Appendix Vol I — Poly-Tech Industries, Inc. v. InstyBit, Inc.
Supreme Court brief1997
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Supreme Court, U.S
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In The
Supreme Court
of the United States
October Term, 1996
POLY-TECH INDUSTRIES, INC.,
Petitioner,
INSTY*BIT, INC.,
Respondent.
On Petition for a Writ of Certiorari to the United States
Court of Appeals for the Eighth Circuit
APPENDIX VOLUME I TO PETITION FOR WRIT
OF CERTIORARI
Edwin Edgar Voigt, II, Esquire
Douglas J. Christensen, Esquire
Paul Lloyd Sjoquist, Esquire
Counsel of Record
PALMATIER, SJOQUIST,
HELGET & VOIGT, P.A.
6600 France Avenue, S.
Suite 501
Minneapolis, MN 55435
(612) 922-6600
oe
APPELLATE SERVICE: CURRY & TAYLOR (800) 222-8738
Appendix Table of Contents Page
Appendix Volume I
Opinion of the Eighth Circuit Court
of Appeals in Case No. 95-2260
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Memorandum Opinion and Order
of The United States District Court
for the District of Minnesota, Third
I oe i bncd sev mneeee 27a
Order Denying Petition for
Rehearing and Suggestion for
Rehearing En Banc of the Eighth
Circuit Court of Appeals in Case
Ss EE didi Gull Sas ds sh Ade Aua pn eave 47a
Affidavit of Robert J. De brey .......... 48a
Excerpt of Article from Woodshop
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Excerpt of Article from 1995 PF
Directory; "Update on Blackening
I is vc dbunhindnes ok ok0e 106a
Affidavit of Edward L. Quiring ....... 113a
Declaration of Edward L. Quiring ..... 138a
Volume II
9 Excerpts of United States Patent
No. 5,398,946 to Quiring ..............
10 Excerpts of United States Patent
No. 4,900,202 to James L.
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11 Excerpts of United States Patent
No. 5,013,194 to James L.
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12 Excerpts of United States Patent
No. 4,692,073 to Martindell ...........
13 Excerpts of United States Patent
No. 1,174,997 to Lackner ..............
14 Excerpts of United States Patent
No. 2,255,333 to Scheiwer .............
15 Excerpts of United States Patent
No. 3,180,600 to Eee
16 Excerpts of United States Patent
No. 4,765,657 to Cruse ................
17 Excerpts of United States Patent
No. 3,761,117 to Shendure .........._.
18 Excerpts of United States Patent
No. 3,268,246 to Obeissart .............
19 Excerpts of United States Patent
No. 4,752,165 to Wanner ..............
20 Excerpts of United States Patent
No. 5,062,749 to Sheets ................
21 Excerpts of United States Patent
No. 1,449,136 to Yates .................
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28
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iii
Excerpts of United States Patent
No. 1,174,997 to Lackner .........
Excerpts of United States Patent
No. 4,355,466 to Michael Quiring
Excerpts of United States Patent
No. 4,580,933 to Wilkins ..........
Excerpts of United States Patent
No. 5,071,295 to Greig ...........
Excerpts of United States Patent
No. 2,661,642 to Marcucci ........
Excerpts of United States Patent
No. 3,794,438 to Knutsson ........
Excerpts of United States Patent
No. 2,863,340 to Ingram ..........
Excerpts of United States Patent
No. 4,076,443 to Halpern .........
Excerpts of United States Patent
No. 5,265,988 to Schmigalla ......
Excerpt of Photographs of Hose
Couplers and Chucks attached to
Affidavit of Edwin E. Voight II
(Dated: February 16, 1995) .......
Excerpt of Poly-Tech 1992 Product
Catalog attached to Affidavit of
Edwin E. Voight II (Dated: March
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Exhibits Attached to Affidavit of
Robert J. De brey
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la
United States Court of Appeals
For the Eighth Circuit
No. 95-2260
Insty*Bit, Inc.,
Appellant,
Appeal from the United
States District Court for
v. the District of Minnesota
Poly-Tech Industries, Inc.,
Appellee.
Submitted: December 13, 1995
Filed: September 10, 1996
Before McMILLIAN, JOHN R. GIBSON and BEAM,
Circuit Judges.
McMILLIAN, Circuit Judge.
2a
Insty*Bit, Inc. (Insty*Bit) appeals from a final
order entered in the United States District Court for
the District of Minnesota granting summary judgment
in favor of Poly-Tech Industries, Inc. (Poly-Tech) on
Insty*Bit's claim of trade dress infringement in
violation of § 43(a) of the Lanham Act, 15 U.S.C. Secs.
1125. (1) Insty*Bit, Inc. y. Poly-Tech Indus.. Inc., No.
3-94-1427 (D. Minn. Apr. 26, 1995) (Memorandum
and Order). For reversal, Insty*Bit argues the district
court erred in holding that Insty*Bit had failed to
create a genuine issue of material fact with respect to
its trade dress infringement claim under 15 U.S.C. §
1125.' For the reasons discussed below, we reverse the
judgment of the district court and remand the case to
the district court for further proceedings consistent
with this opinion.
I. Background
Insty*Bit is a Minnesota corporation located in
Minneapolis, Minnesota. It designs, assembles, and
' Insty*Bit also raised the following state law claims
pursuant to 28 U.S.C. § 1367(a): (1) violation of Minn.
Stat. Secs. 325D.44 et Seq. (the Minnesota Deceptive
Trade Practices Act); (2) common law fraud; (3)
negligent misrepresentation; (4) breach of fiduciary
duty; and (5) unjust enrichment. After granting
Summary judgment in favor of Poly-Tech on the
Lanham Act claim, the district court declined to
exercise supplemental jurisdiction over these state law
claims and dismissed them without prejudice. See slip
op. at 15-16.
3a
sells quick-change drili chucks’ and related accessories,
including drill bits, countersinks, and drill guides.
Poly-Tech, also a Minnesota corporation located
in Minneapolis, operates primarily as a "job shop" for
the manufacture of component parts for other entities.
Between 1988 and August 1994, Poly-Tech
manufactured component parts for Insty*Bit's
products to Insty*Bit's specifications. Insty*Bit would
then assemble these components with other parts to
produce the quick-change drill chuck and related
accessories.
In late 1989, Insty*Bit granted Poly-Tech
permission to sell Insty*Bit products, along with the
products of other manufacturers, through
woodworking trade shows and magazine
advertisements. Although Insty*Bit contends that it
gave Poly-Tech an exclusive limited sales territory in
three eastern states and specified the trade shows at
which Poly-Tech could sell Insty*Bit's products,
Poly-Tech maintains that Insty*Bit placed no
restrictions on its sales territory or methods. It is
undisputed, however, that Poly-Tech sold Insty*Bit
products in various advertisements and woodworking
shows until August 1994. At the same time, Insty*Bit
also engaged in "private labeling" with several national
distributors of woodworking products. Specifically, it
allowed four distributors to sell Insty*Bit's products in
connection with another company's brand name.
According to Insty*Bit, it has eight national
_— — a
A quick-change drill chuck allows the user to
change bits and drivers in a portable drill without a
chuck key.
2
4a
distributors of its products. In addition to the four
distributors which sell Insty*Bit's products under
another brand name, two distributors sell unmarked
products, and two others sell them under Insty*Bit's
label.
In 1993, Poly-Tech developed its own
quick-change drill chuck. Poly-Tech filed a patent
application for this quick-change chuck with the
United States Patent Office on December 23, 1993, and
a patent (No. 5,398,946) was Subsequently issued on
March 21, 1995, II Poly-Tech App. at 309. In August
1994, Poly-Tech informed Insty*Bit that it was adding
its own brand of quick-release drills and accessories,
under the name "Snappy," to its product line. Shortly
thereafter, Insty*Bit ceased placing orders for
Insty*Bit component parts and instructed Poly-Tech
not to sell Insty*Bit products in the future.
On October 14, 1994, Insty*Bit instituted the
present suit against Poly-Tech in the United States
District Court for the District of Minnesota, alleging
trade dress infringement under § 43(a) of the Lanham
Act, 15 U.S.C. §§ 1125, violation of Minn. Stat. §
325D.44 et seq. (the Minnesota Deceptive Trade
Practices Act); common law fraud; negligent
misrepresentation, breach of fiduciary duty, and
unjust enrichment. Insty*Bit sought damages,
preliminary and perraanent injunctive relief, and
attorney's fees. Poly-Tech then filed a counterclaim
for sanctions pursuant to Fed. R. Civ. P. 11, Minn. R.
Civ. P. 11, and Minn. Stat. §§ 549.21. Upon motion
by Poly-Tech, the district court granted summary
judgment in favor of Poly-Tech on Insty*Bit's Lanham
5a
Act claim and dismissed Insty*Bit's state law claims
without prejudice pursuant to 28 U.S.C. §§ 1367(c)(3).
See slip op. at 2, 17.° Insty*Bit then filed this timely
appeal.
II. Discussion
A. Standard of Review
We review a grant of summary judgment de
novo. The question before the district court, and this
court on appeal, is whether the record, when viewed in
the light most favorabie to the non-moving party,
shows that there is no genuine issue as to any material
fact and that the moving party is entitled to summary
judgment as a matter of law. Fed. R. Civ. P. 56(c);
see, e.g., Celotex Corp. v. Catrett, 477 U.S. 317,
322-23 (1986); Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 249-50 (1986); Get Away Club, Inc. v.
Coleman, 969 F.2d 664, 666 (8th Cir. 1992); St. Paul
Fire & Marine Ins. Co. v. FDIC, 968 F.2d 695, 699
(8th Cir. 1992). Where the unresolved issues are
primarily legal rather than factual, summary judgment
is particularly appropriate. Crain v. Board of Police
Comm'rs, 920 F.2d 1402, 1405-06 (8th Cir. 1990).
B. Lanham Act Claim
The district court also denied on mootness grounds
Insty*Bit's motion for a preliminary injunction and its
motion to dismiss Poly-Tech's counterclaim. See slip
op. at 2, 17.
3
6a
Section 43(a)* of the Lanham Act, 15 U.S.C. §§
1125(a)(1), creates a federal cause of action for trade
dress infringement. The trade dress of a product is the
"total image of a product, the overall impression
created, not the individual features." Aromatique, Inc.
v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994)
(Aromatique); Woodsmith Publishing Co. v. Meredith
Corp., 904 F.2d 1244, 1247 (8th Cir. 1990)
* Section 43(a) of the Lanham Act, 15 U.S.C. §§
1125(a)(1), provides in pertinent part:
(1) Any person who, on or in connection with
any goods or services, or any container for
goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof,
or any false designation of origin, false or
misleading description of fact, or false or
misleading representation of fact, which --
(A) is likely to cause confusion, or
to cause mistake, or to deceive as to the
affiliation, connection, or association of
such person with another person, or as to
the origin, sponsorship, or approval or
his or her goods, services, or commercial
activities by another person, or
(B) in commercial advertising or
promotion, misrepresents the nature,
characteristics, qualities, or geographic
origin of his or her or another person's
goods, services, or commercial activities,
Shall be liable in a civil action by any
person who believes that he or she is or is
likely to be damaged by such act.
7a
(Woodsmith). A trade dress is entitled to protection
under §§ 43(a) of the Lanham Acct if: (1) it is inherently
distinctive or has acquired distinctiveness through
secondary meaning; (2) it is primarily nonfunctional;
and (3) its imitation would result in a likelihood of
confusion in consumers’ minds as to the source of the
product. See Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 769 (1992) (Two Pesos). With respect to
the third prong of this analysis, we established in
Co-Rect. Prods, Inc. __V- Marvy! Advertising
Photography, Inc., 780 F.2d 1324, 1330 (8th Cir. 1985)
(Co-Rect), that the following six factors are to be
considered in determining whether a likelihood of
confusion exists: (1) the strength of the owner's mark;
(2) the similarity between the owner's mark and the
alleged infringer's mark; (3) the degree to which the
products compete with each other; (4) the alleged
infringer's intent to "pass off" its goods as those of the
owner; (5) incidents of actual confusion; and (6) the
type of product, its costs, and conditions of purchase.”
Insty*Bit alleged before the district court that
S In Co-Rect we considered the likelihood of
confusion issue with respect to trademark, rather than
trade dress, infringement. In light of the Supreme
Court's holding in Two Pesos, 505 U.S. at 774-76, that
there is no textual basis for applying different analyses
to the protection of trademarks and trade dress under
section 43(a) of the Lanham Act, we conclude that the
six Co-Rect factors also govern claims of trade dress
infringement. Cf. Aromatique, 28 F.3d at 868 ("The
difference between trade dress and trademark is no
longer of importance in determining whether trade
dress is protected by federal law").
————————<<
8a
Poly-Tech had copied the trade dress of Insty*Bit's
products in manufacturing the Snappy line of
quick-change drill chuck, countersink and drill guide.°
The district court held that Insty*Bit had failed as a
° Specifically, Insty*Bit contended that Poly-Tech
had infringed upon the following trade dress of
Insty*Bit products:
Quick-change chuck - "the combination
of the color black; the shape of the
shank; the size and dimensions of the
sleeve; and the chamfered edge - raised
knurled band - recessed smooth band
raised knurled band appearance of the
chuck sleeve";
Drill guide - the combination of the color
black; the steel colored bit; the exposed
spring; the shape and style of the set
screw and opening; and the shape of the
opening for receiving the shank in the
collar;
Countersink - the combination of the
color black; the shape and style of the set
screw and opening; the use of two flutes;
the shape of the collar; the raised edge on
the countersinking portion; the overall
size and dimensions; and the shape of the
opening for receiving the shank in the
collar.
Slip op. at 8-9.
9a
matter of law to create a genuine issue of material fact
regarding the likelihood of consumer confusion as to
the source of the Snappy brand products. Slip op. at
10-15. The district court opined that "fajithough the
Insty*Bit products and the Snappy products compete
in the same market, independent application of the six
Co-Rect factors is unnecessary in this case." Id. at 10.
The district court then conducted a visual inspection of
the packaging of the Snappy and Insty*Bit products
and determined that the "packaging designs are so
graphically dissimilar that there is no reasonable
likelihood that consumers would confuse a Snappy
brand product with the Insty*Bit product." Id. at a.’
— dr — —————— ——
7 ‘The district court observed:
Poly-Tech has left no doubt as to the
source of the Snappy brand products. . .
The words "Snappy™" appear in large
letters prominently displayed on the front
of the Snappy packages for each of the
three products claimed to violate §§
1125. Indeed, the brand name
"Snappy" appears in bold letters nine
times on the Snappy quick-release chuck
package and in bold letters six times on
each of the Snappy countersink and drill
guide packages. "Snappy" is also
permanently embossed on the face of
each of the components themselves, and
the embossed imprint is visible through
clear plastic "bubble" packaging. Each
Snappy package also contains the name
"Poly-Tech Ind." along with its mailing
address . . . The front face of each of the
10a
In determining that there was no likelihood of
confusion regarding the source of the products at issue,
the district court declined to give weight to a survey
offered by Insty*Bit of approximately one hundred
potential quick-change drill customers. Id. at 13-15.°
Snappy packages is solid purple with
white lettering and yellow accent
highlighting. |
In contrast, the front . . .fand
back] face[s] of the Insty*Bit product
packages contai[n], in large, bold letters
the word "INSTY-BIT." . . . The front of
these packages is solid white, not purple.
. . Based on the "total presentation" of
the Snappy brand products to the
consumer, there is no _ reasonable
likelihood of confusion as to their source.
Slip op. at 11-12.
* The expert retained by Insty*Bit surveyed 102
consumers who had used a portable drill within the
past three months. Fifty-four percent of the consumers
were professional woodworkers, and forty- six percent
were amateurs. The survey expert showed each
participating consumer both unpackaged and packaged
quick-change drill products manufactured by Snappy,
Insty*Bit, and Vermont American (a competing
manufacturer). The consumer was allowed to examine
and hold the products but was not permitted to use
them or to determine ho¥ je» functioned. The expert
then asked the consumer .’ er any of the products
were "so similar or such a satisfactory match" that he
ee
lla
The survey expert had found that a statistically
significant number of the respondents interviewed
would purchase the Snappy brand products as a
satisfactory match to Insty*Bit's. See Report of Jeffrey
Stitt; Insty*Bit App. at 257. The district court,
however, held that the fact that a_ statistically
significant number of consumers would substitute the
Snappy brand products for Insty*Bit's was
"irrelevant" to the likelihood of confusion issue,
because "the issue here is not whether consumers
would substitute the defendant's product for the
plaintiff's nor is it whether the products are similar;
the issue is whether consumers would likely purchase
the defendant's product mistakenly thinking it was
manufactured by the plaintiff." Slip op. at 14-15.
