Textron, Inc. v. U.S. Intern. Trade Com'n

• Decision Date: 24 January 1985
• Docket Number: No. 84-1261,84-1261
• Citation: 224 USPQ 625,753 F.2d 1019
• Parties: , 224 U.S.P.Q. 625, 3 Fed. Cir. (T) 72 TEXTRON, INC., Appellant, v. U.S. INTERNATIONAL TRADE COMMISSION, Appellee, 18 Taiwanese, Intervenors, Alliant Machine Tool Corporation, and Yeong Chin Machinery Industries Co., Ltd., et al., Intervenors. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1019

753 F.2d 1019

6 ITRD 1742, 224 U.S.P.Q. 625, 3 Fed.

Cir. (T) 72

TEXTRON, INC., Appellant, v. U.S. INTERNATIONAL TRADE COMMISSION, Appellee 18 Taiwanese, Intervenors Alliant Machine Tool Corporation, and Yeong Chin Machinery Industries Co., Ltd., et al., Intervenors.

Appeal No. 84-1261.

United States Court of Appeals Federal Circuit.

Jan. 24, 1985.

George M. Sirilla, Cushman, Darby & Cushman, Washington, D.C., argued for appellant Textron. With him on brief were Robert W. Adams, Michael L. Keller, James T. Hosmer and Bryan H. Davidson, Washington, D.C.

Catherine Field, U.S. International Trade Commission, Washington, D.C., argued for appellee ITC. With her on brief were Michael H. Stein, Gen. Counsel and Michael P. Mabile, Asst. Gen. Counsel, Washington, D.C.

David Simon, Bregman, Abell, Kay & Simon, Washington, D.C., argued for intervenor 18 Taiwanese.

John P. Dean, Donovan, Leisure, Newton & Irvine, Washington, D.C., argued for intervenor Alliant Machine Tool Corporation. With him on brief was John J. McGrath, Jr., Washington, D.C.

Vern Schooley, Fulwider, Patton, Rieber, Lee & Utecht, Long Beach, Cal., argued for intervenor, Yeong Chin Machinery.

Before KASHIWA, Circuit Judge, COWEN, Senior Circuit Judge, and BISSELL, Circuit Judge.

COWEN, Senior Circuit Judge.

Textron, Inc. (Textron) appeals from an International Trade Commission (ITC or Commission) determination that no violation of section 337 of the Tariff Act of 1930 took place in the importation from Taiwan of vertical milling machines, parts, accessories, and attachments thereto by certain firms. Specifically, Textron claims that the ITC erred in determining that it had no common law trademark in the external appearance

of the Bridgeport Series I vertical milling machine or any portion thereof, that its asserted mark was not infringed, and that the domestic industry had not been substantially injured by those acts found to be unfair. For the reasons set forth, we affirm.

I.

The subject matter of this case--the Bridgeport Series I vertical milling machine--is pictured herein, with its component parts labeled.

It is a metal cutting machine manufactured by Textron, used to produce machined surfaces on metal by means of rotary milling cutters. It weighs approximately one ton and sells for about $6,000. The original Bridgeport vertical milling machine (similar in appearance to the present model) was designed in 1938, with a significantly different configuration from those designs then existing on the market. A number of changes have been made in the design of the machine since that time, but its general external appearance has remained essentially the same since the 1950's.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The Bridgeport machine achieved remarkable success almost immediately after its introduction, and has held a dominant position in the vertical milling machine market for many years. The Bridgeport Series I has long been generally regarded as the standard for its size and weight in the machine tool industry--so much so that vertical milling machines of its size are often referred to as "Bridgeport-type" machines. The word "Bridgeport" has long been a federally registered trademark, and it appears prominently in bold script on the head and ram of the machine.

A small number of Bridgeport-type milling machines were imported into the United States from Taiwan as early as 1975. Many of the Taiwanese imports had a strikingly similar appearance to the Bridgeport Series I, and several had similar names, such as Kingport, Millport, Newport, and Hartford. In general, the Taiwanese machines had their names marked prominently thereon, in addition to the statement that they were made in Taiwan.

In the late 1970's, imports of the Taiwanese machines increased sharply. The Bridgeport Series I experienced no significant decline in sales, however, until 1982, when both its domestic sales and its market share declined sharply. In October 1982, Textron filed a complaint with the ITC, alleging that 43 firms committed unfair acts and substantially injured the domestic industry by importing into the United States the look-alike Taiwanese machines, thereby violating section 337. Textron's principal allegation was that it had a common law trademark in the overall configuration of the machine, which was infringed by a number of firms. This allegation marked the first time Textron had claimed that the Series I configuration constituted a trademark. Textron also alleged that certain firms committed other unfair acts such as infringement of its federally registered word marks "Bridgeport" and "Quill Master," false advertising, passing off, and trademark dilution.

