author: GODBOLD, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. John Paul SHELTON, Defendant-Appellant.
    No. 73-1776.
    United States Court of Appeals, Fifth Circuit.
    Feb. 24, 1975.
    Rehearing and Rehearing En Banc Denied April 7, 1975.
    William V. Hall, Jr., Decatur, Ga., Robert R. Crittenden, Winter Haven, Fla., for defendant-appellant.
    John W. Stokes, U. S. Atty., Atlanta, Ga., for plaintiff-appellee.
    Before BELL, GODBOLD and IN-GRAHAM, Circuit Judges.
   GODBOLD, Circuit Judge:

The petitioner John Paul Shelton moves to reinstate his appeal which was unconditionally dismissed November 12, 1973.

Shelton was convicted in the United States District Court for the Northern District of Georgia of interstate transportation and concealment of a stolen motor vehicle and on February 2, 1973 was sentenced to two concurrent five-year terms. He filed notice of appeal to this court, and the District Court granted him release pending appeal under a $5,000 bond with surety.

June 1, 1973, Shelton escaped from custody of the State of Georgia while a state court jury was deliberating at his trial on charges of forgery. He was found guilty on the forgery charges, his state bond was forfeited and a bench warrant issued. The day of the escape his pro se brief in the appeal from the federal conviction was filed in this court.

June 18 the District Court held a hearing in response to a motion by the U. S. Attorney that Shelton show cause why his appeal bond should not be revoked or forfeited. He did not appear nor was he represented by counsel. The District Court determined that it lacked jurisdiction to order the forfeiture.

The United States then filed in this court a motion to revoke or forfeit Shelton’s appeal bond and to dismiss the appeal on the basis that he had absconded and defied the authority of this court. An attorney, who did not represent Shelton in the trial of the federal charge or of the state charge, filed a response to the government’s motions contending that Shelton had neither breached the condition of the federal bond nor evidenced any intent not to obey the judgment of this court.

Recognizing our power and authority to dismiss the appeal of an escapee, we held:

In this instance the custody fled is that of another sovereign and upon a charge unrelated to that embraced in the federal appeal. We conclude, however, that the escape from state custody, the subsequent state, conviction, the revocation of the state bond, the fact that Shelton remains at large despite the existence of the state bench warrant, and the fact that the response filed in this court contains no indication of his whereabouts nor any affirmative averments that he intends to submit himself to jurisdiction of this court or of the State of Georgia, constitute sufficient probable cause for this court to conclude that appellant will not comply with orders of this court and will abide its decree only if favorable to him. We therefore conditionally revoke his appeal bond and conditionally dismiss his appeal.

United States v. Shelton, 482 F.2d 848, 849 (CA5), cert. denied, 414 U.S. 1075, 94 S.Ct. 591, 38 L.Ed.2d 482 (1973). To be certain that Shelton’s rights were protected we made the dismissal conditional, as set out above, and we remanded the case to the District Court with directions that it issue an order directing Shelton to appear in person (and by counsel if he wished) to show cause why the conditional dismissal should not be made final. The District Court issued such an order and served it as directed by us. Shelton did not appear. The attorney who had filed the response did appear but gave no explanation for Shelton’s failure to appear, stating that he had been in telephonic contact with Shelton but was not aware of his whereabouts. The District Judge found that sufficient cause had not been shown and concluded that there was no reason why the conditional revocation of the appeal should not be made final. A transcript of these proceedings was certified to us, and on November 12, 1973, we ordered our previous conditional order made final and unconditional and the appeal bond revoked and the appeal dismissed.

December 25, 1974 Shelton was arrested in Orlando, Florida. He then filed through still another attorney, of Orlando, the motion to reinstate that is now before us.

In Molinaro v. New Jersey, 396 U.S. 365, 90 S.Ct. 498, 24 L.Ed.2d 586 (1970), the Supreme Court shifted its own practice and unconditionally dismissed the appeal of a fugitive without waiting to see if he might return or be captured. Cf., Eisler v. United States, 338 U.S. 189, 69 S.Ct. 1453, 93 L.Ed. 1897 (1949); Smith v. United States, 94 U.S. 97, 24 L.Ed. 32 (1876); Bohanan v. Nebraska, 125 U.S. 692, 8 S.Ct. 1390, 31 L.Ed. 854 (1887). Eisler and some other earlier cases had left the suspicion that the Court might find an absolute right to appeal following return from fugitive status. See McKinney v. United States, 403 F.2d 57 (CA5, 1968); for other preMolinaro cases see United States v. Dawson, 350 F.2d 396 (CA6, 1965) and Stern v. United States, 249 F.2d 720 (CA2, 1957). Since then, however, every circuit that has heard appeals from fugitives has dismissed unconditionally, either waiting a reasonable time for the fugitive to surrender himself, United States v. Tremont, 438 F.2d 1202 (CA1, 1971), or prospectively dismissing unless defendant-appellant should surrender within a reasonable time, usually 30 days, United States v. Eberhardt, 467 F.2d 578 (CA5, 1972); United States v. Swigart, 490 F.2d 914 (CA10, 1973) (“final dismissal” after 30 days); Brinlee v. United States, 483 F.2d 925 (CA8, 1973); United States v. O’Neal, 453 F.2d 344 (CA10, 1972). Cf., Fratus v. United States, 496 F.2d 1190 (CA5, 1974), in which this court dismissed without prejudice if appellant showed he was not actually a fugitive. In Van Blaricom v. Forscht, 490 F.2d 461, at 462 (CA5, 1974), we referred to

the discretion of this Court not to reach the merits of an appeal where the petitioner is not available and subject to any judgment which might be entered in the case.

If a court retains any discretion after Molinaro, the facts and circumstances which we have set out make clear that such discretion should not be exercised here. Shelton has flagrantly abused the processes of this court and of the District Court. When we first received Shelton’s appeal, we remanded to give him an opportunity to surrender, which he did not do. The situation is similar to that in which a petitioner’s appeal is conditionally dismissed, subject to reinstatement if within a reasonable time he makes it known to the court that he is available and subject to any judgment which might be entered, and petitioner fails to do so, suffers a dismissal, and then later seeks reinstatement with no explanation for his conduct.

The motion to reinstate is denied.


source: Caselaw Access Project

author: PER CURIAM:

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. 110 BARS OF SILVER, 3 CRUCIBLES of SILVER, 11 BAGS of SILVER COINS, Defendant-Appellant, Errol B. Resnick, Intervenor-Appellant.
    No. 74-2941
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Feb. 24, 1975.
    Rehearing Denied March 28, 1975.

      Ernest J. Rice, Orlando, Fla., for defendant-appellant.
    John L. Briggs, U. S. Atty., Kendell W. Wherry, Asst. U. S. Atty., Jacksonville, Fla., for plaintiff-appellee.

      Before WISDOM, BELL and CLARK, Circuit Judges.

       Rule 18, 5 Cir., Isbell Enterprises, Inc. v. Citizens Casualty Co. of New York et al., 5 Cir., 1970, 431 F.2d 409, Part I.

   PER CURIAM:

This is an appeal of an action brought pursuant to 31 U.S.C. § 396, wherein the United States sought the forfeiture of 110 bars of silver and 3 crucibles of silver, which were the alleged property of Errol B. Resnick. The property was found to be composed of melted United States coins and was ordered forfeited to the United States. On appeal Resnick assigns numerous errors alleging the trial court abused its discretion. He also alleges certain evidence should have been suppressed, and his court-appointed attorney should have been compensated.

Resnick has been before this Court numerous times before. This forfeiture proceeding stems from intervenor’s conviction for melting down United States coins, for which he had three trials, and which we affirmed in United States v. Resnick, 5 Cir., 1973, 483 F.2d 354. In the third criminal trial and in this case, several former employees of Resnick testified that United States coins were used in the making of these silver bars, and that the crucibles contained molten silver derived from melted United States coins.

This action was filed on July 19, 1973; answer was filed on August 15, and later a supplemental answer was filed on November 2. On December 13, a jury trial was requested, which motion was denied on January 24, 1974. On January 10, Resnick informed the court he had discharged his previous retained attorney, and asked for a court-appointed one. E. J. Rice was appointed with notice that the appointment was without compensation. After his appointment, Rice asked for a continuance, which was denied.

At trial, intervenor sought to introduce the entire transcript of testimony of the government from the second criminal trial. Counsel would not agree to read in only the pertinent parts, so the request was denied. Counsel also asked the court to provide intervenor with Jencks Act material in regard to all government witnesses, which request was denied. After the trial, counsel asked for attorney’s fees from the 16 bags of silver which were originally in the proceeding, but which had been dismissed from the case. This request was denied.

Federal Rules of Civil Procedure Rule 38(b) and (d) contain the provisions concerning jury trials in civil actions. Such a request must be made within ten days from the service of the last pleading (b); otherwise, it is waived. In this case, the last pleading was on November 2, and the jury trial was not requested till December 13, thus the right to a jury trial was waived. Under Rule 39(b) the judge in his discretion may grant a jury trial. Appellant has made no showing of an abuse of the judge’s discretion in this regard. We will reverse only on such a showing.

Intervenor also alleges the court abused its discretion in not granting a continuance just prior to trial so that he could confer with his attorney. The court noted in its opinion that counsel was extremely well prepared: he had thoroughly familiarized himself with the case, had conferred with Resnick by phone and in person prior to trial, and additionally had read and studied the transcripts of the criminal proceedings. The grant or denial of a motion for continuance rests with the sound discretion of the court, and will be reversed only when an abuse of discretion is shown. United States v. Snyder, 5 Cir., 1974, 505 F.2d 595. There was no abuse of discretion.

Intervenor requested Jencks Act material from the government for each witness that testified. The Act itself is strictly limited to criminal proceedings. 18 U.S.C. § 3500. A forfeiture proceeding is a civil one. United States v. Burch, 5 Cir., 1961, 294 F.2d 1. Thus the Act does not apply.

Intervenor next alleges the court erred by not allowing in the recorded testimony of the government assayist who testified in the first and second criminal trials, and who was unavailable for this case. Counsel wanted to put in all of his testimony which the court would not allow him to do. It offered to let counsel put in the pertinent provisions, but this offer was rejected. The court stated that all of the testimony was not relevant and material, and it did not want to encumber the record. The court did take judicial notice of the fact that the assayist said there was no way to determine the origin of the coins in the crucibles, whether they were melted American or Canadian coins. It also noted that Res-nick’s employees had testified after the fineness of the silver had been altered by the addition of copper.

The trial court has wide discretion in determining the relevancy and materiality of evidence in a case. Its ruling will not be disturbed in the absence of a clear showing of abuse of that discretion. United States v. Calles, 5 Cir., 1973, 482 F.2d 1155. After reviewing this record, we hold there was no abuse of discretion.

