Thomas & Betts Corp. v. Panduit Corp.

• Decision Date: 17 October 1996
• Docket Number: No. 94 C 2656.,94 C 2656.
• Citation: 940 F.Supp. 1337
• Parties: THOMAS & BETTS CORPORATION and Thomas & Betts Holdings, Inc., Plaintiffs, v. PANDUIT CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

940 F.Supp. 1337

THOMAS & BETTS CORPORATION and Thomas & Betts Holdings, Inc., Plaintiffs, v. PANDUIT CORPORATION, Defendant.

No. 94 C 2656.

United States District Court, N.D. Illinois, Eastern Division.

October 17, 1996.

Sidney David, Keith E. Gilman, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, Marc L. Fogelberg, McBride, Baker & Coles, Chicago, IL, James Hay, Lewis & McKenna, Saddle River, NJ, for Plaintiffs.

David C. Hilliard, John Thompson Brown, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

MORTON DENLOW, United States Magistrate Judge.

Plaintiffs Thomas & Betts Corporation and Thomas & Betts Holdings, Inc. (hereinafter collectively referred to as "T & B"), bring this action in five counts against defendant Panduit Corporation (hereinafter "Panduit"). On August 15, 1996 this Court granted Panduit's motion for summary judgment as to four counts and reserved ruling on count II. Count II alleges that Panduit's use of the trademark BARB-TY constitutes a misleading use under 15 U.S.C. § 1125(a)(1) and seeks cancellation of Panduit's trademark registration of the BARB-TY mark under 15 U.S.C. § 1064(3) on the grounds that it is generic. This Court conducted oral argument on September 11, 1996 and accepted additional briefing on count II. For the reasons set forth below the Court grants Panduit's motion for summary judgment as to count II.

I. BACKGROUND FACTS

The Court has previously discussed the facts in its August 15, 1996 decision granting summary judgment on all counts other than count II. See Thomas & Betts Corp. and Thomas & Betts Holdings, Inc. v. Panduit Corp., 935 F.Supp. 1399 (N.D.Ill.1996). A brief discussion of the facts relevant to count II follows. Both parties sell a variety of cable ties. In 1965, T & B obtained a patent on the two-piece cable tie ("the Schwester patent"). That patent disclosed a two-piece cable tie with an oval head, metal barb and transverse slot. T & B marketed its patented two-piece cable tie under the trademark TY-RAP. Though the Schwester patent expired in 1982 and a related patent also held by T & B expired in 1986, until 1993 T & B remained the sole producer of two-piece cable ties with annual sales of almost $100 million worldwide which it marketed under the TY-RAP trademark.

In 1993, Panduit entered the two-piece cable tie market with the BARB-TY, an oval-headed, metal-barbed cable tie essentially identical to T & B's TY-RAP. BARB-TY is a registered trademark. T & B claims that Panduit's use of the trademark BARB-TY constitutes a misleading use and violates § 43(a)(1) of the Lanham Act. Also, T & B requests that Panduit's trademark be canceled pursuant to § 14 of the Lanham Act because of either the genericness of the term "barb tie" or the fraudulent procurement of the BARB-TY mark.

II. SUMMARY JUDGMENT STANDARD

The Court will apply the summary judgment standard set forth in section II of its August 15, 1996 decision.

III. PANDUIT'S USE OF THE TERM BARB-TY DOES NOT VIOLATE THE LANHAM ACT

Panduit's use of the term BARB-TY does not violate § 43(a)(1) of the Lanham Act as a matter of law because the term "barb tie" is not generic and the BARB-TY trademark does not create confusion as to source.

A. The Statute

T & B alleges that Panduit's use of the trademark BARB-TY is a violation of Section 43(a) of the Lanham Act. That section provides that:

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a)(1)(A).

The Supreme Court explained the protection afforded by Section 43(a)(1) in Singer Mfg. Co. v. June Mfg. Co., 163 U.S 169, 187, 16 S.Ct. 1002, 1009, 41 L.Ed. 118 (1896):

It is obvious that if the name ... has a two-fold significance, one generic and the other pointing to the origin of manufacture, and the name is availed of by another without clearly indicating that the machine upon which the name is marked is made by him, then the right to use the name because of its generic signification would imply a power to destroy any good will which belonged to the original maker. It would import, not only this, but also the unrestrained right to deceive and defraud the public by so using the name as to delude them into believing that the machine made by one person was made by another.

Thus, where a particular term is deemed to have a "two-fold significance", courts are required to protect the investment of the prior user and protect the public from confusion by requiring subsequent users to take appropriate measures to prevent a likelihood of confusion from occurring.

Section 43(a)(1) of the Lanham Act prohibits the misleading use of a term which has both a source identifying quality and a generic quality. Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d 1035 (D.C.Cir.1989). The source indicating quality results from the fact that there existed only a single manufacturer of a particular product over a long period of time, such that the relevant public has come to associate the term used to denote the product with that manufacturer. The generic quality stems from the common use of a term as the descriptor for a product. T & B argues that the term "barb tie" possesses a source indicating quality as to T & B and generically describes the cable ties which are sold by both parties.

B. Barb Tie Is Not a Generic Term

T & B argues that the term "barb tie" and the phonetic equivalent BARB-TY trademark, possess a generic quality and are likely to cause confusion among consumers. Marks are classified into five categories of generally increasing distinctiveness: 1) generic; 2) descriptive; 3) suggestive; 4) arbitrary; and 5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992). In general, the level of trademark protection increases with the distinctiveness of the mark. Thus, generic terms receive no protection, descriptive marks are protected only if the mark has acquired secondary meaning, and suggestive, arbitrary, and fanciful marks are deemed inherently distinctive and are automatically entitled to full protection. Id.

The issue before the Court is whether the trademark BARB-TY denotes the product or a particular brand of the product. Id. "This is a question fact, (citations omitted) 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." Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir. 1996).

If a trademark is federally registered, there is a presumption that the term is not generic and the defendant must overcome the presumption. Bath & Body Works v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir.1996). Panduit registered ("BARB-TY") with the United States Patent & Trademark Office in 1994.

A generic term is one commonly used to denote a product or other item or entity, one that indicates the thing itself, rather than any particular feature or exemplification of it. Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir.1986). "Because a generic term denote[s] the thing itself, it cannot be appropriated by one party from the public domain; it therefore is not afforded trademark protection even if it becomes associated with only one source." Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1039 (D.C.Cir.1989). The test for genericness is whether the public perceives the term primarily as the designation of the article. Id. at 1041; J. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 12:2 at 522-23.

Granting a generic term trademark protection would thwart the purposes of trademark law and violate fundamental concepts of fair competition. "[I]t is no purpose of trademark protection to allow a firm to prevent its competitors from informing consumers about the attributes of the competitors' brands ... [a company] cannot appropriate the English language, and by doing so render a competitor inarticulate." Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609-10 (7th Cir.1986).

The Court holds that the term "barb tie" and the phonetic equivalent BARB-TY are not generic designations for the products sold by the parties. Rather, after reviewing all the exhibits and evidence presented, the Court finds that the primary designation of the product is the term cable tie and T & B has failed to create a fact question.

1. Prima Facie Evidence of Non-genericness of the BARB-TY Trademark

Panduit is correct that its trademark registration of the BARB-TY trademark must be taken as prima facie evidence that "barb tie" is not a generic term. The Lanham Act provides that:

a mark registered on the principal register ... shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not...