Door Systems, Inc. v. Pro-Line Door Systems, Inc.

• Citation: 83 F.3d 169
• Decision Date: 06 May 1996
• Docket Number: No. 95-3808,PRO-LINE,95-3808
• Parties: DOOR SYSTEMS, INCORPORATED, Plaintiff-Appellant, v.DOOR SYSTEMS, INCORPORATED, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

Page 169

83 F.3d 169

38 U.S.P.Q.2d 1771

DOOR SYSTEMS, INCORPORATED, Plaintiff-Appellant, v. PRO-LINE DOOR SYSTEMS, INCORPORATED, Defendant-Appellee.

No. 95-3808.

United States Court of Appeals, Seventh Circuit.

Argued April 10, 1996.

Decided May 6, 1996.

Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 91 C 8050--Arlander Keys, Magistrate Judge.

George Bullwinkel (argued), Harold J. Fassnacht, Eric F. Greenberg, Bullwinkel Partners, Chicago, IL, James Maher, Chicago, IL, for Plaintiff-Appellant.

Todd S. Parkhurst, Gardner, Carton & Douglas, Chicago, IL, Thomas Bradley, Laner, Muchin, Dombrow, Becker, Levin & Tominberg, Chicago, IL, Marty J. Schwartz, Chicago, IL, Terry Sullivan, Nancy J. Nicol (argued), Judy Chessick, Rolling Meadows, IL, for Defendant-Appellee.

Before POSNER, Chief Judge, and CUMMINGS and WOOD, Circuit Judges.

POSNER, Chief Judge.

The complaint by Door Systems, Inc., in two counts (actually more, but the others have been abandoned), charged Pro-Line Door Systems, Inc. with infringing the plaintiff's registered trademark "Door Systems" in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114(1), and with false designation of origin in violation of section 43(a), 15 U.S.C. § 1125(a). The district court granted summary judgment for the defendant on both counts, holding with respect to the first that the term "door systems" is generic and therefore cannot be trademarked and with respect to the second that likelihood of confusion between the defendant's product and the plaintiff's was nil.

Both parties sell overhead garage doors together with the electrical device for opening and closing them remotely. Since 1980, the plaintiff has advertised (mainly in the yellow pages) and sold its garage doors and control devices under the trademark "Door Systems," which the Patent and Trademark Office accepted for registration in 1989. The defendant started in business in 1986, under the name "Pro-Line Door Systems, Inc." Four other sellers of automatic garage doors also began using the term "door systems" sometime after 1980. Door Systems sued all five in this lawsuit, settling with all but Pro-Line in consent decrees that bar those sellers from continuing to denote their brands by the term.

The function of the normal product trademark is to identify a brand, so that consumers who want to buy a particular brand of the product will know which brand it is when they are shopping for the product. Mumm's, the brand, is a trademarked brand of champagne, the product. A generic term, in the jargon of trademark law, is a word that denotes the product rather than any of the brands of the product. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992); Henri's Food Products Co. v. Tasty Snacks, Inc., 817 F.2d 1303, 1305-06 (7th Cir.1987); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12.01 (3d ed.1995). If a generic word could be trademarked by the producer of one brand of the product denoted by the word, and thus (upon proof of likely confusion) barred to use by producers of competing brands, the producer who trademarked it would have a competitive advantage that bore no relation to relative efficiency. Competitors would have difficulty informing consumers that they were competitors, because they would be unable, without elaborate and possibly confusing paraphrase, to give the name of the product they were selling. If, for example, Romanoff could trademark the word "caviar," competing sellers of caviar would have to use terms such as "sturgeon eggs" or "sturgeon roe" to denote their product, and some consumers would think it was something different from caviar. The trademarking of generic terms would impose excessive costs of information on competitors and consumers and is therefore forbidden. Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 392 (7th Cir.1992); Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir.1986); Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 7-8 (1st Cir.1981).

