Master Distributors, Inc. v. Pako Corp.

Decision Date12 November 1991
Docket NumberNo. Civ. 4-91-507.,Civ. 4-91-507.
Citation777 F. Supp. 744
PartiesMASTER DISTRIBUTORS, INC., a New Hampshire corporation, Plaintiff, v. PAKO CORPORATION, a Delaware corporation and Pakor, Inc., a Minnesota corporation, Defendants.
CourtU.S. District Court — District of Minnesota

Donald W. Niles, Edward F. Fox, Jonathan C. Miesen, Doherty, Rumble & Butler, St. Paul, Minn., for plaintiff.

David R. Fairbairn, Thomas J. Stueber, Kinney & Lange, Minneapolis, Minn., for defendants.

MEMORANDUM AND ORDER

MacLAUGHLIN, District Judge.

This matter is before the Court on defendants' motion for partial summary judgment. The motion will be granted.

FACTS

Plaintiff Master Distributors, Inc. (MDI) manufactures and sells leader splicing tape under the trademark "Blue Max." Leader splicing tape is a product used by minilabs in processing photographic film. The tape is used to attach undeveloped film to leader cards. The leader cards with the film attached are then fed through minilab photo-processing machines, which develop the film, make negatives and print the photographs.

Blue Max was developed by Charles Dolan, the president of MDI, in response to the need in the minilab industry for a tape suited for use in minilab photoprocessing machines. Pl.'s Mem. in Opp. to Summ. J., Aff. of Charles Dolan ¶ 5. The dye that colors the tape is mixed into the adhesive, which is then applied to a transparent plastic film; thus, the tape can be made in any color, and the color of the tape does not affect its function. Dolan Aff. ¶ 12.

On July 13, 1984, MDI filed its trademark for Blue Max; the trademark incorporates the color blue. Dolan Aff. ¶ 5 and Ex. 1. MDI does not claim a registered trademark in the color blue by itself; however, Blue Max tape is blue in color and MDI emphasizes the blue color in marketing the tape. Distributors and consumers of leader splicing tape often order Blue Max by asking for "the blue tape," or simply for "blue." Pl.'s Mem. in Opp. to Summ. J., Dolan Aff. ¶ 8, Aff. of Dennis Liddell ¶ 6, Aff. of Jerry Vaniman ¶ 6; Aff. of Eve Dolan ¶ 5, Aff. of Nando Mastrodicasa ¶ 5. Blue Max tape is well-known and enjoys a reputation as the industry standard. See Dolan Aff. ¶ 6, Liddell Aff. ¶ 5, Vaniman Aff. ¶ 4, Eve Dolan Aff. ¶ 4; Defs.' Mem. in Supp. of Summ. J., Aff. of Thomas J. Nicoski, Ex. 1. However, Blue Max has substantial competition in the marketplace. Leader splicing tape is available in numerous colors from various manufacturers; in addition to Blue Max, there are at least nine different brands of blue leader tape on the market. Nicoski Aff. ¶ 11, 12 and Ex. 3-15.

Defendant Pakor, Inc. (Pakor) is a wholly-owned subsidiary of defendant Pako Corp. Pakor is a distributor of photographic supplies, including leader splicing tape. From April 1989 to sometime in 1991, Pakor was one of MDI's distributors and had a nonexclusive right to sell Blue Max in the Midwest. Dolan Aff. ¶ 10. In January of 1991, Pakor began selling its own brand of leader splicing tape; the tape is blue in color and is sold under the trademark "Pakor Blue." Nicoski Aff. ¶ 10. Initially, Pakor's tape did not have an identifying label directly printed on its cardboard core. Dolan Aff. ¶ 10. Now, however, the core bears the label "Pakor Blue" and displays Pakor's toll-free telephone number. Nicoski Aff. ¶ 10.

In February 1991, MDI learned about Pakor's blue leader splicing tape and became concerned that Pakor's product would be sold to customers who asked for "blue tape," or that customers would assume that Pakor Blue was an authorized private label brand of Blue Max. MDI therefore filed this suit, alleging infringement of its registered trademark, infringement of its common law trademark in the color blue, illegal "palming off," unfair competition, dilution of trademark, deceptive trade practices, false statements in advertising, and unlawful trade practices.

Defendants have moved for partial summary judgment on plaintiff's claims insofar as they allege causes of action based upon common law trademark rights in the color blue. As the Court reads the complaint, however, only two counts assert trademark rights in the single color blue: Count II, alleging infringement of MDI's common law trademark in the color blue as used in leader splicing tape, and Count V, alleging "dilution of MDI's marks." Compl. ¶ 18, 21. Therefore, the Court will treat defendants' motion as moving for summary judgment on Count II in its entirety and for summary judgment on Count V insofar as it claims dilution of a common law trademark in the color blue.

