Anti-Monopoly, Inc. v. General Mills Fun Group, Inc.

• Decision Date: 26 August 1982
• Docket Number: INC,No. 81-4281,ANTI-MONOPOL,81-4281
• Parties: , Plaintiff and Counter-Defendant-Appellant, v. GENERAL MILLS FUN GROUP, INC., Defendant and Counter-Claimant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1316

684 F.2d 1316

216 U.S.P.Q. 588

ANTI-MONOPOLY, INC., Plaintiff and Counter-Defendant-Appellant, v. GENERAL MILLS FUN GROUP, INC., Defendant and Counter-Claimant-Appellee.

No. 81-4281.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Nov. 9, 1981.

Decided Aug. 26, 1982.

Carl E. Person, New York City, for Anti-Monopoly, Inc.

Robert S. Daggett, San Francisco, Cal., argued, for General Mills Fun Group, Inc.; Oliver P. Howes, Jr., Nims, Howes, Collison & Isner, New York City, Brobeck, Phleger & Harrison, San Francisco, Cal., on brief.

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

Before DUNIWAY and SNEED, Circuit Judges, and TASHIMA, ^* District Judge.

DUNIWAY, Circuit Judge:

This is the second appeal in this case. Our first opinion is reported in Anti-Monopoly, Inc. v. General Mills Fun Group, 9 Cir., 1979, 611 F.2d 296 (Anti-Monopoly I ). On remand the district court again found that the "Monopoly" trademark was valid and had been infringed by Anti-Monopoly, Inc. Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., N.D.Cal., 1981, 515 F.Supp. 448 (Anti-Monopoly II ). We reverse and remand for further proceedings.

I. Prior Proceedings.

General Mills is the successor to Parker Brothers, Inc., which had produced and sold a game it called Monopoly since 1935. Parker Brothers registered "Monopoly" as a trademark in that year. In 1973 Anti-Monopoly, Inc. was established to produce and sell a game it called Anti-Monopoly. General Mills claimed that this infringed its trademark. This action was then brought by Anti-Monopoly, seeking a declaratory judgment that the registered trademark "Monopoly" was invalid, and cancelling its registration. In a counterclaim, General Mills sought declaratory and injunctive relief upholding its trademark, and the dismissal of the action. The case was tried without a jury in 1976. The court entered a judgment for General Mills. We reversed and remanded for further consideration of (i) the validity of the trademark, (ii) infringement of the trademark, if it is valid, by Anti-Monopoly, and (iii) state law claims concerning unfair competition and dilution. We also chose to defer consideration of (iv) Anti-Monopoly's defense that General Mills had unclean hands. On remand, after hearing further evidence, the district court again entered a judgment for General Mills.

II. The Standard of Review.

We state the standard of review at the beginning of this opinion, lest we be charged with not applying it because our "acknowledgement (of it) came late in (our) opinion." Pullman-Standard v. Swint, 1982, --- U.S. ----, at ----, 102 S.Ct. 1781, at 1791, 72 L.Ed.2d 66; id., Marshall, J., dissenting, at ----, 102 S.Ct. at 1784-85.

We must apply the standard stated in Rule 52(a), F.R.Civ.P., the case having been tried without a jury: "Findings of fact shall not be set aside unless clearly erroneous, ..." This has been interpreted to mean that the trial judge's finding of fact cannot be set aside unless, "although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 1948, 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746.

The Supreme Court has recently reminded us of the importance of the rule and of our duty to abide by it. Pullman-Standard, supra, --- U.S. at ----, 102 S.Ct. at 1789. In that case, the Court held that the rule applies equally to "ultimate" facts and to "subsidiary" facts. (Id.). The Court also held that, when a finding is based on an erroneous view of the law, it may be set aside, but that in such a case the appellate court cannot make a contrary finding, but must remand to the trial court for new findings, to be made in the light of the correct rule of law. (Id. at ----, 102 S.Ct. at 1791-92). To this there is one exception: A remand is unnecessary if "the record permits only one resolution of the factual issue." (Id., citing Kelley v. Southern Pacific Co., 1974, 419 U.S. 318, 331-332, 95 S.Ct. 472, 479-80, 42 L.Ed.2d 498.) See also Inwood Laboratories v. Ives Laboratories, 1982, --- U.S. ----, ---- - ----, 102 S.Ct. 2182, 2188-90, 73 L.Ed.2d ----, and the concurrence of Justice Rehnquist:

I also assume, correctly I hope, that the Court's discussion of appellate review of trial court findings in bench trials, ante, at ----, is limited to cases in which the appellate court has not found the trial court findings to be "clearly erroneous." United States v. United States Gypsum Co., 333 U.S. 364 (68 S.Ct. 525, 92 L.Ed. 746) (1948), upon which the Court relies, establishes the authority of a reviewing court to make its own findings, contrary to those of the trial court, where it has determined the latter to be "clearly erroneous." (--- U.S. at ---- - ----, 102 S.Ct. at 2193.)

