text:
    CAN AM ENGINEERING CO., Plaintiff, v. HENDERSON GLASS, INC., Defendant.
    Civ. No. 83-CV-0339-DT.
    United States District Court, E.D. Michigan, S.D.
    Oct. 28, 1985.
    As Amended Dec. 16,1985.

      Arnold S. Weintraub, Basile, Weintraub & Hanlon, P.C., Troy, Mich., for plaintiff.
    Jerome A. Galante, Plunkett, Cooney, Rutt, Watters, Stanczyk & Pederson, Detroit, Mich., for defendant.
   MEMORANDUM OPINION

RALPH M. FREEMAN, Senior District Judge.

This is an action for damages under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), arising out of the distribution of a price list advertisement or flyer for various automotive wire wheel covers sold by Defendant, Henderson Glass, in January of 1983, which contained a photograph of a wire wheel cover manufactured and sold by Plaintiff, Can-Am Engineering Co. The wire wheel cover in question has a central hub with a seven-sided polygon configuration and a rectangular box inside the polygon with crossed Canadian and American flags.

Plaintiffs three count complaint filed in January of 1983, alleged infringement of common law trade mark rights and unfair competition, in addition to the claimed violation of Section 43(a) of the Lanham Act. In its complaint, Plaintiff asserted that the seven-sided hub was distinctively associated with Can-Am as a producer of wire wheel covers.

This matter was brought on for trial on March 5, 1985, at which time Plaintiff voluntarily abandoned its claim for common law trademark infringement and unfair competition. Plaintiff proceeded to trial solely on the alleged violation of Section 43(a) of the Lanham Act.

The facts in the present case, as adduced at trial before this Court sitting without a jury, are straightforward and largely undisputed. Plaintiff, Can-Am Engineering, sells replacement wire wheel covers for automobiles on the wholesale market which are specially manufactured for Plaintiff by ITT Thompson, utilizing dies owned by Plaintiff, Can-Am Engineering (Testimony, Michael Bunnell). The wheel covers sold by Can-Am which form the basis of this dispute are designated throughout the industry as “aftermarket wheel covers.” Such wheel covers are used as replacements for wheel covers originally sold by automobile manufacturers with a new automobile and are generally less expensive than “original equipment manufacture” wheel covers (OEMs) (Testimony, Bunnell). Facsimiles of automobile design emblems are sold as decals to be placed in the center of an after-market wheel cover to make them appear to be original equipment covers (Carlton Ostdiek).

The Defendant, Henderson Glass, is principally involved in the “insurance replacement business,” whereby an insurance company refers an insured to Henderson for automotive repairs or replacement parts and the insurance company is directly billed for any such work. Henderson is also involved in wholesale and retail sales of automobile accessory parts, automotive glass products, and commercial and residential glass products. However, seventy-five to eighty percent of Henderson’s business involves insurance replacement (Ost-diek). Of Defendant’s total 1983 sales, only 2-2.2% involved wire wheel cover replacements (Ostdiek). In 1982 and 1983, Henderson Glass operated sixteen branch stores, all of which were located in Michigan. It is undisputed that Henderson carried for sale both original equipment manufacture (OEM) wire wheel covers and aftermarket wire wheel covers in its branch stores which were purchased from Henderson’s central warehouse (Ostdiek). Defendant purchased and stocked after-market wire wheel covers from a competitor of Plaintiff, Norris Industries (Ostdiek).

Can-Am Engineering Co. broke into the business of after-market wire wheel covers in December of 1982 when it received its first shipment of wire wheel covers with the seven-sided hub from ITT Thompson. The seven-sided wire wheel cover in question was first conceptualized by Can-Am in 1981 and prototypes were made some time thereafter. Can-Am completed a promotional brochure in July of 1982, which included a color photograph of a series of the Can-Am wire wheel covers that appeared to be in motion and specifically displayed the seven-sided hub now at issue in this case (Plaintiff’s Exhibit 2). The brochure also displayed Can-Am Engineering Co.’s name in large letters and indicated that the wire wheel cover was “OEM Quality” and “meets all OEM specifications.” Prototypes of Plaintiff’s seven-sided wire wheel cover were displayed at a trade show in October of 1983 and approximately one thousand of Can-Am’s brochures were distributed at that time (Bunnell).

In the fall of 1982, a Can-Am salesperson contacted Carlton Ostdiek, who was then the vice-President of Henderson Glass, concerning the possibility of Henderson Glass’ carrying Can-Am’s wire wheel covers at Defendant’s branch stores. Henderson did not purchase any of Plaintiff’s wire wheel covers, nor did it ever stock any of Plaintiff's wheel covers for sale in its stores (Ostdiek). Rather, Defendant stocked after-market wire wheel covers manufactured by Plaintiff’s competitor, Norris Industries. Can-Am did obtain several accounts in the Detroit area during this time frame, including several insurance glass replacement houses similar to Henderson (Bunnell). Plaintiff’s president, Michael Bunnell, contacted a local State Farm insurance agent, Nicholas George, in the fall of 1982, to ask him to introduce the Can-Am seven-sided wheel cover to his customers. However, Can-Am never made any direct mailings to insurance companies to advertise its wire wheel covers in 1988, aside from one East coast insurance company (Bunnell). Although Plaintiff claimed it advertised the wire wheel covers in trade magazines, the exact dates and frequency of such advertisements are unclear from the evidence presented at trial.

