generic term for

leather craftsmen, and is not entitled

to protection. After careful considera-

tion of the applicable law, the Court

denies plaintiff's request for a prelin-

inary injunction and grants defendant's

2la

motion for summary judgment.

The fact that plaintiff may have

used the name “Leathersmith" prior to

anyone else, and has spent considerable

money and effort to promote the term

in its name, cannot deprive competitors

of using the term if it is generic.

Competitors should be free to describe

their goods (or professions) as what

they are. Miller Brewing Co. v. Falstaff

Brewing Co., 655 F.2d 5, 8 (lst Cir.

1981). See S. S. Kresge Co. v. United

Factory Outlet, Inc., 634 F.2d 1, 2

(lst Cir. 1980) ("Mart" as commonly used

for “market” or "store" is a generic

term, and cannot be used as a valid trade

name).

The issue to be decided, then, is

whether "leathersmith" is a generic tern,

22a

or a term properly entitled to trade-

mark protection. "Generic term" has

been defined as follows: "A generic

term is one that does not distinguish

the goods of one producer from the goods

of others. Instead, it is one that

either by definition or through common

usage ‘has come to be understood as

referring to the genus of which the par-

ticular product is a species.' No amount

of purported proof that a generic term

has acquired secondary meaning associated

with a particular producer can transform

that term into a registrable trademark."

Keebler Co. v. Rovira Biscuit Corp., 624

F.2d 366, 374 (lst Cir. 1980); See Miller

Brewing Co., supra.

In determining whether a trademark

distinguishes the goods of one producer

23a

from another, it is important to estab-

lish what the public understands the term

to mean. See Kellog Co. v. National

Biscuit Co., 305 U.S. 111, 118 (1939);

McCarthy, Trademarks and Unfair Competi-

tions, § 12:2 (1973). The Court is mind-

ful that in resolving this issue it is

dealing with the common use of language.

Application of Automatic Radio Mfg. Co.,

404 F.2d 1391, 1395 (C.C.P.A. 1969).

The term “leathersmith" is com-

prised of two common terms "leather" and

"emith.""”

The word "smith" was origin-

ally confined to describing craftsmen in

the metals trades (e.g. "goldsmith" and

“silversmith"). The use of the word has

been expanded, however, and is now recog-

nized as used in combination to define

one who constructs or produces something

24a

(e.g. “skismith" and “jokesmith"). See

Webster's Third New International Dic-

tionary of the English Language Un-

abridged (4th ed. 1976). A worker in

leather has traditionally been called a

leather worker or leather craftsman.”

Plaintiff has coined “leathersmith" to

identify it as a dvaiion in leathergoods.

However, as noted, "leathersmith" is a

natural derivation of “leather worker"

and “smith," and by dictionary defini-

tion, “leathersmith" means one who con-

structs or produces leather products. A

new term is not protected where it

naturally derives from established

generic terms, and can be expected to be

used as a generic term for the product.

See Leon Finker, Inc. v. Schlussel, 496

F. Supp. 674, 678-79 (D. N.J. 1979),

25a

aff'd. 614 F.2d 1288 (2d Cir. 1979).

(The Court held that the word "tril-

lion" was adopted from the generic term

“trilliant," for brilliant triangular

diamonds, and was generic and unpro-

tected).

Further, even a new term not derived

from established generic terms may be

generic ab initio if the term, by its

nature, conveys a specific and correct

meaning. See Cummins Engine Co. v.

Continental Motors Corp., 359 F.2d 892,

894-95 (C.C.P.A. 1966) ("turbodiesel"

coined to describe new diesel engine held

to be generic). Defendant's use of the

term in his corporate name “leather-

smiths and bookbinders,"' clearly estab-

lishes his intent to use it as a generic

description of his craft. He has also

26a

submitted the affidavit of an expert

public opinion pollster, who establishes

that the vast majority of the public

immediately recognize "“leathersmith"

as denoting a craftsman in leather.