Appellant next argues the crucibles and their contents should have been suppressed. The parties stipulated the only issue to be resolved was whether the bars and contents of the crucibles were the result of melting United States coins. Additionally, the crucibles were never admitted into evidence at trial. This argument by intervenor lacks merit.

Even though counsel was appointed with notice that he would not receive compensation, he now argues he should be paid from the 16 bags of silver coins originally in the suit. That count of the complaint was struck from the suit without objection, thus the coins were no longer in the court’s jurisdiction, nor available for compensation.

Resnick himself has filed a pro se brief raising many of the same issues that were raised by his counsel. We have reviewed those arguments and find them to be without merit.

A careful review of the entire record reveals no errors of law.

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Richard Keathley WOOLDRIDGE, Defendant-Appellant.
    No. 74-3099
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Feb. 24, 1975.

      Max J. Luther, III, Corpus Christi, Tex., for defendant-appellant.
    Anthony J. P. Farris, U. S. Atty., Houston, Tex., Edward B. McDonough, Jr., B. Stephen Rice, Asst. U. S. Atty., Corpus Christi, Tex., James R. Gough, Jr., Mary L. Sinderson, Asst. U. S. Attys., Houston, Tex., for plaintiff-appellee.
    Before GEWIN, GOLDBERG and DYER, Circuit Judges.

       Rule 18, 5th Cir. See Isbell Enterprises, Inc. v. Citizens Casualty Co. of New York et al., 5th Cir. 1970, 431 F.2d 409, Part I.

   PER CURIAM:

Appellant Wooldridge seeks reversal of his conviction for possession with intent to distribute approximately 221 pounds of marijuana in violation of 21 U.S.C. § 841(a)(1). He argues on appeal that the stopping of his vehicle by federal agents ninety miles from the Mexican border violated the Supreme Court’s Al-meida-Sanchez directives, that the evidence on which his conviction was based was illegally seized, and that admission into evidence of statements he made to a federal agent violated his Fifth Amendment rights. Because we find these contentions to be without merit, we affirm his conviction.

U. S. Border Patrol agents stopped Wooldridge’s automobile at a permanent check point near Sarita, Texas during the early morning hours of July 30, 1972. One agent testified that “the car appeared to be loaded in that the rear of the car was lower than you ordinarily expect the rear of the car to be unless something is in the trunk ... to make it heavy.” The agent opened the front door of the vehicle and immediately detected a strong odor of marijuana. The agent directed Wooldridge to drive onto a side ramp for further inspection. Wooldridge opened the trunk at the agent’s direction and thereby revealed several large burlap sacks containing over 221 pounds of marijuana. The agents arrested Wooldridge and immediately gave him Miranda warnings both orally and in writing. The U. S. Customs Service agent who came to take Wooldridge into custody again advised him of his right to remain silent. During the ride to Corpus Christi, Wool-dridge made certain incriminating statements to the customs agent which were admitted as evidence at trial over the defendant’s objection.

This court’s decision in United States v. Miller, 492 F.2d 37 (5th Cir. 1974), aff’d en banc, 499 F.2d 1247 (1974), disposes of Wooldridge’s initial argument that Almeida-Sanchez must be applied retroactively. In that case we held that the Supreme Court’s AlmeidaSanchez ruling of June 21, 1973, would have only prospective application. The search at issue in this case occurred some eleven months prior to that decision. See also United States v. Merla, 493 F.2d 910 (5th Cir. 1974). The appellant’s car was therefore stopped incident to a valid border search.

Appellant’s second contention, that the Border Patrol agents lacked probable cause to search his automobile, is undermined by our even more recent decision in United States v. Cantu, 504 F.2d 387 (5th Cir. 1974). In Cantu, we concluded that, under the facts presented, Border Patrol agents had probable cause to believe that the automobile which they had properly stopped contained contraband. In that case, the inspecting agent smelled marijuana, observed marijuana particles on the floor of the car, and noted that the rear seat was displaced. In the present case, the agent detected the strong odor of marijuana and observed that the car was riding in an abnormally low fashion. These circumstances established probable cause that the car contained contraband, and the “exigent circumstances” of the., moveable vehicle on the highway justified the warrantless search. Carroll v. United States, 267 U.S. 132, 45 S.Ct. 280, 69 L.Ed. 543 (1925).

Wooldridge’s third argument on appeal, asserting that admission at trial of his incriminating statements to the customs agent violated the Fifth Amendment, is equally unpersuasive. Prior to making the statements, Wooldridge had been advised of his right to remain silent by two different federal agents. In knowingly and voluntarily making the subsequent statements, he waived his Fifth Amendment protections.

The conviction is affirmed.

      . Almeida-Sanchez v. United States, 413 U.S. 266, 93 S.Ct. 2535, 37 L.Ed.2d 596 (1973).

      . Miranda v. Arizona, 384 U.S. 436, 86 S.Ct. 1602, 16 L.Ed.2d 694 (1966).

      . Even under post-Almeida-Sanchez law, the initial intrusion in this case, which ultimately led to the agent’s reasonable suspicion that Wooldridge’s vehicle contained contraband, would appear valid. In United States v. Hart, 506 F.2d 887 (5th Cir. 1975), we held that Border Patrol agents may legally stop and search vehicles for aliens at permanent check points constituting “functional equivalents” of the border.


author: ALDRICH, Senior Circuit Judge.

text:
    The PRESIDENT AND TRUSTEES OF COLBY COLLEGE, Plaintiff-Appellant, v. COLBY COLLEGE-NEW HAMPSHIRE, Defendant-Appellee.
    No. 74-1178.
    United States Court of Appeals, First Circuit.
    Argued Nov. 4, 1974.
    Decided Jan. 9, 1975.

      Vincent L. McKusick, Portland, Me., with whom Pierce, Atwood, Scribner, Allen & McKusick, Portland, Me., Everett P. Ingalls, III, Lawrence E. Spellman, and Sulloway, Hollis, Godfrey & Soden, Concord, N. H., were on brief, for plaintiff-appellant.
    R. Graham McSwiney, Concord, N. H.,’ with whom McSwiney & Jones and Hall, Morse, Gallagher & Anderson, Concord, N. H., were on brief, for defendant-ap-pellee.
    Before ALDRICH, McENTEE and CAMPBELL, Circuit Judges.
   ALDRICH, Senior Circuit Judge.

This is an action brought by the President and Trustees of Colby College, hereinafter plaintiff, who are engaged, and have been since 1813, in conducting a four-year college in Waterville, Maine, from 1867 under the name of Colby University, and since 1899 under the name of Colby College. Plaintiff seeks to enjoin the use of the name Colby College-New Hampshire by defendant, an educational institution in New London, New Hampshire. The district court denied a preliminary injunction, 359 F.Supp. 571, and thereafter dismissed the complaint. 374 F.Supp. 1141. (Citation to these opinions will hereafter be by page, only.) Plaintiff appeals.

Defendant, having for many years provided coeducational secondary schooling under several names, in 1878, in recognition of benefactions from a prominent New Hampshire family, changed its name to Colby Academy. In 1928 it dropped males from its enrollment and added two years of college instruction. In 1933 it discontinued secondary education and changed its name to Colby Junior College for Women. Commencing ten years later, it gradually extended its courses, and began awarding baccalaureate degrees in such subjects as Medical Technology, Theatre, Music, and Business Administration. This ultimately led to the conclusion to drop the Junior, and because males were again admitted, to drop the reference to women. In October 1972 defendant’s board of trustees voted to change its name to Colby College-New Hampshire, effective July 1, 1973. This suit was instituted on May 3, 1973.

Defendant makes, and the district court accepted, two basic points: that no “exclusive” secondary meaning had attached to plaintiff’s name, Colby College, and that defendant’s name change did not increase, or threaten the likelihood of increasing, confusion that already existed between the two institutions. We hold that the decision on the first point embraced one, and possibly two, errors of law, and that as to both there were unwarranted conclusions of fact.

I. Secondary Meaning.

While plaintiff’s name is not, strictly, a descriptive phrase of general usage, neither can it be termed fanciful, coined, or arbitrary in the same sense as Xerox or Kodak. In such circumstance, plaintiff has properly assumed the burden of showing not only the likelihood of confusion between itself and defendant, but also that its name has acquired a secondary meaning associating plaintiff with its name in the minds of the consuming public. See Kellogg Co. v. National Biscuit Co., 1938, 305 U.S. 111, 116, 118, 59 S.Ct. 109, 83 L.Ed. 73. Our first question is whether in respect to this the court imposed too high a standard.

In order to find secondary meaning, the district court required proof that “the name ‘Colby College’ exclusively signifpes] the plaintiff institution in the mind of the public.” (359 F.Supp. 575). See also (374 F.Supp. 1144). Careful reading of both opinions suggests the court may have felt that exclusivity was lost if, to some persons, the name meant the wrong party. This is not so; plaintiff need only prove a “primary significance.” Kellogg Co., ante, 305 U.S. at 118, 59 S.Ct. 109. The “lack of exclusivity in the use of the word ps merely] a factor militating against a finding of secondary meaning.” American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 5 Cir., 1974, 494 F.2d 3, 13. Carter-Wallace, Inc. v. Procter & Gamble Co., 9 Cir., 1970, 434 F.2d 794, 802 (accord). There is sufficient secondary meaning as long as a significant quantity of the consuming public understand a name as referring exclusively to the appropriate party, for it is undesirable that such a quantity be deceived even if some, relatively small, number is not. See Food Fair Stores v. Food Fair, Inc., 1 Cir., 1949, 177 F.2d 177, 185; G. & C. Merriam Co., v. Saalfield, 6 Cir., 1912, 198 F. 369, 373, aff’d and modified, 238 F. 1, cert. denied, 243 U.S. 651, 37 S.Ct. 478, 61 L.Ed. 947.

Even if the court correctly understood this limited meaning of exclusivity, it overstated the “militating” evidence. It found that defendant “has, at times, been referred to, both formally and informally, as Colby College.” (374 F.Supp. 1144). Support for this finding is of a very unsatisfactory character. It does not, in any event, rebut the controlling fact, if otherwise established, that a substantial number of persons regarded “Colby College” as referring exclusively to the plaintiff. As to this the evidence leaves but one answer.

