U.S. Jaycees v. San Francisco Jr. Chamber of Commerce

• Decision Date: 21 March 1975
• Docket Number: No. 73-1451,73-1451
• Citation: 513 F.2d 1226
• Parties: UNITED STATES JAYCEES, a Missouri Corporation, et al., Plaintiffs-Appellees, v. SAN FRANCISCO JUNIOR CHAMBER OF COMMERCE, a California Corporation, et al., Defendants-Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1226

513 F.2d 1226

185 U.S.P.Q. 257

UNITED STATES JAYCEES, a Missouri Corporation, et al Plaintiffs-Appellees, v. SAN FRANCISCO JUNIOR CHAMBER OF COMMERCE, a California Corporation, et al., Defendants-Appellants.

No. 73-1451.

United States Court of Appeals Ninth Circuit.

March 21, 1975.

As Amended on Denial of Rehearing May 1, 1975.

H. Paul Breslin (argued), San Francisco, Cal., for appellant.

John P. Sutton (argued), of Limbach, Limbach & Sutton, San Francisco, Cal., for appellee.

Before MERRILL, ELY and INGRAHAM, ^* Circuit Judges.

OPINION

PER CURIAM:

The judgment is affirmed on the basis of the district court's opinion, United States Jaycees v. San Francisco Jr. Cham. of Com., 354 F.Supp. 61 (N.D.Cal.1972).

Affirmed.

ELY, Circuit Judge (concurring):

I agree that the judgment of the District Court must be affirmed. Its opinion is carefully reasoned, but I wish to add a few words of my own.

The dissenting opinion of my Brother Merrill is entirely correct in noting that a term that is generic (the name of a product or service itself) cannot function as a trademark to indicate origin. Thus, for example, while "Dial" or "Ivory" or "Lifebuoy" can function as trademarks, the word "soap" cannot. The test is "what does the public think the word connotes the generic name of the product or a mark indicating merely one source of that product?" 1 J. McCarthy, Trademarks and Unfair Competition 407 (1973) (footnote omitted). From this premise my dissenting Brother reasons that because the term "chamber of commerce" is listed in Webster's Dictionary (defined as a group of businessmen united to promote the commercial and industrial interests of a community, state or nation), the term "Junior Chamber of Commerce" is a generic term used in a common descriptive sense. Even if a secondary meaning attaches to a generic term, argues the dissent, it is still not protectible.

The appellant's position in the District Court was that the term "Junior Chamber of Commerce" was "descriptive" and "generic." (354 F.Supp. at 74.) However, the District Court found that "as applied to these civic improvement services, the designations 'Junior Chamber of Commerce,' 'Junior Chamber,' 'Jaycees,' and 'J.C.'s' indicate to the public that the civic services associated with these designations emanate from either National, its component state organizations including State, its affiliated local chapters, or individual members acting on behalf of one of the affiliate organizations." 354 F.Supp. at 76.) ¹

To me it seems clear that the term "Junior Chamber of Commerce" does refer to the specific source of a "product" (the National/Jaycees), and is not commonly understood as merely a generic term describing any group of young men pursuing civic betterment.

In conclusion, I note that if the dissenting opinion were the law, then any new group in San Francisco could adopt the "Junior Chamber of Commerce" appellation, provided the additional users added some "distinguishing" qualification to "avoid confusion." (E. g., it can be imagined that new groups calling themselves such names as the "Chicano Junior Chamber of Commerce," the "White-American Junior Chamber of Commerce," and the "Marxist Junior Chamber of Commerce" could all spring up.) To allow any and every such new organization to so misappropriate the goodwill and prestige established over the years by the National organization would, I submit, be manifestly wrong.

MERRILL, Circuit Judge, dissenting:

This is an action arising under the trade-mark laws. Appellees United States Jaycees and California State Junior Chamber of Commerce have alleged infringement of certain registered marks and unfair competition by appellant, San Francisco Junior Chamber of Commerce, ¹ with jurisdiction conferred by 28 U.S.C. § 1338. Upon appeal the only issue of moment is the contention of appellees that they have a common-law right to exclusive use of the unregistered name "Junior Chamber of Commerce."