Similarly, the district court also rejected as
non-probative the portion of the survey which tested
consumer confusion with respect to unpackaged
Snappy and _ Insty*Bit quick-change systems.
Consumer reactions to the unpackaged product bore
no relevance to the likelihood of confusion issue, the
district court reasoned, because "to determine whether
a substantial likelihood of confusion exists under §§
1125, the product must be considered in its totality as
it is presented to the average consumer -- which in this
case is to say in . . .[packaged form]." Id. at 14.
Based on its visual inspection of the packages, the
district court found that the conspicuous placement of
the "Snappy" letters on Poly-Tech's products made it
highly unlikely that the average consumers would buy
or she would buy one as a substitute for the other. See
Jeffrey Stitt Aff. II 44 15, 20, 24; Insty*Bit App. at
394-96.
12a
Snappy brand products mistakenly thinking that they
were manufactured by Insty*Bit. See id. at 14-15.
Therefore, finding no genuine issue of material fact
regarding the third prong of the §§ 1125 analysis, the
district court held that Poly-Tech was entitled to
summary judgment on Insty*Bit's Lanham Act claim.
Id. at 15.
For reversal, Insty*Bit argues that the district
court erred in granting summary judgment in favor of
Poly-Tech on its Lanham Act claim in three respects.
First, Insty*Bit maintains that the district court's
failure to apply the six Co-Rect factors constitutes
error as a matter of law. Noting our observation in
Squirtco v. The Seven-Up Co., 628 F.2d 1086, 1091
(8th Cir. 1980), that resolution of the likelihood of
confusion issue "does not hinge on a single factor but
requires a consideration of numerous factors to
determine whether under all the circumstances there is
a likelihood of confusion," Insty*Bit contends the
district court erred in relying exclusively on its own
inspection of the Snappy and Insty*Bit packages,
rather than applying the six Co-Rect factors for
determining the existence of a likelihood of confusion
under 15 U.S.C. §§ 1125.
Second, Insty*Bit argues that the district court's
exclusive reliance on the packaging of Insty*Bit and
Poly-Tech's quick-change drill products was also
misplaced because such packaging designs are relevant
only to the issue of point-of-sale confusion. Arguing
that the Lanham Act prohibits post-sale as well as
point-of-sale confusion, e.g., Computer Care v. Service
Sys. Enterprises, Inc., 982 F.2d 1063, 1070 (7th Cir.
13a
1992), Insty*Bit maintains that there is a genuine
factual issue concerning the likelihood of post-sale
confusion, because prospective purchasers are often
first exposed to its products in the hands of another
individual after the packaging has been discarded; such
purchasers, Insty*Bit argues,"typically go the store
looking for a product they have seen before and try to
look past' the packaging to match the product with the
one they are seeking." Brief for Appellant at 26-27.
According to Insty*Bit, the strong similarity in the
appearance of the unpackaged Insty*Bit and Pely-Tech
product creates a genuine issue of material fact as to
whether consumers would likely be confused as to the
source of the Snappy brand products to preclude entry
of summary judgment in favor of Poly-Tech.
Finally, Insty*Bit challenges the district court's
determination that the consumer survey had no
probative value concerning the likelihood of confusion.
Reiterating its argument that consumers are frequently
exposed to quick-change products in unpackaged form,
Insty*Bit contends that the survey expert's conclusion
-- that a statistically significant number of respondents
would buy the Snappy line of quick-change products as
a Satisfactory match to Insty*Bit's -- demonstrates a
genuine issue of material fact as to whether consumers
would likely be confused as to the origins of the
Snappy brand products.
Poly-Tech responds, first, that although the
district court did not recite each of the six Co-Rect
factors in its memorandum and order, it considered all
the factors in reaching its conclusion that "there is no
confusion to the source of the Snappy brand products,
. - .{and] [nJo evidence suggests that Snappy has
l4da
confused consumers into thinking its components were
made by Insty*Bit." Slip op. at 11-12. Second,
addressing Insty*Bit's argument that the district court
improperly placed- exclusive reliance on its own
inspection of the packaging of the respective products,
Poly-Tech cites Woodsmith, 904 F.2d at 1250, for the
proposition that a district court may visually review
documentary evidence in determining whether there is
a likelihood of confusion in a trade dress infringement
action. Similarly, Poly-Tech argues that its prominent
trade name labeling on both the Snappy packages and
actual products precludes a finding that there is a
genuine issue of material fact regarding the likelihood
of confusion.
Finally, Poiy-Tech contends that the district
court did not err in disregarding the results of the
consumer survey submitted by Insty*Bit. According to
Poly-Tech, the survey was flawed because, among
other reasons, (1) it did not adequately cCefine the
sample of respondents; (2) it exposed respondents to
the unpackaged products; and (3) it asked biased,
irrelevant questions. Brief for Appellee at 30. Thus,
Poly-Tech argues that the district court correctly found
that the survey had no probative value with respect to
the likelihood of consumer confusion. In sum,
Poly-Tech argues that the district court did not err in
entering summary judgment in its favor on Insty*Bit's
trade dress infringement claim. We disagree.
We hold that the district court erred as a matter
of law in failing to apply the six Co-Rect factors to
determine the likelihood of consumer confusion.
Contrary to Poly-Tech's argument, it is not clear from
the district court's memorandum and order that it
CIA Ae Cine Pie ODN phase ER AL FE
15a
analyzed all the Co-Rect factors in concluding that
there was no genuine issue of material fact regarding
the likelihood of confusion.
We further hold that the district court erred in
placing primary, if not exclusive, weight on its visual
examination of the packaging of the Snappy and
Insty*Bit products. Regarding this issue, Poly-Tech's
reliance on Woodsmith is misplaced. In Woodsmith,
we affirmed a district court's grant of summary
judgment in favor of a defendant magazine publisher
in a trade dress infringement action brought under
section 43(a) of the Lanham Act. See 904 F.2d at 1250.
The district court had found that no genuine issue of
material fact existed regarding the likelihood of
confusion. In upholding this determination, we
examined the photographs and original facsimiles of
the magazines and solicitation mailings published by
each party. See id. at 1249-50. We declared that
"[v]isual inspection is permissible as an aid to a district
court's determination of likelihood of confusion, but
should not constitute the sole basis for the conclusions
made."Id. at 1250. Thus, visual inspection may not
replace an application of the Co-Rect factors in
determining whether a likelihood of confusion exists.
Upon careful de novo review, we hold that
Insty*Bit has presented sufficient evidence of the
likelihood of confusion to withstand Poly-Tech's
motion for summary judgment. As noted above, the
following six factors must be considered in determining
whether a likelihood of confusion exists: (1) the
strength of the owner's mark; (2) the similarity
between the owner's trade dress and the alleged
infringer's trade dress; (3) the degree to which the
l6a
products compete with each other; (4) the alleged
infringer's intent to "pass off" its goods as those of the
trade dress owner; (5) incidents of actual confusion;
and (6) the type of product, its costs and conditions of
purchase. See Co-Rect, 780 F.2d at 1330. We consider
each factor in turn, noting that although no one factor
is determinative, each must be analyzed. See Duluth
News-Tribune v. Mesabi Publishing Co., 84 F.3d 1093,
1096 (8th Cir. 1994) (Duluth) ("[t]hese factors do not
operate in a mathematically precise formula; rather,
we use them at the summary judgment stage as a guide
to determine whether a reasonable jury could find a
likelihood of confusion").
First, Insty*Bit has demonstrated the strength
of its trade dress. Insty*Bit's quick-change drill
products have received favorable reviews from several
woodworking magazines and nationally televised
home-improvement programs. See Insty*Bit App. at
112, 115-120. In addition, Insty*Bit's consumer
survey showed that over thirty-eight percent of the
respondents were familiar with Insty*Bit. See id. at
388.
Second, Insty*Bit showed there are similarities
in trade dress between the Insty*Bit and Snappy
quick-change products. Poly-Tech contends that its
Snappy brand shank does not resemble the shank of
Insty*Bit's quick-change chuck, because the Snappy
chuck does not have the same prominent enlarged
collar portion as Insty*Bit's. In addition, although it
concedes that its Snappy line of quick-change products
are black (the same color as Insty*Bit's), Poly-Tech
alleges that the similarity is due to functionality
RMS ED CAAA AGA OP tO OA A nme
17a
because Snappy brand products are treated with black
oxide in order to prevent rusting, "as all the other
competitive quick-release chucks also are." Brief for
Appellee at 24. Insty*Bit, however, has presented
evidence that the quick-change products of competing
manufacturers have coatings other than black oxide
which also provide a rust-inhibiting benefit. See
Insty*Bit App. at 399-400. Moreover, Insty*Bit has
demonstrated sufficient similarity in the shape and
design of the Snappy and Insty*Bit quick-change drill
products -- such as the combination of a raised knurled
band, a recessed smooth band, and another raised
knurled band on the quick-change chucks -- to create a
genuine issue of material fact as to whether the second
Co-Rect factor has been satisfied.
As to the degree to which the products compete
with each other, we note that both parties agree that
their products are sold through similar distribution
means. See Brief for Appellant at 24; Brief for
Appellee at 25. The target purchasers are the same for
both sets of products, and the products are comparably
priced. See Insty*Bit App. at 65.1-66.1; 113. Thus,
the competition between the Insty*Bit and Snappy
products is not beyond genuine dispute.
The fourth Co-Rect factor concerns the alleged
infringer's intent to "pass off" its goods as those of the
plaintiff. Co-Rect, 780 F.2d at 1330. Evidence
submitted by Insty*Bit showed that when Poly-Tech
began marketing its Snappy line of quick-change
products, it solicited the same customers and
distributors to whom it had previously sold Insty*Bit's
products. See Insty*Bit App. at 87-90.
18a
We also observe that the inference of intent is
strengthened when the parties have had a prior
relationship, because "[s]uch a relationship provides
evidence of the alleged infringer's intent to trade on the
plaintiff's goodwill." Beer Nuts, Inc. v. Clover Club
Foods Co., 805 F.2d 920, 927 (10th Cir. 1986). In the
present case, Poly-Tech sold Insty*Bit's products
through woodworking trade shows and magazine
advertisements between 1989 and 1994. See Insty*Bit
App. at 158; I Poly-Tech App. at 107. This fact
creates a genuine issue of material fact regarding the
fourth Co-Rect factor, particularly when it is combined
with evidence in the record contradicting Poly-Tech's
suggestion that it could not have changed certain
features affecting the external appearance of its
quick-change products to differentiate them more
markedly from Insty*Bit's.
With respect to the fifth Co-Rect factor --
incidents of actual confusion -- we find that the
consumer survey presented by Insty*Bit is probative on
this issue. In Woodsmith, 904 F.2d at 1249, we stated
that surveys may provide useful evidence of the
likelihood of confusion, although they are not required
for such a determination. See id. Insty*Bit's survey
was designed, conducted, and interpreted by an
experienced market researcher. The expert's
conclusion that "a statistically significant number of
consumers would purchase Snappy as a satisfactory
match for Insty*Bit" raises a genuine issue of material
fact regarding the likelihood of confusion. Although
the district court found the survey flawed because the
expert did not ask consumers whether they would
likely purchase Snappy's products mistakenly thinking
Pil I AE LE mth a el IO
19a
they were manufactured by Insty*Bit, such a question
was not necessary to the methodological soundness of
the survey. To the contrary, it is well-settled that a
finding of trade dress infringement does not require
consumers to buy the alleged infringer's products
thinking that they were manufactured by the plaintiff;
rather, all that is necessary is that they purchase the
alleged infringer's products after associating the trade
dress of those products with the trade dress of a single,
albeit anonymous source. See, e.g., Tone Bros., Inc.
vy. Sysco Corp., 28 F.3d 1192, 1204 (Fed Cir. 1994)
(Tone Bros.) (plaintiff spice manufacturer in trade
dress infringement action had raised genuine issue of
material fact as to whether there was association in
mind of consumer between container's shape and
appearance and indication of the source for the spices
inside the container, thereby precluding summary
judgment in favor of defendant). In addition, we note
that most of Poly-Tech's arguments concerning the
flaws in the survey (e.g., the definition of the sample
and the form of questions asked) do not render the
issue of actual confusion beyond genuine dispute,
rather, they go to the weight the trier of fact should
place on the survey's results.
Furthermore, the portion of the survey exposing
consumers to the unpackaged Snappy and Insty*Bit
quick-change systems is probative on the likelihood of
confusion issue, because the Lanham Act protects
post-sale as well as point-of-sale confusion. See Payless
Shoe Source, Inc vy. Reebok Int'l Ltd., 998 F.2d 985,
989-90 (Fed. Cir. 1993) (Payless); Keds Corp. v. Renee
Int'l Trading Corp., 888 F.2d 215, 222 (Ist Cir. 1989);
Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
799 F.2d 867, 872 (2d Cir. 1986) (Lois Sportswear).
20a
"Post-sale confusion" refers to the association
consumers might make between the allegedly infringing
item and the familiar product, thereby influencing
their purchasing decisions. Lois Sportswear, 799 F.2d
at 872-73. The Lanham Act's protection of post-sale
confusion stems from the 1962 amendment to §§ 32 of
the Act, 15 U.S.C. §§ 1114(1), which provides
remedies for the infringement of registered trademark.
Pub. L. No. 87-772, 76 Stat.769, 773 (1962). The 1962
amendment included confusion of nonpurchasers as
well as direct purchasers by eliminating language in §§
32 which had restricted the scope of trademark
infringement to confusion of "purchasers as to the
source of origin of such goods or services." 76 Stat. at
773. Thus, an action for trademark infringement may
be based on confusion of consumers other than direct
purchasers, including observers of an _ allegedly
infringing product in use by a direct purchaser. See
Payless, 998 F.2d at 989; Lois Sportswear, 799 F.2d at
872-73. Although §§ 32 of the Lanham Act protects
registered trademarks, rather than trade dress, the
Supreme Court's holding in Two Pesos, 505 U.S. at
774-76, that the same analyses apply to the protection
of trademarks and trade dress under §§ 43(a) of the
Act leads us to conclude that the likelihood of post-sale
confusion may be considered in trade _ dress
infringement actions. See Payless, 998 F.2d at 989-90
(holding that district court, in determining whether
accused shoes infringed footwear manufacturer's
trademarks and trade dress, had abused its discretion
in failing to consider adequately the extent of post-sale
confusion between the competing footwear). Post-sale
confusion is at issue in the present case because
Insty*Bit has demonstrated that consumers are often
21a
first exposed to its products in use (that is, outside of
the package) and then go to a distributor to find these
tools by attempting to match the products on the
shelves with the ones they are seeking. See Jeffrey Stitt
Aff. 417; Insty*Bit App. at 394-95. We therefore find
a genuine issue of material fact as to actual confusion.
The final Co-Rect factor for assessing the
likelihood of confusion is the type of product, its costs,
and conditions of purchase. Co-Rect, 780 F.2d at
1330. Although Poly-Tech does not address this factor
in its brief, Insty*Bit alleges that the quick-change drill
products are inexpensive and are not the type of
products over which consumers devote substantial time
in making purchasing decision. Such factors, if found
to be true by the trier of fact, would weigh in favor of
a conclusion that a likelihood of confusion exists.
In sum, our application of the Co-Rect factors
to the present case leads us to conclude that the
likelihood of consumer co.ifusion is not beyond genuine
dispute.
Poly-Tech also argues, however, that it is
entitled to summary judgment because Insty*Bit failed
to demonstrate a genuine issue of material fact with
respect to the other two elements of a trade dress
infringement claim under 15 U.S.C. §§ 1125.
Specifically, Poly-Tech contends that Insty*Bit's trade
dress is not entitled to protection under §§ 1125
because (1) it is not inherently distinctive and has not
acquired distinctiveness through secondary meaning
and (2) it is merely functional, rather than
non-functional.’ As discussed below, we find that a
22a
genuine issue of material fact exists as to each of these
elements.
