Bass Buster, Inc. v. Gapen Mfg. Co., Inc.
| Decision Date | 08 October 1976 |
| Docket Number | Civ. A. No. 73CV437-W-3. |
| Citation | 420 F. Supp. 144 |
| Parties | BASS BUSTER, INC., Plaintiff, v. GAPEN MANUFACTURING COMPANY, INC., and Daniel D. Gapen, doing business as Gapen's, Gapen's Flies, and Gapen Tackle Co., Defendants. |
| Court | U.S. District Court — Western District of Missouri |
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Edward W. Mullen, Deacy & Deacy, Kansas City, Mo., Beverly Pattishall, Chicago, Ill., for plaintiff.
Carter H. Kokjer, Lowe, Kokjer, Kircher, Wharton & Bowman, Kansas City, Mo., for defendants.
FINDINGS OF FACT, CONCLUSIONS OF LAW, AND FINAL JUDGMENT FOR PLAINTIFF GRANTING PRAYERS FOR INJUNCTIVE RELIEF AND AN ACCOUNTING
This is an action for trademark infringement and unfair competition brought under the Lanham Act, Sections 1051-1127, Title 15, United States Code, and the common law.1
Plaintiff, a manufacturer of fishing lures, claims trademark rights in the name BEETLE used separately and in the forms BEETLE SPIN, SUPER BEETLE, and ORIGINAL BEETLE, for a combination jig fishing lure with a plastic body. Plaintiff contends that defendants, through their use of the name BEETLE separately and in the forms BEETLE PLUS and UGLY BEETLE, for virtually identical jig fishing lures with plastic bodies, have infringed upon its trademark. Plaintiff seeks equitable relief in the form of an injunction against defendants' continued use of the name BEETLE for its identical lure and an accounting for profits derived by defendants from their use of the name BEETLE, and costs including attorneys' fees.
Defendants, who also manufacture and sell fishing lures, contend that plaintiff cannot acquire valid trademark rights or other legally protectable rights in the name BEETLE. Defendants contend that the name BEETLE is descriptive of the natural bait insect that the jig with a plastic body resembles; that no secondary meaning has attached to plaintiff's use of the claimed mark; that the name BEETLE is "deceptively misdescriptive" when applied to plaintiff's lure; that third party usage has destroyed the distinctiveness of the mark; and that trademark rights cannot be acquired in a name of a simulated natural bait for a fishing lure. They have counterclaimed for a declaratory judgment that plaintiff cannot acquire valid trademark rights in the name BEETLE, and they seek cancellation of plaintiff's federal and state trademark registrations.
Jurisdiction exists over plaintiff's federal trademark infringement and unfair competition claims, and over defendants' counterclaim for cancellation of plaintiff's federal registration, under Section 1121, Title 15, United States Code, and Section 1338(a), Title 28, United States Code. Jurisdiction exists over plaintiff's common law unfair competition claim under Section 1338(b), Title 28, United States Code, because it is joined with a "substantial and related claim under the . . . trade-mark laws." Finally, jurisdiction exists over plaintiff's claim for common law trademark infringement, and over defendants' counterclaim for cancellation of plaintiff's state registrations, under Section 1332, Title 28, United States Code, because the parties are citizens of different states and the value of the rights in controversy exceeds $10,000.00, exclusive of interest and costs.
After completion of the pretrial proceedings and the filing of Pretrial Order No. 2, the trademark infringement, unfair competition, cancellation and declaratory judgment issues were tried by the Court without a jury in a plenary evidentiary trial. Comprehensive post-trial briefs and proposed findings of fact and conclusions of law have been filed. Oral argument on the proposed findings of fact and conclusions of law was heard. After careful consideration of the stipulations of fact, the evidence presented, and the factual and legal contentions of the parties, the following findings of fact and conclusions of law are made.
The material factual issues in the action include the following: (1) whether plaintiff has acquired trademark rights in the name BEETLE for the combination jig fishing lure with a plastic body, by prior appropriation and use, and through state and federal registration, of the name; (2) whether the name BEETLE is descriptive of the combination jig fishing lure with a plastic body; (3) if it is descriptive, whether the name BEETLE has acquired secondary meaning; (4) whether the name BEETLE is "deceptively misdescriptive" as applied to the jig fishing lure with a plastic body;2 (5) whether the distinctiveness of the mark has been destroyed by third party usage; (6) whether there is a likelihood of confusion between plaintiff's and defendants' use of the word BEETLE; and (7) whether defendants have used the name BEETLE in a manner which results in "passing off" its product for that of plaintiff.
