Accuride Intern., Inc. v. Accuride Corp.

• Decision Date: 14 April 1989
• Docket Number: No. 87-6734,87-6734
• Citation: 871 F.2d 1531,10 U.S.P.Q.2d 1589
• Parties: ACCURIDE INTERNATIONAL, INC.; Standard Precision, Inc., Plaintiffs-Appellants, v. ACCURIDE CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1531

871 F.2d 1531

10 U.S.P.Q.2d 1589

ACCURIDE INTERNATIONAL, INC.; Standard Precision, Inc., Plaintiffs-Appellants, v. ACCURIDE CORPORATION, Defendant-Appellee.

No. 87-6734.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted Nov. 2, 1988.

Decided April 14, 1989.

James E. Hawes, Beehler & Pavitt, Newport Beach, Cal., for plaintiffs-appellants.

William A. Streff, Jr., Michael S. Walsh, and Sarah E. Bates, Kirkland & Ellis, Chicago, Ill., Christopher C. Larkin, Graham & James, Los Angeles, Cal., for defendant-appellee.

Appeal from the United States District Court for the Central District of California.

Before FLETCHER, ALARCON and HALL, Circuit Judges.

FLETCHER, Circuit Judge:

This is an action for trade name infringement, dilution, unfair competition and false designation of origin brought by Accuride International, Inc. against Accuride Corporation. After a bench trial based upon a stipulated trial record, the district court found on all counts for the defendant-appellee, Accuride Corporation. We affirm.

FACTS

Accuride International, Inc., (AII) a California corporation, is a wholly-owned subsidiary of Standard Precision, Inc., also a California corporation. Standard Precision is a leading producer of drawer slide mechanisms, which it has sold under the "ACCURIDE" trademark since 1962. Yearly sales of "ACCURIDE" slides are approximately $90 million. In 1972, AII was formed to market "ACCURIDE" drawer slides overseas. Plaintiffs have identified themselves in their business literature Defendant Accuride Corporation (Accuride or Accuride Corporation) is the successor corporation to the Steel Products Division of the Firestone Tire and Rubber Company. Accuride and its predecessor have used the trademark "ACCU-RIDE" or "ACCURIDE" on truck wheels and rims since 1959. Accuride's predecessor was the leading manufacturer of heavy truck wheels and rims in the world, with sales of $213 million in fiscal 1986. In 1986, an investor group acquired Firestone's Steel Products Division, and adopted "ACCURIDE" as the new trade name for its company.

merely as "Accuride" for a number of years.

In December of 1986, AII objected to appellee's adoption of "ACCURIDE" as its trade name. Appellee informed AII that it intended to continue using the "ACCURIDE" trade name, and AII filed this action in an effort to prevent appellee's use of "ACCURIDE" as a trade name. AII does not challenge appellee's continued use of "ACCURIDE" as a trademark for its wheels and rims.

AII's suit alleges that appellee's use of "ACCURIDE" as its trade name constitutes: (1) a false designation of origin under section 43(a) of the Lanham Act; (2) trade name dilution under section 14330 of the California Business and Professions Code; (3) trade name infringement under sections 14400-14416 of the California Business and Professions Code; and (4) an unfair business practice under section 17200 of the California Business and Professions Code, as well as unfair competition under California common law.

On February 12, 1987, after considering live testimony and documentary evidence, the district court denied AII's request for a preliminary injunction against appellee's use of the "ACCURIDE" trade name. On June 22, 1987, after considering the parties' declarations, documentary evidence and deposition transcripts, the court denied AII's motion for summary judgment on its statutory unfair competition and trade name dilution claims.

Subsequently, the parties agreed to submit the case for decision without further live testimony. After the parties submitted the evidentiary materials comprising the stipulated trial record, the court reviewed the materials and entered judgment in favor of defendant Accuride Corporation on all counts. AII timely appeals. We have jurisdiction over the appeal under 28 U.S.C. Sec. 1291.

I. AII's Lanham Act Claim

Plaintiffs first assert that appellee's adoption of the "ACCURIDE" trade name constitutes a false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a). That section provides in relevant part:

Any person who shall ... use in connection with any goods or services ... any false description or representation, including words or symbols tending falsely to describe or represent the same ... shall be liable to a civil action by any person ... who believes that he is or is likely to be damaged by the use of any such false description or representation.