In determining whether a trade dress or
trademark is sufficiently distinctive to be entitled to
protection under the Lanham Act, we have classified it
as (1) arbitrary or fanciful," (2) suggestive,'’ (3)
descriptive,’ or (4) generic.'’ Duluth, 84 F.3d at 1096;
Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 785 (8th
Cir. 1995)(Stuart Hall); Abercrombie & Fitch Co. vy.
° The district court did not address these issues in its
Memorandum and Order granting summary judgment
in favor of Poly-Tech.
'° The Second Circuit explained in Abercrombie that
the term "fanciful," as a classifying concept, is usually
applied to marks invented solely for their use as
trademarks or trade dress. See Abercrombie, 537 F.2d
at 11 n.12. When a common mark is applied in an
unfamiliar way as a trademark or trade dress, the use
is called "arbitrary." Id.
'' A suggestive mark is "one that requires some
measure of imagination to reach a_ conclusion
regarding the nature of the product." Duluth, 84 F.3d
at 1096.
A descriptive trademark or trade dress
"immediately conveys the nature or function of a
product." Id.
'’ A generic trademark or trade dress "refer[s] to the
genus of which the particular product is a species."
Two Pesos, 505 U.S. at 768.
UE as Wik ea Oe Geri ein
23a
Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976)
(Abercrombie). An arbitrary, fanciful, or suggestive
mark is deemed inherently distinctive, and therefore
entitled to protection, because its "intrinsic nature
serves to identify a particular source of a product."
Two Pesos, 505 U.S. at 768. By contrast, a descriptive
mark merits protection only if it has become distinctive
by acquiring a secondary meaning.’ Duluth, 84 F.3d
at 1096. Finally, a generic term is not protected by the
Lanham Act, because it is merely used by the general
public to identify a category of goods. Id. Thus, a
determination of inherent distinctiveness turns on
"whether or not the trade dress is of such a design
that a buyer will immediately rely on it to differentiate
the product from those of competing manufacturers."
Tone Bros., 28 F.3d at 1206.
Viewing the evidence in a light most favorable
to Insty*Bit, a genuine issue of material fact exists as
to both inherent distinctiveness and secondary
meaning. First, Insty*Bit has submitted the
declarations of a retailer, two sales representatives,
and a private label distributor that the design of
Insty*Bit's products was unique when introduced. See
Insty*Bit App. at 111, 241, 246, 248. Such evidence
creates a genuine issue of material fact concerning the
inherent distinctiveness of Insty*Bit's trade dress
because a reasonable trier of fact could find that the
'* A trademark or trade dress has acquired secondary
meaning if it has “by long and exclusive use and
advertising . . . become so associated in the public
mind with such goods . . . that it serves to identify
them and distinguish them from other goods." Stuart
Hall, 51 F.3d at 789.
24a
trade dress is arbitrary, fanciful, or suggestive.
Similarly, whether the trade dress has acquired
secondary meaning is not beyond genuine dispute, in
light of evidence that (1) Insty*Bit's products have a
six-year record of advertising and promotion in the
marketplace and (2) consumers associate the
appearance of Insty*Bit's products with a particular
manufacturer. Id. at 111-12, 156, 241, 246.
Finally, Poly-Tech contends that it is entitled to
summary judgment because the design features of
Insty*Bit's quick-change products are functional and
therefore not entitled to trade dress protection. We
have adopted the following test for functionality:
If the particular feature is an important
ingredient in the commercial success of
the product, the interests in _ free
competition permits [sic] its imitation in
the absence of a patent or copyright. On
the other hand, where the feature, or
more aptly, design, is a mere arbitrary
embellishment, a form of dress for the
goods primarily adopted for purposes of
identification and individuality, and
hence, unrelated to basic consumer
demand in connection with the product,
imitation may be forbidden where the
requisite showing of secondary meaning
is made. Under such circumstances,
since effective competition may be
undertaken without imitation, the law
grants protection.
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25a
Stuart Hall, 51 F.3d at 790 (quoting Aromatique, 28
F.3d at 873). Thus, trade dress is nonfunctional "if it is
an arbitrary embellishment primarily adopted for
purposes of identification and __individuality."
Aromatique, 28 F.3d at 873. In assessing
functionality, the appropriate inquiry is whether the
collection of design elements, taken as a whole, are
functional, not whether individual elements of the
trade dress could be categorized as such. See Hartford
House, Ltd. vy. Hallmark Cards, Inc., 846 F.2d 1268,
1272 (10th Cir.) (Hartford House), cert. denied, 488
U.S. 908 (1988); Fuddruckers, Inc. v. Doc's _B.R.
Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987). In the
present case, we find a genuine issue of material fact
exists regarding the functionality issue. Although
Poly-Tech argues that the exterior design of Insty*Bit's
quick-change products -- including the color black and
the appearance of the sleeve and shank -- are primarily
functional because they remain necessary to the
commercial success of these products, Insty*Bit has
presented evidence that competing manufacturers have
adopted different design features for their
quick-change products. _See Insty*Bit App. at 23-24,
162-666; 244-45. Thus, a genuine issues of material
fact exists as to whether or not the design of Insty*Bit's
quick-change products is functional. Poly-Tech is not
entitled to summary judgment on this issue.
Ill. Conclusion
Based upon the foregoing, we hold that the
district court erred in granting summary judgment in
favor of Poly-Tech on the basis that Insty*Bit had
failed to demonstrate a genuine issue of material fact
26a
with respect to its trade dress infringement action.
Accordingly, the judgment of the district court is
reversed and the case is remanded for further
proceedings consistent with this opinion.
A true copy.
Attest:
CLERK, U.S. COURT OF
APPEALS, EIGHTH CIRCUIT.
Veeb gupueneidds
27a
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
THIRD DIVISION
Insty*Bit, Inc.,
Plaintiff
Civil No. 3-94-1427
VS. MEMORANDUM
OPINION AND
ORDER
Poly-Tech Industries, Inc.,
Defendant.
Alan M. Anderson and Renee L. Jackson, Larkin,
Hoffman, Daly & Lindgren, Ltd., Minneapolis,
Minnesota, for Plaintiff
Paul L. Sjoquist, Edwin E. Voigt II and Douglas J.
Christensen, Palmatier, Sjoquist & Helget, P.A.,
Minneapolis, Minnesota, for Defendant.
Introduction
Plaintiff Insty*Bit, Inc. ("Insty*Bit")
commenced this action against Defendant Poly-Tech
Industries, Inc. ("Poly-Tech") alleging trade dress
infringement under the Lanham Act § 43(a), codified
at 15 U.S.C. § 1125; violation of the Minnesota
eee
28a
Deceptive Trade Practices Act, Minnesota Statutes
section 325D.44 4 et seq.; common law fraud; negligent
misrepresentation; breach of fiduciary duty; and
unjust enrichment. Insty*Bit's claims arise out of
Poly-Tech's attempts to manufacture and market
various power drill accessories. In its Complaint,
Insty*Bit seeks damages, preliminary and permanent
injunctive relief; and attorneys fees. Poly-Tech has
asserted a counterclaim for sanctions, purportedly
pursuant to Rule 11 of the Federal Rules of Civil
Procedure, Rule 11 of the Minnesota Rules of Civil
Procedure, and Minnesota Statutes section 549.21.
Currently before the Court are (1) Insty*Bit's Motion
to Dismiss Poly-Tech's Counterclaim (2) Poly-Tech's
Motion for Summary Judgment for Non-Trade Dress
infringement and (3) Insty*Bit's Motion for a
Preliminary Injunction. For the reasons set forth
below, the Court will grant Poly-Tech's Motion for
Summary Judgment for Non- Trade Dress
Infringement, deny Insty*Bit's Motion for a
Preliminary Injunction as moot dismiss Insty*Bit's
Complaint without prejudice pursuant to 28 U.S.C. §
1367(c)(3), and accordingly deny Insty*Bit's Motion to
Dismiss Poly-Tech's Counterclaim as moot.
Background
A. Parties
Insty*Bit is a Minnesota corporation with its
principal place of business in Minneapolis, Minnesota.
Insty*Bit is engaged in the business of designing,
manufacturing, distributing, and marketing
"quick-change" products for use with power drills. The
29a
principal of Insty*Bit is James Wienhold ("Wienhold").
Between 1988 and August 1994, Wienhold conducted
business as Wienhold Associates and used the
registered name of "INSTY*BIT" to indicate its
product line. In August 1994, Wienhold incorporated
Insty*Bit and assigned the assets of Wienhold
Associates to it.
Poly-Tech is a Minnesota corporation with its
principal place of business in Minneapolis, Minnesota.
Poly-Tech is a "job shop" engaged in the manufacture
of component parts for other business entities.
Poly-Tech also currently manufactures and sells
quick-change drilling products for use with power tools
tm
under the brand name "Snappy.
B. Factual Background
Poly-Tech began manufacturing component
parts for Wienhold Associates during 1988. (Compl. {
9; Quiring Aff. { 6.) Among the items manufactured
were component parts for: (1) a quick-release chuck,
(2) a countersink, and (3) a drill guide. These three
products are used as accessories for power drills.
Poly-Tech was initially employed solely to manufacture
the component Insty*Bit parts, which were then
shipped back to Wienhold Associates for assembly and
distribution. (Quiring Aff. 4 6.)
In 1989, Poly-Tech began to purchase some of the
assembled products back from Wienhold Associates for
resale. (Id. { 7.) Poly-Tech subsequently began to
distribute and promote these Insty*Bit products.
Poly-Tech claims that it did not receive any direction,
30a
instructions, or conditions from Wienhold with respect
to its resale activity regarding the Insty*Bit products;
(Id. § 7); and that it was entitled to sell these products
to whomever, where ever, and through any method it
selected (Quiring's Third Aff { 3). Poly-Tech claims
that it accordingly promoted its tool line -- which
included the Insty*Bit products as well as its own
products and products purchased from various other
manufacturers -- at national trade shows and through
Poly-Tech sales representatives and distributors.
(Quiring Third Aff. § 4.) Poly-Tech further claims it
made a substantial investment in developing a
"national distribution chain" to market products
purchased from Wienhold Associates, (Quiring Aff. {
7.)
Poly-Tech alleges that, beginning in 1991,
Wienhold Associates representatives called Poly-Tech's
dealers and hardware stores and told them they were
required to purchase the Insty*Bit products directly
from Wienhold Associates representatives, who were
given exclusive distributorships within specified sales
territories. (Quiring Aff 4 8.) As a result, Poly-Tech
contends that between 1991 and 1993, Wienhold
Associates exclusive sales representatives "effective!
stole all of Poly-Tech's dealers and hardware stores
throughout the country," with the exception of Ohio,
New York and New Jersey. (Id).
insty*Bit paints a very different picture of its business
dealings with Poly-Tech. Insty*Bit claims that explicit
conditions were placed on Poly-Tech's authority to sell
and distribute the Insty*Bit quick-release chuck and its
accessories. Wienhold maintains that Poly-Tech was
Wt na nn RMSE At TR AM cs Sie che SCAM te po hm
3la
granted the right to sell the Insty*Bit quick-release
chuck system in a "limited" territory, consisting of
Ohio, New York and New Jersey. (Wienhold Aff. { 7;
Wienhold Second Aff 4 4.) Wienhold further claims
that he decided which trade shows were to be attended
by Poly-Tech and which were to be attended by other
Insty*Bit sales representatives or distributors.
(Wienhold Second Aff. { 4; Compl. 4 10.) He claims
that he was "surprised" to discover that Poly-Tech sold
Insty*Bit products "far beyond the manner and
locations for which it had been authorized." (Wienhold
Second Aff 4 8.)
Beginning in approximately 1990, Insty* Bit
apparently attempted to develop its own national
distribution chain for its products. (Wienhold Aff. {
13; Wienhold Second Aff { 5.) Insty*Bit claims that in
furtherance of this plan, its products were featured in
national catalogs, at trade shows, at in-store
demonstrations and in an expensive television
"infomercial." (Wienhold Aff, { 13.) As a result of this
advertising, Insty*Bit claims the unique features of its
products have become well-recognized in the
marketplace. (Compl. { 8.)
In addition to selling quick-release products
under its own name, Insty*Bit offers these products for
sale through "private labeling." (Wienhold Second Aff
4 7.) According to Insty*Bit, it has eight national
distributors of its products. (Wienhold Aff. { 10.) Four
of these distributors sell the products under their own
name or under no name, two sell unmarked products,
and two sell them under the "Insty*Bit®" label. (Id.)
According to Poly-Tech, approximately 60% of the
Insty*Bit quick-release chucks sold have been sold
32a
through private label offerings, and that only the
remaining 40% identified Insty*Bit as the source for
the quick-release chuck or accessories. (Kaul Aff. { 8.)
In 1993, Poly-Tech developed its own
quick-release chuck system. (Quiring Third Aff { 9.) A
patent application for this quick-change chuck system
was filed with the United States Patent Office on
December 29, 1993, and a patent (No. 5,398,946) was
subsequently issued on March 21, 1995. In the summer
of 1994, Poly-Tech informed Wienhold that it was
adding its own line of quick-release tools to Poly-Tech's
product line. (Id. { 10; Compl. ¢ 14.) Shortly
thereafter, Insty*Bit pulled its product line from
Poly-Tech and ceased placing further orders for
Insty*Bit component parts. (Quiring Third Aff. { 10.)
Poly-Tech subsequently began marketing its own
quick-release-chuck products under the brand name
"Snappy™." (Compl. {¢ 17.)
Insty*Bit argues that the Snappy quick-release
chuck, countersink, and drill guide are "knock-offs" of
the Insty*Bit quick-release chuck, countersink, and
drill guide. (Id.) Insty*Bit claims that Poly-Tech has
copied the unique, non-functional design characteristics
of Insty*Bits products such that there is a likelihood of
confusion among consumers in the market place, and
that this copying infringes upon Insty*Bits protectable
trade dress in violation of the Lanham Act, 15 U.S.C.
§ 1125. dd.{{ 21, 22.) In response, Poly-Tech
maintains that it has identified and differentiated its
products from Insty*Bits and those of other
manufacturers and that it has "no interest" in deceiving
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33a
anyone as to the source of its products. (Quiring Third
Aff. § 15.)
This Court has original jurisdiction over
Insty*Bits § 1125 Lanham Act claim pursuant to 28
U.S.C. §§ 1331 and 1338 and has supplemental
jurisdiction over the remainder of Insty*Bit's claims
pursuant to 28 U.S.C. § 1367.
Discussion
L. Standard of Review
Rule 56 of the Federal Rules of Civil Procedure
governs motions for summary judgment. Under that
Rule:
[summary] judgment shall be rendered
forthwith if the pleadings, depositions, answers
to interrogatories, and admissions on file,
together with the affidavits, if any, show that
there is no genuine issue as to any materia! fact
and that the moving party is entitled to a
judgment as a matter of law.
Fed. R. Civ. P.56(c). Summary judgment is to be
granted only where the evidence is such that no
reasonable jury could return a verdict for the
non-moving party. See Anderson v. Liberty Lobby
Inc., 477 U.S. 242,250, 106 S. Ct. 2505,2511(1986).
Initially, the movant bears the burden of bringing
forward sufficient evidence to establish that there are
no genuine issues of material fact and that the movant
is entitled to judgment as a matter of law. Celotex.
34a
Corp. v. Catrett, 477 U.S. 317, 322, 106 S. C.t 2548,
2552 (1986). In evaluating the movant's showing, the
evidence offered by the non- moving party is to be
believed and all justifiable inferences therefrom are to
be drawn in a light most favorable to that party.
Matsushita Elec. Indus. vy. Zenith Radio, 475 U.S. 574,
587, 106 S. Ct. 1348, 1357(1986); Kornblum vy. St.
Louis County, No.93-4111, slip op. at 4 (8th Cir.
Feb.15, 1995). where a moving party, with whatever it
provides the court, makes and supports a motion for
summary judgment in accordance with Rule 56, a
party opposing the motion may not rest upon the
allegations or denials of its pleadings; rather, the
nonmovant must " set forth specific facts showing that
there is a genuine issue for trial," Liberty Lobby, 477
U.S. at 256, 106 S. Ct. at 2514; Krenik v. County of
Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995). However,
the nonmovant is not obligated to prove in its favor an
issue of material fact, Unigroup_v. O'Rourke Storage
& Transfer, 980 F.2d 1217, 1220 (8th Cir. 1992), and a
summary judgment motion should be denied unless the
court is convinced that there is no evidence to sustain
recovery in any circumstances, Kornblum, No.93-4111,
slip op. at 4.