Sometime in the fall of 1982, Carlton Ostdiek of Henderson Glass received Can-Am’s brochure which depicted Plaintiff’s seven-sided wire wheel cover shown in Plaintiff’s exhibit 3 (Ostdiek). Ostdiek gave the brochure to Trish Perez-Fresard, who was in charge of Defendant’s advertising, to put in Henderson’s advertising file (Ostdiek). An advertising file was maintained by Defendant to accumulate general ideas for artistic design to be used in Defendant’s advertising flyers (Perez-Fre-sard). Henderson’s promotional activities generally consisted of one page photo-copied flyers advertising various special sales of the automotive products carried by Defendant for sale in its branch stores. During the time in question, the photo copied advertising flyers were laid out by Defendant’s employee, Trish Perez-Fresard, and generally reviewed by Carlton Ostdiek before they were distributed (Ostdiek) (Perez-Fresard). Once the flyers were photo copied, they were mailed to various insurance agencies in the Detroit area and the balance were placed on the counters of Henderson’s sixteen branch stores for its retail customers. The yearly total advertising budget for Henderson Glass in 1982 and 1983 was less than $500.

In December of 1982, Henderson Glass decided to promote the sale of OEM wire wheel covers (Ostdiek). Trish Perez-Fre-sard was instructed by Ostdiek to prepare a flyer listing the prices for General Motors accessory package wire wheel covers, or OEMs, at special prices on a rush basis (Ostdiek) (Perez-Fresard). It is undisputed that in preparing such a flyer, Perez-Fre-sard intentionally included a reproduction of the Can-Am photograph of its seven-sided wire wheel cover which appeared in Can-Am’s brochure in a rectangular space on the flyer below the prices listed for OEM wire wheel covers for some thirty-two different models of cars (Plaintiffs Exhibit 3). Perez-Fresard needed a photograph of a wire wheel cover as a graphic illustration of the products being offered by Defendant for sale and chose the Can-Am photograph to fill that space. A General Motors decal was placed over the center of the hub covering the rectangular box and crossed flags on the Can-Am wheel cover (Ostdiek). Sometime prior to photo copying the price list flyer, the decal fell off or was removed. However, some glue residue remained on the layout sheet causing the distortion of Can-Am’s crossed flags in the final photo copied flyers (Ostdiek). The seven-sided polygon configuration on the hub, claimed by Plaintiff to have been misappropriated by Defendant, remained clearly visible.

Approximately 3,000 photo copies of such flyer were prepared, of which some 1,273 copies were mailed by Defendant to the insurance companies and agencies on Defendant’s mailing list on approximately January 5, 6, and 7 of 1983, along with several other photo copied flyers for other specials offered by Defendant (Perez-Fre-sard). The balance of the 3,000 copies, approximately 1,727, were taken to Henderson’s sixteen branch stores for over-the-counter distribution and occasional sales calls (Perez-Fresard). Within several days after such distribution, Can-Am’s attorney notified Carlton Ostdiek of Henderson of the alleged wrongful use of Plaintiff’s photograph of its seven-sided wire wheel cover. Ostdiek instructed all employees of the company to return any copies of the advertising flyer remaining at Defendant’s branch stores (Ostdiek) (Defendant’s Exhibit 14). Of the approximately 1,700 copies delivered to Defendant’s branch stores, some 1,543 copies were retrieved and counted by an employee of Defendant, Linda MacDonald (Defendant’s Exhibit 5). In addition, on approximately February 10th or 11th of 1983, Henderson Glass prepared and distributed a new price list (Defendant’s Exhibit 4), identical in all respects to the original price list, except that it contained a retraction in the space where the photograph of Can-Am’s wire wheel cover had originally appeared which read as follows:

NOTICE:

January version of this ad improperly included (in this space) a photograph of a wheel cover by Can-Am Engineering Co. This ad pertains only to G.M. accessory packages, wire wheel covers and to OEM replacement covers. We do not offer the wheel cover by Can-Am Engineering Co. shown in the previous ad.

(Ostdiek) (Linda MacDonald) (Perez-Fre-sard).

This flyer was distributed in the same manner as the January 1983 flyer (Fre-sard). In addition, extra copies of the retraction were given to the branch stores and to at least four additional major insurance companies (MacDonald) (Ostdiek).

On January 28, 1983, Plaintiff filed a three count complaint, alleging among other things a violation of 15 U.S.C. § 1125(a) based upon Defendant’s use of the photograph in its advertising flyer, seeking both injunctive relief and damages. On that same date, Plaintiff also filed a motion for a preliminary injunction to restrain Defendant’s use of Plaintiff’s photograph. The parties subsequently entered into an agreement that Defendant would not use in any of its advertising, promoting, or soliciting materials, any of Plaintiff’s advertising or promotional material, including any photographs or illustrations of Plaintiff’s wheel cover. A stipulation and order to this effect was entered in this Court on April 20, 1983. The parties have agreed that the only issue as to relief remaining in this matter to be decided by this Court is the question of monetary damages.