Secondary meaning is established in a number of ways. First, from the admitted fact of long and exclusive use. See Norm Thompson Outfitters, Inc. v. General Motors Corp., 9 Cir., 1971, 448 F.2d 1293, 1296; G. & C. Merriam Co. v. Saalfield, ante, 198 F. at 373. The district court’s observation that defendant has shared the name “Colby” with plaintiff since 1878, and was frequently referred to by some by that name alone, does not destroy this inference, since secondary meaning may attach to the conjunction “Colby College.” Cf. Food Fair, ante, 177 F.2d at 185. There is no evidence that defendant has ever held itself out, either formally or informally, as “Colby College.” Despite the mistaken impressions of a few, only plaintiff has made use of that name.

Second, as defendant concedes, the size or prominence of an enterprise may warrant the inference that its name has acquired secondary meaning. See Shaler Co. v. Rite-Way Products, 6 Cir., 1939, 107 F.2d 82, 84, cert. denied, 310 U.S. 634, 60 S.Ct. 1076, 84 L.Ed. 1403; Wisconsin Elec. Co. v. Dumore Co., 6 Cir., 1929, 35 F.2d 555, 557-558, appeal dismissed, 282 U.S. 813, 51 S.Ct. 214, 75 L.Ed. 728. Without intending invidious comparison, we note that plaintiff outdistances defendant in size, reputation, and achievement.

Third, while secondary meaning is shown by the success rather than by the mere fact of an enterprise’s promotional efforts, cf. General Time Instr. Corp. v. United States Time Corp., 2 Cir., 1948, 165 F.2d 853, 854-855, cert. denied, 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770, the normal consequence of substantial publicity may be inferred. See Carter-Wall ace, ante, 434 F.2d at 800; Beef/Eater Restaurants, Inc. v. James Burrough Ltd., 5 Cir., 1968, 398 F.2d 637, 639-640. Defendant does not dispute the evidence that plaintiff’s numerous and varied publications, of appreciable distribution, its public service activities, and its membership in professional associations, as well as the activities and associations of its students and faculty, all serve to promote its name and good will.

Finally, in addition to the inference we believe these factors, cumulatively, compelled, plaintiff presented direct evidence that its name has acquired a secondary meaning. Dr. Armstrong, president of Middlebury College, Vermont, testified that the name “Colby College” is exclusively understood “in the academic field as meaning the plaintiff.” The district court accepted his testimony. (374 F.Supp. 1144). It then erred in concluding that reputation in the academic community fails to show secondary meaning “ ‘broadly known to the public.’ ” Id., citing 52 Am.Jur. Trademarks, Tradenames, and Trade Practices, 1944, § 73. Of course the concept of secondary meaning assumes public recognition, but this does not define what is the product’s “public.” Even the case cited by the court indicates that the concept of secondary meaning “contemplates that a word or phrase might nevertheless have been used . so exclusively by one producer . that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product . . ..” Merriam, ante, 198 F. at 373 (Emphasis added). See Mortellito v. Nina of California, Inc., S.D.N.Y., 1972, 335 F.Supp. 1288, 1295 (secondary meaning of needlepoint manufacturer among needlepoint purchasers); Fund of Funds, Ltd. v. First American Fund of Funds, Inc., S.D.N.Y., 1967, 274 F.Supp. 517, 524 (secondary meaning of mutual fund among “members of the investing public or professional investment community.”). We hold that a college may establish that its name has acquired secondary meaning sufficient to invoke protection against infringement by demonstrating the congruence of its name and its institution in the minds of an appreciable number of individuals broadly associated with other institutions of higher education in a given geographic area.

It could be argued that a strongly held opinion in academic circles suggests that a similar view is held by the public at large. Plaintiff did not rest upon such an inference, but offered empirical evidence in the form of a survey conducted by the Becker Research Corporation of Boston, Massachusetts, concluding that New England residents associate the name “Colby College” with plaintiff. Becker interviewed by telephone 1500 New England residents, 500 from Maine, 500 from New Hampshire, and 500 from metropolitan Boston, chosen as a representative cross-section of the population in these areas. Seventy-nine per cent of the Maine respondents, 40% of the Boston respondents, and 37% of the New Hampshire respondents identified “Colby College” as located in Maine, where plaintiff is located, while only 2%, 7%, and 18% respectively placed “Colby College” in New Hampshire, defendant’s location. Moreover, 72%, 57%, and 45% identified “Colby College” as a four-year institution like plaintiff, while only 4%, 9%, and 15% identified “Colby College” as a two-year institution like defendant. And 81%, 53%, and 48% characterized “Colby College” as coeducational, as is plaintiff, while only 5%, 13%, and 19% believed that “Colby College” primarily educates students of only one sex, as does defendant. In sum, an average of well over 50% of all respondents identified “Colby College” as a four-year, coeducational institution, located in Maine, thus distinguishing plaintiff from defendant according to three major characteristics by which the two institutions may be distinguished.

The importance of qualified survey evidence in establishing secondary meaning is well recognized. See, e. g., Holiday Inns, Inc. v. Holiday Out in America, 5 Cir., 1973, 481 F.2d 445, 447; Standard Oil Co. v. Standard Oil Co., 10 Cir., 1958, 252 F.2d 65, 75; Zippo Mfg. Co. v. Rogers Imports, Inc., S.D.N.Y., 1963, 216 F.Supp. 670, 682-686. Nor can it be doubted that the percentage of respondents associating plaintiff with its name is sufficiently “appreciable,” Food Fair, ante, 177 F.2d at 185, or “significant,” Carling Brewing Co. v. Philip Morris, Inc., N.D.Ga., 1967, 277 F.Supp. 326, 332, to indicate secondary meaning. See Zippo, ante, 216 F.Supp. at 687 (42.6%).

Becker was an experienced surveyor. The court, however, rejected his findings, not because defendant offered contrary evidence, but largely because of criticisms of the survey offered by defendant’s expert, a business school professor who had done work in market research.' The witness voiced two complaints, one of which was that he found one of the posed questions ambiguous. The second was that the witness, who taught at Dartmouth, found it incredible that among the 500 respondents in the Boston area there were about as many who knew of Bowdoin and Colby Colleges as knew about Dartmouth (although they did not give them as high a reputation). Finally, the district court faulted the survey for failing to indicate “the confidence level of [its] validity .,” in light of its attempted extrapolation from 1500 respondents to at least two million New England residents. (374 F.Supp. 1145). This, in effect, questioned the surveyor’s basic expertise. While, of course, expert testimony need not be accepted, we find little reason for rejection. In any event, the court’s doubts do not remedy the lack of affirmative evidence to the contrary. We realize that if the court did not err, legally, in its conception of exclusivity, we are reversing a finding of fact. However, a secondary meaning can be established as a matter of law. Beef/Eater Restaurants, Inc., ante. To find on this record, basically because occasional newspaper items referred to defendant as Colby College and some persons spoke of defendant simply as Colby, plaintiff had not established a secondary meaning in its seventy year name Colby College must be termed inescapably erroneous.

II. Increased Confusion.

Concededly because of sharing the name “Colby” for almost a century, some confusion between the two schools has existed throughout defendant’s history. For reasons already expressed, the common use of this word does not mean that there is no secondary meaning in plaintiff’s full name. However, we agree with defendant that plaintiff has the burden of showing that whatever confusion existed before defendant’s change of name is likely to increase. The court did not hold that confusion worse confounded was acceptable, but it found it not likely to occur. Although we fully recognize the double burden that is on the plaintiff as appellant, we hold this finding, too, to be plainly erroneous.

We begin with a facial comparison of the names at issue. Such assessment strongly suggests that defendant’s new name, “Colby College-New Hampshire,” presents a greater likelihood of confusion with plaintiff than its old name, “Colby Junior College for Women.” The district court, as justifying the contrary view, stated that “the addition of ‘-New Hampshire’ is a reasonable effort to give the public fair warning about the possible confusion.” (374;F.Supp. 1147). In this it was supported'by defendant’s expert. In accepting this testimony the court ignored the argument suggested by the court in Miss Universe, Inc. v. Patricelli, 2 Cir., 1969, 408 F.2d 506, 510, that the geographical identification “need not have a qualifying meaning in the minds of consumers,” but may imply either that plaintiff is located in New Hampshire or that plaintiff and defendant are somehow affiliated, two possibilities far less likely under defendant’s old name. The court’s emphasis of the protection afforded plaintiff by the suffix “-New Hampshire” might also seem inconsistent with its view, post, that defendant’s name is likely to be bobtailed by omitting the word “College.” More directly, it rejected the testimony of several experts that any distinguishing force that may result from the suffix will in fact be lost because it will be dropped, even if not officially, in both oral and written references. This testimony cannot be disregarded; it has already been borne out. Plaintiff cites several publications of importance in academic circles which identify defendant simply as “Colby College.” Thus we have the striking fact that, by curtailment, defendant is achieving not merely a similar name, but an identical one.

To this array the district court made a number of points which we can only regard as unsatisfactory argument. First, the court suggested that any future confusion will be caused by the joint use of the name “Colby”: “I take judicial notice of the fact that colleges and universities are referred to by their first names and that dropping of the generic term ‘College’ and/or ‘University’ is well nigh universal.” (374 F.Supp. at 1146). While we might question the universality of such practice (consider, e. g., Boston University and Boston College), to the extent that it exists it is a reason for condemning rather than accepting the change. On the evidence of record, when defendant’s name was Colby Junior College for Women many who dropped the “College” spoke of defendant as “Colby Junior.” With defendant’s present name this ready distinction disappeared.

Secondly, the court pointed out that, at least in curricula, the parties are not seriously competing. This is never a complete answer. See Safeway Stores, Inc. v. Safeway Properties, Inc., 2 Cir., 1962, 307 F.2d 495, 497-498; Baker, ante, 307 F.2d at 462. Moreover, the evidence is undisputed that the defendant is moving, however slowly, in plaintiff’s direction, by shifting curricular emphasis from technical training to liberal arts, by increasing somewhat the small number of bachelor degrees awarded, by seeking to attract students of higher academic achievement, and by opening its doors to males. Indeed, the court found that it was these changes and others which moved defendant “somewhat away from its image as a junior college for women only,” and compelled its change of name. (374 F.Supp. 1147); (see 359 F.Supp. 575). We cannot avoid the conclusion that as competition increases the likelihood of confusion between the two schools must inevitably increase as well. Even if we accept the district court’s observation that the importance to individuals of their future placement or donation should lead them to investigate colleges carefully (359 F.Supp. 573); (374 F.Supp. 1174), the record evidence of actual confusion since the name change, which we will not pause to detail, undermines the force of this prediction. Obviously an enterprise is entitled to any residue of careless patrons. See Tisch Hotels, Inc. v. Americana Inn, Inc., 7 Cir., 1965, 350 F.2d 609, 614; Harold F. Ritchie, Inc. v. Chese-brough-Pond’s, Inc., 2 Cir., 1960, 281 F.2d 755, 761.

Finally, the court suggested that any instances of confusion would be straightened out through the diligent efforts of both institutions. However, effort to correct a mistake is a cost of confusion, not an argument against its prevention. Nor need we pursue the question how far the party who may be thought to lose more by the mistake can count on the diligence of the other. We merely note that the very announcement defendant sent out of its name change contained a reference to itself as Colby College, without the suffix.

In sum, we find nothing to contradict, or to counteract, the unequivocal testimony of Dr. Armstrong and a number of others that defendant’s name change is likely to increase the instances of confusion with plaintiff.

III. Policy Considerations.

The court asserted that even if it erred in its conclusion that plaintiff had failed to show secondary meaning and likely confusion, policy considerations justified refusing relief. Like defendant’s expert, the court appeared to be influenced by its finding that defendant’s change of name evidenced no intention to trade upon plaintiff’s reputation and good will, and constituted solely a good faith effort to accommodate its name to changes in curriculum and the composition of its student body. (359 F.Supp. 573); (374 F.Supp. 1145). This finding is not clearly erroneous, and we accept it. However, the question of good faith is only one element to be considered in assessing a claim of infringement. A finding of bad faith may give rise to a presumption that the adoption by one enterprise of a name similar to that of another is likely to cause confusion, see Baker, ante, 307 F.2d at 465, but a finding of good faith is no answer if likelihood of confusion is otherwise established.

The court relied additionally on the public policy of “keeping [useful words] in the public domain.” (374 F.Supp. 1148). This policy is well recognized, and gives rise to the requirement, ante, that enterprises which utilize names of general or descriptive usage must demonstrate secondary meaning in order to sustain a claim of infringement. But to utilize it to deny relief despite a showing of secondary meaning is to deny tradename protection to all words of descriptive quality, a judicial option long foreclosed under common law precepts. See Kellogg, ante, 305 U.S. at 116, 118, 59 S.Ct. 109. In addition, we think this case a weak one for assertion of the policy even in its proper sphere. The policy is recognized because words “in our general vocabulary which all can use to describe products or services should not be unduly limited.” Safeway, ante, 307 F.2d at 498. See Esquire, Inc. v. Esquire Slipper Mfg. Co., 1 Cir., 1957, 243 F.2d 540, 543. While “Colby College” is not a coined or fictitious appellation, neither is it an intrinsic part of “our general vocabulary.”

Finally, there is a more important principle, the countervailing policy of preserving individual identities, which must be particularly important in the case of educational institutions serving the public. This is not to be denigrated, as the court at one point appeared to do, by describing plaintiff’s interest, in view of the nature of its enterprise, as “somewhat esoteric” and perhaps based upon “hurt pride.” (374 F.Supp. 1147). The court was speaking more to the point when it echoed the almost unanimous expert testimony that “[a] college’s identity and image are critical to its survival and growth.” (374 F.Supp. 1148).

The court articulated this principle with respect to the defendant, but not to the plaintiff. We are not to be understood, in turn, as denigrating the court’s repeatedly evidenced concern for defendant’s identity and image and the significant extent to which its tradition and character are bound up with the name “Colby.” (374 F.Supp. 1148). Nothing in this opinion should be construed to preclude the continued use by defendant of that word in some manner. We must hold, however, that defendant’s present name is an intrusion on the interest of the plaintiff in its own identity and good will, and the interest of the public in preserving the integrity of individual accomplishment and reputation.

The judgment of the district court is vacated, and the action remanded for entry of the injunction sought in the complaint.

      . The court stated that New Hampshire law was applicable, but that it found none (except with respect to n. 14, post) and would take its law from elsewhere. We accept its approach.

      . For this defendant presented, in two exhibits, 856 newspaper clippings written before its change of name. While 166 of these clips, or ■less than 20%, designated defendant as “Colby College,” they did so only in headlines of stories which properly identified defendant in the body of the article. The remaining 80% referred to defendant throughout either as “Colby,” or “Colby Junior.”

      . Plaintiff is a four-year liberal arts college with an endowment of $30 million and an annual budget of $8 million, now operating on a campus of 39 buildings constructed at a cost of $16 million. It has a distinguished faculty of 120 members, 82 with doctorates, and an enrollment of 1600 above average male and female students from a wide geographic area, but principally from the northeastern United States. Plaintiff has initiated or participated in a variety of innovative educational programs, and was characterized by the district court, on substantial evidence, as “undoubtedly one of the finest small coeducational liberal arts colleges in New England, if not the entire country.” (374 F.Supp. 1147). Despite movement in plaintiffs direction, post, defendant remains primarily a two-year school, offering a variety of opportunities for vocational training as well as a traditional liberal arts education to over 500 female students of a different order from plaintiff’s. (359 F.Supp. 575).

      . Defendant offered • no contradiction. In spite of the court’s acceptance of Dr. Armstrong’s testimony, defendant seeks to discredit it on the singular ground that Middle-bury is an institution similar to the plaintiff. This fact does not warrant a conclusion of bias. Rather, the witness’s broad experience, leading to his occupying a similar position in academia, made his opinion particularly valuable.

      . Accepting this criticism, the court felt that the survey’s respondents might have been confused as to the true character of defendant’s institution, and thus might have intended to identify defendant as “Colby College.” We have difficulty in following the reasoning.

      . The survey reports:
      “The chances are approximately 95 in 100 that, using the same survey procedures, the results in this study do not vary by more than [a maximum of 5] percentage points, plus or minus, from the result that would be obtained from a complete coverage of the sample universe.”

      . Defendant’s counsel seeks to come to the court’s aid by saying that the Maine, Boston and New Hampshire target regions do not comprise a large enough area; that the survey excludes those “who have the good sense not to use the telephone,” and that the interviewers were inexperienced; criticisms not voiced even by defendant’s own witness.

      . Likelihood is enough. See Valmor Prods. Co. v. Standard Prods. Corp., 1 Cir., 1972, 464 F.2d 200, 202-203; Baker v. Simmons Co., 1 Cir., 1962, 307 F.2d 458, 463, vacated and remanded on other grounds, 325 F.2d 580, aff’d, 342 F.2d 991; LaTouraine Coffee Co. v. Lorraine Coffee Co., 2 Cir., 1946, 157 F.2d 115, 117, cert. denied, 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663.

      . “My opinion would be that, over the long run, because the name ‘Colby College-New Hampshire’ is more specific with respect to location, that it would help clarify what has been, in my opinion, a confusing situation.”

      . These include the School, College, and University Directory of the American Baptist Board of Educational Ministries, the Beta Book directory of colleges, a meeting roster of the College Entrance Examination Board, and two programs from high school “college night” gatherings.

      . “[I]n time, the alumni of the New Hampshire school may also resent the fact that they are being confused with that ‘other’ Colby.” (359 F.Supp. 576).

      . At the same time, we observe that since defendant was changing its name, utmost good faith might have dictated that, if appropriately possible, defendant select a name that affirmatively tended to reduce existing confusion rather than continue it. The court found that several alternative names utilizing the word “Colby” “would be as historically and descriptively accurate as Colby College-New Hampshire, and also would serve to more clearly distinguish the two schools.” (374 F.Supp. 1147)-.

      . See n. 12, ante.

      . Because we have accepted plaintiff’s claim of tradename infringement, we need not reach the question whether relief is also warranted under the New Hampshire anti-dilution statute, N.H.R.S.A. § 350-A:12.


author: ELY, Circuit Judge:

text:
    UNITED STATES of America, Appellee, v. Razmik Levon DEKERMENJIAN, Appellant.
    No. 74-2452.
    United States Court of Appeals, Ninth Circuit.
    Dec. 23, 1974.

      Michael D. Nasatir, Beverly Hills, Cal., for appellant.
    Ronald Muntean, Asst. U. S. Atty., Los Angeles, Cal., for appellee.
    Before ELY and WALLACE, Circuit Judges, and TURRENTINE, District Judge.

       Honorable Howard B. Turrentine, United States District Judge, San Diego, California, sitting by designation.

   OPINION

ELY, Circuit Judge:

Dekermenjian, an alien, was convicted of having illegally reentered the United States after having previously been deported. 8 U.S.C. § 1326.

Urging reversal Dekermenjian advances four arguments. The most significant pertains to his claim that his original deportation Order was invalid, thus raising the issue as to whether such an Order can be attacked collaterally in the defense of a charge of having violated 8 U.S.C. § 1326. The Supreme Court has expressly reserved a resolution of this issue. See United States v. Spector, 343 U.S. 169, 72 S.Ct. 591, 96 L.Ed. 863, reh. denied 343 U.S. 951, 72 S.Ct. 1040, 96 L.Ed. 1353 (1952). Decisions of certain Courts of Appeals are in conflict. The Fifth and Tenth Circuits have held that an alien may not, in a criminal action such as here, attack the validity of a prior deportation Order that is regular on its face. United States v. GonzalezParra, 438 F.2d 694 (5th Cir.), cert. denied 402 U.S. 1010, 91 S.Ct. 2196, 29 L.Ed.2d 433 (1971); Arriaga-Ramirez v. United States, 325 F.2d 857 (10th Cir. 1963). The Courts of Appeals for the Third and Seventh Circuits disagree, reading the word “deported” in 8 U.S.C. § 1326 as meaning “deported according to law.” United States v. Bowles, 331 F.2d 742, 749 (3d Cir. 1964); United States v. Heikkinen, 240 F.2d 94, 99 (7th Cir. 1957), rev’d on other grounds, 355 U.S. 273, 78 S.Ct. 299, 2 L.Ed.2d 264 (1958); United States v. Heikkinen, 221 F.2d 890, 892 (7th Cir. 1955).

The pertinent law in our Circuit appears unclear. In United States v. Palmer, 458 F.2d 663 (9th Cir. 1972), we held that a collateral attack-upon a deportation Order had no merit, but we failed to discuss the basic question of whether the alien had a right to mount a collateral attack. Cf. Pena-Cabanillas v. United States, 394 F.2d 785 (9th Cir. 1968), wherein, at 789, we cited the Third Circuit’s Bowles opinion, supra, which, as we have above mentioned, upholds such a right. Cf. United States v. Osuna-Picos, 443 F.2d 907 (9th Cir. 1971) (per curiam), in which, again without discussing the propriety of a collateral attack, we reversed a § 1326 conviction because the underlying deportation order had been based on an Attorney General’s decision that our Court had overruled.

