Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 83-1300

Decision Date18 October 1983
Docket NumberNo. 83-1300,83-1300
PartiesASTRA PHARMACEUTICAL PRODUCTS, INC., Plaintiff, Appellant, v. BECKMAN INSTRUMENTS, INC., Defendant, Appellee.
CourtU.S. Court of Appeals — First Circuit

David M. Lindley, New York City, with whom Dike, Bronstein, Roberts, Cushman & Pfund, Boston, Mass., Liddy, Sullivan, Galway & Vaccaro, and Hale Russell & Gray, New York City, were on brief, for plaintiff, appellant.

Frank P. Porcelli, Boston, Mass., with whom Wm. W. Rymer, John M. Skenyon, Fish & Richardson, Boston, Mass., and Robert R. Meads, Fullerton, Cal., were on brief, for defendant, appellee.

Before BOWNES, Circuit Judge, ALDRICH and SKELTON *, Senior Circuit Judges.

SKELTON, Senior Circuit Judge.

This is a trademark infringement case in which the appellant, Astra Pharmaceutical Products, Inc. (Astra), seeks to enjoin the appellee, Beckman Instruments, Inc. (Beckman), from using the mark "ASTRA" on its computerized blood analyzer machine and on various other products related to that machine. In addition, Astra also seeks relief from unfair competition, injury to property rights and business reputation, and trademark dilution under the Massachusetts Anti-Dilution Statute. The United States District Court for the District Court of Massachusetts, relying on the case of Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482 (1st Cir.1981), granted summary judgment in favor of Beckman on all counts, holding that there was no genuine issue of material fact. For the reasons stated below, we affirm.

I. Background

Astra is a wholly-owned subsidiary of the Swedish corporation AB Astra, and is a manufacturer and distributor of pharmaceutical and medical products, the principal one being Xylocaine, a drug used as a local anesthetic and an anti-arrhythmic. Xylocaine sales represent the major portion (66%-70%) of Astra's overall sales income. Astra's products are distributed to such customers as hospitals, clinical laboratories, universities and other research institutions, retail drug stores, and dentists. In 1981, Astra's pharmaceutical sales to hospitals in the United States totalled approximately $27,000,000.

Astra is the owner of record of five active United States trademark registrations for the mark "ASTRA", or "ASTRA" with a star design, issued for pharmaceutical preparations and syringes. The syringes are prefilled with Xylocaine and are used for administering local anesthetics, or in giving cardiovascular treatments. Astra identifies all its products with its federally registered "ASTRA" mark and with its trade name, "Astra Pharmaceutical Products, Inc."

Beckman is a manufacturer and distributor of laboratory instrumentation and various other hospital and laboratory supplies and equipment. As a result of a recent merger, Beckman has become a wholly-owned subsidiary of the Smith-Kline Beckman Corporation. Beckman's worldwide sales of medical and scientific equipment are extensive, totalling $359,687,000 in 1980.

In 1977, Beckman developed a new computerized instrument which measures the quantities of various substances in the blood. This machine was developed chiefly for use in hospital laboratories to aid physicians in the diagnosis of disease by determining when the quantity of certain substances in the blood is abnormal. The Beckman analyzer uses "reagents," which are chemical solutions manufactured specifically for use in the machine, and which, when reacted with the blood, allow a technician to determine the quantity of certain substances in the blood. The reagents are not drugs and are never administered to humans.

When Beckman developed this blood analyzer, it named the machine an "Automated Stat/Routine Analyzer," which indicates the machine's ability to switch automatically back and forth between performing routine blood tests and emergency ("stat") blood tests. The acronym "ASTRA" was formed from this full name. It is printed in block letters on the console of the analyzer and on the reagent packages. However, the full name of the machine is also printed in small letters under the "ASTRA" mark on all of the analyzers. The Beckman employee who first composed the "ASTRA" acronym testified without contradiction that at that time he had no knowledge of Astra's use of the mark. Since its introduction into the market, the analyzer has enjoyed great commercial success, with over 2000 of the machines being presently in use throughout the world. Beckman attributes much of this success to the "stat/routine" feature, which apparently is not present on other analyzers on the market.