Plaintiff, Bass Buster, Inc. (hereinafter "plaintiff"), is a Delaware corporation, having its principal place of business in Amsterdam, Missouri. Its business consists of the manufacture, advertising, and sale of fishing lures. Plaintiff is the successor in interest to the business of Virgil Ward, an individual, who did business under the names "Bass Buster Company" and "Ward Company"; and to "Bass Buster, Inc.," a Missouri corporation which earlier acquired the business of Virgil Ward in 1970. Plaintiff is a subsidiary of Johnson Diversified, Inc., a corporation, which purchased the assets of Bass Buster, Inc., the Missouri corporation in 1971.3
Virgil Ward began manufacturing fishing lures in 1948. The business was initially unsuccessful and was temporarily abandoned. In 1955, Ward resumed the manufacture and marketing of fishing lures on a relatively small basis. In 1962, Ward won a fishing competition known as "The World Series of Sport Fishing." The attendant publicity accelerated the expansion of his fishing lure business, and enabled Ward to obtain radio and television publicity which aided his fishing lure business.
In late 1963 or early 1964, Ward was approached by an amateur sport fisherman Claire W. ("Chuck") Wood with a model of a fishing lure which Wood had developed. Wood had fished extensively with relatively long plastic worms, but had become frustrated by missed strikes. As a result Wood began to experiment with shortening the length of the plastic worm. He cut off successively longer lengths of the worm's tail beyond the hook. The resulting lure had a lead head, a plastic worm-like body surrounding the bend and shank of the hook and a split in the terminal trailing part. This lure is hereinafter referred to as the "jig with a plastic body," and is more fully described in part I(B), infra.
Wood supplied hand made models of the jig with a plastic body and urged Ward to manufacture the lure. Initially Ward was hesitant, but later agreed to begin manufacture after Wood informed him that a competitor, the Mar Lynn Lure Company of Blue Springs, Missouri, was considering marketing the lure. Wood's compensation for supplying the idea and models was a supply of lures from time to time, with which he was satisfied.
In 1964, plaintiff introduced the jig with a plastic body under the name BEETLE BUG. After about a month, the name of this lure was shortened to BEETLE. Ward states that the name BEETLE was chosen in an effort to capitalize on the name of the then popular "Beatles" musical group from England.
Since 1964, plaintiff has marketed modified versions of these BEETLE lures under names combining BEETLE with other words. In 1965, a larger size jig with a plastic body was introduced as the SUPER BEETLE. In 1968 or 1969 plaintiff attached a spinner to the BEETLE lure and named the combination the BEETLE SPIN. Finally, in 1971 or 1972, plaintiff began to market the BEETLE lures as the ORIGINAL BEETLE. Each of these lures has been marketed in several different colors and sizes.
Sales of plaintiff's line of BEETLE lures increased steadily from 1964 to the date of the trial. In 1968 the BEETLE lures accounted for approximately 50 percent of plaintiff's annual sales of $360,000. By the 1970-71 fiscal year of the plaintiff, the BEETLE lures accounted for approximately 75 percent of plaintiff's annual sales of $900,000. By the 1974-75 fiscal year, plaintiff's annual sales had increased to $2,800,000 with the BEETLE lures accounting for 75 percent of the sales.
Plaintiff's BEETLE lures have been advertised extensively in print advertising and catalogues distributed throughout the nation since 1964.4 However, the principal form of advertising has been promotion of the lures on Virgil Ward's periodic continuing television program, "Championship Fishing."
Ward first began to broadcast fishing programs in 1962 on radio. In 1964, Ward and his son, Billy Ward, appeared several times on a television sports show, broadcast in the Springfield, Missouri, area, named "Ozark Outdoors," showing film clips of fish being caught on their fishing lures. In 1965, Ward became a "permanent guest" on this television program. In 1966, Ward began his own television program, "Championship Fishing," which was telecast in the Kansas City area. By 1969, "Championship Fishing" was telecast by television stations across the United States. The number of stations telecasting the program increased to forty-six in 1970, fifty-two in 1971, eighty in 1972.
Promotion of plaintiff's BEETLE lures in connection with "Championship Fishing" took two forms.
First, until 1962, the lures were promoted extensively by name during the body of the program. Films were shown of Ward and his guests fishing with the BEETLE lures. In narrating the film segments, Ward frequently referred to BEETLE lures by name and commented on the manner in which they were used and their success. This form of promotion ended in 1972 when the Federal Communications...
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