Ordinarily, the court's task on a motion for
summary judgment is not to weigh facts or evaluate the
credibility of affidavits and other evidence. The
nonmovant cannot however, avoid summary judgment
in favor of the movant merely by pointing to some
alleged factual dispute between the parties. Instead,
any fact alleged to be in dispute must be "outcome
determinative under prevailing law," that is, it must be
material to an essential element of the specific theory
35a
of recovery at issue. See Get Away Club Inc. v.
Coleman. 969 F.2d 664, 666 (8th Cir. 1992).
Il. Analysis
Insty*Bit alleges the Poly-Tech "Snappy" brand
quick-release products infringe on its trade dress in
violation of 11 U.S.C. § 1125.' In support of this claim,
15 U.S.C. § 1125 provides, in pertinent part:
False designation of origin and false descriptions
forbidden
(a)(1) Any person who, on or in connection with
any goods or services, or any container for
goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof,
or any false designation or origin, false or
misleading description of fact, or false or
misleading representation of fact which--
(A) is likely to cause confusion or to
cause mistake, or to deceive as to the
affiliation, connection, or association of
such person with another person, or as to
the origin, sponsorship, or approval of
his or her goods, services, or commercial
activities by another person, or
(B) in commercial advertising or
promotion, misrepresents the nature,
characteristics, qualities, or geographic
origin of his or her or another person's
36a
Insty*Bit alleges its products contain the following
protectable trade dress:
Quick change chuck - "the combination of the
color black; the shape of the shank; the size and
dimensions of the sleeve; and the chamfered
edge - raised knurled band - recessed smooth
band raised knurled band appearance of the
chuck sleeve";
Drill guide - "the combination of the color
black; the steel colored bit; the exposed spring;
the shape and style of the set screw and
opening; and the shape of the opening for
receiving the shank in the collar";
Countersink - "the combination of the color
black; the shape and styie of the set screw and
opening; the use of two flutes; the shape of the
collar; the raised edge on the countersinking
portion; the overail size and dimensions; and the
shape of the opening for receiving the shank in
the collar."
(Wienhold Aff. ¢ 14.)
shall be liable in a civil action by any person
who believes that he or she is or is likely to be
damaged by such act.
37a
In order to establish a prima facie case of trade
dress infringement under § 1125, Insty* Bit must
demonstrate:
(1) its trade dress is inherently distinctive or has
acquired distinctiveness through secondary
meaning;
(2) its trade dress is primarily nonfunctional;
and
(3) imitation of its trade dress would result in
likelihood of confusion as to the source of the
products in consumers’ minds.
Two Pesos. Inc. vy. Taco Cabana. Inc., U.S.__ 112
S. Ct. 2753, 2758 (1992); Stuart Hall Co. v. Ampad
Corp., No.94-2618, slip op. at 5 (8th Cir. April 7,
1995). In applying these factors, a court must consider
the "total image" of the product as it is presented to
"the consuming public," including features such as
size, shape, color or color combinations, texture and
graphics. L.A. Gear. Inc. v. Thom McAnn Shoe Co.,
988 F.2d 1117, 1129 (Fed. Cir.), cert. denied 114 S.
Ct. 291 (1993); see also Woodsmith Publishing Co. v.
Meredith Corp., 904 F.2d 1244, 1247 (8th Cir. 1990)
("[t]he trade dress of a product is the total image of a
product, the overall impression created, not the
individual features"). In the present case, the Court
concludes that Insty*Bit has failed, as a matter of law,
to present facts sufficient to satisfy the third prong of §
1125 analysis.
38a
Likelihood of Consumer Confusion
The "dispositive issue in a trade dress case is the
possibility of consumer confusion as to the source of
the product." First Brands Corp. v. Fred Meyer Inc.,
809 F.2d 1378, 1383 (9th Cir. 1987); See L.A. Gear.
Inc. v. Thom McAnn Shoe Co., 988 F.2d 1117, 1131
(Fed. Cir. 1993) ("[i]f likelihood of confusion is
avoided, copying of trade dress cannot be prevented
under [§ 1125]"). "The test is whether there is a
likelihood of confusion resulting from the total effect of
the defendant's product and package on the eye and
mind of the ordinary purchaser." First Brands, 809
F.2d at 1384 (emphasis added). The factors typically
considered in this analysis are (1) the strength of the
owner's mark; (2) the similarity between the owner's
mark and the alleged infringer's mark; (3) the degree
to which the products compete with each other; (4) the
alleged infringer's intent to "pass off" its goods as
those of the trademark owner; (5) incidents of actual
confusion; (6) the type of product, its costs, and
conditions of purchase. Co-Rect Prods. v. Marvy!
Advertising Photography Inc., 780 F.2d 1324, 1330
(8th Cir. 1985); see Conopco Inc. v. May Department
Stores Co., 46 F.3d 1556, 1565 (Fed. Cir. 1994), cert.
denied SCt 1995 WL 94103 (April 17, 1995)
(applying six Co-Rect factors to § 1125 claim).
Although the Insty*Bit products and the Snappy
products compete in the same market, independent
application of the six Co-Rect factors is unnecessary in
this case. The focus of the likelihood-of-confusion
analysis -- and thus the Co-Rect factors -- is whether,
"based on the entire product image" the consumer will
39a
be confused as to the source of the products. LA. Gear
988 F.2d at 1133. In this case, Poly-Tech has left no
doubt as to the source of the Snappy brand products.
The Snappy and Insty*Bit product packaging designs
are so graphically dissimilar that there is no reasonable
likelihood that consumers would confuse a Snappy
brand product with the Insty*Bit product. The words
"Snappy'™" appear in large letters prominently
displayed on the front of the Snappy packages for each
of the three products claimed to violate § 1125. Indeed,
the brand name "Snappy" appears in bold letters nine
times on the Snappy quick-release chuck package and
in bold letters six times on each of the Snappy
countersink and drill guide packages. "Snappy" is also
permanently embossed on the face of each of the
components themselves, and the embossed imprint is
visible through clear plastic "bubble" packaging. Each
Snappy package also contains the name "Poly-Tech
Ind." along with its mailing address and phone number
printed on the bottom. The front face of each of the
Snappy packages is solid purple with white lettering
and yellow accent highlighting.
In contrast, the front face of the Insty*Bit
product packages contains, in large, bold letters, the
word "INSTY-BIT®". The back face of the Insty*Bit
product packages also contains the word
"INSTY-BIT®" in bold. These products have the word
"INSTY-BIT" embossed on the components, which are
visible through clear plastic packaging. Each Insty*Bit
package also contains the name "©Wienhold
Associates" set off from text on the bottom of the
package. The front of these packages is solid white, not
purple.
40a
Insty*Bit has also provided its products to other
manufacturers for resale. In some of these cases,
Insty*Bit has not marked its product with the
"INSTY-BIT®" label. No evidence before the Court
suggests the packaging of these private labels is similar
to the packaging of the Snappy brand; to the contrary,
the private label packages submitted to the Court show
that the packaging of the Snappy brand is unique. (See
Def's Mot. for Summ. J., Ex. 1.) Moreover, while
consumers may become confused as to whether the
Insty*Bit private label components were made by
Insty*Bit or someone else, there is no confusion as to
the source of the Snappy brand products. Their source
is clearly, conspicuously, and repeatedly identified in
the Snappy trade dress.
- Based on the "total presentation" of the Snappy
brand products to the consumer, there is no reasonable
likelihood of confusion as to their source. No evidence
suggests that Snappy has confused consumers into
thinking its components were made by Insty*Bit.
Instead, its products are unmistakably identified as
"Snappy" brand. Summary judgment is appropriate in
this circumstance. See L.A. Gear, 988 F.2d at 1125,
1133-1134 (holding that district court "clearly erred" in
finding § 1125 trade dress violation, "despite the
substantial similarity of overall design" and despite the
defendant's intentional copying, because trademarks
were conspicuously labeled on the products); Conopco,
46 F.3d at 1570. (holding that district court committed
"clear error" in finding a likelihood of confusion under
§ 1125 because a "prominent placement" of defendant's
logo appeared on the front face of defendant's
products) (applying Eighth Circuit law); Litton Sys.
Inc. v. Whirlpool Corp., 728 F.2d 1423, 1446-47 &
4la
n.1. (Fed. Cir. 1984) (holding that Minnesota district
court committed "clear error" in finding likelihood of
confusion under § 1125 when defendant's name was
affixed to its product).
In the face of Poly-Tech's overwhelming
evidence that consumers would not likely be confused
as to the source of its products, Insty* Bit offers the
results of a survey of 102 potential quick-release
system customers. The "expert" conducting that survey
concluded that "at least eight out of ten respondents
perceive that Snappy's products are manufactured by
the same company as "Insty*Bit’."" (Stitt Aff., Ex. B
at IB-3193.) Ostensibly, this might be construed to
create an issue of material fact regarding whether
consumers might be confused about the source of the
Snappy brand products. Despite this appearance,
however, a careful review of this survey demonstrates
that it has no probative value with respect to the
likelihood of consumer confusion in this case. The data
; Litton explained that:
The district court failed to recognize that
the most common and effective means of
apprising intending purchasers of the
source of goods is a prominent disclosure
on the container, package, wrapper, or
label of the manufacturer's or trader's
name. . . and that when that is done,
there is no basis for a charge of unfair
competition.
Id. at 1446 (quotations omitted).
42a
supporting this conclusion was complied by showing
subjects unpackaged quick-change chucks, unpackaged
countersinks and unpackaged drill guides, and asking
them "In your opinion, which of the test products look
like they are manufactured by the same company as
the prototype [Insty*Bit product]?" (Id. at 113-3249,
No.11; 113-3251, No.32; IB-3252 No.42.) However, to
determine whether a substantial likelihood of confusion
exists under § 1125 the product must be considered in
its totality as it is presented to the average consumer --
which in this case is to say in a package containing the
identifying source "Snappy" in bold letters between
nine and six times and the words "Poly-Tech Ind."
printed on the bottom.
The Insty*Bit survey also tested the packaged
products, and concluded that a statistically significant
number of the respondents interviewed would purchase
the Snappy brand products as a satisfactory match to
Insty*Bit's.°(id. at IB-3197.) This is irrelevant to the
, The survey participants were asked the
following questions after having been shown
quick-change chuck, drill guides and countersinks in
their packages:
(1) I'd like you to rate the degree of similarity
between the following product and the prototype
[Insty*Bit product], based on overall product
appearance as packaged, using a ten point scale
where 1 is totally dissimilar and 10 is totally
similar.
(2) Let's suppose that someone from work or a
family member gave you this tool, the prototype
43a
Third prong of the § 1125 analysis. Marketing a
competitive substitute is not a violation § 1125. Indeed,
it is encouraged.‘ The issue here is not whether
[Insty*Bit product], and asked you to go to a
hardware store or other parts supplier to get
another one. Are there any here that you would
consider so similar or such a satisfactory match
that you would buy it?
(Stitt Aff. Ex. B at IB 3252-54.)
During argument, Insty*Bit asserted that
survey participants were shown the packaged products,
asked if they looked like they were manufactured by
the same company, and responded that the packaged
products appeared to be manufactured by the same
company. This may have been probative to the issue of
consumer confusion. However, participants were not
asked that question. (See__id. at IB-3249-54.)
. L.A. Gear determined that the defendant
intentionally copied the plaintiffs trade dress and that
the first and second prongs of the § 1125 analysis had
been satisfied. The court nevertheless reversed the trial
court's finding of trade dress infringement and
explained that "the public has the right to copy the
design of goods that are unprotected by patent or
copyright, absent consumer confusion or deception."
L.A. Gear, 988 F.2d at 1131 (emphasis added). The
Supreme Court has also emphasized this principle,
explaining that:
[T]he plaintiff has the right not to lose
44a
consumers would substitute a defendant's product for
the plaintiffs nor is it whether the products are similar;
the issue is whether consumers would likely purchase
the defendants product mistakenly thinking it was
manufactured by the plaintiff. See L.A. Gear 988 F.2d
at 1134. Insty*Bit has failed to create a genuine issue
of material fact with respect to its § 1125 Lanham Act
claim Poly-Tech is accordingly entitled to a summary
judgment finding of non-trade dress infringement.
Supplemental Jurisdiction
Insty*Bits § 1125 claim is the only federal claim
asserted in its Complaint. 28 U.S.C. § 1367(c) provides
that "the district court may decline to exercise
supplemental! jurisdiction over a claim...if...the district
court has dismissed all claims over which it has
original jurisdiction." The Supreme Court has
explained that "[Supplemental] jurisdiction is a
doctrine of discretion, not of plaintiff's right... [I]f the
his customers through false
representation that those are his wares
which in fact are not, but he may not
monopolize any design or pattern,
however trifling. The defendant, on the
other hand, may copy plaintiffs goods
slavishly down to the minutest detail: but
he may not represent himself as the
plaintiff in their sale.
Bonito Boats. Inc. vy. Thunder Craft Boats. Inc. 489
U.S. 141, 157, 109 S. Ct. 971, 981 (1989) (quoting
Crescent Tool Co. vy. Kilborn & Bishop Co.. 247 F.
299, 301 (2nd Cir. 1917)).
45a
federal claims are dismissed before trial... the normal
practice is to dismiss pendant claims without
prejudice." United Mine Workers v. Gibbs. 333 U.S.
715, 726, 36S. Ct. 1130, 1139 (1966); see also Stokes v.
Lokken, 644 F.2d 779, 735 (8th Cir. 1981) (“when
federal claims are dismissed before trial, the normal
practice is to dismiss pendent claims without prejudice,
thus leaving plaintiffs free to pursue their state-law
claims in state courts if they wish"). This case is not
scheduled for trial until April 1996. Accordingly, the
Court will dismiss the remainder of Insty*Bits
Complaint without prejudice.
Conclusion
Based on the foregoing, and upon all the files,
records and proceedings herein, IT IS ORDERED
that:
(1) Defendant's Motion for Summary Judgment
for Non-Trade Dress Infringement (Doc. No.35)
is GRANTED and Count I of Plaintiffs
Compiaint (Doc. No.1) is DISMISSED WITH
PREJUDICE;
(2) Plaintiffs Motion for Preliminary Injunction
(Doc. No.28) is DENIED AS MOOT; and
(3) Plaintiffs Motion to Dismiss Defendant's
Counterclaims (Doc. No.7) is DENIED
AS MOOT.
46a
IT IS FURTHER ORDERED that the remainder of
this action is DISMISSED WITHOUT PREJUDICE
pursuant to 28 U.S.C. § 1367(c).
LET JUDGMENT BE ENTERED ACCORDINGLY
Dated: April 26, 1995
RICHARD H. KYLE
United States District Judge
os
47a
United States Court of Appeals
For the Eighth Circuit
No. 95-2260MNST
Insty*Bit, Inc.,
Appellant,
Order Denying Petition for
Rehearing and Suggestion
v. for Rehearing En Banc
Poly-Tech Industries, Inc.,
Appellee.
The suggestion for rehearing en banc is denied.
The petition for rehearing by the panel is also denied.
October 21, 1996
Order Entered at the Direction of the Court:
/s/
Clerk, U.S. Court of Appeals, Eighth Circuit
48a
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
THIRD DIVISION
Insty*Bit, Inc.,
Plaintiff
Civil No. 3-94-1427
vs. | Judge Richard H. Kyle
AFFIDAVIT OF ROBERT
J. DE BREY
Poly-Tech Industries, Inc.,
Defendant.
STATE OF MINNESOTA
SS
COUNTY OF HENNEPIN
I, Robert J De brey, being duly sworn upon
oath, depose and state that:
- I am a mechanical engineer, a graduate
of the University of Notre Dame in mechanical
engineering, and hold a masters degree from the
Institute of Design at Illinois Institute of Technology. I
have received additional education in marketing and
psychology from Northwestern and _ Loyola
Universities.
a I am presently employed with De brey
Design, located at 6014 Blue Circle Drive,
49a
Minneapolis, Minnesota 55343, telephone
612-935-2292. Over the past 30 years I have worked in
a consulting capacity, concentrating in product design
and development, corporate identity, and marketiaiz
communications. I have conducted over 200 programs
for a wide range of clients, encompassing a
comprehensive approach to address all elements of a
clients needs including technical, ergonomic, human
factors, and aesthetic and economic designs for
manufacture and sale of products.