After a hearing in which Textron and representatives of the 34 remaining respondent firms ¹ presented evidence, an ITC administrative law judge (ALJ) made an initial determination that 20 of the firms had violated section 337. In particular, the ALJ found that:

1. Eleven respondents had engaged in false advertising by using photographs of the Bridgeport Series I in their sales literature;

2. Sixteen respondents had engaged in passing off their machines as Bridgeports;

3. Textron's registered trademark "Quill Master" had been infringed by one respondent in connection with an attachment to vertical milling machines.

4. Textron's registered trademark "Bridgeport" had been infringed by one respondent which manufactured a machine it called "Bigport";

5. One respondent falsely advertised that its vertical milling machine had patent protection; and 6. Respondents' unfair acts had the effect or tendency to substantially injure the domestic industry.

Additionally, the ALJ found that the remaining 14 respondents had not violated section 337, because Textron had not proven common law trademark infringement, trademark dilution, or misappropriation of shape, design and trade dress.

Upon review, the ITC unanimously determined that none of the respondents had violated section 337. Although the Commission disagreed with a number of subsidiary findings of the ALJ (some of which will be discussed below), it affirmed the initial determination of the ALJ that no common law trademark infringement took place. ² The Commission also agreed with the ALJ that certain respondents had engaged in false advertising under section 43(a) of the Lanham Act, but disagreed with her finding that 16 respondents had engaged in passing off. Additionally, the ITC found that although Textron suffered a dramatic loss of sales in 1982, it had failed to prove that those acts of the respondents found to be unfair--false advertising and infringement of the "Bridgeport" and "Quill Master" registered trademarks--caused substantial injury to the domestic industry.

Textron then appealed to this court, raising the following issues:

1. Whether a common law trademark exists in the overall appearance of the Bridgeport Series I, or any portion thereof;

2. Whether, if such a common law trademark exists, it was infringed by respondents (22 of whom have intervened in this appeal); and

3. Whether the effect or tendency of those acts deemed unfair has been to destroy or substantially injure the relevant domestic industry.

II.

The ITC's finding that no common law trademark existed in the overall configuration of the Bridgeport Series I was premised on Textron's failure to show that the machine's overall appearance was inherently distinctive or had acquired secondary meaning. In its discussion relating to secondary meaning (an association in buyers' minds between the alleged mark and a single source of the product), the Commission found that Textron's most significant pertinent evidence--the results of a survey--should be given little weight. The survey, conducted by a well known expert in the field of survey evidence, presented photographs of three different milling machines to 281 individuals who were asked whether they could identify the maker of the machines. One photograph in the survey was of a machine made by Yeong Chin of Taiwan, which appears to be nearly identical to the Bridgeport Series I. The other two photographs in the survey were of machines made by other manufacturers with considerably different appearances, which were used as controls. The labels of each of the machines were not visible in the photographs.

Survey respondents were selected throughout the United States from employees of machine shops who were familiar with vertical milling machines, which shops either owned or planned to own such machines within the next year or so. First, respondents were asked if they could identify the machine. If they answered in the affirmative, they were asked who made the machine, and why they gave this answer. Approximately 61 percent identified the Yeong Chin look-alike as a Bridgeport.

                Only 15 and 16 percent, respectively, identified the controls as a Bridgeport.  These results compare favorably with results achieved in a number of cases which have found secondary meaning for the products in question, largely on the basis of survey evidence.   See, e.g., Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 82, 216 USPQ 102, 106 (3d Cir.1982) (40 percent recognition);  Monsieur Henri Wines v. Duran, 204 USPQ 601, 605 (TTAB 1979) (37 percent recognition)
                

The Commission made a number of criticisms of the survey, which in its view justified placing little weight on the results. It agreed with the ALJ that the use of a photograph of the Yeong Chin look-alike, rather than a picture of the Series I itself, was critical, because Textron had not clearly identified the essential features of its claimed trademark. Yet the Yeong Chin machine concededly has the same overall configuration as the Series I, which in itself constitutes the principal trademark claimed by Textron. We see no reason why a look-alike item containing the same features as the claimed trademark cannot be used as a model in a...