The essence of Plaintiffs claim is that the seven-sided hub configuration on the wire wheel cover is distinctive and that Defendant knowingly and intentionally appropriated and used a photograph of Plaintiffs wire wheel cover to promote the sale of other brands of wheel covers carried by the Defendant. Plaintiff contends that the use of the photograph of Plaintiffs product constitutes either a false representation or a false designation of origin of Defendant's goods prohibited by Section 43(a) of the Lanham Act.

Section 43(a) of the Lanham Act which governs Plaintiffs claim provides in pertinent part:

Any person who shall affix, apply, or annex, or use in connection with any goods or services, ... a false designation of origin, or any false description or representation, including words or other symbols, tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action ... by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.

15 U.S.C. § 1125(a).

The purpose of Section 43(a) is to protect persons engaged in interstate commerce against unfair competition or fraud and deception that result from false designation of origin or other false representation of Defendant’s product. See Frisch’s Restaurant, Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir.1985); Kwik-Site Corp. v. Clear View Mfg., 758 F.2d 167, 177-78 (6th Cir.1985) (case involving palming off); WSM, Inc. v. Hilton and Country Shindig Opry Inc., 724 F.2d 1320, 1331 (8th Cir.1984); Lacoste Alligator, S.A. v. Bluestein’s Men’s Wear, 569 F.Supp. 491 (D.C.S.C.1983).

It is now well accepted that misappropriation of advertising is actionable under Section 43(a) of the Lanham Act. See Vibrant Sales Inc. v. New Body Boutique, 652 F.2d 299 (2d Cir.1981), cert. denied, 455 U.S. 909, 102 S.Ct. 1257, 71 L.Ed.2d 448 (1982); Bangor Punta Operations, Inc. v. Universal Marine Co., Ltd., 543 F.2d 1107 (5th Cir.1976) (palming off); Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir.1976), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed. 139 (1976) (reverse passing off); L’Aiglon Apparel, Inc. v. Lane Lobell, Inc., 214 F.2d 649 (3d Cir.1954) (use of photograph of plaintiffs dress to advertise defendant’s inferior quality dress actionable under Section 43(a) as false representation); see generally, Comment, The Present Scope of Recovery for Violations Under Section 43(a) of the Lanham Act, 58 Neb.L.Rev. 159 (1978).

In order for Plaintiff to prevail on its claim of false designation of origin or false representation, Plaintiff must establish by a preponderance of the evidence that Defendant’s advertisement was in fact false or created a false impression as to the source of supply, origin, sponsorship, or nature or quality of Defendant’s own goods or services. Frisch’s Restaurants, Inc. v. Elby’s Big Boy, 670 F.2d 642, 647 (6th Cir.1982); Walker-Davis Publications, Inc. v. Penton/IPC, Inc., 509 F.Supp. 430, 435 (D.C.Pa.1981); Federal-Mogul-Bower Bearings, Inc. v. Azoff, 313 F.2d 405, 408-09 (6th Cir.1963). In this case, there is no question that Defendant's use of the photograph of Plaintiff’s seven-sided wire wheel cover was in fact false or at least created a false impression as to the origin of the goods advertised for sale by the Defendant. Defendant’s advertising flyer depicted a photograph of Can-Am’s wire wheel cover, a cover not sold or stocked by the Defendant.

Plaintiff is also required to prove that Can-Am’s seven-sided polygon wire wheel cover was non-functional and either inherently distinctive or had acquired secondary meaning. See e.g. Kwik-Site Corp. v. Clear View Mfg., 758 F.2d 167, 178 (6th Cir.1985) (trade dress case); Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 702 (5th Cir.1981); Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 583 F.Supp. 75, 77 (D.C.Fla.1981); Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1219-20 (8th Cir.1976).

The Court rejects the Plaintiff’s contention that it is unnecessary to prove secondary meaning where the plaintiff relies upon the false representation leg of Section 1125(a). Plaintiff’s position seems to be that a per se violation of Section 1125(a) is established any time a defendant happens to use a photograph of plaintiff’s product in its advertising where it cannot deliver the product pictured. The cases upon which Plaintiff relies for this position, including the oft cited Third Circuit case of L’Aiglon Apparel v. Lana Lobell, Inc., 214 F.2d 649 (3d Cir.1954), do not address the question of secondary meaning or the elements of a cause of action under Section 1125(a). See e.g. Bangor-Punta Operations Inc. v. Universal Marine Co., 543 F.2d 1107 (5th Cir.1976); Eberling & Reuss Co. v. International Collectors Guild, Ltd., 462 F.Supp. 716 (E.D.Pa.1978); Matsushita Electric Corp. of America v. Solar Sound Systems, Inc., 381 F.Supp. 64 (S.D.N.Y.1974). In fact, the LAiglon Apparel case specifically concludes that the plaintiff’s product, a dress, was distinctive and identified or associated in the minds of the public as plaintiff’s dress. 214 F.2d at 650.

