105 F.3d 923 (4th Cir. 1997), 95-2665, RFE Industries, Inc. v. SPM Corp.

Docket Nº:95-2665.
Citation:105 F.3d 923
Party Name:41 U.S.P.Q.2d 1626 RFE INDUSTRIES, INCORPORATED, Plaintiff-Appellant, v. SPM CORPORATION, Defendant-Appellee.
Case Date:January 29, 1997
Court:United States Courts of Appeals, Court of Appeals for the Fourth Circuit
 
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Page 923

105 F.3d 923 (4th Cir. 1997)

41 U.S.P.Q.2d 1626

RFE INDUSTRIES, INCORPORATED, Plaintiff-Appellant,

v.

SPM CORPORATION, Defendant-Appellee.

No. 95-2665.

United States Court of Appeals, Fourth Circuit

January 29, 1997

Argued Oct. 31, 1996.

Page 924

ARGUED: David Marc Freeman, Nagel, Rice & Dreifuss, Livingston, New Jersey, for Appellant. Michael Francis Urbanski, Woods, Rogers & Hazlegrove, P.L.C., Roanoke, Virginia, for Appellee. ON BRIEF: Bruce H. Nagel, Nagel, Rice & Dreifuss, Livingston, New Jersey; Gentry, Locke, Rakes & Moore, Roanoke, Virginia, for Appellant. Dudley F. Woody, Frank K. Friedman, Paul C. Kuhnel, Woods, Rogers & Hazlegrove, P.L.C., Roanoke, Virginia, for Appellee.

Before WIDENER and HALL, Circuit Judges, and THORNBURG, United States District Judge for the Western District of North Carolina, sitting by designation.

OPINION

K.K. HALL, Circuit Judge:

RFE Industries, Inc., a New Jersey corporation, filed this action against SPM Corporation of Montvale, Virginia, in the district court for the District of New Jersey, alleging that SPM had violated federal and state law by infringing on RFE's "Popcorn" trademark, used by RFE to denote certain of the silver anodes that it manufactures and distributes for use in electroplating. SPM successfully maintained that it was not subject to personal jurisdiction in New Jersey, and the case was transferred to the Western District of Virginia on February 25, 1994. RFE's motion for retransfer was denied by the district court below, and that court subsequently entered a final order granting SPM's motion for summary judgment on all claims. RFE timely filed a notice of appeal.

We conclude that the district court did not abuse its discretion by denying the motion for retransfer, and we affirm its grant of summary judgment to SPM on RFE's state-law claim for tortious interference with contractual relations. We vacate the court's judgment and remand the case with respect to the remaining claims, however, because its finding that RFE's trademark is merely descriptive is clearly erroneous.

I.

Both RFE and SPM supply anodes to the electroplating industry. These anodes are small pieces of metal that, when placed in a plastic or titanium basket, subjected to an electric current, and submerged into a potassium cyanide "bath," ionize, dissolve, and accumulate on the surface to be plated.

RFE developed a process in early 1989 to make silver anodes in shapes that vaguely resemble cereal flakes or, perhaps, popped corn. Later that year, RFE began to market its new product, which it called "Popcorn." In June 1990, RFE applied to register the mark with the United States Patent and Trademark Office (PTO).

During September 1991, SPM began selling the identical product under the same name; it mailed solicitation letters, containing samples of its product, to prospective purchasers. A few of those letters reached some of RFE's customers, one of which forwarded a copy to RFE in March 1992. RFE filed suit soon thereafter, asserting claims for trademark infringement and for unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq. The complaint also alleged state-law claims for infringement and for tortious interference with contractual relations.

Upon learning of the suit, SPM changed the name of its...

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