3 I established De brey Design in 1965 and
I have provided services in the capacities as a
consultant since that time. Prior to initiation of De
brey Design, I was employed with the General Electric
Co., Naval Research Laboratory, Jensen Design
Consultants. and IIT Research Institute.
4. . I have attached to this affidavit a
resume which more fully describes my qualifications
and professional experience.
3. In the past, I have provided expert
opinions in a variety of intellectual property lawsuits
related to patent infringement, trademark
infringement, and trade dress cases as evidenced by the
attached Summary of Case Experience.
6. I have consulted on and participated in
the following design projects for clients which are in
the general category: of the design and development of
tools.
Wood Plane A cast aluminum plane for
finishing. wood, utilizing a
Sanding Machine
Apple Peeler
Ball Point Pen
Automotive Ice
Scraper
Light Pen
50a
unique disposable blade
design.
Redesign of conveyorized,
production wood sanding
machine, including
ergonomics, technical, and
aesthetic.
Product concept,
development, and
production design for
consumer tool to peel,
slide, and core apples,
mainly for home
canning. Also, design of
the product package.
Several bali point pens
with innovative point
projection and point
protection concepts.
An ergonomically designed
tool for removing ice from
car windshields. Selected
for the design collection of
the Museum of Modern
Art, N.Y.
Engineering, ergonomic,
and aesthetic design
concepts for hand-held
‘light pen for use with
desktop computers.
5la
Corn cutter A hand-held device for
remolding the kernels of
corn from a cob for the
canning process.
Canning Tongs Ergonomic design of
specialized tongs for the
aesthetic placement of food
in canning jars.
Canning Tongs Ergonomic design of
specialized tongs for the
aesthetic placement of food
in canning jars.
Aircraft Helmet Ergonomic and aesthetic
design for pilot's helmet
for F-16 fighter aircraft,
utilizing advanced
electronic communications.
Saber Saw | Ergonomic and aesthetic
design concepts for
hand-held electric saber
saw.
7. I have prepared a report (Exhibit 6)
which sets forth my analysis and conclusions with
respect to the trade dress issues raised within this
proceeding. All matters stated in the report are true to
my knowledge and belief and as to those matters stated
on belief. I believe them to be true. It is my opinion
that no protectible trade dress is present in this case
with respect to Plaintiff's quick change chuck,
countersink, or drill guide.
52a
FURTHER YOUR AFFIANT SAYS NOTHING except
that all matters stated herein are true to your affiant's
knowledge and belief, and as to those matters stated on
belief, I believe them to be true.
ROBERT J. DE BREY
Dated __
Subscribed and sworn to before me this 16
day of February, 1995
53a
Resume
Robert J. De brey
612-935-2292
EMPLOYMENT
Mr. De brey has worked in a consulting capacity for
the past thirty years concentrating in product design
and development, corporate identity, and marketing
communications. He has conducted over two hundred
programs for a wide range of clients. A comprehensive
approach is utilized which addresses all elements of the
client's needs, i.e.; technical, human factors, aesthetic
and economic.
Prior to establishing De brey Design in 1965, he was
associated with the following companies: The General
Electric Company, Naval Research Laboratory;
Latham, Tyler,. and Jensen, Design Consultants and
IIT Research Institute
EDUCATION
Mr. De brey is a Mechanical Engineering graduate of
the University of Notre Dame, and holds a Masters
Degree from the Institute of Design at Illinois Institute
of Technology. Additional programs in marketing and
psychology were completed at Northwestern aad
Loyola Universities.
54a
PROFESSIONAL RECOGNITION
Thirty-five issued patents
Minnesota Design Award for product and graphic
design
Listed in Who's Who in Technology Today
Selected five times for the Annual Design Review
Wescon Design Award for product and graphic design
Art Directors Award for computer package design
Industrial Design Magazine, Cover
Museum of Modern Art, New York, Design Collection
Industrial Design Excellence Award, Product Design
IDEA Award for package design
IDEA Special Mention Award
38th Annual Design Review, Gold Award
AREAS OF EXPERTISE
Industrial Design
Ergonomic Design
Graphic Design
Model Making
Marketing
Materials and Manufacturing Processes
Mechanical Engineering
Scurcing Components and Services
F -aluation and Selection of Vendors
Contract Administration
Expert Witness In Product Liability Cases
Panel of Commercial Arbitrators, AAA
ADDITIONAL SKILL
Knowledge in a wide range of manufacturing
machines, materials, and processes
Proficient with mechanical devices, tools, and
assemblies
Photography and Video
Familiar with cultures of the following countries:
Canada, UK, Germany, France, Hungary, former
Yugoslavia, Spain, Portugal, Italy —
56a
TRIAL VISUALS
De brey Design
GRAPHIC EXHIBITS
Graphs and flowcharts
Visualization of Process
Diagrammatic portrayal of events
Structures, machines, components
Photographs, slide sequences, film
As the verbal testimony of your case is delivered, a
multitude of different images may appear in the minds
of the court and jury. The alternative is a persuasive
visual presentation, carefully designed to locus those
minds to a common understanding of circumstances.
Eliminate erroneous ideas; point out unseen
relationships and reduce the case to important decision
factors. A legal position will dominate when its merits
become obvious.
3-DIMINESIONAL MODELS
Detailed evidentiary exhibits
Precision product models, cutaways
Configureational mock-ups
Architectural scale models.
A picture may be worth 1000 words but "a model is
worth 1000 pictures". Modeling is a universal language
and thus, a highly effective medium through which to
communicate the overall concept, operating details,
special relationships, and appearance of a product or
process. Visualization for the court may concentrate on
he tah a
57a
hazardous conditions, design deficiencies, or the actual
results. "Before and after" conditions can be
sequentially analyzed and alternate design approaches
presented. A three dimensional statement focuses
attention, helps to clarify circumstances and bring
about a meeting of minds.
COST EFFECTIVENESS
Models and exhibits justify their place in the financial
plan of every complex case. A case can be strengthened
when everyone's thinking follows a common reference;
trial time is substantially reduced, or possibly
eliminated through pre-trial settlements. Larger
awards can sometimes be traced to the jury's and
court's increased perception, understanding, and
sensitivity resulting from the use of visuals designed to
meet communication objectives.
Appeal cases can also benefit through rapid,
clarified presentation.
QUALIFICATIONS
Our firm is fully equipped with design and shop
facilities and employs a wide range of mediums to
accomplish the attorney's objectives. Graphic design,
engineering, and model making talent are blended
from planning to completion to insure that the results
are accurate, effective, and confidential.
We would be happy to discuss the communication
needs of your next case.
De brey Design
ey
a a
58a
De brey Design
Case Experience of Robert J. De brey
CASE DESCRIPTION SERVICES
Cardiac Patent Trial Visuals
Pacemakers vs. Infringement Expert, Design
Coratomic
Cardiac Patent Trial Visuals
Pacemakers vs. Infringement
Medtronic
St. Jude Medical Patent Trial Visuals
vs. Possis Corp. Infringement Technical Expert
Chief Industries Patent Trial Visuals
vs. Squareliner Infringement Technical Expert
Chicago Cutlery Patent Expert Witness
vs. Bordien Infringement Design
Corp., Tommer
Cutlery
Peterson vs. Personal Injury Expert Witness
Komatsu of Human Factors
Japan
Abdo vs. Sperry Personal Injury Expert Witness
New Holland Human Factors
Parkos vs. Personal Injury Technical Expert
Metropolitan
Wire Corp.
Plaintiff vs. Kai
Cutlery, Tokyo
Personal Injury
Technical Expert
Human Factors
Gravity
Guidance inc. vs.
Inversion Health
Systems
Plaintiff vs.
Raygo, Inc.
Metronic vs.
Pacesetter, Inc.
Otto Bock vs.
Daw Industries
Northland group
vs. Christian
Bros.
Horton Clutch
vs. Tlomatic
59a
Patent
Infringement
Personal Injury
Patent
Infringement
Patent
Infringement
Patent,
Trademark
Trade Dress
Technical Expert
Trial Visuals
Trial Visuals
Trial Visuals
Expert Witness
Expert Witness
Design
Insty*Bit, Inc.
VS.
Poly Tech Industries, Inc.
REPORT OF ROBERT J. DE BREY FOR
DEFENDANT
6la
TABLE OF CONTENTS
SECTION PAGE
) 1. Introduction 1
| be Conclusions and Opinions 2
. De Scope of Analysis 6
| 4. Summary of Findings 7
| Be Detailed Analysis 15
6. Exhibits 26
{
‘
4
4
een
62a
SECTION 1. INTRODUCTION
Insty-Bit a Minnesota corporation located in
Minneapolis, is an assembler of parts related to
specialized tool accessories for the professional and
consumer hardware trade. Poly-Tech is also a
Minnesota corporation located in the Twin Cities and
performs general job-shop machine work. Poly-Tech
has been producing the parts for Insty-Bit's tool
accessory line since approximately 1988, and has in the
past operated a business marketing and selling
products purchased from Insty-Bit.
More recently Poly-Tech has begun production of its
own line of quick release tools. Insty-Bit has objected
to Poly Tech's production and trade in the same
market and has charged, among other things,
infringement of its trade dress and violation of the
Minnesota Deceptive Trade Practices Act.
Poly-Tech's attorneys, Palmatier, Sjoquist, and Helget,
have retained the writer for Expert testimony on the
design features of the tools in question and how they
might be viewed in the marketplace as related to
factors of trade dress.
Process
To accomplish this assignment a meeting was held at
the office of Palmatier, Sjoquist, and Helget on
February 10, 1995 at which time a detailed explanation
of the case was given. Samples of the various tools
were provided including relevant items of both brands.
GS a 00S tt ORI LL AANA ABE Sechie leee S k needed
63a
The complaint document and response to
interrogatories were then studied in detail. A detailed
analysis of the samples was made in an attempt to
determine the basic character and existence of asserted
design features as they might contribute to the
development of "trade dress" in the marketplace.
Observational trips were also made to a number of
retail outlets which handle the types of tools under
study. A variety of tool accessories were selected for —
their comparative and illustrative value and purchased
for consideration. They are included in this report in
photographic form in Section 6. Exhibits.
SECTION 2. CONCLUSIONS AND OPINIONS
The questions to be answered include whether or not
there exists a non-functional trade dress, whether the
asserted trade dress functions to denote a source of
origin, and whether there exists a likelihood of
confusion in the marketplace between the two
competing product lines.
Point of Sale
The writer's conclusion is that there is virtually no
chance for confusion at point of sale, even in the rare
event that the two products appeared side by side in
the merchandising display. The two packaging designs
are so graphically dissimilar as to allow no possibility
that one product might be mistaken for the other. (See
exhibits #10, 11,12).
Furthermore, it is understood that these items are
never sold in bulk form and we also know that the
packages are not easily opened with bare hands even if
64a
one were inclined to do so. Thus one can assume that
in all cases the graphic power of the package is the
primary reference to verify identity.
From a merchandising point of view, the front face of
the Insty-Bit product line packaging is more effective
in communicating the brand name and product identity
than the front face of the Snappy brand. Insty-Bit's
name is printed larger, is in more readable type and is
not encumbered by other competing words. The
Insty-Bit product, in all cases, stands in front of a
clean white background where it is more clearly
observed in a contrast condition. The names of both
brands are quite conspicuous and provide
unmistakable identification of the source. (See exhibits
#10,11,12).
Where the customer closely examines the front and
back of the respective packaging, the Snappy brand
does a better job of conveying the source of the
product. The identifying name "Snappy" appears ten
times on the chuck packaging and is also printed on the
actual product which is visible through the clear
plastic. The corporate name, address, and phone
number is also on the back side of the Poly-Tech
packaging.
The Insty-Bit package in contrast repeats "Insty-Bit" a
total of four times on the package and has a further
identifier Copyright Weinhold Associates, 1993,
Minneapolis, MN 55426
The particular style of the packaging is such that the
product is covered over with a layer of clear plastic. To
produce the plastic "bubble" which nests the product,
the sheet material is stretch formed over curved
surfaces under vacuum, which virtually guarantees
_
65a
that its clarity will be partially distorted in an optical
sense. For example, it is impossible to determine by
external observation alone that the sleeve on the Sears
Roebuck Quick Change Chuck is actually molded in
plastic rather than machined from steel. (See exhibit
#16). Thus, from a practical standpoint, the customer
is pretty much limited to external packaging
information to identify the product, its purpose, the
material of construction, distinctive design features,
and its maker. Under normal circumstances the buyer
of this product is going to interpret the information on
the packaging and accept it at face value
Private Label Products
The most likely source of confusion in the marketplace
is the existing practice of Insty-Bit providing its same
products, private labeled, to other OEM's without
identifying the true source. As stated above, the
customer is likely to accept that the product is
manufactured by the company named on the package.
When the product is removed from the package the
only identification is the brand name stamped on the
product. Apparently the actual product sold in the
private labeling may either be marked with "Insty-Bit",
the name of the private labeler, or with no identifier.
The Porter Cable Quick Change Chuck looks
physically identical to the Insty-Bit Quick Change
Chuck (note name similarities also) therefore, one is
bound to wonder "who makes what?" The Porter
Cable packaging employs the same colors and graphic
lined background as Insty-Bit packaging. (See exhibit
#39). This marketing strategy would seem to be
counter productive to Insty-Bit's efforts to establish
any recognition of their products in the marketplace.
:
i
66a
The private labeling destroys a consumer's ability to
identify a single source of origin for the products.
The Product in Hand
Once the package is opened and the product separated
from the identifying printed information one is left
with product information, ie word marks, trademarks,
patent numbers, model numbers, operative sizes, and
last but not least, specific product features and the
overall configuration of the product itself.
Insty-Bit has claimed a list of approximately thirty-six
(36) "non-functional" design features for their product
line from which its trade dress is constructed. These
were analyzed in detail and evaluated using the criteria
normally associated with trade dress development and
protection. In all but a few isolated instances the
claimed design features were judged functional because
they benefited the consumer and, or the manufacturer,
were essential to the purpose, and enhanced the
quality.
Are the product designs as a whole functional? Tool
products in general and drilling tools and accessories in
particular are designed with efficiency in mind. This
means doing more with less, at the lowest cost, and
maximizing performance. Such a process leaves little
room for the arbitrary and fanciful, or the option of
specifying a component or feature primarily to denote
a source of origin. The tool accessory market is highly
competitive and forces the optimization of function.
The Plaintiff manufactures his Quick Chuck under two
U.S. utility patents which show its functional design
67a
character. The whole purpose of this tool is to render
repetitive operations with the portable electric drill
more efficient. It is purchased for its time saving and
convenience attributes.
The countersink tools are also aimed at efficiency by
combining drilling and countersinking into one
operation. The size combination of the drill and
countersink is pre-selected for each screw size and
retained in the tool. Countersinking depth is controlled
automatically for some operations.
The Insty-Bit Quick Change Drill Guides are designed
to quickly, conveniently, and accurately perform the
important operation of centering the drilled hole in the
countersunk hole of the hardware to be mounted.
There appears to be no other purpose for these tools
There are no non-essential elements in these designs.
It is obvious then that all of the above products were
created as purely functional devices. Thus, combined
with the described appraisal of the functionality of the
individual design features, the designs, in the writers
judgment, are functional as a whole.
In the writers opinion, it would be detrimental to
competition to give trade dress protection to all of the
charted design features individually or in combination,
except the two noted. In only one case was a design
feature (the exposed spring on drill guides) rationalized
as possibly being used to denote a source of origin. As
one might expect with technical type tool products,
none of the 36 claimed design features were classified
as arbitrary or fanciful.
The Feel of the Products
68a
The Plaintiff has claimed "the feel" of the products as
well as the design features. Upon comparing the
operation of Insty-Bit Quick Change Chuck and the
Snappy Quick Chuck, it became immediately apparent
that there is a major ergonomic difference between the
two. Poly Tech produces their "Snappy" product with
a different and patentable design feature which allows
the user to insert a tool into the chuck single-handedly
by simply pushing the bit straight in until it bottoms
out and locks. Upon doing so, the Snappy chuck
produces strong tactile feedback and makes a loud
click simultaneously upon locking. It is one smooth,
non-stop action. The sleeve never needs to be touched
or moved to insert a tool bit.
The Insty-Bit chuck is a two-handed operation of
sliding the sleeve axially to release the lock, inserting
the bit, and then releasing the sleeve. It is a start and
stop operation and definitely has a different "feel" to
its operation than the Snappy chuck.
