World Carpets, Inc. v. Dick Littrell's New World Carpets
| Decision Date | 08 February 1971 |
| Docket Number | No. 29873.,29873. |
| Citation | 438 F.2d 482 |
| Parties | WORLD CARPETS, INC., Plaintiff-Appellee, v. DICK LITTRELL'S NEW WORLD CARPETS, Joseph E. Russell et al., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Yale B. Griffis, Dallas, Tex., for defendants-appellants.
V. Bryan Medlock, Jr., D. Carl Richards, Richards, Harris & Hubbard, Dallas, Tex., for plaintiff-appellee.
Before JONES, GEWIN and CLARK, Circuit Judges.
World Carpets, Inc., a Georgia corporation engaged in the manufacture and wholesale distribution of carpets (hereinafter World Carpets), brought this action for infringement of two United States trademark registrations of the mark WORLD against a group of Dallas, Texas carpet retailers (hereinafter collectively, the New World group or New World), who were using the words NEW WORLD CARPETS in the trade name of their businesses. We hold the mark WORLD as applied to World Carpets' goods is not primarily geographically descriptive and therefore is a validly registrable term. We determine the district court correctly found, under the uncontroverted facts, confusing similarity between trademarks used by the parties. We affirm the grant of injunctive relief and remand for further proceedings as to damages.
In 1954, World Carpets first started to use the trademark WORLD in connection with its carpeting products. In 1962, the first of two trademark registrations was obtained from the United States Patent Office. This initial registration was this design:
In 1965, World Carpets obtained a second trademark. The form of this later mark is:
Using these forms of the trademark WORLD, World Carpets has distributed its product to retailers from an interstate network of wholesale subsidiaries, including one located in Dallas, Texas. WORLD was prominently and frequently displayed by World Carpets as part of a comprehensive advertising program aimed at both the retail and wholesale market. Not only did the name appear in the advertisements of well known, nationally circulated publications, but the trademark was also used on tags attached to carpeting, on various miscellaneous business forms, such as invoices, bills of lading and stationery, and on point-of-purchase display items such as clocks, which were provided to retailers of its products.
As late as July, 1965, Contract Carpets, Inc., one of the New World group was selling carpets manufactured by World Carpets bearing the trademark WORLD. In August, 1967, the New World group conducted a contest to choose a new name for all of their retail carpet operations. The name selected comprised two words, NEW WORLD, and its use in the Dallas carpet market commenced on September 9, 1967. The design of New World's trademark appeared in Dallas newspapers in more than one form, but the following example is representative:
All reproductions of the trade name prominently featured the words NEW WORLD CARPETS accompanied by a globe with latitudinal and longitudinal lines. In addition to the newspaper media, further advertising, employing NEW WORLD was broadcast over two Dallas radio stations as part of a campaign designed to stimulate retail sales in and around Dallas, where all five of the New World group's retail outlets were located.
Shortly after the New World group began thus publicly vaunting their wares, World Carpets requested that they cease using this newly selected name. This request was prompted primarily by complaints from World Carpets' Texas retailers who believed that World Carpets had entered the retail market. World Carpets was concerned because it had previously found it economically advantageous to refrain from participating in any retail activity in order to retain the good will of its independent retail customers.
Despite World Carpets protestations, the New World group continued with their advertising campaign and erected billboards at their five business locations, whereupon WORLD commenced this action. In November, 1967, after a hearing on a temporary injunction, the trial court enjoined the use of the trade name NEW WORLD. New World complied and the case proceeded to trial before a jury. At the close of the evidence, World Carpets moved for a directed verdict. The motion was denied and the jury was instructed to decide whether likelihood of confusion between the trademarks had been shown. Unfortunately, during the jury's deliberations, a juror's inquiry to the judge made it evident that the juror had entered into his own independent investigation of the law of the case. A mistrial was declared. World Carpets moved for a summary judgment, however the trial judge ultimately reversed his prior ruling and directed a verdict in favor of World Carpets. An order was entered permanently enjoining the defendants from using the word WORLD on any symbol representing the world or a globe in connection with the sale of carpeting or floor covering. The issue of damages flowing from the infringement was severed and reserved for later decision. It is not before the court on the present appeal.
The New World group appeals from this injunction. Although twelve issues are assigned for review, in order for New World to prevail, several key points must first be favorably resolved. These key points are: (1) Whether the trademark WORLD as here applied is primarily geographically descriptive and hence unregisterable (2) whether the utilization of NEW WORLD (with a globe symbol) by a local carpet retailer is so dissimilar in meaning and so lacking in competitive features from the use of WORLD (with a globe symbol) by an interstate carpet wholesaler-manufacturer that confusion could not result; (3) whether the purely intrastate retail business of the New World group could create an actionable infringement of a federally registered trademark; and (4) whether the trial judge erred in directing a verdict in favor of World Carpets.
Relying upon 15 U.S.C.A. § 1052(e) (2) (1963), the New World group contends that the manufacturer's trademark WORLD is a geographical term and therefore not registerable. The pertinent portions of Section 1052 provide:
New World asserts that registration of WORLD is proscribed by the above Code section since WORLD is nothing more than a geographic term capable of exact definition. We disagree.
It is plain that the congressionally established prohibition against registration of geographical names or terms basically stems from the realization that most terms in the vocabulary of this science are generic or descriptive. Thus, Congress has expressly left accessible to all potential users those names of subdivisions of the earth — regions, nations, counties, towns, rivers, lakes, and other natural and artificial geographical units — which could be employed to draw public attention to the origin of a product or the situs of a business. It would obviously promote unfair competition to proscribe for all save a single producer the name of a region and thereby preclude other producers of the same product in the same region from indicating their product's origin.1 The danger of mischievous monopolies is doubly acute since the place of a product's origin often has come to suggest particular qualities or attributes. One can easily see either the danger of permitting an Idaho potato grower to appropriate that State's name to his exclusive use, or the unfairness of allowing a French couturier to register the word French and preclude others from referring to this elegant origin of their clothing line.2
At the same time the wording of the statute makes it plain that not all terms which are geographically suggestive are unregisterable. There are certain words, which while containing the germ of geographic significance, cannot be identified with any specific geographic unit or are not used in a descriptive sense and hence do not fall within the ambit of proscribed trademarks. Indeed, the statutory language declares nonregisterable only those words which are "primarily geographically descriptive." The word "primarily" should not be overlooked, for it is not the intent of the federal statute to refuse registration of a mark where the geographic meaning is minor, obscure, remote, or unconnected with the goods.3 Additionally, it has been noted that a mark is not primarily geographically descriptive if (1) it does not identify the place or the region from which the goods come, or (2) it does not suggest that the goods come from the place or region named by the mark.4
Examining past precedents, we see some noteworthy guide posts which have applied the above principles and have allowed the registration of geographical terms which are either too general in meaning or are not used in a descriptive fashion. The terms "Dixie"5 and "Spice Islands"6 have been allowed registration, notwithstanding their geographical implications since these two terms were not intended to signify the place of origin or distribution. The term "Allstate", while conceivably a geographical reference, lacks sufficient specificity to identify it with any particular geographical unit and therefore enrollment is allowed.7 Such a word is of a similar cast to "National" and "International", which a leading text writer points out, are nationwide or worldwide in scope, and therefore are not really geographical terms at all.8
To this category of registerable words can be added WORLD — a term far too broad to suggest any identifiable unit or place of origin. Nor can it be said that the term is used in a descriptive fashion, for it neither relates to the place of origin of the goods...
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