Conceding that such name is not inherently distinctive, but is descriptive (and thus was not entitled to protection immediately upon adoption and use), appellees contend that distinctiveness has been acquired through the attaching of secondary meaning. They alleged:

"Plaintiffs have extensively advertised and publicized the name and mark 'Junior Chamber of Commerce' and variations thereof throughout the United States and the State of California. * * *

Plaintiffs' organization and its member organizations have met with widespread popular approval and as a result of the extensive advertising and publicized activities, the names, marks and designations 'Junior Chamber of Commerce', 'Jaycees', and 'J.C.'s' and variations thereof have come to mean and are understood throughout the United States, including the State of California and the City of San Francisco, to mean Plaintiffs and their member organizations only."

The Junior Chamber of Commerce movement began in St. Louis, Missouri, in 1915, when a group of young men organized under the name of the "Young Men's Progressive Civic Association." The name was later changed to "Junior Citizens." In 1918 the association affiliated with the St. Louis Chamber of Commerce and officially became known as the Junior Chamber of Commerce. In 1920 the "United States Junior Chamber of Commerce" was organized and, with the passage of time, has become a fully integrated organization made up of state divisions and local chapters. It operated continuously under that name until 1965, when the name was changed to "United States Jaycees." ² The movement has now become worldwide. In 1926 appellee California State Junior Chamber of Commerce was organized; it was chartered by the national organization on January 15, 1927.

Appellant San Francisco Junior Chamber of Commerce was originally organized as a division of the San Francisco Chamber of Commerce in October, 1927. It has been in existence under that name ever since. ³ In 1928 it affiliated with the California state organization. In 1930 it affiliated with the national organization.

In 1970 appellant disaffiliated from the state and national organizations. The district court found that its reasons for doing so were "primarily because the majority of its members felt that they did not receive sufficient value for the dues paid to plaintiffs, and also because of disagreement with National with respect to philosophy and public positions taken by National." United States Jaycees v. San Francisco Junior Chamber of Commerce, 354 F.Supp. 61, 64 (N.D.Cal.1972). Appellant's charters of affiliation were then revoked by both National and State.

This suit was brought in October, 1970. After submission of affidavits and exhibits the district court granted summary judgment to appellees enjoining appellants from continuing to use:

"1. The name or designation, 'San Francisco Junior Chamber of Commerce,'

2. The abbreviation of that name, 'SFJCC,'

3. The designation 'Junior Chamber of Commerce,'

4. The designation 'Junior Chamber,'

5. The designation 'Jaycees,'

6. The designation 'Jaycee,'

7. The designation 'J.C.'s,' and

8. The designation 'J.C.' "

Id. at 78-79 (footnote omitted).

I concern myself with the first four appellations. As to them I cannot accept this result.

The district court found as fact that the words "Junior Chamber of Commerce," as applied to civic improvement services such as those performed by appellees, had come to indicate to the public that such services emanate from National, its affiliated state and local organizations, or individual members of such organizations. Id. at 66. It concluded from this that secondary meaning had attached to the term identifying it with the appellees and giving to appellees the exclusive right to use of the term. Id. at 67-68. I regard the finding as open to serious question. However, even accepting the finding, I would hold the conclusion to be error.

The weakness of "junior chamber of commerce" is not that it is a descriptive term lacking distinctiveness, but still capable of acquiring distinctiveness through the attaching of secondary meaning. It is, and was when first used by appellees, a generic term, used in its generic sense as a "product name" name of the type of product or, as here, type of organization or service rather than as a term indicating source or origin of the "product." As such it was not, under any circumstances, subject to exclusive appropriation.

In 1 J. McCarthy, Trademarks and Unfair Competition 405-06 (1973), it is stated:

"The name of a product or service itself what it is is the very antithesis of a mark. In short a generic name of a product can never function as a trademark to indicate origin. The terms 'generic' and 'trademark' are mutually exclusive. * *

* * * Thus, if, in fact, a given term is 'generic', it can never function as a mark to identify and distinguish the products of only one seller. * * *

Generic names are regarded by the law as free for all to use." (footnote omitted)

The author states that the essential question in determining whether a term is being used in a generic sense is: "what does the public think the word connotes the generic name of the product or a mark indicating merely one source of that product?" Id. at 407 (footnote omitted).

The fact that a term is to be found in the dictionary as a product name is not, of course, determinative. Its presence in a dictionary suggests that it has an accepted meaning; that generic sense attaches to it. But a dictionary term can be used in such a sense wholly apart from its recognized meaning as to constitute an inherently distinctive mark. It is the sense in which the term is used that is determinative. If used in its generic sense in accord with its accepted meaning (that meaning being a product name) it cannot attain the status of a mark at all. McCarthy states:

"A mark answers the buyer's question 'Who are you? Where do you come from ?'. But the name of the product answers the...