While we have thought it desirable to emphasize the conflict and to cite the most relevant authority, we have at the same time concluded that it is unnecessary, in the circumstances of -this particular case, to issue a definitive ruling on the principle question above discussed. Even should we adopt the rule of the Third and Seventh Circuits, the holding would be of no benefit to Dekermenjian. We find no irregularity in the deportation Order that Dekermenjian claimed to be invalid. It is contended that certain records and memoranda of the Immigration and Naturalization Service were improperly received as evidence in the trial from which this appeal is taken. The claim has no merit, since the documents clearly constituted admissible evidence under the Business Records Act. 28 U.S.C. § 1732. It is not necessary, as Dekermenjian argues, that such records should be admissible only if there is a statutory requirement that the Service retain specific types of records. The fact that such records were regularly and routinely kept suffices.

The alien complains that the deportation hearing was held in his absence. This is true, but the record discloses that both he and his representative had been kept fully aware of the deportation proceedings and had been given correct information as to the date of the deportation hearing. When one voluntarily chooses not to attend a deportation hearing which may affect him adversely, he is hardly in a position to complain that an Order made pursuant to the hearing is invalid because of his absence.

Finally, it is argued that the deportation Order in question was invalidated because of a thirteen-month delay in its execution. This argument is undermined by Spector v. Landon, 209 F.2d 481 (9th Cir. 1954).

Affirmed.

      . Neither party cites 28 U.S.C. § 1733, but it appears that the documents would have been properly admissible under that statute also.


text:
    JOSEPH MULLER CORPORATION ZURICH, Plaintiff-Appellant, v. SOCIETE ANONYME DE GERANCE ET D’ARMEMENT et al., Defendants, Gazocean International, S.A., et al., Defendants-Appellees.
    No. 154, Docket 74-1889.
    United States Court of Appeals, Second Circuit.
    Argued Nov. 27, 1974.
    Decided Dec. 31, 1974.

      Joseph W. Burns, New York City (Burns, Van Kirk, Greene & Kafer, New York City, on the brief), for plaintiff-appellant.
    Sanford M. Litvach, New York City (Doris K. Shaw, Donovan, Leisure, Newton & Irvine, New York City, on the brief) for defendant-appellee, Mundo Gas, S.A.
    Richard E. Carlton, Michael Winger, New York City (Sullivan & Cromwell, New York City, on the brief), for defendants-appellees, Petronia, Societe Anonymous.
    Victor S. Friedman, Peter B. Sobol, Fried, Frank, Harris, Schriever & Jacobson, New York City, on the brief for defendants-appellees, Gazocean International S.A. and Gazocean France.
    Before CLARK, Associate Justice, and MOORE and TIMBERS, Circuit Judges.

       Associate Justice Tom C. Clark, United States Supreme Court, Retired, is sitting by designation.

   PER CURIAM:

On September 25, 1969, appellant, a Swiss corporation, filed this private antitrust action in the District Court, naming six foreign and domestic corporations as defendants. Two of these corporations were served with the complaint at that time. The remaining four, appel-lees herein, were not served until December of 1973, over four years later. Upon return and pursuant to Fed.R. Civ.P. 41(b), appellees moved for an order dismissing the case as to them for failure to prosecute, which was in due time granted in an opinion filed February 27, 1974. We affirm.

Rule 41(b) provides that: “For failure of the plaintiff to prosecute * * * a defendant may move for dismissal of an action * * * against him.” In Messenger v. United States, 231 F.2d 328 (2d Cir. 1956), this Circuit applied the rule in circumstances similar to those in the instant case and concluded that an unexplained and unreasonable delay in service constituted grounds for dismissal, without regard to any showing of actual prejudice. In granting the motions, the District Court found that appellant had “produced not the slightest rational excuse” for its procrastination and held that Messenger controlled.

Dismissals under Rule 41(b) are, of course, largely a matter of the trial court’s discretion. See Link v. Wabash Railroad Co., 370 U.S. 626, 633, 82 S.Ct. 1386, 8 L.Ed.2d 734 (1962); Taub v. Hale, 355 F.2d 201, 202 (2d Cir.), cert. den., 384 U.S. 1007, 86 S.Ct. 1924, 16 L.Ed.2d 148 (1966). Here, we perceive no abuse of discretion. Messenger is the governing law and the judgments are therefore affirmed.

      . One of these two defendants, Societe Anonyme de Gerance et D’Armement (a French corporation), subsequently raised an unsuccessful challenge to the subject-matter jurisdiction of the federal court, relying, first, on a Franco-Swiss treaty limiting the forums in which suits between French and Swiss corporations could be brought and, second, on considerations of international comity. The court’s jurisdiction as to the antitrust claim was sustained. See 314 F.Supp. 439 (S.D.N.Y. 1971), aff’d, 451 F.2d 727 (2d Cir. 1971), cert. den., 406 U.S. 906, 92 S.Ct. 1609, 31 L.Ed.2d 816 (1972).

      . Whether the fear of the appellant that the judgments below will operate as a bar to the filing of a new complaint, based on allegations of continuing antitrust violations by ap-pellees, is a matter to be decided at that time and is not reached here.


text:
    VISADOR COMPANY, Petitioner-Appellant Cross-Appellee, v. COMMISSIONER OF INTERNAL REVENUE, Respondent-Appellee Cross-Appellant.
    No. 74-1392.
    United States Court of Appeals, Fifth Circuit.
    Feb. 24, 1975.
    Rehearing and Rehearing En Banc Denied March 21, 1975.
    Robert C. Johnson, Jr., Dallas, Tex., William R. Bernard, Frederick J. Tansill, Washington, D. C., George F. Smith, Jr., Dallas, Tex., for petitioner-appellant cross-appellee.
    Scott P. Crampton, Asst. Atty. Gen., Dept, of Justice, Meyer Rothwacks, Chief, App. Sec., Meade Whitaker, Chief Counsel, Internal Revenue Service, Dennis J. Fox, Acting Director, Tax Court, Litigation Div., Internal Revenue Service, Edward D. Robertson, Elmer J. Kelsey, Robert G. Burt, Joseph M. Me Manus, Attys., Tax Div., Dept, of Justice, Washington, D. C., for respondent-appel-lee cross-appellant.
    Before GOLDBERG and RONEY, Circuit Judges, and LYNNE, District Judge.
   PER CURIAM:

After hearing oral argument and carefully reading and analyzing the record and the briefs of both parties, each appealing some portion of the Tax Court’s decision, we are of the opinion that the material factual determinations are supported by the evidence and that the legal conclusions of the Tax Court are correct in all respects. Accordingly, we affirm on the basis of that opinion. See Visador Co. v. Commissioner of Internal Revenue, 32 Tax Ct.Memo. 825 (1973).

      . There is one factual error reflected in the Tax Court opinion which Visador argues led to the erroneous conclusions of that court. The Tax Court indicated that at the time of the transaction, 1961, Dwight and Willis Coff-man, the two principals here, were employees of Coffman Stair Company, which was controlled by their father and uncle. In fact, the father had died in 1958. This error was not material to the Tax Court’s decision and we are unable to agree that it has any significance in the disposition of this case.


author: COWEN, Chief Judge: KASHIWA, Judge BENNETT, Judge

text:
    SOMALI DEVELOPMENT BANK and the Somali Democratic Republic v. The UNITED STATES.
    No. 650-71.
    United States Court of Claims.
    Dec. 18, 1974.

      Frances Clark Barrie, Washington, D. C. , for plaintiffs; Roger M. Dougherty, Washington, D. C., attorney of record. James M. O’Neill, Washington, D. C., of counsel.
    George M. Beasley, III, Washington, D. C., with whom was Asst. Atty. Gen. Carla A. Hills, for defendant.
    Before COWEN, Chief Judge, and KASHIWA and BENNETT, Judges.
   COWEN, Chief Judge:

This case comes before the court on motions for summary judgment presented by plaintiffs and defendant. Since we conclude that this court lacks jurisdiction because plaintiffs’ claim basically sounds in tort, we grant defendant’s motion for summary judgment and dismiss plaintiffs’ petition. Having decided the motions on that ground, we must also dismiss, as having no independent jurisdictional status, defendant’s counterclaim.

A description of the relationship of the parties is somewhat complicated and is summarized below only to the extent necessary for an understanding of this opinion. The involvement of the parties (or their predecessors) began in September 1958, when the Development Loan Fund (DLF), an agency of the United States Government later known as the Agency for International Development (AID), authorized a two million dollar loan to Crédito Somalo, a development bank in the less-developed country of Somalia (now the Somali Democratic Republic). This proposed loan was extended by DLF in furtherance of the foreign policy of the United States and had as its purpose to aid the development bank’s own program of lending to private individuals and firms in Somalia. In general terms, money was to be lent by DLF to Crédito Somalo at low interest rates and with a liberal repayment schedule. Crédito Somalo would then re-loan the same money at its own terms to local entrepreneurs who then would undertake certain needed industrial and agricultural projects in Somalia.

The original Loan Agreement (DLF Loan Number 35, later designated AID Loan Number 649-A-001) was entered into on March 31, 1959, by DLF, Crédito Somalo, and the Government of Somalia, with the latter executing as guarantor of the loan. The original agreement provided for an interest rate of four percent per annum with a repayment term of 15 years, following a one-year grace period. To insure that the loaned funds were utilized for the purposes listed in the agreement, the entire two million dollar loan was not initially transferred to Crédito; instead, specific disbursements were to be made by DLF “in accordance with the Loan Agreement”. In essence, this “control” by the lending agency was accomplished in two ways. In Section 5.14 of the “Loan Agreement,” Crédito Somalo covenanted not to make loans to Somali industry of more than $100,000 without the prior written consent of DLF. Furthermore, sections 4.05 and 4.06 listed certain “conditions precedent” to the first disbursements of funds which included the setting up of a separate and independent section of Crédito Somalo that could accomplish competent technical review of the loan applications received from Somali businessmen.

The original Loan Agreement was amended on two subsequent occasions. On March 9, 1961, the amortization schedule was revised at the request of Crédito Somalo and the list of eligible projects was expanded. On August 10, 1964, the amortization schedule was again changed to permit the borrower .additional time to repay the loan principal. In 1968, after the Somalian Government had created the Somali Development Bank as an independent entity, an agreement was signed by the Government of Somalia, the bank, Crédi-to Somalo, and AID, with the Development Bank expressly assuming all obligations and responsibilities of Crédito Somalo on the Loan Agreement as amended.

The parties are in accord that on October 1, 1964, the Somali Bricks and Tiles Manufacturing Company (Sombriti) requested a development loan from Crédito Somalo in order to build a brick and tile plant near Mogadiscio, the capital city of Somalia. Sombriti did not plan to construct the plant itself; rather, it was Sombriti’s intention to contract the construction to an Italian firm, Fonderie Of-ficine Meccaniche Bongioanni. The Italian firm had prepared a “feasibility study” concerning this development project, which had convinced Sombriti that the project was sound. Since the amount of the sub-loan requested by Sombriti was in excess of $100,000, AID itself became involved, as its approval of the project was required under Section 5.14 of the Loan Agreement. After a delay of several months, the sub-loan of $190,500 was approved by AID. However, during the interim Sombriti decided not to purchase the required machinery and equipment from the Italian firm but instead contracted with Interkiln Engineering, Inc. (Interkiln) of Houston, Texas. This American firm had belatedly submitted a bid substantially lower than the Italian firm and had promised closer personal supervision of the project’s construction. Although promising in its contract with Sombriti to complete construction of the plant by 1966, Interkiln did not finish its job until April 1968. For various reasons the plant never got into operation, despite several attempts at modification by Interkiln. The parties agree that the Somali Development Bank stopped making payments on its loan from AID on June 15, 1971.

I

In their cross motion for summary judgment, plaintiffs seek to recover damages in the amount of $358,115, plus interest, from the Government on account of losses sustained and expenses incurred in connection with the loan for the construction of the ill-fated brick and tile manufacturing plant. Plaintiffs attempt to bring their case within the court’s jurisdiction by contending that the damages they suffered resulted, at least in part, from the defendant’s breach of Sections 1.02 and 4.06 of the Loan Agreement.

Section 1.02 provides in substance that the purpose of the Loan Agreement is to assist the borrower in carrying out a program of lending to private individuals and entities in Somalia to finance the development of the following areas: textile industry, fisheries, tanning and leather manufacturing, meat processing, process of agricultural products, and cultivation and marketing of long-staple cotton, groundnuts, sesame and incense. This provision was breached, according to plaintiffs, because the agreement did not authorize the use of the loan to finance the construction of a brick and tile plant. However, plaintiffs overlook the fact that on March 9, 1961, prior to the date the brick and tile plant project was approved, the parties to the Loan Agreement amended it by a written instrument, which specifically added to the list of the named agricultural and industrial areas “such other agricultural and industrial areas as the DLF may agree to in writing.”

Section 4.06 of the Loan Agreement provides in substance that prior to and as a condition precedent to the issuance of the first letter of commitment under the Loan Agreement, the borrower shall furnish evidence satisfactory to the DLF that:

(1) An autonomous section had been created in the borrower to carry out the project, and

(2) satisfactory procedures, including competent technical review, have been set up to handle applications for loans from such autonomous section.

There is a substantial dispute of fact between the parties regarding the extent to which the plaintiffs complied with these provisions of the Loan Agreement. However, we need not resolve this factual dispute, because it is clear that section 4.06 is a statement of obligations to be performed by the plaintiffs rather than by the United States; that the section is a provision which was written for the benefit of the Government, and that the Government may waive plaintiffs’ lack of compliance without incurring any liability to the plaintiffs. Red Circle Corp. v. United States, 398 F.2d 836, 185 Ct.Cl. 1 (1968); Kenneth Reed Constr. Corp. v. United States, 475 F.2d 583, 201 Ct.Cl. 282 (1973).

Plaintiffs also maintain that the defendant breached a statutory duty owed to the plaintiffs in that the Foreign Assistance Act of 1961, 22 U.S.C. § 2151 (1970) requires that assistance extended under that Act be based upon “sound plans and programs.” Since the brick and tile plant was a failure, it is plaintiffs’ view that they are entitled to recover because the Government violated the requirements of the statute by approving an unsound loan. While the novelty of this contention is interesting, there is no doubt that the statutory language quoted by plaintiffs was enacted for the benefit of the taxpayers of the United States and that it confers no right of action on the plaintiffs. See Rough Diamond Co. v. United States, 351 F.2d 636, 173 Ct.Cl. 15 (1965), cert. denied, 383 U.S. 957, 86 S.Ct. 1221, 16 L.Ed.2d 300 (1966) and cases cited therein.

We have had difficulty in analyzing plaintiffs’ legal arguments, as well as their factual contentions. However, after a careful review of plaintiffs’ motion and the accompanying exhibits, we have concluded that despite plaintiffs’ allegations to the contrary, their cause of action sounds, in substance and in reality, in tort — a claim which is not within the court’s jurisdiction.

In September 1962, AID contracted with a management consulting firm, Checchi & Co., to assist Crédito Somalo in establishing an autonomous loan section for the purpose of training its personnel in procedures for handling loans and bank accounting. As explained in an affidavit by an AID official, AID took this action to improve the capability of the borrower so that it could discharge its responsibility for economic and technical review of projects on which it made loans. However, plaintiffs contend that the brick and tile factory project was conceived, induced, and implemented by the defendant and by Checchi & Co., which plaintiffs characterize as the Government’s agent. Chec-chi & Co. actively worked with Crédito Somalo for a period of about 3 years until September 1965, but defendant denies that Checchi & Co. was responsible for the approval of the brick and tile project and has attached to its motion documentary exhibits showing that Crédito Somalo made an analysis of the project and found it to be deserving of financing by the bank, because it was both technically and economically feasible. The evidence submitted by plaintiffs concerning the involvement of Checchi & Co. consists of a letter written by the president of the Somali Development Bank on July 30, 1970. He stated that most of the loans which the bank made while Checchi was assisting it ended as uncollectible loans and that Chec-chi had induced AID to invest in a project which was economically unfeasible.

Plaintiffs also claim that AID selected and approved Interkiln as the construction contractor and thereby assumed responsibility for the success of the project. The defendant denies this and has submitted affidavits to the effect that Sombriti made the decision to award the contract to Interkiln after consultation with Crédito Somalo. An examination of the documents submitted with the parties’ motions does not show that AID recommended Interkiln or tried to induce Crédito Somalo or Som-briti to utilize the services of that company. However, we need not discuss at length nor resolve the material variations between plaintiffs and' defendant as to the proper interpretation of the documentary evidence for, as we have stated above, plaintiffs basically complain of tortious acts and misconduct on the part of defendant and its represent-resentatives. In addition to the contentions that the brick and tile factory project was conceived and induced by Checchi & Co., and that the defendant controlled the project to the extent of finding and approving Inter kiln, the contractor, plaintiffs allege that the Washington office of AID carefully reviewed and approved the application for the sub-loan to finance the brick and tile factory even though there was a question as to the financial soundness of the project; that, as a result of these activities of the defendant, it owed a fiduciary duty to the plaintiffs; that defendant assumed responsibility as a guarantor of the success of the project, and that it thereby became liable to plaintiffs for damages resulting from the default of Sombriti on the loan made by Crédito Somalo.

The decision of the Supreme Court in United States v. Neustadt, 366 U.S. 696, 81 S.Ct. 1294, 6 L.Ed.2d 614 (1961), removes any doubt that claims based on negligent misrepresentation, wrongful inducement, or the careless performance of a duty allegedly owed, are claims sounding in tort. In that case, the Court held that the United States was not liable to the purchaser of a home who relied on an inaccurate appraisal by the Federal Housing Administration and who was thereby induced to pay a purchase price in excess of the fair market value of the house. In speaking of the acts of the Government, which were quite similar to those complained of by plaintiffs in this case, the Supreme Court there stated:

To say, as the Fourth Circuit did, that a claim arises out of “negligence,” rather than “misrepresentation,” when the loss suffered by the injured party is caused by the breach of a “specific duty” owed by the Government to him, /. e., the duty to use due care in obtaining and communicating information upon which that party may reasonably be expected to rely in the conduct of his economic affairs, is only to state the traditional and commonly understood legal definition of the tort of “negligent misrepresentation,” as is clearly, if not conclusively, shown by the authorities set forth in the margin, * * * * [366 U.S. at 706, 81 S.Ct. at 1300]

In United States v. Chelsea Towers, Inc., 295 F.Supp. 1242 (D.N.J.1967), the United States undertook to foreclose a mortgage on a cooperative apartment building, and the borrower defended on the ground that it had been deluded and hoodwinked into an unconscionable bargain by the purchasing and financing machinations of the promoters, developers, builders, financiers, and the FHA. Relying on the Supreme Court’s decision in Neustadt, the District Court held that if there were such negligent misrepresentations by Government employees or agencies, such conduct is “tantamount to that giving rise to a common law action of deceit and is largely confined to the invasion of financial or commercial interests, for which no action lies against the Government, such being barred by the Federal Tort Claims Act, 28 U.S.C. § 2860(h).” 295 F.Supp. at 1247. To the same effect is United States v. Longo, 464 F.2d 913 (8th Cir. 1972).

Ill

We turn now to a consideration of plaintiffs’ argument that the acts and conduct of the Government and its agents created an implied contract by which the Government warranted the success of the brick factory. We are compelled to say that this is only a contention, because plaintiffs point to no facts which would give rise to an implied contract. It is fundamental that to constitute an implied contract upon which one may recover under the Tucker Act, there must be some consideration moving to the United States, or the Government must have received money under a duty to pay it over, or the claimant must have had a lawful right to the money when it was received, such as money paid under a mistake. Knote v. United States, 95 U.S. 149, 156, 24 L.Ed. 442 (1877). Before a contract may be implied in fact, there must be a meeting of the minds which is inferred from the conduct of the parties, and in the light of the surrounding circumstances, shows their tacit understanding. Baltimore and Ohio R.R. Co. v. United States, 261 U.S. 592, 43 S.Ct. 425, 67 L.Ed. 816 (1923). There is not one iota of evidence in the record before us which shows that there was any consideration moving to the United States for the alleged warranty or guaranty that the brick and tile factory would be financially successful. Moreover, there is no evidence which indicates that there was a meeting of the minds between authorized representatives of the Government and plaintiffs that the Government would guarantee the success of the project or indemnify the plaintiffs from any loss or damage incurred as a result of the loans made to Sombriti.

It is well settled that such a warranty as plaintiffs claim will not be implied on the part of the United States where the warranty is not expressly provided for in a statute or contract. Henry Barracks Housing Corp. v. United States, 281 F.2d 196, 150 Ct.Cl. 689 (1960); Chelsea Towers, Inc., supra. See also Farm Security Administration v. Herren, 165 F.2d 554 (8th Cir.), cert. denied, 333 U.S. 875, 68 S.Ct. 904, 92 L.Ed. 1151 (1948), which is so closely analogous that it is persuasive authority for holding that the assistance which AID furnished to the plaintiffs through Checchi & Co. and the control which AID exercised with respect to the sub-loan to Sombriti did not create an implied contract by the Government to guarantee the success of the factory or the soundness of the sub-loan.