Plaintiff also relies upon several trade dress cases which hold that where a defendant copies the trade dress of plaintiff’s product, a presumption of secondary meaning and likelihood of confusion is raised. See E.R. Squibb v. Premo Pharmaceutical, 195 U.S.P.Q. (D.C.N.Y.1977); Rolex Watch v. Thalheimer, 217 U.S.P.Q. 964a (D.C.Cal.1982). This case, however, does not involve copying of the plaintiff's trade dress, but rather is primarily based upon a false representation or designation as to the origin of Defendant’s products offered for sale in the advertising flyer. Hence, such cases are distinguishable on their facts.

Finally, this Court notes that Plaintiff cites no authority for the proposition that the use of photographic representation of Plaintiff’s product in a price list advertising for sale many different wire wheel covers would necessarily be premised solely on the false representation leg of Section 1125(a). The Court is of the opinion that the actions complained of in this case might equally fall under the false designation leg of the statute. Although Plaintiff failed to clearly articulate the precise nature of its claim under Section 43(a), the gist of the claim appears to rest upon the allegation that the use of Plaintiff’s photograph in Defendant’s advertising flyer confused consumers and led them to believe that they were purchasing Plaintiff’s product when they ordered any one of the thirty-two OEM wire wheel covers on Defendant’s price list or that Plaintiff sponsored the products advertised. In other words, whether Plaintiff’s claim is premised on false designation or false representation, the allegation is the same—consumers were confused as to the origin of the product they were purchasing due to the false representation on the flyer.

Plaintiff’s seven-sided hub was not a registered trademark at the time Defendant used a photograph of Plaintiff’s product, or at any time thereafter. Although registration of a mark is not necessary to establish a claim under Section 43(a), Plaintiff still must bring forth evidence to show that the public, because of the name, or mark, assumes that the product comes from a single source. Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 856 (7th Cir.1982); Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F.Supp. 75, 79-82 (S.D.Fla.1981); Aloe Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845, 849 (5th Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d 90 (1970); Sterling Products Co. v. Crest Manufacturing Co., 314 F.Supp. 204, 212 (E.D.Mich.1970). It is not necessary for the public to be aware of the actual source of the product; it is enough if the public believes that there is a single source. Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d at 856; Sterling Products Co. v. Crest Manufacturing Co., 314 F.Supp. at 211.

In the instant case, the Court is of the opinion that although the seven-sided polygon on Plaintiffs wire wheel cover is non-functional, it is neither distinctive, nor had it acquired secondary meaning prior to Defendant’s alleged wrongful conduct. The uncontroverted facts at trial revealed that Plaintiff’s seven-sided wire wheel cover was first introduced at a trade show in October of 1982, at which time over 1,000 brochures with a photograph of the wheel cover were distributed, presumably to individuals in the industry. There was. no evidence introduced at trial that the general public was at the trade show, nor was there any evidence that an advertising campaign had been conducted by Plaintiff prior to Defendant’s use of Plaintiff’s photograph, either for the benefit of those in the industry or the public. The evidence showed that Plaintiff made sales to two glass houses in the Detroit area in November of 1982, totalling approximately $36,000.00, or 250-300 sets of wire wheel covers. (Barry Miller) (Plaintiff’s Exhibit 11). Plaintiff did not receive any wire wheel covers for delivery to such glass houses from ITT Thompson until December 21,1982, approximately sixteen days before the price list was first distributed (Defendant’s Exhibit 17 shows that Plaintiff received approximately 972 sets from ITT Thompson on December 21, 1982). Plaintiff’s only direct evidence offered on secondary meaning was the testimony of an insurance agent, Nicholas George, who stated that he received a copy of Defendant’s price list with a photograph of Plaintiff’s seven-sided wire wheel cover and immediately recognized it as Plaintiff’s wheel cover. The Court, however, gives little weight to George’s testimony. The evidence at trial showed that George had an office across the hall from Plaintiff’s office at the time in question and that Plaintiff approached George in an effort to get him to promote its wheel cover to his clients. George’s recognition of Plaintiff’s wheel cover might be representative of other insurance agents, who Plaintiff claims were among the relevant consumers in this case, had Plaintiff promoted its product in a similar manner to the hundreds of other agents in the Detroit area at the time in question. However, the evidence revealed that George was the only such agent contacted prior to the January 1983 price list (Bunnell) (Miller).

Moreover, the short time since Plaintiff’s product had first been introduced onto the market in October of 1982, is another factor which points to a conclusion that secondary meaning had not been established at the time in question. Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F.Supp. at 78. Finally, Plaintiff introduced no survey or other evidence to establish that those in the trade, including glass houses who purchased Plaintiff’s wire wheel cover, or the actual consumer, recognized Plaintiff’s seven-sided hub. The Court concludes that Plaintiff failed to meet its burden of proof that its seven-sided wire wheel cover had acquired secondary meaning.

Even if secondary meaning is not required under Section 43(a) where a defendant uses a photograph of another’s product to promote the sale of numerous products carried by defendant, this Court finds that Plaintiff failed to establish that the buying public was actually deceived. While a plaintiff only need show a likelihood of confusion where injunctive relief is sought, in order to recover damages in an action under Section 43(a), Plaintiff must present evidence to prove that the public was actually deceived. Frisch’s Restaurant, Inc. v. Shoney’s Inc., 759 F.2d 1261, 1266-67 (6th Cir.1985) (proof actual confusion not necessary to obtain injunctive relief under the Lanham Act); Frisch’s Restaurants, Inc. v. Elby’s Big Boy, 670 F.2d 642, 647 (6th Cir.1982); Skit Corp. v. Rockwell International Corp., 375 F.Supp. 777 (N.D.Ill.1974). Plaintiff relies upon the case of Johnson & Johnson v. Carter-Wallace, Inc., 631 F.2d 186 (2d Cir.1980), for the proposition that Plaintiff need only establish a likelihood of confusion and damage as the result of Defendant’s alleged wrongful conduct. Unlike the case at hand, however, Johnson & Johnson involved only an action for injunctive relief and does not address the issue of whether actual deception must be proved where a party seeks money damages. Plaintiff set forth no evidence in its Proposed Findings of Fact and Conclusions of Law, nor was the Court able to locate any such evidence, that the buying public was actually deceived. Accordingly, Plaintiff’s claim under Section 43(a) must fail.

Because Plaintiff failed to establish the elements necessary for recovery under Section 43(a), the Court need not address the issue of damages.

For the reasons set forth herein, this Court will render judgment in favor of Defendant and against the Plaintiff of no cause for action.

      . The testimony of the relevant witnesses or exhibits will be referred to in parenthesis throughout this opinion.

      . Although the Defendant disputed whether the designation "OEM Quality” referred to an aftermarket wire wheel cover or an original equipment manufacture wheel cover, this Court finds that such a designation clearly refers to only an after-market wheel cover.

      . Exactly what was meant by introducing the Can-Am wheel cover to its customers is unclear from the evidence. No evidence was introduced to explain whether such insurance agents would tell their insureds to purchase Can-Am products when the insured’s original equipment wheel cover was stolen.

      . The vice-president and fifty percent shareholder in Can-Am, Barry Miller, testified that after the alleged violation of the Lanham Act in January of 1983, Miller made numerous advertising and telephone contacts including contacting various insurance companies in an effort to penetrate the market for replacement wheel covers. There was no evidence presented at trial, however, that advertising or direct calls of any significant amount were made by Plaintiff prior to the time when Defendant sent out the advertising flyer containing a photograph of Plaintiff s wheel cover.

      . Plaintiff placed great significance at trial upon the disputed factual question of whether Defendant’s agent, Trish Perez-Fresard called Can-Am prior to Henderson's January 1983 advertising flyer looking for a photograph of Plaintiffs seven-sided wheel cover. Apparently Plaintiff seemed to believe that such a deliberate and willful act by Defendant’s agent was relevant to the outcome of this case. The law is clear, however, that intent to deceive need not be established to prevail under Section 43(a). See Johnson & Johnson v. Carter-Wallace, Inc., 631 F.2d 186, 189 (2d Cir.1980); Ames Publishing Co. v. Walker Davis Publications, Inc., 372 F.Supp. 1, 11 (E.D.Pa.1974); Parkway Baking Co. v. Friehofer Baking Co., 255 F.2d 641, 648 (3d Cir.1958). To the extent that intent may be relevant, this Court finds that Defendant, acting through its agent, Perez-Fresard, did not act with intent to deceive Defendant’s customers. Although Perez-Fresard admits she did put the photograph in Defendant’s ad knowingly and intentionally, the Court is convinced that it was not done with any malicious intent to deceive customers by leading them to believe that Defendant was selling the wheel cover pictured on Defendant’s price list for OEM wheel covers. meaning prior to the date the Defendant commenced using such mark in its advertising. See Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1231 (3d Cir.1978). Hence, registration on the Supplemental Register over a year and a half after the alleged wrongful conduct does not establish secondary meaning in this case.

      . The Congressional intent in enacting the Lan-ham Act is clearly set out in the statute, 15 U.S.C. § 1127, which provides in pertinent part:
      "The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce ... to protect persons engaged in such commerce ... against unfair competition; to prevent fraud and deception. ..."

      . The seven-sided hub was registered on the Supplemental register on October 23, 1984. Aside from the fact that registration on the Supplemental Register does not indicate that the mark in question is distinctive, Plaintiff must establish that its mark acquired secondary


source: Caselaw Access Project

author: DAVID S. NELSON, District Judge.

license: Public Domain

text:
    PPG INDUSTRIES, INC. Plaintiff, v. CLINICAL DATA INC. Defendant.
    Civ. A. No. 79-1300-N.
    United States District Court, D. Massachusetts.
    Oct. 28, 1985.