As in an action for trademark infringement under 15 U.S.C. Sec. 1114(1)(a), the key question under section 43(a) is "whether the public is likely to be deceived or confused by the similarity of the marks." Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir.1988) (quoting New West Corp. v. NYM Co., 595 F.2d 1194, 1201 (9th Cir.1979)) (citations omitted). See also J. McCarthy, Trademarks and Unfair Competition, Sec. 9:1 at 301 (2d ed. 1984) ("As in general trademark law, the test for infringement of the names of corporate, professional and business organizations is 'likelihood of confusion.' ").

The district court applied the eight factor test for likelihood of confusion enunciated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979). ¹ Those factors AII attacks the district court's finding of no likelihood of confusion on two grounds. First, AII argues that the court erred as a matter of law by applying a test used to determine likelihood of confusion in actions involving trademarks rather than trade names. According to AII, there is a fundamental distinction between trademarks and trade names which renders four of the eight Sleekcraft factors irrelevant in a section 43(a) action based upon trade name usage. Second, AII argues that the district court made a number of errors in analyzing the particular factors in the Sleekcraft test, and that these errors undermine its conclusion that there is no likelihood of confusion. We address these arguments in turn.

are: (1) strength of the plaintiff's mark/name; (2) proximity of the parties' goods; (3) similarity of the marks/names; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the mark/name; and (8) likelihood of expansion of product lines. The district court concluded that there was no likelihood of confusion and therefore no section 43(a) violation. We review de novo the district court's rulings on matters of law. We review the district court's finding that there is no likelihood of confusion under the clearly erroneous standard. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1355 (9th Cir.1985) (en banc).

A. Trademarks Versus Trade Names

Trademarks and trade names are technically distinct. Trade names are symbols used to distinguish companies, partnerships and businesses. ² Trade names symbolize the reputation of a business as a whole. In contrast, trademarks and service marks are designed to identify and distinguish a company's goods and services. ³ New West, 595 F.2d at 1201. The major legal distinction between trademarks and trade names is that trade names cannot be registered and are therefore not protected under 15 U.S.C. Sec. 1114. Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1163 (11th Cir.1982). However, analogous actions for trade name infringement can be brought under section 43(a). See New West, 595 F.2d at 1198-1201; Walt-West Enterprises, Inc. v. Gannett Co., 695 F.2d 1050, 1054 n. 6 (7th Cir.1982).

As a practical matter, courts are rarely called upon to distinguish between trade names, trademarks and service marks. Trade names often function as trademarks or service marks as well. Thus, cases such as this one typically involve a challenge both to trademark and trade name usage. See e.g., Century 21, 846 F.2d 1175 (infringement of plaintiff's service mark/trade name); Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440 (9th Cir.1980) (infringement of plaintiff's trademark/trade name). Perhaps because of this functional overlap, the same broad standards of protection apply to trademarks and trade names. The U.S. Supreme Court has stated:

Whether the name of a corporation is to be regarded as a trade-mark, a trade name, or both, is not entirely clear under the decisions. To some extent, the two terms overlap.... But the precise difference is not often material, since the law affords protection against its appropriation American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 162, 70 L.Ed. 317 (1926) (citations omitted).

in either view upon the same fundamental principles.

More recently, the Ninth Circuit has said that "[t]rade name infringement ... is based on considerations similar to trade-mark infringement," and that both "preclude one from using another's distinctive mark or name if it will cause a likelihood of confusion or deception as to the origin of the goods." New West, 595 F.2d at 1201. See also West Des Moines State Bank v. Hawkeye Bancorp., 722 F.2d 411, 413 (8th Cir.1983) ("[t]rade names (business names) are under modern law accorded the same protection as trademarks"); Walt-West Enterprises, 695 F.2d at 1054 n. 6 (using "the terms trademark, service mark and trade name interchangeably in conformity with contemporary judicial parlance"); Blacks In Government v. National Ass'n of Blacks Within Government, 601 F.Supp. 225, 227 (D.D.C.1983) ("the law protecting trademark infringement is essentially the same as that protecting commercial and corporate trade names").

Despite the fact that trademark and trade name protection are so intertwined, and despite the fact that likelihood of confusion is unquestionably the key to a finding of infringement in either case, AII contends that the differences between trademarks and trade names require courts to apply different tests in assessing whether there is a likelihood of confusion. Specifically, it contends that the...