IV

The defendant has moved for judgment against plaintiffs on a counterclaim for the amount due on plaintiffs’ unpaid loan, plus interest, and we find there is no valid defense to the counterclaim. As shown in the discussion above, however, we have looked to the substance of plaintiffs’ claim rather than to the terminology used by plaintiffs and have determined that the claim is in reality a tort claim, which is expressly excluded from our jurisdiction by 28 U.S.C. § 1491. This holding is in accord with defendant’s contentions. Since we are without jurisdiction of plaintiffs’ claim, defendant’s counterclaim must fall with plaintiffs’ petition. Mulholland v. United States, 361 F.2d 237, 175 Ct.Cl. 832 (1966).

V

For the reasons stated above, defendant’s motion for summary judgment is granted to the extent that plaintiffs’ petition is dismissed. Plaintiffs’ cross motion for summary judgment is denied, but defendant’s counterclaim is also dismissed.

KASHIWA, Judge

(concurring):

I concur fully with the Chief Judge’s opinion but with relation to the portion of the case to which a partial dissent has been filed, I must point out that the rule on which the partial dissent relies is subject to qualifications. In the very case cited by the dissent, Ralston Steel Corp. v. United States, 340 F.2d 663, 169 Ct.Cl. 119, cert. denied, 381 U.S. 950, 85 S.Ct. 1803, 14 L.Ed.2d 723 (1965), this court referred to certain qualifications in 340 F.2d on page 667, footnote 4 on page 125 of said case as follows:

On the qualification of non-frivolity and substantiality, see Montana Catholic Missions v. Missoula County, 200 U.S. 118, 130, 26 S.Ct. 197, 50 L.Ed. 398 (1906); The Fair v. Kohler Die & Specialty Co., supra, 228 U.S. [22] at 25, 33 S.Ct. 410 [57 L.Ed. 716]; Levering & Garrigues Co. v. Morrin, supra, 289 U.S. [103] at 105-106, 53 S.Ct. 549 [77 L.Ed. 1062]; Bell v. Hood, supra, 327 U.S. [678] at 682-683, 66 S.Ct. 773 [90 L.Ed. 939]; Montana-Dakota Utilities Co. v. Northwestern Public Service Co., supra, 341 U.S. [246] at 249, 71 S.Ct. 692 [95 L.Ed. 912].

The alleged contractual claims in part I were clearly not substantial. The dissent found no “difficulty” in agreeing with the majority on part I. In Levering & Garrigues Co. v. Morrin, 289 U.S. 103, 105-106, 53 S.Ct. 549, 77 L.Ed. 1062 (1933), the Court defined “unsubstantial” as being

* * * obviously without merit, or “because its unsoundness so clearly results from the previous decisions of this court as to foreclose the subject and leave no room for the inference that the questions sought to be raised can be the subject of controversy.” Hannis Distilling Co. v. Baltimore, 216 U.S. 285, 288 [30 S.Ct. 326, 327, 54 L.Ed. 482]; McGilvra v. Ross, 215 U.S. 70, 76-77, 80 [30 S.Ct. 27, 54 L.Ed. 95]; Norton v. Whiteside, 239 U.S. 144, 153 [36 S.Ct. 97, 60 L.Ed. 186]; Bianchi v. Morales, 262 U.S. 170 [43 S.Ct. 526, 67 L.Ed. 928]; Kansas v. Bradley [8 Cir.], 26 Fed. 289, 290; Harris v. Rosenber-ger [8 Cir.] 145 Fed. 449, 452.

The tortious claims were clearly beyond the jurisdiction of this court. Tort cases brought in this court naturally lack sub-stantiality as far as the jurisdictional reaches of this court are concerned because the previous decisions of this court clearly prohibit such actions.

BENNETT, Judge

(concurring in part and dissenting in part):

I have no difficulty in agreeing with part I of the majority’s opinion. Defendant did not breach its express contract with plaintiffs nor did it contravene any statutory obligation owed to them. I agree also with part III in that there is no implied contract here. I respectfully disagree, however, with the majority’s conclusion that, having found no breach, the court lacks jurisdiction to base its result upon this finding because the claims basically are of a tortious nature and we have no authority to decide tort cases.

It is undisputed that there was an express contract between the parties. Plaintiffs assert, inter alia, a breach of specific clauses of that contract. The jurisdictional requirements of 28 U.S.C. § 1491 are thus met with respect to that assertion. Whether the Government’s actions in pursuance of the contract were tortious is not a matter we need to decide in this case. We are required only to determine whether defendant breached its contract. We clearly have jurisdiction to make this determination, as the majority has apparently done, whether or not there is also a tort claim here. It follows that we have jurisdiction to rule on defendant’s counterclaim and should do so, even if a judgment for defendant on the counterclaim might be uncollectible, as pointed out in oral argument. The latter point is not our concern, although such a judgment might be a public service in highlighting problems worthy of concern elsewhere in the Government. The counterclaim is for almost one million dollars.

      . A development bank has been defined as “a financial institution which is organized and operated to assist in the economic development of less developed countries and areas by financing and promoting private enterprises, particularly ventures of small and medium size. The purpose and function of development banks is first and foremost to serve as a channel and catalyst for investment in the private sector by providing injections of capital, enterprise and management into a developing economy.” AID Manual Order 1524.1 (effective Dec. 10, 1963).

      . This type of economic assistance was originally extended by DLF under the Mutual Security Act of 1954, as amended, 22 U.S.C. § 1750 et seq. (1958). The assistance program was later taken over by the Agency for International Development under the Foreign Assistance Act of 1961, as amended, 22 U.S.C. § 2151 et seq. (1970).

      . Revised procedures in this regard were contained in DLF’s Implementation Letter Number 1, dated July 29, 1959. These revisions were clearly accepted by Crédito Somalo on August 5, 1959.

      . The total contract price for construction of the brick and tile plant was $246,868. The funds needed in addition to the DLF loan were provided by Crédito Somalo and several individual Somali investors.

      . Sombriti claimed that the failure of the brick and tile plant was caused by faulty materials and workmanship on the part of Interkiln. Somali Bricks and Tiles Manufacturing Company v. Interkiln Engineering, Inc. (Civ.No. 71-H-158) (S.D.Tex., 1973) (unpub. opinion), aff’d, 488 F.2d 1056 (5th Cir. 1974). However, Sombriti was denied recovery in this proceeding, since the jury determined that Sombriti had made fraudulent misrepresentations during the contract negotiations. Id.

      . Defendant’s Reply Brief at 3.

      . The full citations for the following cases in the quoted footnote are: The Fair v. Kohler Die & Specialty Co., 228 U.S. 22, 25, 33 S.Ct. 410, 57 L.Ed. 716 (1913); Bell v. Hood, 327 U.S. 678, 682-683, 66 S.Ct. 773, 90 L.Ed. 939 (1946); Montana-Dakota Utilities Co. v. Northwestern Public Service Co., 341 U.S. 246, 249, 71 S.Ct. 692, 95 L.Ed. 912 (1951).

      . See Ralston Steel Corp v. United States, 340 F.2d 663, 666-669, 169 Ct.Cl. 119, 123-128, cert. denied, 381 U.S. 950, 85 S.Ct. 1803, 14 L.Ed.2d 723 (1965), where the full court, upon authority of several Supreme Court cases cited, held that an arguable allegation of breach of contract is all that is required to establish


author: MILLER, Judge.

text:
    PLASTILITE CORPORATION, Appellant, v. KASSNAR IMPORTS, Appellee.
    Patent Appeal No. 74-556.
    United States Court of Customs and Patent Appeals.
    Jan. 9, 1975.

      H. Robert Henderson, Henderson & Strom, Des Moines, Iowa, attorney of record, for appellant.
    Keith D. Beecher, Jessup & Beecher, Sherman Oaks, attorney of record, for appellee.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This is an appeal from a decision of the Trademark Trial and Appeal Board, abstracted at 180 USPQ 527 (1973), granting appellee-petitioner’s petition for cancellation of appellant-respondent’s trademark registration. We affirm.

FACTS AND PROCEEDINGS BELOW

Appellant owns registration No. 863,-462, dated January 14, 1969, on the principal register. This issued on application serial No. 274,889, filed June 27, 1967, alleging first use in commerce on February 1, 1967, for the following mark for “Fishing Floats”:

The application indicates that “[t]he drawing is lined on the upper half of the sphere for the color yellow and on the lower half of the sphere for the color orange” and states that “[t]he mark is used by manufacturing the actual floats with the upper half thereof in yellow and the lower half thereof in orange.”

Appellee is an importer and, in April 1971, imported spherical fishing floats having an upper hemisphere colored yellow and a lower hemisphere colored orange through U. S. Customs in Seattle and delivered them to its customer. Pursuant to 19 U.S.C. § 1499 the Customs Service required the floats to be returned for destruction for allegedly infringing appellant’s registration. Some of them were returned and destroyed, and a penalty was assessed for those not returned.

Appellee petitioned for cancellation of appellant’s registration on the ground that:

the registration was issued by the United States Patent Office erroneously and in contravention to established trademark law, so as to create in Respondent an invalid proprietorship in a color combination of a common object.

In finding that appellant’s mark does not serve as an indication of origin and granting the petition for cancellation, the board said:

In this regard, there is of record herein a copy of respondent’s catalog of goods for each of the years 1968 through 1972 wherein its “GLO — BOB” [orange and yellow] floats are pictured in close association with its “PLASTI— BOB” red and white floats, but, in none thereof, with the exception of the 1972 catalog, is there any indication that the orange and yellow design in question was intended to be anything other than ornamental. In the last mentioned catalog, a registration notice appears on the orange portion of the “GLO — BOB” float pictured therein.
Considering that the orange and yellow design of respondent’s floats is certainly ornamental, that it has long been the practice in the trade to color floats, and the fact, as further shown by the record in this case, that respondent has not promoted its floats to the general public, we are in full agreement with the petitioner that to the ultimate purchasers thereof the orange and yellow design in question would be regarded as mere ornamentation rather than as an indication of origin.

OPINION

Throughout the proceedings it has been impliedly assumed — and we agree — that appellee has standing to petition to cancel appellant’s registration as a person who believes he is or will be damaged by such registration. (Section 14 of the Lanham Act, 15 U.S.C. § 1064.) Such belief would arise from the destruction of some of appellee’s imported floats, being assessed a penalty on others, and being deterred from importing such floats.

Although neither appellee-petitioner nor the board cited any section of the Lanham Act as the basis for cancellation, such action would obviously rest on a finding that appellant’s mark is not a “trademark” within the meaning of section 1 (15 U.S.C. § 1051), the preamble of section 2 (15 U.S.C. § 1052), and the definition in section 45 (15 U.S.C. § 1127). See In re Soccer Sport Supply Co., Cust. & Pat. App., 507 F.2d 1400.