      Herbert P. Kenway, Kenway & Jenney, Boston, Mass., for plaintiff.
    Blair L. Perry, Hale & Dorr, Boston, Mass., for defendants.
   MEMORANDUM AND ORDER

DAVID S. NELSON, District Judge.

This is a trademark dilution action brought under the Massachusetts Anti-Dilution Statute, M.G.L. c. 110B, § 12. Jurisdiction is pursuant to 28 U.S.C. § 1332(a). Plaintiff, a Pennsylvania corporation, manufactures and markets a variety of products including glass, paint, and chemicals under the trademark PPG. Defendant, a Delaware corporation with a place of business in Massachusetts, is engaged in the delivery of medical diagnostic services. These include pediatric pneumograms and pneumo-cardiograms sold under the trademarks PPG and PCG respectively.

Plaintiff alleges that defendant, through its use of the trademarks PPG and PCG, has diluted or is likely to dilute the allegedly distinctive quality of the PPG Industries’ name and trademark and injure plaintiff’s business reputation. In addition to the trademark dilution claim, the case originally included claims for trademark infringement and unfair competition. Summary judgment was granted in favor of the defendant on these two claims on November 29, 1982. In taking such action the court gave collateral estoppel effect to the decision of the Court of Customs and Patent Appeals. That court found no likelihood of confusion as a result of the defendant’s use of the PPG mark and dismissed plaintiff’s opposition to the defendant’s registration of the mark. PPG Industries v. Clinical Data Inc., 681 F.2d 823 (CCPA 1982) (appeal from the decision of the Trademark Trial and Appeal Board dismissing PPG Industries’ opposition to Clinical Data’s registration of the PPG mark).

Summary judgment was also granted on the dilution claim after plaintiff failed to submit an opposition and the court determined there was insufficient evidence to support any of the recognized interpretations of dilution. However, the court thereafter determined that the plaintiff had previously been given an extension of time to oppose the defendant’s summary judgment motion. Upon consideration of the plaintiff’s opposition, the court on December 2, 1982 retracted its allowance of summary judgment on the dilution claim. The case was tried on the dilution claim on June 15 and July 26, 1983.

Plaintiff seeks an injunction preventing defendant from using the terms PPG and PCG and directing the defendant to deliver up for impoundment and destruction all materials and equipment used by defendant in the conduct of its business. Based on all the evidence adduced at trial, the court finds that judgment must enter for the defendant and makes the following Findings of Fact and Rulings of Law.

FINDINGS OF FACT

Plaintiff has used the letters PPG in its tradename at least as far back as 1968, and over that period has spent in excess of $4.75 million dollars each year in advertising products using the PPG Industries tradename. Some of the plaintiffs products are used in construction and maintenance of medical facilities. Plaintiff, however, has never sold medical diagnostic equipment or services, and has never indicated any intention of doing so.

Defendant has used the letters PPG as a trademark for its pediatric pneumogram equipment and services since 1975. The letters PPG were selected by the defendant’s president as an acronym for Pediatric Pneumogram. Defendant first used the letters PCG in 1979 to describe its pneumo-cardiogram equipment and services. Again the letters were selected as an acronym. Both PPG and PCG have been federally registered as trademarks with the United States Patent and Trademark Office. The defendant has used the PPG and PCG marks on or in connection with a large variety of technical and advertising materials. Defendant’s products and services are used only by medical professionals familiar with this sophisticated technology. The defendant has never manufactured or sold any products or services similar to plaintiff’s.

RULINGS OF LAW Plaintiff’s claim for trademark dilution is brought under the Massachusetts Anti-Dilution Statute, M.G.L. c. HOB, § 12, which states:

Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered under this Chapter, or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

The first of two essential elements of a dilution claim under this statute is a showing that the mark in question is distinctive. Pignons S.A. de Mecanique v. Polaroid, 657 F.2d 482 (1st Cir.1981), citing S.S. Kresge v. United Factory Outlet, 598 F.2d 694, 697 (1st Cir.1979). This first element encompasses “not merely a distinctive trade name such as a coined word but also-[the] characteristic quality inherent in any valid trade name after it has acquired a distinctive secondary meaning.” Tiffany & Co. v. Boston Club Inc., 231 F.Supp. 836, 843 (D.Mass.1964), quoting Food Fair Stores v. Food Fair, 83 F.Supp. 445, 451 (D.Mass.1948), aff'd., 177 F.2d 177 (1st Cir.1949). In the instant case I find that plaintiff’s trademark enjoys a widespread national reputation and much goodwill, that the mark identifies the particular source of plaintiff’s products in the mind of the public, that plaintiff has advertised the mark extensively, and that plaintiff sells a high volume of products bearing the PPG mark. Plaintiff’s trademark has, therefore, acquired a distinctive secondary meaning for purposes of a dilution claim. Tiffany & Co. Inc., 231 F.Supp. at 843; Southwestern Bell Tel. Co. v. Nationwide Ind. Dir. Serv., Inc., 371 F.Supp. 900 (W.D.Ark.1974).