III. The Burden of Proof.

The district court ruled that Anti-Monopoly had the burden of showing genericness "by convincing evidence." Anti-Monopoly II, 515 F.Supp. at 451-452. The case cited for that proposition, Feathercombs, Inc. v. Solo Products Corp., 2 Cir., 1962, 306 F.2d 251, does not announce such a rule. The only reference to "convincing evidence" is at 306 F.2d 256, and says nothing about burden of proof. There is a presumption in favor of a registered trademark, and the burden of proof is upon one who attacks the mark as generic, but the presumption can be overcome by a showing by a preponderance of the evidence that the term was or has become generic. See Vuitton et Fils S. A. v. J. Young Enterprises, 9 Cir., 1981, 644 F.2d 769, 775-776.

IV. Generic Terms-The Law.

Our opinion in Anti-Monopoly I binds both this court and the district court. There, we set out the law about generic terms and explained how it was to be applied to the particular facts of this case. Anti-Monopoly I, 611 F.2d at 300-306. In this opinion, we assume that the reader will be familiar with that opinion. Here, we emphasize what we consider to be its essence. A word used as a trademark is not generic if "the primary significance of the term in the minds of the consuming public is not the product but the producer." Id. at 302. "(W)hen a trademark primarily denotes a product, not the product's producer, the trademark is lost." Id. at 301. A registered mark is to be cancelled if it has become "the common descriptive name of an article," 15 U.S.C. § 1064(c), and no incontestable right can be acquired in such a mark. 15 U.S.C. § 1065(4). We said "Even if only one producer-Parker Brothers-has ever made the MONOPOLY game, so that the public necessarily associates the product with that particular producer, the trademark is invalid unless source indication is its primary significance." Anti-Monopoly I, 611 F.2d at 302. "It is the source-denoting function which trademark laws protect, and nothing more." Id. at 301. "(O)ne competitor will not be permitted to impoverish the language of commerce by preventing his fellows from fairly describing their own goods." Id., quoting Bada Co. v. Montgomery Ward & Co., 9 Cir., 1970, 426 F.2d 8, 11. "(W)hen members of the consuming public use a game name to denote the game itself, and not its producer, the trademark is generic and, therefore, invalid." Id. at 304.

V. Was the Term "MONOPOLY" Generic at the Time of Registration?

Anti-Monopoly, Inc. claims that the term "Monopoly" was generic at the time when Parker Brothers registered it. On this question, the trial judge made the following findings:

Plaintiff (Anti-Monopoly) attempted to show at trial that at the time of Parker Brothers' trademark registration, MONOPOLY was already a widely played game known by that name. The evidence introduced to support this contention consists chiefly of isolated and sporadic examples of individuals playing old oilcloth games referred to in some instances as "Monopoly," the "Landlord's Game," or some other variation thereof.

In order to be "generic," the name MONOPOLY, in the minds of the consuming public, must primarily denote product rather than source. It remains unclear how widely played the precursors to modern MONOPOLY were in the 1920s and early '30s. Plaintiff has simply made no showing as to what the public conception of the term was at that juncture or indeed how widely played it actually was. As Clarence (sic) Darrow, and later his successor, Parker Brothers, popularized a specific game they called MONOPOLY, this court cannot find that the trademark when registered denoted "a game" rather than the "game's producer." Because Anti-Monopoly has the burden of showing genericness by convincing evidence, Feathercombs, Inc. v. Solo Products Corporation, 306 F.2d 251 (2d Cir. 1962), this finding must be for defendant.

515 F.Supp. at 451-452. The district court found also that Darrow was the inventor of the game (Id. at 451) and that the game We have already held that the district court placed too heavy a burden on Anti-Monopoly, Inc. Moreover, the court's reference to Darrow as the inventor or creator of the game is clearly erroneous. The record shows, as we stated in Anti-Monopoly I, that "The game of 'Monopoly' was first played from 1920 to 1932 on various college campuses by a small group of individuals, many of whom were related by blood or marriage. In late 1932 or early 1933 one of these players introduced Charles Darrow to the game, and gave him a handmade game board, rules, and associated equipment. Immediately thereafter Darrow commenced commercially producing and selling 'Monopoly' game equipment." 611 F.2d at 299.

was "created" by Darrow. Id. at 452 n.1. (The quotation marks are in the original.)

We have re-examined the entire record on appeal. Here is what it shows. At some time between 1904 and 1934, the game of monopoly developed. Early equipment was handmade and copied from earlier handmade equipment. All the witnesses presented by Anti-Monopoly insisted that the game...