Color or colors used as mere surface decoration cannot be monopolized by a claim to trademark rights therein. See In re Swift & Co., 223 F.2d 950, 955, 42 CCPA 1048, 1053 (1955). Color may, however, be part of a trademark where it is used in a particular manner. See In re Hehr Mfg. Co., 279 F.2d 526, 47 CCPA 1116 (1960). Ornamentation will not prevent registration so long as a mark with the color(s) used in a particular manner primarily indicates source. If the mark is inherently distinctive, it is registrable. If not, there must be evidence showing that the mark has become distinctive. See In re Soccer Sport Supply Co., supra; In re Hehr Mfg. Co., supra.

Is Mark Inherently Distinctive?

The record establishes that prior to appellant’s adoption and use of its color scheme, floats had been sold having the upper half of the sphere white and the lower half red. Thus, appellant merely changed the color scheme from red and white to yellow and orange. While, under these circumstances, the yellow and orange colors certainly have been applied in a particular manner, they cannot be regarded as having been applied in an arbitrary or distinctive manner compared to the color scheme of the red and white floats. Accordingly, we hold that appellant’s mark is not inherently distinctive.

Has Mark Become Distinctive?

Appellant’s principal means of advertising has been its products catalog, distributed to its customers (jobbers and wholesalers) — not the ultimate consumers. Not only did appellant fail to submit any evidence on the number of catalogs distributed, but the catalogs themselves fail to show that the yellow-orange design as applied to spherical floats has become distinctive as indicating a particular source of the goods. They display spherical, yellow-orange floats side by side with the conventional spherical, red-white floats. This supports the inference that the yellow-orange color scheme is merely a different ornamentation from that used for the conventional float. The term “GLO-BOB” is used only with the yellow-orange floats, while the term “PLASTI-BOB” is used on both the yellow-orange floats and the conventional red-white floats. The 1970 catalog employs :an “R” in a circle on an oval-shaped, yellow-orange float pictured underneath the spherical, yellow-orange float. No suck notice appears in the 1971 catalog, aj/id, as noted by the board, only in the 1972 catalog is it shown on the spherical, yellow-orange float pictured therein. Accordingly, we cannot conclude that the evidence shows that appellant has, promoted its yellow-orange color scheme as a trademark for its floats. Cf. In re Hehr Mfg. Co., supra.

Appellant emphasizes that its intent in adopting the yellow-orange color scheme was for this to function as a trademark and criticizes the board for stating that appellant had not promoted its floats) to the general public. However, it is the association of the mark with a particular source by the ultimate consumers which is to be measured — not appellant's intent. In re Meyer & Wenthra, Inc., 267 F.2d 945, 46 CCPA 919 (1959).

In view of the foregoing, we hold that appellant’s mark has not become distinctive :as primarily an indication of source of appellant’s goods.

The decision of the board is affirmed.

Affirmed.

      . Registration of the mark was originally refused by the examiner on the basis that it comprises “merely a particular color combination or ornamentation [sic] feature of the goods and not a trademark as defined in the Trademark Act to identify and distinguish a particular source of [sic] commercial origin for said goods.” In response to the examiner’s request for evidence “showing that the coloration, per se, is brought before the public as a trademark, that it had been promoted as such, and that it is recognized by the purchasing public as a badge of origin,” appellant submitted its 1968 catalog showing, inter alia, red-white and yellow-orange, spherical fishing floats. Appellant also stated that a registration of a similar mark consisting of a “green cap on a bobber” had been issued to another party. The mark was then published for opposition and registered.

      . Tariff Act of 1930, § 499, ch. 497, 46 Stat. 728, as amended by the Customs Administrative Act of 1938, §§ 15, 16(a), ch. 679, 52 Stat. 1084, and as further amended by The Customs Courts Act of 1970, § 301(k), Pub. L.No. 91-271, 84 Stat. 289.

      . Appellant’s registration relates only to spherical floats, although it manufactures yellow and orange floats in a variety of other shapes.

      . Appellant refused to reveal its sales volume and failed to indicate the amount of advertising in trade journals.

      . From the record it would appear that these word marks are registered, although the reg'istration's themselves were not produced, Also, the “O” in “BOB” is frequently replaced by a two-dimensional drawing of a float.


author: ALMOND, Senior Judge.

text:
    RITE AID CORPORATION, Appellant, v. RITE-WAY DISCOUNT CORPORATION, Appellee.
    Patent Appeal No. 74-616.
    United States Court of Customs and Patent Appeals.
    Submitted Dec. 9, 1974.
    Decided Jan. 9, 1975.
    Donald A. Kaul, Washington, D. C., attorney of record, for appellant. Roy-lance, Abrams, Berdo & Kaul, Washington, D. C., of counsel.
    William A. Snow, Chicago, 111., attorney of record, for appellee. Martin E. Litwin and Rummler & Snow, Chicago, '111., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.
   ALMOND, Senior Judge.

This appeal is from a decision of the Trademark Trial and Appeal Board, 182 USPQ 698 (1974), dismissing appellant’s opposition to the registration of RITE WAY and design or logo as a service mark for retail drug store services, application serial No. 384,862, filed February 25, 1971, claiming first use November 5, 1969. We affirm.

FACTS

Both parties presented evidence. Ap-pellee also introduced a notice of reliance indicating its intention to rely upon 12 third-party registrations showing the term RITE used as a suffix in such marks.

Appellee’s evidence tends to show that the mark RITE WAY incorporated in an octagon design came into being sometime during the summer of 1969 when an official of appellee’s corporation seeing a sign on the expressway, reading “STOP WRONG WAY,” said to himself “Let’s make it the right way and shape it in the form of an octagon and make it like a stop sign.”

The name RITE WAY and the same term within an octagon design were subsequently adopted, and appellee was incorporated as Rite-Way Discount Corporation under the laws of Illinois in September 1969.

Appellee provides a group advertising and buying program for small independent pharmacies, variety and food stores to enable them to compete with larger discount drug and other chain stores. The program is designed to draw customers into the participating independent stores through advertising in newspapers and other media of certain lead-in merchandise which it sells to the retailers at close to cost. The advertisements feature the RITE WAY and octagon design mark and list the participating independent retailers in the area covered by the advertisement. The number of participating retailers in the program has grown over the years and as of November 6, 1972, there were approximately 180 participating stores, located in Illinois, Kentucky, Indiana, and New Jersey.

Appellant’s predecessor, Rock Rite Distributors, Inc., first used the term RITE AID in January 1966 as the name for a retail drug store in New Rochelle, New York, and as a trademark to identify private brand labeled products offered for sale therein. Additional stores were opened, and by early 1968 there were about twenty stores operating under the name RITE AID in the states of Connecticut, New York, Pennsylvania, and New Jersey.

Appellant, Rite Aid Corporation, was formed in April 1968 and acquired all of the assets of Rock Rite Distributors by merger, including three federal registrations for RITE AID and for RITE AID with design. Appellant, as of March 1973, had expanded to more than 330 stores, operating in the states of Massachusetts, Connecticut, New York, Pennsylvania, New Jersey, Virginia, North Carolina, West Virginia, and Ohio. During that time the use of RITE AID as a service mark for drug stores and as a trademark for between four and five hundred private label products was continuously expanded.

The first reported contact between the parties to this appeal occurred in 1972 when appellee expanded its operations into the state of New Jersey, where appellant corporation was already doing business. Appellee’s general counsel testified that he was contacted by appellant’s attorney, who advised him that RITE WAY was similar to RITE AID and that appellee’s operations in that state were causing his client some problems. Appellant’s attorney suggested that their differences could be amicably resolved by either discontinuing or modifying the name RITE WAY' or modifying the logo. There was thereafter prior to the filing of this opposition apparently no further contact between the parties regarding this matter.

OPINION

Appellant contends that the marks considered in their entireties are confusingly similar in both sound and appearance. Specifically, appellant argues:

Both marks are composed of two words having seven letters and two syllables. The first four letters of each mark are identical, namely, RITE. The second word or last three letters of each mark consists of one syllable word predominated by the long “a” sound; that is, the respective suffix portions of the marks are pronounced “ad” and “wa.”

Pertinent to appellant’s contention that the marks are confusingly similar in appearance is the observation that appel-lee is seeking to register a composite mark consisting of the words RITE WAY and logo or design. Consequently, the allegation that the term RITE WAY is visually similar to appellant’s word mark RITE AID is an improper dissection of appellee’s mark, since the visual impression likely to be remembered by purchasers will include the design as well as the words.

A visual comparison (shown below) of appellee’s composite mark with appellant’s word mark, originally pleaded in the notice of opposition, and to its composite mark which is covered by two separate registrations subsequently introduced into evidence leads us to the con-elusion that the marks are sufficiently dissimilar in appearance to preclude a likelihood of confusion.

We also find that no likelihood of confusion would result from the alleged phonetic similarity of the marks. Appellant argues:

Certainly, as far as similarity in sound is concerned, the marks are virtually indistinguishable unless very carefully pronounced. As this Court noted in Wrap-On Co. Inc. v. W. R. Grace & Co., 470 F.2d 1046, 176 USPQ 210 (CCPA 1973) similarity in sound is enough to create a likelihood of confusion.

In the decision referred to by appellant, however, it was the opinion of this court, in adopting the conclusion stated by the majority of the Trademark Trial and Appeal Board, that the similarity in sound of the marks involved “could well lead to a likelihood of confusion, particularly where the involved products are over-the-counter items which could be orally requested in hardware or grocery stores.” Wrap-On Co., Inc. v. W. R. Grace & Co., supra. We note that in our prior decision the goods were of the type frequently purchased by verbal order. In the instant appeal, however, services are involved, namely, “retail drug store services.” We are not convinced that a user of these services, namely, the retail drug store customer, is likely to be confused under the circumstances of this ease, where the likelihood of visual exposure to the marks through newspaper and other media advertising plays such a prominent role. Additionally, the facts that the words “aid” and “way” are totally dissimilar in appearance and vary significantly in sound and meaning militate against appellant’s position.

Accordingly, we hold that the over-all differences between the marks of the parties are sufficient to preclude a likelihood of confusion. The decision of the board is affirmed.

Affirmed.

      . These registrations were Registration No. 901,322 issued October 20, 1970 on an application filed April 26, 1968 for RITE AID per se, for retail drug store services; Registration No. 877,669 issued September 30, 1969 on an application filed April 26, 1968, covering RITE AID with design, for various and sundry pharmaceutical preparations; and Registration No. 875,773 issued August 26, 1969, also on an application filed April 26, 1968, for the identical composite mark for toiletries such as mouthwash, denture cleanser, toothpaste, bath oil, and the like.