The Snappy Quick Chuck is a major ergonomic design
advancement adding greatly to the convenience of use
as well as the feel of its operation.
Degree of Care Likely to be Exercised by the Customer
Because the main benefits of the subject products are
increased efficiency and quality of performance for
repetitive tasks, the typical purchaser is likely to be
more sophisticated than the average do-it-yourselfer
and more like a professional user. This, plus the fact
that the tools are not inexpensive, suggests that the
customer will carefully evaluate his selection before
69a
purchasing the tools. Thus, there should be even less
likelihood of confusion at point of sale.
General Conclusions
As a result of the above analysis, evaluations, design
comparisons, and survey of similar tools found in
today's market, it is the writers opinion that the design
features claimed by Insty-Bit do not meet the
requirements for protection as trade dress.
There is no likelihood of confusion between the
Insty-Bit and Snappy Brands at point of sale.
However, there is a likelihood of confusion by users of
the Insty-Bit product and its private labeled products
since the true identity is not revealed.
SECTION 3. SCOPE OF ANALYSIS
This study is primarily. directed to the products and
product features identified by the Plaintiff in their
ANSWERS TO DEFENDANT'S FIRST SET OF
INTERROGATORIES (NOS. 1-13) dated January 16,
1995.
Products
Insty-Bit Poly-Tech
Quick Change Chuck Make it Snappy
Quick Chuck
Quick Change Pilot
Countersink Make it Snappy
Drill Guide
70a
Quick Change Drill
Guide Make it Snappy
Countersink
(See exhibits #10,11, 12).
Packaging
The packaging for each of the above products was also
reviewed in a comparative manner.
The countersinks and drill guides of each brand are
packaged and sold in sets of five different sizes. (See
exhibits #10,11,12).
Criteria
The criteria by which the designs were evaluated for
trade dress representation are:
Whether or not Insty-Bit's asserted individual design
elements and the design as a whole are functional
eThe impact on competition if the asserted designs
were protected as trade dress
The availabily of alternative designs
Whether or not the asserted design element function
to denote the source of origin
¢Whether or not the design element is arbitrary or
fanciful
Pes REO a ir it Retan
Tla
SECTION 4. SUMMARY of FINDINGS
Definitions: (as used in the charts on the following
pages)
° Functionality: A functional feature which
competition would have to spend money not to copy
but to design around. Additionally, the following
categories on the charts are indications of
functionality:
Benefit to User Essential to Purpose
Benefit to Manufacturer Quality Enhanced
* Benefit to User or Manufacturer: ie; increase in
efficiency, safety, speed of operation, or durability;
facilitation or accommodation of performance, lower
cost, reduction in liability, etc.
* Essential to Purpose? Is the design essential to
the utility of the item?.
. Enhancement of Quality? Does the design
element improve quality?
* Protection Hurts Competition? Would
protection of the feature impede effective competition?
° Alternative Designs Available? Are there more
than a limited number of alternative designs available
which could be used without penalty?
* Functions as a Source of Origin? Does the
alleged design element indicate a source of origin for
the goods and thus avoid confusion in the marketplace?
72a
For purposes of presentation the list of product
features and combinations thereof, found in the
Plaintiff's Answers to Defendant's First Set of
Interrogatories (Nos. 4-9) are used in the same
sequence on the charts to summarize the findings.
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90a
SECTION 5. DETAILED ANALYSIS
INSTY*BIT CHUCK DESIGN ANALYSIS
Black Oxide Finish
The black oxide finish serves two important functions.
First, the oxidation of the steel's surface provides
protection from rust. While it will not prevent
corrosion, it does inhibit it, such that it is much more
desirable than untreated steel. Rust on the internal and
external surfaces of a steel tool with moving parts
operating within certain dimensional tolerances can
seriously compromise its performance.
The oxidized black surface is used extensively in the
tool industry because it allows the steel to be given a
finish without changing the dimensions of the part.
Any other type of plated corrosion protection must be
done at the expense of strict dimensional control, since
coatings and dated metals are dimensionally added to
the surface of the base metal.
Furthermore, it is quite common for other plated
metals to flake off under extreme conditions. When
this happens and bare steel is exposed, the surface is
very likely to rust Metal platings such as chrome,
nickel, and zinc can vary widely in quality.
Paint coatings are not commonly used on the working
ends of tools or surfaces of parts with critical fits like
these in question. The dimensional changes that metal
parts incur from coating processes, the lack of precise
control of coating thickness, and the coating's lack of
9la
long term durability make them a poor choice for
corrosion protection on moving, interactive parts.
The second benefit provided by a black oxide finish is
that the black oxide provides the function of
communicating to the customer that the tool has been
made using quality manufacturing processes. The
many benefits of black oxide are well known in the
industry and therefore the use of black oxide on tools
can be associated with a manufacturer who is following
industry standards. Because black oxide is a finish
used on many precision tools, it suggests a high level of
quality.
The use of black oxide is not mandatory in the
production of tools, but it has proven to significantly
improve a tool's quality. It's designation as a protected
design element would substantially hurt competition in
this market. Its use would not be indicative of a
particular manufacturer because so many
manufacturers of similar products use black oxide. Its
use is not arbitrary or fanciful, but functional. (See
exhibits #26, 27, 28, 29, 33, 34, 35, 36).
Notably, all quick change drill chucks that the writer is
aware of are finished in black.
Shape and Appearance of Sleeve
The shape of the sleeve is derived strictly from the
function it performs. Nothing has been added to the
sleeve to make its design unique or decorative. The
cylindrical shape has been used in order to provide
easy grip without limitation to its rotational orientation
Its appearance is a function of its black oxide finish, its
92a
diameter, and its length. Restriction of this
configuration would hurt competition because this is
the most cost effective and straightforward design to
meet performance requirements. This shape and
appearance are widely used in the industry, and wouid
not suggest a particular manufacturer
(See exhibits #17, 19, 20, 23 24, 25).
Two raised, knurled bands
The two raised bands of knurling on the sleeve are
provided strictly to increase grip by the user. Knurling
is a process that has been used for many years and is a
well-known, recognizable feature easily understood by
consumers. It is cold formed on the surface under
pressure and is therefore a cost-effective way of
achieving a grip surface without metal removal.
Knurling can only be effectively applied to the highest
of adjacent surfaces on any one part. Its use as a
protected element would put competition at a
disadvantage because it is widely used as an economical
way to increase the performance of any round tool
gripped by the hand.
Two bands of knurling, as opposed to one band, allows
a center, non-knurled band ideal for indicia such as
identifying the origin and patent numbers. The two
bands at each end of the sleeve provide a better
gripping arrangement than a single band at one end of
the sleeve. Two bands are common in many different
types of couplers and connectors. (See exhibits # 17,
19, 23, 24, 25, 29).
93a
Series of 2 raised sleeve elements. knurling with
sinooth recess, appearance and sequence
The raised bands of knurling with a smooth center
area is a design which provides two main functional
benefits. First the profile created by the two raised
areas and the center recess provide for better location
and grip by the fingers. The center recess helps the
user to quickly locate the best grip area. By locating
the center of the fingertip in the recess, it allows the
two bands of knurling to come into full contact with
the finger. The ridge created by the second, or rear
band of knurling provides a sidewall which can be
pushed against to move the sleeve and release the bit.
A secondary functional benefit provided by this design
is that it allows a smooth surface which can easily be
Stamped with the manufacture's name and/or patent
number. Having the manufacturer's name stamped on
the part where it is not likely to be scraped away also
helps the consumer in the event they are trying to
identify the part after it has been separated from the
packaging. (See exhibits #17, 19, 24, 25).
Diameter of body and sleeve
The diameter of the main body of the chuck and the
Sleeve that fits over it are determined by the diameter
of the bit being held by the chuck and the mechanisms
needed to retain it. Insty*Bit's chuck mechanism is
protected by two U.S. utility patents. (See appendix).
Any additional diameter would require additional
material and/or tooling and would therefore increase
i
OL TTT TTT TTT TTT Tr en ee er errr rece rr nn ncn nnn n nnn n ener nn nnn nnn n een e en elt
94a
costs. Furthermore, any increase in diameter would be
undesirable because the chuck would interfere with
other parts in a close working environment. The
smaller the better.
Chamfer on sleeve
The chamfer on the sleeve is a functional shape used to
provide a smooth edge on the top corner of the chuck.
A smooth edge rather than a sharp corner is more
desirable for any part coming into contact or being
held by the hand. A rounded edge would also serve this
purpose, but a chamfer is easier and cheaper to make.
Furthermore, a chamfer also provides a narrower
profile to decrease the likelihood of coming into contact
with parts in tight working environments (See exhibits
#19, 23, 24, 25, 33).
INSTY-BIT ROUND BODY COUNTERSINK
DESIGN ANALYSIS
Black Oxide Finish
See black oxide section in chuck design analysis.
Shape of recessed opening for set screw
The shape of the recessed opening for the set screw is
derived from the combination of two functional shapes.
The first shape is created by a recessed band around
the middle part of the collar. The second shape comes
from countersinking the set screw The countersink for
95a
the set screw is necessary in order to finish the edge of
the hole free of burrs for the set screw. There is no
practical alternative for finishing the edge of the screw
hole to a burr- free condition and providing an
enhanced entry point for screw assembly. Protecting
this shape would be detrimental to competition. (See
exhibits #33, 38).
Shape of the collar: raised edge - recess - raised edge
The recessed perimeter band performs the function of
generating a gripping edge so that the bit can be more
easily removed from the chuck with a oulling action.
This recessed band is necessary because the main body
of the countersink is relatively small in diameter and
short in length. Operation of the spring loaded chuck
by itself to release the bit can, in many cases require
the use of two hands. The additional task of removing
the bit when the chuck's spring action is being held
back makes it much more desirable to make the bit
easier to grab by incorporating functional design
elements such as a recessed band. A recessed band is
the best way to provide grip around the circumference
to aid in a pulling motion. This design also allows a
recessed, protected area ideal for marking the bit with
the manufacturer's name.
Allen style set screw
The Allen style set screw is widely used in the industry
because of its low cost and performance benefits. When
the an Allen set screw is used, a stronger force can be
applied to tighten it. This is due to a more positive lock
with the head due to its faceted shape and the depth of
96a
the recess allowing the wrench to travel further into
the head, as compared with a slotted screw.
Because a more positive engagement of the screw is
provided by its design, slippage and thus wear of the
drive surfaces is reduced. The top surface of an Allen
style set screw is not as sharp as the slotted variety,
therefore the user is less likely to get cut by it. The
Allen wrench is not likely to slip out of the hex screw
and contribute to hand injuries like a blade drive with
a Slotted screw might.
These reasons, along with the lower cost of the Allen
head vs. the slotted head screw make the Allen head
the preferred choice for many applications. Its use as a
protected trade dress element of design would
compromise the functionality and competitiveness of
tool design.
Collar, round shape
The round collar on the shank of the countersink is
used as a depth gauge to keep the countersunk hole to
precise dimensions. After the hole is drilled, a plug is
inserted. In order for the standard plug to fit the hole,
the hole's depth must be precisely controlled. The use
of a round shape on the collar is derived from the
machining operation. It is the most straightforward
design and is therefore the cheapest to manufacture.
Some additional advantages of a round shaped collar
are a smooth perimeter edge vs. the hex shaped design.
A smooth edge is less likely to scratch the work
surface. (See exhibits #33, 36, 38).
97a
Two fluted cutting edges
The two flutes on the tool are used to cut and remove
material in order to form the countersink hole. They
are absolutely essential to the function of the tool. A
different number of flutes may be used, but two flutes
affords a high degree of performance with respect to
forming the hole. The hole can be formed quicker by
using two flutes instead of one. The two flutes also
provide a smoother cutting action. Because the removal
of material is performed by two edges instead of one,
the bit will retain a sharp edge longer.
The two fluted design is more cost effective and
provides more structural integrity than those designs
with more than two flutes and provides more cutting
performance than designs than with just one flute. (See
exhibit #32).
Round hole on receiver for shank
The round hole in countersink bit accepts the hex
Shaped shank. The countersink is assembled this way
to permit the joining of metals of dissimilar hardness.
The bit is hardened so that it remains sharper longer.
The shank should not be hardened because this would
make it brittle and susceptible to breaking.
In order to join the two parts using economical
production methods, a hole must be made in the
receiver to accept the shank and a set screw used to
lock the shank in place by running it into the shank.
Because the shank is hex shaped, the hole must either
align with the flats of the hex or accommodate the
DDE LT
98a
perimeter of the hex shank. A round hole to
accommodate the round turned portion of the hex
shank is clearly the only economical way to meet the
design requirements. To machine a hex shaped hole in
the receiver to accommodate the hex shank would be
very expensive.
Silver steel drill bit
The bright color of the drill bit is derived from the
high speed tool steel from which it was manufactured.
Additional treatment of drill bit is not necessary to
achieve satisfactory performance. Furthermore, the
vast majority of drill bits sold have the same color.
Any additional coatings or treatments to the drill bit
would increase costs. The silver steel color is often seen
along side of black oxide because the two finishes are
used extensively on a wide variety of parts (See
exhibits #29, 34; 35 36).
Length and diameter of countersink
The length and diameter of the countersink itself is
directly related to the function the countersink
performs A different length and a different diameter
would make a different size hole and thus would not
meet screw head specifications. The correct length and
diameter of hole allows the screw and plug used in the
countersink hole to properly fit the work piece after
final assembly. (See exhibits #36, 38).
Raised edge on relief barrel
99a
The raised edge on the relief barrel is a functional
design consideration. It prevents the barrel from
binding during cutting operations by forming a slightly
larger diameter hole. The extra clearance allows the
relieved barrel to rotate freely and run cooler. (See
exhibit 38).
INSTY-BIT HEX BODY COUNTERSINK DESIGN
ANALYSIS
All design elements for the hex body countersink are
identical to the round body countersink, except for the
hex collar and the shape of the recessed opening for set
screw, which are analyzed below. See Insty-Bit Round
Body Design Analysis section. The design differences of
the Insty-Bit hex shaped receiver and the Snappy
round shaped receiver are compared side by side on
the next page.
Hex Shaped Collar
The hex shaped collar has been designed for the
function of accepting a screw driving attachment. This
allows the countersinking tool to be quickly changed to
drive screws after the hole has been drilled.
Shape of recessed opening for set screw
The shape of the opening for the set screw is generated
by a conical shaped cutting tool penetrating first the
hex flat and then the cylindrical portion in the recessed
band, For removing burrs, sharp edges, and guiding
the screw into the thread, there is no practical
100a
alternative. Protection of such a feature directly
related to economical, standard processing techniques
would hurt competition.
INSTY-BIT DRILL GUIDE DESIGN ANALYSIS
Black Oxide Finish
See black oxide section in chuck design analysis.
Steel color of bit and steel color of spring
The steel color of the bit and steel color of the spring
are the colors of the materials used to make these
parts. Further treatment of the metal is not required
and would add expense to the parts. (See exhibits #29,
34, 35 36).
The oval recess for the top screw is created by a
countersinking tool working against a round surface.
The countersink for the top screw is necessary in order
to finish the edge of the hole for the top screw. An
unfinished edge or sharp edge would create a hazard
when the part was turning because it could easily catch
on materials or possibly cut the hand of tile user. (See
exhibits #33, 38).
Allen set screw
10la
See Allen set screw section in round countersink design
analysis.
Exposed spring
The exposed spring is a low cost functional design
allowing openings around the drill bit for easy removal
of shavings. Other designs without an exposed spring
are available, but these designs are more expensive to
produce.
Shape of nose bushing
The shape of the nose bushing is purely functional to
locate the drill bit in the center of the tapered recess of
the hardware being installed and to attach the spring
onto the back side of the bushing.
Shape of the drill guide collar
The round shape of the drill guide collar is the most
efficient and straightforward design. for this part. Any
other shape would be more expensive to produce and
would add unnecessary complexity. The round Shape
also provides a smooth surface for stamping of the
manufacture's name.
Overall length
102a
The overall length of the drill guide is a function of the
length of its components. All components and their
corresponding lengths have been chosen for their
optimum performance characteristics Any additional
length would incur increased costs without
corresponding performance benefits. Any reduction in
length would reduce the performance of the tool.