Plaintiff, on the other hand, has made

no showing that the term "leathersmith"

has any meaning in the mind of the con-

suming public other than a generic term

for a leatherworker. See S. S. Kresge,

598 F.2d at 696.

The court finds that the term

“leathersmith" is a generic term for a

leather craftsman, and, therefore, that

it cannot be a registrable trademark.

Plaintiff's motion for a preliminary in-

junction is denied. Defendant's motion

for summary judgment is allowed. Judg-

27a

ment shall enter in favor of defend-

ant.

S/ David S. Nelson

DAVID S. NELSON

UNITED STATES DISTRICT JUDGE

FOOTNOTES

1. The Court's determination in

this matter necessarily disposes of the

class action aspect of the complaint.

It is, therefore, unnecessary to ad-

dress whether the particular require-

ments for a class action under F. R.

Civ. P. 23 were met in this case.

2. Defendant has not challenged

plaintiff's right to bring this action,

and, therefore, I assume that plaintiff

is empowered to bring this action as an

exclusive licensee. See Quabaug Rubber

Co. v. Fabiano Shoe Co., Inc., 567 F.2d

154, 158 (ist Cir. 1977). Cir. 1977).

3. This is particularly so given

the nature of the two businesses, the

international marketing of Leathersmith

of London and the purely local, custom

work of TANTALUS.

4. Although plaintiff claims that

“leathersmith" was originally derived by

26a

combining its trade, “leather” and its

name, T. J. & J. Smith, the Court looks

to the natural interpretation the public

will give the word, and not plaintiff's

subjective intent. See Automatic Radio,

404 F.2d at 1395.

5. “Leathersmith", itself, does

not appear in the dictionary. Although

the occurrence of the word in the dic-

tionary is useful in determining if it

is generic, it is not decisive. See

S. S. Kresge Co. v. United Factory _

Outlet, Inc., 598 F.2d 694, 696 (ist

Cir. 1979) (useful), and Cumming Engine

Co., 359 F.2d 892 (not a requirement).

29a

CONSTITUTION OF THE UNITED STATES OF

AMERICA

Amendment V

No person shall be held to answer

for a capital, or otherwise infamous crime,

unless on a presentment or indictment of

a Grand Jury, except in cases arising

in the land or naval forces, or in the

militia, when in actual service in time

of war or public danger; nor shall any

person be subject for the same offense

to be twice put in jeopardy of life or

limb; nor shall be compelled in any

criminal case to be a witness against

himself, nor be deprived of life, lib-

erty, or property, without due process

of law; nor shall private property be

taken for public use without just com-

pensation.

30a |

Amendment XIV

1. All persons born or naturalized

in the United States and subject to the

jurisdiction thereof, are citizens of

the United States and of the State where-

in they reside. No State shall make or

enforce any law which shall abridge the

privileges or immunities of citizens of

the United States, nor shall any State

deprive any person of life, liberty, or

property, without due process of law;

nor deny to any person within its juris-

diction the equal protection of the laws.

2.

3la

Lanham Act of 1946

Section 7(b)

15 U.S.C. 1057(b)

Certificates of regis-

tration of marks registered upon

the principal register shall be

issued in the name of the United

States of America, under the

seal of the Patent Office, and

shall be signed by the Commissioner

or have his signature placed there-

on, and a record thereof shall

be kept in the Patent Office.

Section 15

15 U.S.C. 1065

Except on a ground for

which application to cancel may be

filed... and except to the

extent, if any, to which theuse of

a mark registered on the principal

register infringes a valid right

acquired under the law of any

State or Territory ... the

right of the registrant to use

such registered mark in commerce

for the goods or services on or in

connection with which such

registered mark has been in con-

tinuous use for 5 consecutive

years subsequent to the date of

such registration and is still in

use in commerce, shall be

incontestable: ...

32a

Section 22

15 U.S.C. 1072

Registration of a mark

on the principal register provided

by this Act .. . shall be

constructive notice of the regis-

trant's claim of ownership thereof.

28 U.S.C. 1254

Cases in the courts of

appeals may be reviewed by the

Supreme Court by the following

methods:

(1) By writ. of certiorari

granted upon the petition of any

party to any civil or criminal

case, before or after rendition

of judgment or decree;