The second essential element of a dilution claim under the Massachusetts statute is a showing that the defendant’s use of a mark similar to plaintiff’s mark has created the likelihood of dilution. Pig-nons, 657 F.2d at 494. In Pignons, the First Circuit noted three interpretations that have been given to the term trademark dilution. First, the term has sometimes been restricted to the injury to the value of a mark caused by actual or potential consumer confusion. 657 F.2d at 494, citing Esquire Inc. v. Esquire Slipper Ma-nuf. Co., 139 F.Supp. 228, 232-33 (D.Mass.1956), vacated and remanded on other grounds, 243 F.2d 540 (1st Cir.1957); see also 265 Tremont Street, Inc. v. Hamilburg, 321 Mass. 353, 357, 73 N.E.2d 828 (1947).

It is clear, however, from the specific language of the Massachusetts statute and the general philosophy underlying it that a showing of consumer confusion is not necessary to prove dilution. M.G.L. c. HOB, § 12 (injunctive relief available “notwithstanding ... the absence of confusion as to the source of goods or services”); 3A R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 21.11 (4th ed. 1981) (“The test for dilution should not be related to or limited by the test for confusion. Even though there may be no confusion, the distinctiveness of a famous trademark may be debilitated by another’s use and this is the essence of the wrong.”) Nevertheless, a showing of consumer confusion would be sufficient to 'sustain a dilution claim. Lamda Electronics v. Lambda Tech Inc., 515 F.Supp. 915, 930 (S.D.N.Y.1981). In the instant case, however, the Court of Customs and Patent Appeals, in denying defendant’s opposition to plaintiff’s registration of the PPG mark, found no likelihood of confusion. PPG Industries Inc. v. Clinical Data. Inc., 681 F.2d 823 (1982). This court previously gave collateral estoppel effect to that holding with regard to the trademark infringement and unfair competition claims and now does so again with regard to the dilution claim. The “consumer confusion” interpretation of dilution is therefore unavailing in the present action.

The second view of trademark dilution is as an “injury that results from the use of a mark by the defendant in a way that detracts from, draws on or otherwise appropriates the goodwill and reputation associated with plaintiff’s mark.” Pignons, 657 F.2d at 494. One commentator describes this type of dilution as “tarnish[ing] the affirmative associations a mark has come to convey.” 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 84.2 at 954-55.

In the instant case I have already found that the plaintiff’s mark enjoys a widespread national reputation and much goodwill. At trial, however, plaintiff failed to adduce sufficient evidencé that defendant’s use of the PPG mark has tarnished or is likely to tarnish these affirmative associations. This lack of evidence distinguishes the instant case from others where dilution was found. In Tiffany, 231 F.Supp. at 842-44, for example, evidence included defendant’s advertisements which were found to have had the potential to detract from the public’s association of plaintiff’s name with an image of high quality and culture. Based on such facts and other proffered evidence, the court found “that there is a real probability that the continued operation of the defendant under its present name will detract from the reputation of the mark ‘Tiffany’ _” Id. In the instant case a similar finding is unsupported by the evidence.

Even if plaintiff could adduce some evidence of harm to the goodwill and reputation of its mark, as the Pignons case notes, the use of a uniquely identifying trade-name in conjunction with a mark may be an adequate remedy. 657 F.2d at 495. Based on a review of the proffered exhibits, I find that defendant uses the tradename “Clinical Data- Inc.” in close association with the mark PPG on virtually all of its sales and technical literature, labels and markings. In addition, defendant frequently uses the descriptive phrase “pediatric pneumogram” in conjunction with the acronym PPG. The First Circuit recently considered a similar situation in Astra Pharmaceutical Products Inc. v. Beckman Instruments, 718 F.2d 1201, 1209 (1st Cir.1983). The defendant there marketed a blood analysis machine under the mark “ASTRA,” the same mark plaintiff used on its pharmaceutical products. In Astra, the court concluded that appropriation of the goodwill and reputation associated with plaintiff’s mark was a “virtual impossibility.” Id. The court found persuasive the fact that “[t]he Beckman name is printed in full view on its analyzers, and the full name of the analyzer is printed under the ‘ASTRA’ mark.” Id. In the instant case defendant’s use of the identifying tradename “Clinical Data Inc.” and descriptive phrase “pediatric pneumogram” in association with the PPG mark persuades the court that harm to the goodwill and reputation of plaintiff’s mark is unlikely.

The third interpretation of trademark dilution is as “any diminution in the uniqueness and individuality of the plaintiff’s mark resulting from the defendant’s use of a similar mark.” Pignons, 657 F.2d at 495. Callman in his treatise describes this harm as the tendency “to blur a mark’s product identification,” and says the gravamen of a complaint under this interpretation of dilution “is that the continuing use of a mark similar to the plaintiff’s will inexorably have an adverse effect upon the value of the plaintiff’s mark, and that, if he is powerless to prevent such use, the plaintiff’s mark will eventually be deprived of all distinctiveness.” 3A R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 21.11. Regarding this theory, commentators and the First Circuit on at least one occasion have said that no showing of similarity between the products at issue is necessary to sustain a dilution claim. See id. § 21.12 (“Any use of such famous marks as ‘Aunt Jemima,’ ‘Beefeater,’ ‘Budweiser,’ ‘A & P,’ ‘RCA,’ or ‘WOR’ ... for products or services other than the original should be enjoined, whether or not there is any similarity between the goods.”); Pro-phy-lac-tic Brush Co. v. Jordan Marsh Co., 165 F.2d 549, 553 (1st Cir.1948) (“[T]he ‘dilution doctrine’ ... operates to extend the protection of the trademark law to the situation presented when similar marks are used on dissimilar goods_ Thus the doctrine may be invoked to protect the owner of a mark for automobiles and airplanes from the use by another of a very similar mark for radio tubes....”).