Compressive force of spring
The compressive force of the spring has been chosen on
the basis of its ability to meet stiffness requirements
for adequate control of the nose bushing tip as the
locating and hole drilling operations take place. Any
more or less compressive force could reduce the
effectiveness and smoothness of the locating and
drilling operations.
Spring shape. size, diameter. and number of turns
The spring shape, size, diameter, and number of turns
characteristics were chosen to meet the performance
requirements for locating and drilling operations and
to match up with the diameter of the nose bushing tip.
Different size, shape, and diameter springs would not
perform as well, may not fit the nose bushings
correctly and may increase the cost of the drill guide.
The number of turns in a spring is one of the factors in
the cost of a spring. An increase in the number of
turns past what is necessary to provide good lateral
stiffness would likely increase the cost of the spring.
Hex shape into round opening
103a
See section in design analysis of round countersink.
shape and size of brass thrust washer
The shape and size of the brass thrust washer is
determined by the shape and size of the spring
connected to it on one end and the shape and size of
the drill guide collar it must fit into on the other end.
This brass part performs a critical function by
allowing the body of the guide to turn freely and the
spring and nose bushing to remain Stationary. Any
other size and shape of the brass thrust washer would
alter its performance or increase its cost. The brass
part is also easy and cheap to tool up.
104a
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105a
WOODSHOP NEWS
MAY 19, 1992
Hex-shank bits pushing into fresh ground with new
options
By Mage McCormick
‘I had envisioned basically something like an air hose
coupling," said Wienhold.
106a
1995 PF DIRECTORY
Update on Blackening Ferrous Metals
By MARK RUCHLAND
Birchwood Casey
Eden Prairie, Minnesota
The coming year will continue to see increasingly
stringent air and water regulations for all types of
metal finishers including those operating blackening
lines. Manufacturers of metal components are quickly
discovering that it is smart to deal with suppliers who
can offer complete turnkey process systems which
include effluent treatment. More than ever, the key
words in metal finishing are "ZERO DRAIN
POLLUTION."
There are several ways to reduce the
concentration of pollutants but only a few ways to
achieve a zero discharge of hazardous materials in the
drain. Ion exchange has proven to be low in cost and
effective for treating rinse waters containing low levels
of pollutants. Under certain conditions, the line can be
exempted from the normal sewer sampling and testing
requirements. This technique can be used with good
results on blackening lines of all sizes. Details are
available from each supplier of the process. Most users
demand an "operator friendly" process which can be
operated without serious worker safety hazards and
depend on the chemicals supplier for assistance in
operator training and technical support. Consequently,
many suppliers have tailored their product offering to
conform to these demands and to provide a better
value for the customer.
107a
Black finishes are gaining in popularity because
they add value to iron or steel components in the
following ways:
CORROSION RESISTANCE. A black oxide
finish will withstand up to 200 hrs of neutral salt spray
(ASTM B117) or several hundred hours of humidity
(ASM D1748), depending on the sealant used. The
sealant is primarily responsible for the corrosion
resistance while the underlying black coating acts as an
absorbent base, holding the sealant in contact with the
metal substrate. The result is a strong, resistant
barrier against atmospheric humidity and corrosion.
PRODUCT APPEAL. The satiny smooth black
oxide finish is attractive as well as durable, a
combination required by more companies in highly
competitive markets.
DIMENSIONAL UNIFORMITY AND
STABILITY. Tooling, machine components and other
parts manufactured to precise dimensions cannot
tolerate the variable thickness of electroplating or the
excessive thickness of paint. Black oxide finishes have a
uniform, negligible thickness.
ECONOMICAL. Compared to nearly all other
finishes, black oxide finishes can applied at
significantly lower operating costs.
A black coating can be formed on steel parts in
certain types of heat treating processes. However, most
blackening is done after the heat treat cycle in order to
give the best control over the results on a variety of
alloys. The three types of blackening processes in
common use are:
1. COPPER/SELENIUM BLACKENING. This
process uses a room-termperature, acidic bath to form
a clack copper selenide (CuSe) coating. Reaction times
are generally one to two min.
108a
2. CAUSTIC BLACK OXIDING. A caustic
soda bath of 6-8 lb per gai and operating at 285F
produces a black iron magnetic coating in 10-20 min.
3. STEAM BLUING. This method utilizes a
pressure reaction vessel. The parts are sealed inside,
heated to 600-800F and steam is injected into the
vessel. The chemical reaction forms a black iron
magnetite Fe, O on the surface in about 10-20 min.
Each of the three processes has widely varying
heat and chemical requirement that can enhance or
detract to the value adding qualities of the finish.
Though the exact chemical compound on the
surface varies between the three methods described, all
deposit a coating that chemically becomes a part of the
steel surface. The coating thickness is a negligible
0.000030 inch. However, the property that is essential
to the performance of any black coating is its porosity
and ability to absorb a subsequent coating of other
corrosion inhibitor.
PROCESS DESIGN. Though the basic
consequence of the process line is usually very
predictable, individual steps can be influenced by
factors related to parts design and work flow patterns.
Some of the more common factors are:
¢Mix of alloys used, hardness and reactivity.
Condition of the surface prior to blackening
for example ,type of metalworking fluids used, or
presence of oxides such as rust, heat treat scale or
machining fines.
¢Volume of parts produced per shift.
Method of parts handling (racks, baskets,
conveyors).
¢eRequirements of the final finish in terms of
appearance, gloss and level of corrosion resistance.
109a
The tank layout can take several forms to
accommodate any of the factors listed above. Because
conditions vary widely from one plant to the next,
individual steps in the blackening process can be quite
different. Few lines are exactly the same. For example,
many parts are not rusty prior to blackening and may
require only degreasing in order to be ready for
blackening. If there is pre-existing rust or other oxides,
the blackening line should contain a provision for
removing them. Many hardened or high-alloy steels
require chemical activation prior to blackening in
order to ensure a good bond between substrate and
finish. If the parts are difficult to clean due to the
presence of heavy grease or other deep-drawing
compounds, this should be reflected in the line in the
form of heavy duty cleaning stations.
By taking all these various aspects into
consideration the blackening line can be designed to do
several jobs and produce high-quality finishes while
allowing the work to flow smoothly through the
system.
Let's look at the individual steps in a blackening
line.
1. CLEANING. Parts must be cleaned of
metalworking fluids prior to blackening. Acceptable
methods include alkaline detergent soak cleaning,
spray cleaning, electrocleaning, solvent degreasing and
***plasting. Each has its own advantages. Water
soluble coolants and cutting oils, for example ,are
removed in an alkaline detergent soak. Insoluble
particles such as carbon soot or machining fines come
off best in electrocleaners, spray cleaners or agitated
soak cleaners. Abrasive blasting is best for removing
rust, heat treat scale or mill scale. the detergent soak
110a
cleaner is preferred because it does a thorough
cleaning job and is not hazardous or costly to operate.
2. RINSING. A clean water rinse between two
adjacent chemical tanks is a must in any finishing line.
Ordinary tap water is all that is needed. Successful
operation depends on proper chemical balance of each
bath with a minimum of contamination by previous
baths. Most baths in the line can absorb some
carryover without a loss in performance, but gross
contamination must be avoided for best results.
The recommended rinse is provided by a
bottom-fed water tank with an overflow through at
trough at the top, fed by one to three gpm. The flow
rate will depend on the type of cleaning solution the
parts carry out. Higher cleaner concentrations require
higher flow rates. Likewise, high-density or
bulk-handling methods such as basket or barrel
processing may require higher flow rates than racked
parts or multiple rinses.
The condition of the rinse water can be
monitored by pH or conductivity and the flow rate
adjusted accordingly.
3. ACTIVATION. The steel surface must be in
a reactive state, so that it is chemically receptive to the
blackening reaction. Only then is it possible to deposit
a black coating that is uniformly adherent and of
acceptable quality.
The main function of activators is minor oxide
removal and adjustment of the pH of the surface.
There is always a small amount of residual alkaline salt
and wetting agent left in the microscopic pores of the
metal after cleaning.
Neu’ ralizing these salts with mild acid aids in
initiating the blackening reaction since the blackening
llla
solution itself is a mild acid. If the blackening solution
is forced to neutralize residual alkaline salts, the main
reaction will be delayed and possibly altered enough to
significantly reduce the quality of the deposit. A
surface with a mildly acidic pH factors the
development of a tight bond between metal and
coating.
In many cases, degreasing in an alkaline
cleaning solution is all that is required, especially if the
metal is a fairly reactive variety. A general rule is that
reactivity of the metal is lower when the alloy is higher
or the surface is harder or smoother. Thus. high-speed
steels are less reactive than medium-carbon tools Steels,
and the latter are less reactive that low-carbon
machined steel. Some less reactive steels will not
blacken properly unless their reactivity levels are
increased with an activator.
4. RINSING. The final rinse is very important.
Because the blackening solution depends on chemical
activity and balance significant contamination of the
blackening bath can result in poor quality coatings. It
is important that this rinse tank be kept as clean as
possible in order to minimize the possibility of
contamination.
5. BLACKENING. This is usually a time
operation, especially in cold blackening liens, in which
the solutions react very rapidly-30-90 sec. Hot oxide
solutions usually require dwell times of several
minutes. Longer times may be beneficial in some cases,
if confirmed by testing. Since the blackening chemicals
(hot or cold represent 70 pct of the overall chemical
cost of the line, it is always advisable to try to
minimize chemical usage by using the shortens
immersion time that will do the job.
112a
6. SEALING. Usually, a light oil or
dry-to-touch sealant is used to displace water and seal
out atmospheric humidity. Many different types are
manufactured. Most are available in either solvent or
water-borne versions. Generally, solvent-borne sealants
have inherently better resistance to humidity than
water-borne products. For this reason it is important
to choose the sealant appropriate to the intended
service life of the component. the manufacturer of the
rust preventative can offer guidelines in this regard.
Depending on the processing steps used, the
entire cycle usually takes 10-30 min. Once sealed, parts
are ready to proceed directly to the next operation.
Even though blackening uses acidic solutions at
times, hydrogen embrittlement is rarely a problem.
GETTING HIGHER QUALITY
By following a few rules, the user can expect
high-quality finishing with part uniformity and
consistency from part-to-part.
1. Cleaning is the most important step. the best
way to judge the effectiveness of the cleaner is to watch
the parts as they come out of the following rinse. Parts
should be uniformiy wet. If the water beads up at all,
it usually indicates residual oil on the surface.
2. Keep rinse tanks clean to minimize
carry-over and cross-contamination of baths.
3. When immersing the parts in the blackening
bath, allow them to come to a uniform gray/black
color, then rinse and seal. the sealant will darken the
coating to a full black. this technique minimizes
chemical consumption and costs.
4. Maintain all solutions on schedule and keep a
log of all additions and maintenance.
ll3a
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
THIRD DIVISION
Insty*Bit, Inc.,
Plaintiff
Civil No. 3-94-1427
vs. Judge Richard H. Kyle
AFFIDAVIT OF
EDWARD L. QUIRING
Poly-Tech Industries, Inc.,
Defendant.
STATE OF MINNESOTA
SS
COUNTY OF HENNEPIN
I, Edward L. Quiring, being first duly sworn
upon oath, depose and state as follows:
Re My name is Edward L. Quiring and I am
the principal of Defendant Poly-Tech Industries, Inc. in
the above captioned matter.
2. As an_ educational background, I
graduated from Bethel College located in St. Paul,
Minnesota, in 1954 with. an Associate of Arts degree.
Following my graduation from Bethel I enrolled in the
University of Minnesota pursing a course in Liberal
lida
Arts which I later changed to Mechanical Engineering.
I graduated from the University of Minnesota with at
Senior Certificate in Mechanical Engineering which I
received in approximately 1958.
Between 1956 and 1958 I was employed with
Northern Ordinance located in Fridley, Minnesota, in
the Engineering Test Department. My duties at
Northern Ordinance involved designing test apparatus
for equipment manufactured by the company for
resale.
I began purchasing metal working equipment
for starting my own business in approximately 1957.
Shortly thereafter, I initiated efforts to advertise my
ability to assist individuals in developing and
producing products.
. In 1962 [invented a meat tenderizing
attachment for a hand-held electric food mixer which
received U.S. Letters Patent No. 3,066,350. This
patent was granted on December 4, 1962.
For two years I worked with Nu-Line
Industries, Inc. in Minneapolis, Minnesota as a design
and manufacturing engineer. My duties with Nu-Line
involved designing electrical connectors according to
military specifications and overseeing the
manufacturing processes, from raw bar stock into
finished products.
In 1959, myself along with my father-in-law
started a metal forming subcontract business identified
as Diversco Industries. Diversco designed and
115a
manufactured tooling, developed manufacturing
methods, and manufactured parts according to
customer specifications. _ the types of parts
manufactured varied from water weld points to pilot
tubes for supersonic military aircraft.
4. In February 1962 I began a precision
screw machine shop identified as Poly Tech Industries,
Inc. Since 1962 Poly-Tech Industries has performed
machine shop manufacturing services for businesses
identified as Control Data Corporation, Honeywell
IBM, UFE, and Toro. In the precision screw machine
Shop business a _ customer normally will solicit
competitive production bids. It is essential therefore to
submit a bid which is high enough to make a profit but
not so high where the work is lost to a competitor's
bid. The machining of metals is an exact science
governed by well known speeds and feeds. Simply
Stated, since the cutting speeds and feeds do not
change, the most. practical way to underbid a
competitor is to make the part in less time.
Manufacturing a part in less time requires ingenuity in
combining and overlapping machining operations, and
eliminating unnecessary handling. In certain situations
design changes may be implemented to eliminate
unnecessary handling which the customer will approve.
S. In 1982 Poly-Tech Industries began to
manufacture and market a tool used by mechanics,
identified as the Poly-Punch having U.S. Patent No.
4,355,466 which was invented by my son, Michael
Quiring. I have attached to this Affidavit a photocopy
of his patent as Exhibit 23. This tool continues to be
sold by Poly-Tech Industries today. We have used
methods such as national mailing, exhibition at the
ll6a
National Machine Tool Builder's Show, and sales calls
to distributors such as Armstrong Tool, Matco, and
Mac Tools to sell this tool. I have attached to this
Affidavit a photograph of a Poly-Tech Poly-Punch as
Exhibit 25 which shows that the tool is formed and
treated with black oxide and incorporates a
combination of knurling-band-knurling features on the
body of the handle to assist an individual in grasping.
The band on the handle is provided to permit the
marketing identification of Poly-Punch along with the
U.S. patent number.
6. In the middle of 1988 Poly-Tech was
approached by Jim Wienhold to manufacture parts for
a quick-release chuck. At that time Mr. Wienhold was
made aware that Poly-Tech Industries was
manufacturing parts for Honeywell, IBM, UFE,
Control Data, and Mercury Minnesota. Starting in
1988 Poly-Tech made component parts for a
quick-release chuck. These parts were supplied to Mr.
Wienhold along with an invoice. Mr. Wienhold then
assembled these parts into completed products. The
parts were fabricated by the cutting of raw bar stock
into the component parts on single and multi-spindle
screw machines. I have attached to this Affidavit as
Exhibit 16 a description of the features and general
operation of a multi-spindle screw machine.
7. Beginning in 1989, Poly-Tech began to
purchase some of the assembled products back from
Mr. Wienhold for resale. Poly-Tech operated its sales
business as separate from the job shop machining
business. In 1989 in order to facilitate the sales of
products which Poly-Tech had purchased from Mr.
117a
Wienhold, Poly-Tech expended time and money to
develop and design the art work and packaging for
point-of-sale display of the quick-release products.
Poly-Tech Industries did not receive any direction or
control from Mr. Wienhold with respect to the art
work or packaging to be utilized at the point-of-sale for
the quick-release products. Since 1988 Poly-Tech
Industries Inc. has never had a written agreement of
any sort with Jim Wienhold or Insty*Bit.
7. Beginning in 1990 Poly-Tech would
attend trade shows to facilitate sales of products which
had been purchased from Mr. Wienhold. Poly-Tech
Industries did not receive any direction or instructions
or restrictions from Mr. Wienhold with respect to
resale activity of the products which had _ been
previously purchased for resale. Woodworking trade
Shows occurred almost on a weekly basis which were
attended by Poly-Tech in order to sell quick- release
chuck products. At a typical trade show Poly-Tech
would sell products to consumers and would solicit
distributors such as hardware stores and/or
representatives for sales to distributors. Poly-Tech
attended trade shows throughout the country and
initiated efforts to establish a national distribution
chain with respect to products purchased from Mr.