DISCUSSION

A movant is not entitled to summary judgment unless the movant can show that no genuine issue exists as to any material fact. Fed.R.Civ.P. 56(c). In considering a summary judgment motion, a court must determine whether "there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). The role of a court is not to weigh the evidence but instead to determine whether, as a matter of law, a genuine factual conflict exists. AgriStor Leasing v. Farrow, 826 F.2d 732, 734 (8th Cir.1987). "In making this determination, the court is required to view the evidence in the light most favorable to the nonmoving party and to give that party the benefit of all reasonable inferences to be drawn from the facts." AgriStor Leasing, 826 F.2d at 734. When a motion for summary judgment is properly made and supported with affidavits or other evidence as provided in Fed.R.Civ.P. 56(c), then the nonmoving party may not merely rest upon the allegations or denials of the party's pleading, but must set forth specific facts, by affidavits or otherwise, showing that there is a genuine issue for trial. Lomar Wholesale Grocery, Inc. v. Dieter's Gourmet Foods, Inc., 824 F.2d 582, 585 (8th Cir. 1987), cert. denied, 484 U.S. 1010, 108 S.Ct. 707, 98 L.Ed.2d 658 (1988). Moreover, summary judgment must be entered against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986).

Defendants base their motion for partial summary judgment on the assertion that, as a matter of law, plaintiff cannot assert trademark rights in the color blue and thereby preclude competitors from making blue leader splicing tape. Plaintiff opposes summary judgment on the ground that a color mark is no different from any other mark, and that under the common law of trademarks MDI can claim trademark rights in the color blue if the color has become so associated with MDI's leader splicing tape that the color has acquired a secondary meaning. Plaintiff asserts that whether MDI has attained a common law trademark in the color blue under the doctrine of secondary meaning is a genuine issue of material fact precluding summary judgment.

Prior to 1985, the settled law was that although color could be protected as an essential element of a trademark or trade dress, a single color alone could not be appropriated as a trademark. Thus, the use of color could be protected as part of an arrangement of colors, symbols or words, but a seller could not feature a particular color and prohibit others in the trade from using that color.1 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 7:16 at 213 (2d ed. 1984) (citations omitted). In 1985, however, the United States Court of Appeals for the Federal Circuit held that an insulation manufacturer could register a trademark in the single, overall color of a product. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed.Cir.1985).

In Owens-Corning, a manufacturer attempted to register the color pink as a trademark for residential insulation. The registration was denied, and the Trademark Trial and Appeal Board affirmed the denial on the ground that the manufacturer had not demonstrated that the color pink was distinctive of its goods. The manufacturer appealed the board's decision to the Federal Circuit, which reversed the board's decision. The court held that the manufacturer had demonstrated that pink had obtained a secondary meaning as a mark identifying its goods. In reaching this result, the court also specifically rejected the traditional rule that trademark rights could not be claimed in a single color.

The court noted that the Trademark Act of 1946, 15 U.S.C. § 1051 et seq. (the Lanham Act), liberalized the federal law of trademarks, defining as a trademark "any word, name, symbol, or device ... adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." Owens-Corning, 774 F.2d at 1119 (quoting 15 U.S.C. § 1127). The court observed that in accordance with this definition and the policy of liberality, trademark registration gradually "became available to many types of previously excluded indicia," such as containers, product configurations, slogans and sounds. Id. at 1119.

Because trademark protection had already been afforded to combinations of colors and to combinations of color and design, the court saw no impediment to extending trademark registration to a single color, provided that the statutory requirements for registration had been met. In reaching this conclusion, the court brushed aside two traditional rationales for precluding trademark protection for single colors. The first rationale dismissed by the Owens-Corning court was the color depletion theory, which holds that because there are a limited number of colors in the palette, allowing manufacturers to monopolize certain colors would hinder competition. While the court did not reject this theory for "appropriate application," it reasoned that applying the theory as a per...

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1 cases
  • Master Distributors, Inc. v. Pako Corp.
    • United States
    • U.S. Court of Appeals — Eighth Circuit
    • 5 Abril 1993
    ...competitors would be precluded from entering an industry once all colors are used and protected, applies to this situation. 777 F.Supp. 744, 749-50 (D.Minn.1991). We reverse and remand for further MDI manufactures and sells "Blue Max," a blue 1 leader splicing tape, which is used to attach ......

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