However, the First Circuit, in two recent opinions, has shown a reluctance to apply the expansive view of dilution discussed above. The Astra court, in rejecting the dilution claim, focused on the lack of similarity between plaintiff’s and defendant’s products, and thereby seemingly rejected its earlier explication of dilution:

We have already noted that, while the Beckman analyzer and Astra products may be in the same broad health care field, there is sufficient dissimilarity to prevent confusion. For the same reasons, there is sufficient dissimilarity to prevent dilution. If the other registrations and uses of the “ASTRA” mark
have not already diminished the uniqueness of Astra’s mark, Beckman’s use of it on its analyzer will not diminish it, either.

718 F.2d at 1210. And the court in Pig-nons, after noting the existence of the three interpretations of dilution, restricted the dilution doctrine under the facts of that case to the two interpretations already considered: consumer confusion and appropriation of goodwill or reputation. The court said:

Pignons’ claim of dilution thus rests on some kind of supposed incremental harm sustained through Polaroid’s use of a commonplace word, widely associated with many situations and products, where there is shown neither product confusion nor misappropriation of goodwill or reputation. This will not do. We have found no case to support the proposition that an injury so attenuated and speculative is cognizable under the antidilution statute. We are in accord with Judge Aldrich’s comments 26 years ago:
Where dilution of the sort here objected to is inherent in the nature of the mark ... I will not hold that a non-confusing and otherwise proper use of that word in a different mark can be enjoined simply because it may increase plaintiff's instability. Dobeckmun, [Co. v. Boston Packaging Machinery Co.], 139 F.Supp. [321] at 323 [(1955)] (Aldrich, D.J.).

657 F.2d at 494-95 (emphasis added).

Following the First Circuit’s recent, more restricted approach to dilution, the court finds no confusion or appropriation of goodwill or reputation in the instant case. The products at issue are at least as dissimilar as those in Astra, and perhaps more so because they are not even part of “the same broad health care field.” 718 F.2d at 1210. In this regard, the court agrees with the finding made by the Trademark Trials and Appeals Board:

While opposer has shown that its products are used in medical facilities, such as hospitals and laboratories, in connection with the construction and maintenance of those facilities, the fact remains that opposer does not manufacture any product even remotely connected to the treatment of patients while applicant provides a specific, highly technical, specialized service used by pediatric physicians.

Therefore, under the reasoning of Astra, the court finds “sufficient dissimilarity to prevent dilution.” 718 F.2d at 1210.

Even if the court were to apply the more expansive approach to dilution discussed above, it is doubtful that plaintiff could succeed on a dilution claim. First, as already noted, the defendant almost always uses the PPG mark in conjunction with the tradename “Clinical Data Inc.” or the descriptive phrase “pediatric pneumogram.” Such usage would tend to prevent diminution in the uniqueness and individuality of the plaintiffs mark. Furthermore, even in those situations where the descriptive phrase “pediatric pneumogram” is not used in association with the PPG mark, it is likely that a substantial number of the medical professionals using the PPG product are aware of the underlying meaning of the acronym given their general familiarity with acronyms to describe medical equipment and services. Finally, in some jurisdictions, the absence of predatory intent by the more recent user of the name is considered a relevant factor in assessing a claim under an anti-dilution statute, since relief is equitable in origin. Sally Gee, Inc. v. Myra Hogan Inc., 699 F.2d 621, 624 (2d Cir.1983). The parties in this case have stipulated that the letters PPG were selected by defendant’s president as an acronym for pediatric pneumogram. There is no evidence that in selecting this acronym the defendant intended to prey on the identity or reputation of plaintiffs tradename.

For the reasons discussed above, I find that plaintiff has failed to adduce evidence sufficient to succeed on a claim under the Massachusetts Anti-Dilution statute. There is simply not enough evidence to show that defendant’s use of the trademark PPG is likely to dilute plaintiff’s trademark under any of the interpretations of dilution recognized in this circuit. The court finds the same with regard to the PCG trademark, given its even more tenuous relationship to plaintiff’s mark. Accordingly, judgment must enter for the defendant.

SO ORDERED.

      . A pediatric pneumogram is a diagnostic technique that is used for detecting and quantifying apnea (cessation of breathing) and bradycardia (slowing of heart rate) in infants.

      . A pneumo-cardiogram is a diagnostic technique for recording respiration and ECG activity in infants who may be at high risk for SIDS (“sudden infant death syndrome”), commonly known as "crib death.”