One question presented by Pro-Line's defense is thus whether "door systems" is the name of the product--automatic garage doors, or remotely controlled garage doors, or remotely controlled doors of any type, or perhaps any system of noncontiguous parts for performing the function of a door (for example, a matching pair of screen door and regular door, or an integrated system of French doors for a patio or sunroom)--that subsumes the particular brands sold by the parties. This is a question of fact, Bath & Body Works, Inc. v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir.1996); Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.1993), but as with any question of fact can be resolved on summary judgment if the evidence is so one-sided that there can be no doubt about how the question should be answered.

More precisely, the question of genericness is one of linguistic usage, and can be approached by a variety of routes. One is the dictionary. If the term "door systems" appeared in a standard dictionary in lower case, this would be powerful evidence that the term was generic, because nouns and other nominatives listed in dictionaries, save for the occasional proper name, denote kinds rather than specific entities ("dog," not "Fido"). The term "door systems" does not appear in the dictionary. Its component words do, of course, but that in itself cannot count for much; otherwise it could be argued that "Seven-Up" is generic, which no one believes. (Well, almost no one--the argument that it is was made in Seven-Up Co. v. Bubble Up Corp., 50 C.C.P.A. 1012, 312 F.2d 472, 474 (1963); the case was decided on other grounds.) But the fact that "door systems" is not in the dictionary cannot be the end of the analysis. No dictionary is complete or completely up to date, or tracks the language of the marketplace perfectly. A number of generic terms are not found in dictionaries. William M. Landes & Richard A. Posner, "Trademark Law: An Economic Perspective," 30 J. Law & Econ. 265, 296 (1987). Another place to look is the yellow pages, where business and trade names are subsumed under product designations. But again we do not find "door systems." The plaintiff's and defendant's yellow pages listings and ads appear under the heading "Door & Gate Operating Devices."

The fact that the parties' product is designated by a general term that is not the alleged generic term bears against Pro-Line's defense, because it shows that Pro-Line will not be rendered speechless, as it were, if forbidden to describe its product by the term "door systems." Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., supra, 781 F.2d at 609-10. Indeed, we have suggested two general designations, apart from "door systems" or the yellow pages' "Door & Gate Operating Devices," for what Pro-Line (along with Door Systems) sells: "automatic garage doors" and "remotely controlled garage doors." Door Systems itself, for what it's worth, denotes its product in its advertising not as "door systems" but as "garage doors & door openers."

There was somewhat more evidence in Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934 (7th Cir.1986), admittedly a similar case and one on which Pro-Line naturally relies very heavily, that the term in issue there, "liquid controls," had become the name of the product, and so could not be appropriated to name a brand of the product. See also Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153 (7th Cir.1996); Blinded Veterans Ass'n v. Blinded American Veterans Foundation, 872 F.2d 1035, 1040-41 (D.C.Cir.1989); Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 909 (9th Cir.1995). More important, there was no suggestion in the Liquid Controls case of an alternative designation of the product to "liquid controls." Here there are several alternatives which appear to be, in fact, generic names for the product.

Granted, "door systems," like "liquid controls," is a good description of what the parties sell. But a descriptive term that is not the name of the product ("temperature feedback control" versus "thermostat") can be trademarked if it acquires secondary meaning, Spraying Systems Co. v. Delavan, Inc., supra, 975 F.2d at 392-93, that is, if the consuming public comes to associate it with the particular brand of the seller who wants to use it as its trademark. It is true that a descriptive term often, perhaps generally, can be used to denote the product, and thus to have a generic use. But that in itself, its capability of becoming generic, does not make it a generic term. If the product is usually called something else, as the product of the parties to this lawsuit is--the advertising in the record suggests that the most common names for it are simply "garage doors" and "garage doors and openers"--then appropriating a descriptive term which might be used generically will not impose heavy costs on competitors or consumers.

A trademark search conducted by Pro-Line revealed that at least a dozen firms (mainly but not only sellers of garage doors), in addition to the five garage-door sellers sued by Door Systems, denote their product by the term "door systems." If anything, one is surprised the number is no larger. The popularity of the word "system" in contemporary noun expressions ("weapon systems," "stereo systems," "alarm systems," and so forth) makes it plausible to suppose that "door system" might catch on as the standard term for remotely controlled or otherwise complex devices for performing the door function. Perhaps it has caught on already in the relevant submarkets. We do not mean to...