Sno-Wizard Mfg., Inc. v. Eisemann Products Co.
| Decision Date | 11 June 1986 |
| Docket Number | SNO-WIZARD,No. 84-3755,84-3755 |
| Citation | 791 F.2d 423 |
| Parties | MANUFACTURING, INC., Plaintiff-Appellant/Cross-Appellee, v. EISEMANN PRODUCTS COMPANY, et al., Defendants-Appellees/Cross-Appellants. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Keaty & Keaty, David M. Kelly, Thomas S. Keaty, McGlinchey, Stafford, Mintz, Cellini & Lang, Donald R. Mintz, New Orleans, La., for plaintiff-appellant/cross-appellee.
C. Emmett Pugh, Wayne A. Collier, New Orleans, La., for defendants-appellees/cross-appellants.
Appeals from the United States District Court for the Eastern District of Louisiana.
Before GEE, RANDALL and GARWOOD, Circuit Judges.
Sno-Wizard Manufacturing, Inc., claiming that Eisemann Products Company and others violated provisions of Louisiana state law and Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), sought injunctive relief and damages from the district court. The district court found for Eisemann Products Company. Both parties appeal. We affirm.
George R. Ortolano built his first Sno-Wizard snowball machine in 1937. The Sno-Wizard snowball machine is capable of producing shaved ice for the dessert known as a snowball. The snowball consists of ice shavings, usually in a paper cone, covered with flavored syrups. The Sno-Wizard snowball machine's components include a stainless steel rectangular cabinet with a small Daytona motor mounted atop the right end. Attached to the motor is a belt running downward to a shaft connected to several blades which rotate when the motor is operating. After block ice is placed in the cabinet by the operator, a ratchet bar on the left side of the machine feeds the ice into the cutter head on the right side of the machine. When the blades cut into the ice, the shavings are discharged from a chute on the right side of the machine. The cabinet is supported by cast iron legs attached to its bottom. The door to the cabinet is also made of cast iron and has bold raised letters which read: "ORTOLANO'S SNO-WIZARD, SNO-WIZARD MFG. CO., NEW ORLEANS, LA., PATENT PENDING."
Ortolano incorporated his business in 1978 as Sno-Wizard Manufacturing, Inc. ("Sno-Wizard"), and sold the business on May 8, 1981, to Ronald Sciortino. The Sno-Wizard snowball machine was manufactured by Ortolano until the business was sold; Sciortino has continued to manufacture the machine. Although Ortolano's patent application was rejected in 1942, the door of the machine nevertheless continues to bear the words "PATENT PENDING."
In 1979, after learning that no patent was pending, Hilda J. Eisemann and Craig Collier (through Craig Collier Enterprises) (hereinafter known collectively as "Eisemann") copied the configuration of the Sno-Wizard machine. The Eisemann machine is identical to the Sno-Wizard machine except for some minor differences in belt guards, and the language affixed to the cast iron door, which reads:
Sno-Wizard registered its logo with the Louisiana Secretary of State on May 9, 1979, and Eisemann registered the Eisemann logo on July 25, 1983. Both machines are sold in interstate commerce, with the price of the Eisemann machine hovering at $1095, and the price of the Sno-Wizard ranging from $1395 to $1430.
Sno-Wizard filed a complaint for false representation under Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), claiming that Eisemann, by selling a snowball machine with the same outward configuration as the Sno-Wizard machine, was representing its machine to be the Sno-Wizard. Sno-Wizard also alleged violations of Louisiana state law. After an evidentiary hearing, the district court denied Sno-Wizard's motion for a preliminary injunction. A trial on the merits on both the issues of liability and damages was held before the district court in May 1984. The district court dismissed Sno-Wizard's federal trade dress infringement claim, finding that the design was non-functional and non-distinctive, that the trade dress had not acquired secondary meaning, and that no likelihood of confusion had been established. The district court also found Sno-Wizard unable to prevail on its state law claims. Sno-Wizard now appeals the adverse decision to this court, and Eisemann has filed a cross-appeal addressing the district court's finding that the Sno-Wizard machine configuration was non-functional and the district court's refusal to allow Eisemann's expert witness to testify on the issue of functionality.
Section 43(a) of the Lanham Act establishes a "sui generis" federal cause of action for false representation. 1 Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 702 (5th Cir.1981), cert. denied, 457 U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342 (1982). To determine whether a plaintiff has sustained a cause of action under Sec. 43(a), we must make two inquiries: (1) whether the product configuration or trade dress qualifies for protection; (2) whether the protected product configuration or trade dress has been infringed. See Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 425 (5th Cir.1984). The first inquiry, whether the dress qualifies for protection, encompasses the issues of functionality, distinctiveness and secondary meaning. Id. 2 The second inquiry, whether the protected dress has been infringed, is answered by applying a digits of confusion test to decide whether a likelihood of confusion exists. This latter inquiry is the key to finding a violation of Sec. 43(a). We must determine "whether the defendant is passing off his goods ... as those of the plaintiff by virtue of substantial similarity between the two, leading to confusion on the part of potential customers." Chevron, 659 F.2d at 703 (quoting Sun-Fun Products, Inc. v. Suntan Research & Development, Inc., 656 F.2d 186, 192 (5th Cir.1981)). The "question of remedy arises only after a court finds infringement of a protected property interest by another product's dress or mark that will likely confuse the consuming public as to source." Sicilia, 732 F.2d at 425.
The district court found the Sno-Wizard configuration non-functional 3 and not foreclosed from trademark protection under Sec. 43(a). The court determined that the configuration was not distinctive 4 and thus addressed whether the Sno-Wizard machine had acquired secondary meaning. As noted above, the prime element of secondary meaning is "a mental association in buyers' minds between the alleged mark and a single source of the product." Sicilia, 732 F.2d at 425 n. 4. The district court concluded that Sno-Wizard failed to establish secondary meaning. A finding of secondary meaning is factual and we will not overturn it unless clearly erroneous. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 794 (5th Cir.1983).
We do not find the district court's determination of no secondary meaning clearly erroneous in the instant case. Sno-Wizard's evidence of secondary meaning consisted of survey data. "The authorities are in agreement that survey evidence is the most direct and persuasive way of establishing secondary meaning." Zatarains, 698 F.2d at 795. Of course, "to be effective at all, the survey must be carefully conducted and controlled ... so as to elicit honest and unprompted consumer reaction as to association between a given trade symbol and a single source of the product." 1 J. McCarthy, Trademarks and Unfair Competition Sec. 15:13, at 690 (hereinafter "McCarthy"). Sno-Wizard conducted two surveys, one in the New Orleans area, the other in the Rio Grande Valley of Texas. Interviewers visited snowball stands, asking purchasers of snowball machines and other people who admitted to having "influence" over the purchase of snowball machines whether they could identify the Sno-Wizard configuration. In the New Orleans survey, 84% of the persons surveyed (42 out of 50) identified the Sno-Wizard configuration. In the Rio Grande Valley survey, 54% of the persons surveyed (18 out of 33) identified the configuration as that of Sno-Wizard. Sno-Wizard insists that these results establish secondary meaning.
We do not agree. Of the 50 people surveyed in the New Orleans area, 43 actually operated a Sno-Wizard machine. Of the 33 surveyed in Texas, 18 owned or operated a Sno-Wizard. As the district court explained, the survey to a great extent can thus be interpreted to mean that operators of snowball machines can identify the type of machine they use each day. Indeed, in Texas, only 16% of those surveyed who did not own or operate a Sno-Wizard could identify the configuration. As Mr. Allen Rozensweig, designer of the survey, admitted on cross examination, there was a "tendency" of over "eighty, eighty-five percent" of interviewees to identify whatever machine they had in their snowball stands. Record Vol. 8 at 35. This "tendency" was reinforced by the fact that many of the interviews were conducted within full view of the Sno-Wizard machine and its identifying label. When asked whether interviewees could "in most instances ... look to the side at their machine to get a name off the machine," Mr. Durward Bernard, an interviewer, admitted: "yeah, if they wanted." Record Vol. 7 at 175. Given the above, we do not find the district court's finding of no secondary meaning to be clearly erroneous.
In any case, Sno-Wizard cannot prevail under Sec. 43(a), for we conclude that the district court was not clearly erroneous in finding no likelihood of confusion. See Sicilia, 732 F.2d at 430 (). In determining likelihood of confusion, we focus on "whether the defendant is passing off his goods ... as those of the plaintiff by virtue of the substantial similarity between the two, leading to confusion on the part of potential customers." Chevron, 659 F.2d at 703. We look to a variety of factors, including, but not limited to: similarity of products, identity of...
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