Wienhold. During this period or time Poly-Tech
Industries Inc. expended a substantial amount _f
money in travel expenses and time to convince a
distributor to carry a product line of the quick-release
chuck and related accessories. Samples of products
were provided for testing and _ evaluation to
distributors, contracts were negotiated and personal
contacts were made in order to facilitate the sale of the
quick-release chuck products through the national
118a
distribution system as developed by Poly-Tech
Industries. Poly-Tech Industries also attended trade
shows where Poly-Tech communicated that territories
were available for manufacturing reps for sale of
quick-release products. Mr. Wienhold during this
entire period of time knew that Poly-Tech was
attempting to establish a national distribution chain
and that Poly-Tech was soliciting manufacturers reps
for dealers and hardware stores throughout the
country. During this period Mr. Wienhold was aware
of the existence and identity of the Poly-Tech
manufacturers reps and the acquisition and identity of
Poly-Tech's dealers and customers throughout the
country.
8. Beginning in approximately 1991 Mr.
Wienhold initiated efforts to establish his own
distribution chain for his quick-release chuck products.
During this period of time Wienhold's manufacturers
reps would place calls on Poly-Tech's dealers and
hardware stores communicating that the dealers and
hardware stores were now required to purchase
quick-release products directly from the Wienhold
manufacturer reps who had _= an_— exclusive
distributorship with respect to that territory. The
Wienhold manufacturing reps would communicate to
the Poly-Tech dealers and hardware stores that they
did not have the ability to buy any further product
from Poly-Tech. On numerous occasions I challenged
Jim Wienhold with respect to this unfair business
practice. On almost every occasion I was advised that
the customers had the right to purchase products from
whomever they chose. At that time I was concerned
that Mr. Wienhold would refuse to sell to Poly-Tech
the quick-release chuck do to his ownership of his two
119a
U.S. Patents, Nos. 4,900,202 and 5,013,194. It is my
understanding that Mr. Wienhold as a patent holder is
not obligated to sell his patented product to any
individual or business.
Between 1991 and late 1993 Mr. Wienhold's
exclusive sales representatives effectively stole all of
Poly-Tech's dealers and hardware stores throughout
the country with the exception of the areas of Ohio,
New York, and New Jersey.
Poly-Tech Industries had expended thousands of
dollars establishing and building accounts, dealers,
distributors, and manufacturing reps which were lost
to the unfair business practices of Jim Wienhold and
his exclusive territorial manufacturing reps.
9. Between the period of 1989 through 1991
Poly-Tech created at their own expense the packaging
for the Insty*Bit products and, the advertising
point-of-sale cards for the Insty*Bit products.
Poly-Tech incurred these expenses in order to promote
their own sales activities.
Jim Wienhold and Insty*Bit have utilized all of
Poly-Tech's point-of-sale advertising, catalogs, and
packaging from 1989 and continue to utilize the
point-of-sale displays and advertising point-of-sale
cards.
10. In 1992 I initiated engineering efforts to
invent a new type of quick-release chuck. I was
successful in my efforts. The quick-release chuck which
I invented includes significant advancements with
respect to the internal mechanism of grasping a
120a
standard ANSI B107.4 hex shank work piece. One of
the unique features of my invention concerned the
ability to insert the industry standard hex shank of a
workpiece into the chuck without the prior retraction
of the sleeve for locking engagement of the workpiece.
My invention permits one-handed insertion of the hex
shank of a workpiece for locking engagement to the
quick-release chuck. All other known quick-release
chucks require the sliding sleeve to be physically
moved during the insertion of the tool requiring two
handed operation. The internal mechanism for my
quick- release chuck is quite unique as may be seen in
Exhibit 7. During the fall of 1993 my attorney filed a
patent application for my invention related to the
quick-release chuck. This patent appiication has been
approved by the U.S. Patent and Trademark Office
and I have received a Notice of Allowance and Issue
Fee Payment Notice Due which I have paid. I
anticipate the issuance of a U.S. Patent concerning my
invention related to the quick-release chuck sometime
in May of 1995. I have attached to this Affidavit a
Notice of Allowance concerning my invention related to
the quick-release chuck. (Exhibit 4)
11. Poly-Tech designed the clamshell
packaging for the quick-release drill chuck and its
related accessories in 1990. At that time Poly-Tech
designed the clamshell package to have a removable
insert in order to accommodate either quick-release
chucks, countersinks, or drill guides. Poly-Tech
industries paid approximately $2300 for the tooling for
this clamshell package. The tooling for the
quick-release chuck and related accessories purchased
by PolyTech from Jim Wienhold was transported to a
12la
plastic vacuum former which sold the formed packages
to Poly-Tech for nesting of the quick-release chuck and
related accessories. At that time a sticker was placed
upon the package which indicated Insty*Bit as well as
Poly-Tech Industries as a source of origin for the
goods. I have attached to this Affidavit a photocopy of
the advertising sticker utilized in 1990 as Exhibit 27.
At all times during the period between 1988 and 1994
Poly-Tech Industries was responsible for their own
advertising, their own brochures, their own order
forms and all of their own methods of doing business.
During the period between 1990 and 1994 Jim
Wienhold/Insty*Bit purchased from Poly-Tech the
header card for point-of-sale display advertising of the
Insty*Bit quick-release chuck and related accessories.
12. Attached to this Affidavit are
photographs of a Martindell Quick-Release Chuck,
Patent No.4,692,073. (Exhibit 20) This quick-release
chuck was first patented in 1987 or approximately one
year prior to the filing date of Mr. Wienhold's patent.
This quick-release chuck is manufactured by Advance
and is sold by Vermont America and Craftsman.
Exhibit 1 shows photographs of the Advance, Vermont
America, Craftsman and Manindell quick-release
chucks. As may be seen in the attached photographs,
this chuck is black and is approximately the same size
and has the same characteristics as the Wienhold
quick-release chuck.
13. Beginning in approximately 1990 Mr.
Wienhold initiated efforts to sell. his quick-release
chuck products through private labeling. Private label
122a
offerings occurred through Milwaukee, Malco,
Lawson, ATO, Porter-Cable, Irwin/American Tool,
and Triumph. PolyTech requested that they be
permitted to sell quick-release products under a private
label which Mr. Wienhold has continuously refused to
grant.
14. Since 1988 Poly-Tech Industries,
following their purchase of assembled quick- release
chucks and related products has been able to set their
own price with respect to the resale of these items to
ultimate consumers. Poly-Tech Industries has been
under absolutely no control with respect to the resale
price to be charged consumers.
Poly-Tech Industries purchased quick-release
chucks and related accessories from Jim Wienhold
based upon the following formula. A first discount
price is 40% off the list price for the item. The 40%
discount is fairly standard practice in the industry.
This first discount price is normally provided to a
purchaser such as a hardware store. A wholesaler
purchasing a product normally receives an additional
discount price of 25% off. An example of a wholesaler
would typically be Hardware Hank or United
Hardware. An OEM purchaser would receive an
additional 25% the price provided to a wholesales.
Poly-Tech was able to acquire products from Wienhold
at the OEM price of 40% less 25% less 25%. One of
the reasons why Poly-Tech received the OEM price was
due to the fact that Poly-Tech had permitted Mr.
Wienhold/Insty*Bit to use and utilize Poly-Tech's
clamshell packaging for the Insty*Bit products.
123a
15. During the period between 1990 and
1994 Poly-Tech Industries attended trade shows in
order to sell quick-release chucks and _ related
accessories. The trade shows occurred on almost a
weekly basis. On numerous occasions during this
period Jim Wienhold/Insty*Bit indicated that he did
not have sufficient inventory of products to Satisfy
Poly-Tech's needs for sales at the weekly trade shows.
The expenses for reservation of a booth at a trade show
were substantial and were incurred on a normal basis
many months prior to the show date. Normally the
expenses for a trade booth at a show are not
refundable. Poly-Tech Industries was then forced into
a situation where they were required to, at their own
expense, carry inventory of component parts in order
to avoid the waste of resources with respect to not
having product available for sale at the weekly trade
Shows. If Jim Wienhold/Insty*Bit was short of
inventory, then Poly-Tech would provide to Jim
Wienhold a portion of Poly-Tech's extra inventory
which would be assembled by Mr. Wienhold into
component products for sale at the weekly trade show.
Over time, Jim Wienhold/Insty*Bit began to rely upon
Poly-Tech's inventory which was carried at
Poly-Tech's expense. On numerous occasions Jim
Wienhold/Insty*Bit due to their own failure of advance
planning, would be short of inventory and would
request immediate delivery of parts in order to fulfill
an order. Poly-Tech Industries, Inc. lost substantia]
amounts of money by carrying inventory at their own
expense. However, this business practice was
necessitated in order to insure that an adequate volume
of products would be available for sale at the weekly
trade shows.
124a
16. The manufacturing of parts from raw
metal stock usually occurs through the rotation of a
bar of raw stock within a multi-spindle screw machine.
The size and dimensions for the quick-release chuck
are selected for purely functional reasons. An increase
in the size of the diameter of the sleeve or hub for the
quick-release chuck increases the time required for a
multi-spindle screw machine to "cut" each part which
results in increased costs for time and materials. As the
circumference of the part increases the rotation of the
part within the screw machine is required to be
reduced in order to avoid the burnout of either the tool
used for cutting the part or the part itself. These
considerations are known as speeds and feeds in the
industry. An increase in diameter of a metallic part
which is rotated within a screw machine, necessitates
the slowing down of the rotational cycle time for the
part which reduces the volume of products that can be
manufactured in a given amount of time. The
manufacturing expense is then increased compared to
the cost for the production of an identical volume of
products. The diameter of the sleeve is therefore based
upon the cost versus time considerations in light of the
inherent durability of the metal exposed to the
machining process.
The inclusion of flat surfaces on round surfaces
parts is called either broaching or milling.
17. The manufacturing steps for cutting
parts for a quick-release chuck is a moderately
complicated procedure. At the first position of a screw
machine the cylindrical shape of the hub and shank is
formed. Simultaneously at the first position the hole
Manin aie niece co
125a
for the hexagonal shape is machined into the hub and a
chamfered surface is applied to the leading edge of the
hub. These machining operations occur at the first
position which eliminates the necessity of extra
manufacturing time. The broaching of the hex-shaped
bore occurs simultaneously with the formation of the
outer diameter dimensions for the hub and shank
portions.
In the next operation, flats are applied to the
shank through a milling process. The flats are applied
with the milling cutter which travels across the length
of the shank putting a flat surface on the shank. As the
part is indexed, another flat surface is applied to the
Shank and so on until the desired number of flats have
been produced.
The placement of a hexagonal shape upon the
Shank is an extremely costly and inefficient process. In
order to form a hex shape on the shank, two milling
machines are required to be exactly aligned and
positioned on opposite sides of the shank during the
milling process. The shank then receives two flat
surfaces simultaneously, requiring the use of two
oppositely aligned milling cutters for milling the flat
surfaces. In addition, the two cutters are required to
traverse the shank simultaneously and must be exactly
aligned with the center of the hole through the hub.
Otherwise, the result will be wobble during the final
use of the quick-release chuck product. It is very
difficult and extremely inefficient to place six flat
surfaces on a shank. The inclusion of three flat
surfaces on a shank reduces wobble, eliminates
slippage in a drill chuck, increases the utility of the
126a
part, and reduces the cost by eliminating utilization of
dual cutters, and manufacturing time. In addition,
there is no reason to require six flat surfaces on the
shank of.a quick-release chuck in that only three of the
surfaces are to be gripped by the three jaws of a
standard jacobs-style chuck for an electric drill. The
inclusion of two flat surfaces would reduce the utility
of the invention in that the two flats would be off
center the minute you put the shank into the three jaws
of a standard jacobs-style drill chuck. If a shank
including only two flat surfaces was placed within a
standard jacobs-style three jaw chuck, a mismatch
would occur which would reduce the grasping and
placement of the quick-release chuck off center with
respect to the drill.
A second operation of a screw machine occurs
after the part has fallen off the bar stock and is taken
to a subsequent machine for further operations.
It is desirable in the manufacturing process to
eliminate as many operations as possible to reduce the
manufacturing time. As the number of operations to be
performed on a given part increases, so does the cost,
due to further manual and machine times required for
completion of the part.
The leading edge of the hub is chamfered so
that the sleeve will be able to pop on to the hub without
catching on the front circular corner. The chamfer
leading edge assists in die engagement between the hub
which is within the inside of the sleeve and the sleeve.
A chamfered leading edge exists on the hub in order to
eliminate a square leading edge. In addition, the
127a
chamfer on the leading edge of the hub eliminates
Sharp edges and provides a smooth edge for fingers
This portion of the hub is always going to be touched
by the human hand; therefore it is desirable to get rid
of as many sharp edges as possible in order to
minimize risk of injuries to individuals.
17. Approximately two days is required to
set up a _ =miulti-spindle screw machine for
manufacturing of component parts. Therefore the
minimum volume of parts usually required for
manufacturing in order to economically justify a
two-day set up time for a multi-spindle screw machine
is approximately five to fifteen thousand parts.
The size of the sleeve is dictated by functional
concerns. The sleeve is required to be as small as
possible so that it does not get in the way of the
operator during use of a tool In addition, the sleeve is
required to include a sufficient wall thickness between
the interior diameter and exterior diameter, which is
dictated by the dimension of the outer diameter of the
hub. The sleeve is required to have a sufficient
thickness so that it does not fracture or fail during the
marking process which leaves about a .050 inch wall.
Otherwise, any thinner wall would be breached upon
the application of the marking to the sleeve. A thicker
wall of the sleeve necessitates the slowing down of cycle
times because the part is required to turn slower
during the machining process which increases the cost
of manufacturing and necessitates the use and waste of
raw materials and increases the manufacturing time.
Therefore, to compensate for increased costs, the
128a
expense for a particular part would be required to be
increased.
18. During the manufacturing process the
entire outside diameter of the sleeve is knurled prior to
the cutting of the sleeve from the bar stock.
Simultaneously with the knurling of the entire exterior
of the sleeve, a bore is drilled into the rearward or
trailing edge of the sleeve. A collet is utilized to grasp
the bar stock on a multi-spindle screw machine. The
collet allows the bar stock to be slid through the collet
during the manufacturing process and additionally
permits the bar stock to be spun during the application
of operations during the manufacturing processes.
At the second step of the first operation, a band
of smooth surface is removed from the entire knurled
portion of the exterior diameter of the sleeve.
Simultaneously within the second step, the bore
through the sleeve is increased in diameter. At the
third position the bore is further increased in diameter.
At the fourth position the bore is increased to the
desired inner dimensions for the sleeve. The chamfer
leading front edge of the sleeve is _ piaced
simultaneously with the fourth position. The last
position is the location where the sleeve is cut from the
bar stock or "parted".
19. The diameter of the sleeve for the
quick-release chuck is as a small as possible while
simultaneously retaining enough material to have
strength and function without fail. The selection of the
diameter of the sleeve is functionally dictated by the
manufacturing process for utilization of the least
129a
amount of stock and maximizing the production of the
highest volume of parts in a given period of time.. The
length of the sleeve is dictated by functional
considerations and is as short as possible to minimize
the protrusion of the quick-release chuck from the
chuck of a drill. The more the quick-release chuck
protrudes from the end of a drill, the more likely the
quick-release chuck is to be clumsy, reducing its utility.
During the chamfering and cutting off process
of a part from bar stock, if the collet is engaged to only
a portion of the part, the cutoff tool tends to knock the
part out of location causing a wobble. If the part has
not been cut off squarely, the chamfering tool places a
large chamfer on one side of the part and a smaller
chamfer on the other side of the part. In order to
obtain even tolerances and a correct chamfer, it is
optimal to have either the entire exterior surface of the
sleeve knurled or have two bands of knurling so that
the colleting process can grasp the part evenly. This
maximizes the grasping of the collet to the part and
minimizes error in tolerances and facilitates the
concentric grasp of the collet to the part. It also
promotes the ability to obtain even tolerances and
reduces waste of machine time, waste of materials, and
improves the manufacturing process.
A sleeve is gripped by the collet on the outside
diameter in order to attempt to maximize the
concentric grip. If the grasping area of the collet is
shortened, it tends to allow the part to wobble during
the cutting machining step and if wobbling occurs
during the part
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