RFE Industries, Inc. v. SPM Corp., 95-2665

Citation105 F.3d 923
Decision Date29 January 1997
Docket NumberNo. 95-2665,95-2665
PartiesRFE INDUSTRIES, INCORPORATED, Plaintiff-Appellant, v. SPM CORPORATION, Defendant-Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals (4th Circuit)

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 product from "Popcorn" to "Snowflake." On November 9, 1993, the PTO issued a certificate of registration to RFE for its "Popcorn" trademark, without requiring RFE to submit any proof that the mark had acquired a secondary meaning. See Section III-A, infra.

The PTO's certification failed to convince the district court, which found the "Popcorn" mark, as it pertains to silver anodes, undeserving of protection from infringement. The court's finding necessitated the entry of summary judgment for SPM on three of RFE's four claims; the fourth claim, that for tortious interference with contractual relations, was also held by the district court to be without merit. RFE appeals.

II.

At the threshold, we must determine whether the district court abused its discretion by denying RFE's motion to retransfer the case to the District of New Jersey. See Linnell v. Sloan, 636 F.2d 65, 67 (4th Cir.1980) (stating applicable standard of review).

RFE contends that the case was ripe for retransfer when, during the latter stages of discovery, it finally came to light that SPM had failed to timely disclose its business relationship, beginning in 1990, with Englehard Corporation, a New Jersey wholesaler of silver salts. It was also revealed that SPM had purchased silver from another New Jersey company in November 1992, and that it had sold silver cyanide to a New Jersey customer about a year prior to the February 1994 transfer order.

The district court below observed that, had the district court in New Jersey known of SPM's then-existing contacts with the putative forum state, it nonetheless need not have determined that those contacts were so substantial as to require it to assert personal jurisdiction over SPM. We agree that, even had the New Jersey court been fully apprised of the nature and quality of SPM's contacts, it could have nevertheless exercised its sound discretion to grant the transfer motion.

We note also that RFE failed to demonstrate below that, as of the date it moved for retransfer, it had been or would be prejudiced by being compelled to litigate in Virginia. Moreover, there has been no showing that SPM perpetrated a fraud on the court by intentionally concealing its contacts with New Jersey. In light of the above considerations, we hold that the district court below did not abuse its discretion by denying the motion for retransfer.

III.
A.

We turn now to the merits of RFE's contention that the designation "Popcorn," pertaining to its line of oddly shaped silver anodes, is a mark worthy of legal safeguarding. We have noted previously that the protection accorded such marks is a function of the mark's distinctiveness. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir.), cert. denied, --- U.S. ----, 117 S.Ct. 412, 136 L.Ed.2d 325 (1996). "Fanciful," "arbitrary," or "suggestive" marks are distinctive; marks that are merely "descriptive" or "generic" are not, unless, in the case of the former, the primary significance of the product feature described by the mark is to identify the source of the product, rather than the product itself. Id. Such descriptive marks--Coca-Cola TM, for example--are said to have acquired "secondary meaning" in the minds of the public. Id.

The controversy here, typical of trademark disputes, centers on whether RFE's "Popcorn" mark is suggestive (and therefore distinctive) or merely descriptive. The district court found that the "Popcorn" designation, as applied to silver anodes, "describes a characteristic of the product--its shape or appearance--rather than suggest[s] it." The court found further that "Popcorn" had not acquired a secondary meaning in the silver anode market, identifying RFE as its single source. The district court's findings may be disturbed on appeal only if they are clearly erroneous. Sara Lee at 460; Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1526 (4th Cir.1984).

We agree with the district court that the proper focus in this case is on the product's shape. Any similarity between "Popcorn" anodes and actual popped corn begins and ends with shape; the designation is in no way intended to indicate that RFE's anodes have the color, weight, or texture of popcorn. The question to be answered, then, is the one posed by the district court: Does the term "Popcorn" suggest the anodes' shape, or merely describe it?

We begin by acknowledging that basic, "common" shapes are not generally accorded trademark protection. Wiley v. American Greetings Corp., 762 F.2d 139, 141-42 (1st Cir.1985) ("It is hornbook law that 'ordinary geometric shapes such as circles, ovals, squares, etc., ... are regarded as non-distinctive and protectable only upon proof of secondary meaning.' "), quoting J. Thomas McCarthy, Trademarks and Unfair Competition, § 7:12, at 172; Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 716 F.2d 854, 858 (11th Cir.1983) (quoting McCarthy ).

Our acknowledgment does not, however, end our inquiry. The word "popcorn" is not generally used to denote a shape, much less a common or ordinary one like a circle or square; we doubt, for example, that geometry students are routinely asked to bisect a "popcorn." Moreover, popcorn does not admit of a paradigmatic shape. Like snowflakes (both real and SPM's anode version), it might be said that no two...

To continue reading

Request your trial
13 cases
  • Black & Decker (U.S.) Inc. v. Pro-Tech Power Inc., Civil No. 98-124-A.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • November 16, 1998
    ...imitated this trademark in a way that creates a likelihood of confusion. See Lone Star, 43 F.3d at 930; see also RFE Industries, Inc. v. SPM Corp., 105 F.3d 923, 926 (4th Cir.) (citing Rosso & Mastracco, Inc. v. Giant Food Shopping Center of Virginia, Inc., 200 Va. 159, 104 S.E.2d 776, 781 ......
  • Int'L Bancorp v. Societe Des Bains De Mer
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • May 19, 2003
    ...reviews district court determinations regarding likelihood of confusion under a clearly erroneous standard."); RFE Industries, Inc. v. SPM Corp., 105 F.3d 923, 925 (4th Cir. 1997) ("[The] district court's findings [as to secondary meaning] may be disturbed on appeal only if they are clearly......
  • Zinner v. Olenych, Civil Action No. 2:14cv163.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • June 4, 2015
    ...without a showing of secondary meaning as prima facie evidence that a mark was suggestive, see id. at 818 ; RFE Indus., Inc. v. SPM Corp., 105 F.3d 923, 926 (4th Cir.1997).Having carefully weighed the competing considerations present in the Fourth Circuit's Lanham Act jurisprudence regardin......
  • Bigstar Entertainment, Inc. v. Next Big Star, Inc., 00 Civ. 0911 VM.
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • April 17, 2000
    ...Enterprises, Inc. v. Chuckleberry Publ'g, Inc., 486 F.Supp. 414 (S.D.N.Y.1980), aff'd, 687 F.2d 563 (2d Cir.1982). 7. RFE Indus., Inc. v. SPM Corp., 105 F.3d 923 (4th Cir.), cert. denied, 521 U.S. 1120, 117 S.Ct. 2512, 138 L.Ed.2d 1015 (1997). 8. No Nonsense Fashions, Inc. v. Consolidated F......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT