Merchant & Evans, Inc. v. ROOSEVELT BLDG. PRODUCTS CO.
| Citation | 774 F. Supp. 1467 |
| Decision Date | 04 October 1991 |
| Docket Number | Civ. A. No. 90-7973. |
| Parties | MERCHANT & EVANS, INC. v. ROOSEVELT BUILDING PRODUCTS CO., INC. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
COPYRIGHT MATERIAL OMITTED
Steven R. Waxman, Fox, Rothschild, O'Brien & Frankel, Philadelphia, Pa., for plaintiff.
Robert W. Hayes, Cozen and O'Connor, Philadelphia, Pa., for defendant.
FINDINGS OF FACT, DISCUSSION, CONCLUSIONS OF LAW AND ORDER
Plaintiff brings this action in four counts. Count I of the amended complaint is brought under § 43(a) of the Lanham Trademark Act of 1946, as amended, 15 U.S.C. § 1125. This section of the Lanham Act creates a cause of action for false designation of origin. Count II asserts a claim of trademark infringement pursuant to § 32(1) of the Lanham Act, 15 U.S.C. § 1114. Count III alleges a common law claim of improper use of trade secrets. Count IV avers non-privileged imitation proscribed under New Jersey common law.
Plaintiff seeks a preliminary injunction restraining the defendant from using the asserted trade dress in the manufacture of the defendant's product and sales material; from using certain drawings and photographs which plaintiff avers are depictions of plaintiff's product; and from using a logo which plaintiff alleges infringes the plaintiff's trademark.
Jurisdiction in this action is predicated upon the Lanham Act, 15 U.S.C. § 1121 pursuant to 28 U.S.C. § 1331, and the diversity jurisdiction of the Court pursuant to 28 U.S.C. § 1332, in that this action involves citizens of different states and the amount in controversy, excluding interest and costs, exceeds $50,000; and the supplemental jurisdiction of the Court.
Venue in this district is proper pursuant to 28 U.S.C. § 1391(b) in that defendant has transacted or conducted business here, and the causes of action, in part, arose in this district.
A hearing having been held, the Court makes the following:
FINDINGS OF FACT
1. Plaintiff, Merchant & Evans, Inc. ("Merchant & Evans"), is a New Jersey corporation with a principle place of business located at 100 Connecticut Drive, Burlington, New Jersey. Merchant & Evans conducts business in Pennsylvania and other states.
2. Merchant & Evans manufactures and sells a long-length, concealed fastener, metal roofing system (referred to herein as a "standing seam roof system") which is marketed under the registered trademark of, "Zip-Rib." The roofing system features panels which are fused together by using opposing pressure rollers in a device referred to as a zippering machine.
3. Merchant & Evans licenses the Zip-Rib mark and product to George D. Widman, Inc., which is the exclusive manufacturer and distributor of Zip-Rib products in 13 states in the Western United States.
4. Defendant, Roosevelt Building Products ("Roosevelt") was founded by Roosevelt Morin ("Morin") in 1984.
5. In 1987, Roosevelt began manufacturing metal wall and roof panels.
6. Roosevelt markets its products throughout the United States and in foreign countries.
7. Roosevelt was formerly known as Cold Form Industries. In August, 1990, Cold Form Industries notified the marketplace that it had changed its name to Roosevelt Building Products. At the same time, Roosevelt adopted a stylized "Z" logo on all of its company letterhead.
8. Since at least 1965, the identical roofing seam profile configuration has been used continuously in connection with the Zip-Rib roofing system. Over the period of its exclusive use, Merchant & Evans has used a variety of promotional and advertising materials.
9. Patent No. 3,312,028, was issued on April 4, 1967 to Kaiser Aluminum & Chemical Corporation as the assignor of the invention. The patent expired on April 4, 1984.
10. The patent did not specify a precise shape for the standing seam profile. Instead, the patent described the seam profile as "tubular, or other nestable equivalent."
11. The advertising literature produced by Merchant & Evans in connection with the standing seam roofing system suggests that, overall, the standing seam serves a variety of utilitarian and aesthetic purposes.
12. The advertisements do not ascribe a purpose specifically to the profile of the standing seam.
13. The standing seam profile used by Merchant & Evans is instantaneously identified on sight by knowledgeable observers as a "Zip-Rib" roof.
14. Although there are over 100 manufacturers of metal roofs, the Zip-Rib Trade Dress is unique and distinctive, and readily distinguished from all other metal roofs.
15. By virtue of more than 25 years of usage, large sales volume, excellent performance and a unique and distinctive configuration the Zip-Rib Trade Dress has acquired secondary meaning as identifying Merchant & Evans as the owner of the Zip-Rib Trade Dress. No other manufacturer of standing seam roofs, other than Roosevelt and Merchant & Evans sole licensee, uses the Trade Dress configuration in its product.
16. Since this lawsuit was filed, Roosevelt has begun offering for sale the CF12SS, CF16SS, CF18SS and CF24SS roofing systems which are virtually indistinguishable from the Zip-Rib panels.
17. Due to the visual similarity of the two products, the Roosevelt roofing panel cannot be distinguished from the Zip-Rib product by a person observing the products, even at a close distance.
18. Defendant intentionally copied the standing seam profile of plaintiff's product.
19. The defendant's standing seam profile is one of over seventy-five (75) seam profiles sold by the defendant.
20. The plaintiff sells twelve (12) different seam profiles.
21. Although the Roosevelt product is visually similar to the Merchant & Evans product, only the Merchant & Evans product has been tested to demonstrate compliance with the BOCA Code.
22. The BOCA Code requires that standing seam roofs must have a wind-uplift rating. In order to receive this rating, a roof must be subjected to the UL580 Test. This test is performed only by Underwriters Laboratories, Inc. ("UL"). UL has not preformed the UL580 Test on the Roosevelt roofing system.
23. The BOCA Code also requires that roofs must have a fire rating. In order to receive this rating, a roof must be subjected to the E-108 fire rating test which is also performed by UL. UL has not preformed the E-108 Test on the Roosevelt roofing system.
24. The Roosevelt standing seam roof has passed the ASTM 330 modified wind-uplift test.
25. The Merchant & Evans roof has been subjected to and passed the UL580 wind up-lift test, the ASTM 330 modified wind-up lift test, and the E-108 fire rating test.
26. In December, 1990, Kenneth Parish ("Parish"), Vice President of Roosevelt, designed and prepared a brochure which was used in connection with the marketing of the Roosevelt standing seam roofing system (the "Brochure").
27. The Brochure employs a drawing in connection with the sale of the Roosevelt standing seam roofing system. This drawing is virtually identical to a drawing which appears on the front cover of Merchant & Evans' Design Guide, Edition 3. The two drawings depict roofing in approximately the same size, shape, and perspective.
28. The Brochure employed a side view diagram which illustrated the profile of a roofing panel. The side view diagram illustrates the unique Trade Dress.
29. The Brochure has been widely distributed for the purpose of marketing the Roosevelt products identified as CF12SS, CF16SS, CF18SS and CF24SS.
30. The roofing depicted in the Brochure is not the roofing manufactured by Roosevelt but at the angle and distance employed appears similar to a Merchant & Evans' Zip-Rib roof.
31. Since at least 1965, the registered trademark, Zip-Rib, has been used continuously in connection with this roofing system. Merchant & Evans is the owner of United States Trademark Registration No. 807142 which is listed on the Principal Register of the United States Patent and Trademark Office.
32. In June, 1990, Roosevelt adopted a logo which consisted of a large "Z" in addition to the words "Roosevelt Building Products."
33. The defendant's logo consists of one word, "Roosevelt," preceded by a stylized letter "Z".
34. The plaintiff's trademark consists of two words, "Zip" and "Rib" joined by a hyphen.
35. The term "zip," as used in the plaintiff's trademark, is not arbitrary, but evocative of the zippering process used to join the panels.
36. The "Z" logo and the Zip-Rib trademark are so similar in appearance so that both marks evoke thoughts of the "zippering" process used in connection with the installation of the unique metal roofing system.
37. Roosevelt's "Z" logo is substantially similar to the Zip-Rib logo.
38. RBP is using the "Z" logo in connection with the sale of its metal roofing system which is identical in appearance to the system sold by Merchant & Evans under the registered trademark Zip-Rib.
39. RBP's continued use of the logo that is substantially similar to Merchant & Evans' "Zip-Rib" mark will impair the value of Merchant & Evans' reputation and good will.
40. Kenneth Parish ("Parish"), Vice President of Roosevelt, worked for Roosevelt Building Products from 1967 through 1985.
41. From 1985 through 1987 Parish worked for Merchant & Evans Industries, Inc. which was owned then by the Long Organization.
42. Parish held the title of "Operations Manager" at Merchant & Evans. Parish's job responsibilities made him thoroughly familiar with the Zip-Rib product.
43. Parish has, through the course of his career, developed an expertise in standing seam roofing systems.
44. In his career, Parish has developed great expertise in standing seam roofs in general and Zip-Rib's standing seam roof in particular.
45. In early 1987, Morin contacted Parish while he was employed by Merchant & Evans. Morin offered Parish a position with RBP.
46. In late 1987, Parish's employment with Merchant & Evans was...
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Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., Inc.
...but at the angle and distance employed appears similar to a Merchant & Evans' Zip-Rib roof." Merchant & Evans, Inc. v. Roosevelt Bldg. Prods. Co., 774 F.Supp. 1467, 1471 (E.D.Pa.1991). As Professor Gilson has stated, "[t]he use by defendant of a photograph of his competitor's product in his......