Prior to adopting the "ASTRA" acronym for its analyzer, Beckman's counsel conducted a trademark search which revealed numerous uses of the word "ASTRA", but concluded that Beckman's use of the mark would not violate any rights in these marks or tradenames. Counsel for Astra notified Beckman on May 17, 1978, still prior to the first sale of an analyzer, that Beckman's use of the "ASTRA" mark would be an infringement and requested that Beckman not use the mark. Beckman proceeded with its plans to use the "ASTRA" mark, whereupon Astra filed this suit on July 23, 1979.

Astra's complaint contained seven counts, all concerning Beckman's use of the mark "ASTRA." The complaint alleged trademark infringement under common law and under the Lanham Act, 15 U.S.C. Sec. 1114 et seq., injury to property rights and business reputation, unfair competition, false designation of origin, and violation of the Massachusetts Anti-Dilution Statute, Mass.Gen.Laws c. 110B, Sec. 12. Beckman denied any violation and, after discovery, moved for summary judgment, asserting that there was no genuine issue of material fact as to likelihood of confusion or trademark dilution. After a hearing on the motion was held, the District Court, on March 24, 1983, issued its Memorandum and Order granting summary judgment to Beckman on all counts of Astra's complaint. On May 24, 1983, the District Court issued a second order, declining to alter or amend its decision. Astra has appealed from these orders, which appeals were consolidated by order of this Court on June 1, 1983. Astra complains of error in the granting of the summary judgments, asserting that genuine issues of material fact exist concerning its claims.

II. The Standard For Summary Judgment

The issue confronting this Court is whether the District Court erred in granting Beckman's motion for summary judgment. The standard for the granting of a summary judgment in a trademark infringement case in this circuit was clearly set out in the case of Pignons S.A. de Mecanique v. Polaroid Corp., supra. Summary judgment is proper only "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Pignons, 657 F.2d at 486; Fed.R.Civ.P. 56(c). A factual dispute is material if it "affects the outcome of the litigation," and genuine if manifested by "substantial" evidence "going beyond the allegations of the complaint." Pignons, 657 F.2d at 486; Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir.1975), cert. denied, 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 754 (1976). In passing on a summary judgment motion, the court must view the record and draw inferences in the light most favorable to the opposing party. Pignons, 657 F.2d at 486; Hahn, 523 F.2d at 464. With these axioms in mind, we now examine Astra's contentions.

III. Trademark Infringement

As noted in the Pignons case, likelihood of confusion is "an essential element of a claim of trademark infringement," whether it arises under state or federal law. Pignons, 657 F.2d at 486-87. This Court in Pignons enumerated eight factors to be used as guides in assessing likelihood of confusion. Those factors are: (1) the similarity of the marks; (2) the similarity of the goods; (3) the relationship between the parties' channels of trade; (4) the relationship between the parties' advertising; (5) the classes of prospective purchasers; (6) evidence of actual confusion; (7) the defendant's intent in adopting its mark; and (8) the strength of the plaintiff's mark. Pignons, 657 F.2d at 487. Examining the evidence favorable to Astra as it applies to these factors, we must determine on the whole whether there is any genuine issue as to likelihood of confusion. No one factor is necessarily determinative, but each must be considered. See Pignons, 657 F.2d at 487-92. If, on the whole, no issue of fact concerning likelihood of confusion can be demonstrated, the District Court properly granted summary judgment on the infringement counts. We now consider the Pignons factors in the order named and as applied to the instant case.

(1) The similarity of the marks. It is clear that the word "ASTRA" is used by both parties to this suit as a trademark. In spelling and sound, therefore, the marks are identical. However, as we stated in Pignons, "similarity is determined on the basis of the total effect of the designation, rather than a comparison of individual features." Pignons, 657 F.2d at 487. As the District Court found, Beckman uses "ASTRA" as a brand name for its blood analyzer, while its house name, "BECKMAN," is clearly printed on another part of the machine, indicating Beckman as its source. On the other hand, Astra uses brand names such as "Xylocaine" to identify its products, while "Astra Pharmaceutical" and "ASTRA" are used as house names. In addition, as previously mentioned, the acronym "ASTRA" is accompanied by the words "Automatic Stat/Routine Analyzer" when it appears on a Beckman machine, further distinguishing the manner in which the parties use the mark.

It is well settled that under certain circumstances otherwise similar marks are not likely to be confused where used in conjunction with the clearly displayed name and/or logo...

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