Berner Intern. Corp. v. Mars Sales Co.

• Decision Date: 05 March 1993
• Docket Number: No. 91-3542,91-3542
• Parties: BERNER INTERNATIONAL CORPORATION v. MARS SALES COMPANY, Appellant.
• Court: U.S. Court of Appeals — Third Circuit

Page 975

987 F.2d 975

26 U.S.P.Q.2d 1044

BERNER INTERNATIONAL CORPORATION v. MARS SALES COMPANY, Appellant.

No. 91-3542.

United States Court of Appeals,

Third Circuit.

Argued Feb. 10, 1992.

Decided March 5, 1993.

James R. Kyper, (argued), Christopher H. Gebhardt, Kirkpatrick & Lockhart, Pittsburgh, PA, for appellee.

David C. Bruening, Webb, Burden, Ziesenheim & Webb, P.C., Pittsburgh, PA, Richard E. Lyon, Jr., (argued), Lyon & Lyon, Los Angeles, CA, for appellant.

Before: BECKER, ROTH and HIGGINBOTHAM, Circuit Judges.

OPINION OF THE COURT

ROTH, Circuit Judge:

This appeal arises from a trademark dispute regarding Mars Sales Company's registered trademark, "Air Door." Berner International Corporation (Berner) filed the present action for declaratory judgment, seeking to establish that "Air Door" is a generic or common descriptive name of Mars' product and for that reason not subject to exclusive use. The suit also seeks cancellation of Mars' federal trademark registration of "Air Door" and an injunction prohibiting Mars from threatening Berner or its customers with claims of trademark infringement for using the term "air door" to identify or describe their products. Berner filed a motion for summary judgment, limited solely to the issue of whether Mars' Air Door trademark was generic when it was adopted by Mars in October 1962. The district court found that "Air Door" was generic at that time; it ordered Mars' trademark registration invalidated and permanently enjoined Mars from threatening to sue Berner for trademark infringement for use of the phrase "Air Door." Because we conclude that the district court utilized incorrect legal criteria in its analysis of whether "Air Door" was a generic term in 1962, we will reverse and remand this case to the district court for further proceedings consistent with this opinion.

I.

Mars and Berner compete in the production and sale of devices that use a barrier of moving air directed across an open doorway or other opening for temperature and insect control. The parties agree that one generic appellation for such devices is "air curtain." Air curtains were initially manufactured in the United Kingdom and sold by the Dyfoam Corporation. In 1960 or 1961, the Miniveil division of Dyfoam was organized to market the product in the United States. In 1966, Miniveil was separately incorporated as the Miniveil Corporation; its name was changed in 1974 to Berner International Corporation. Berner initially marketed its product under the "Miniveil" trademark designation.

Mars began selling air curtains in 1962. Mars alleges that Martin Smilo, president of Mars, coined and adopted the term "air door" to distinguish his device from others on the market. Importantly, Mars alleges that in 1962, when it first adopted the mark, "air door" was not commonly used by the relevant consumers of its products; therefore, Mars contends that "air door" was not "generic" when it was adopted as a trademark. Mars alleges a continual use of the term as a trademark on and in connection with its product from the time of its entrance into the "air curtain" market until the present. Mars has advertised its product extensively under the "air door" mark and since 1980 has conducted business under the name "MARS AIR DOORS."

When Mars first entered the market, its product was relatively new in this country and was referred to by a number of names with "air curtain" being the most common. However, the terms "air door" and "air curtain door" were also used in the manufacturing industry to some extent to describe this product. Mars alleges that, until very recently, it was the only manufacturer to use the term "air door" as a designation for its product.

During the 1970's and 1980's, a number of manufacturers joined and left the industry. Smilo has stated that only in the last few years has he been aware that companies other than Mars have begun to use the term "air door" to describe their products. When another manufacturer, Leading Edge, used the term in connection with or on its product, Mars objected and the company refrained from such use. Early in 1989, Mars learned that Berner was using the term "air door" in promotion of its products. After objections by Mars, Berner filed this lawsuit seeking a declaratory judgment.

In support of its position that "air door" is not generic, Mars has offered the testimony of Martin Smilo, its founder and president, of Herbert Edey, president of Edey Manufacturing Company, a manufacturer and seller of air curtains from 1961 to 1976, and of Jack Haugen, an individual involved in the air curtain business since 1961. All of these witnesses assert that "air curtain" was and has been the only commonly used appellation for their products. Mars contends that the term "air door" was essentially invented by Martin Smilo in 1962 and in any event was not commonly used at that time. Mars also has introduced into evidence numerous brochures, instruction sheets, announcements and similar documents that purportedly demonstrate that members both of the air curtain industry and of the consuming public generally referred to the products at issue as "air curtains" or other designations that did not include "air door." Finally, Mars has submitted a number of articles from trade journals and patents from the early 1960's that use terms other than "air door" to refer to these products.

Berner, on the other hand, alleges that throughout the period from initial sales of these products in the United States to and after 1962, the products sold by Dyfoam and Miniveil were referred to interchangeably as "air curtains" or "air doors." Berner contends that the term "air door" was used as an explanation to customers to describe the device, i.e., "a door comprised of a moving screen or curtain of air, in other words an 'air door.' " Berner asserts that both "air door" and "air curtain" were generic or common descriptive names for this type of product during the period from 1957 to 1962.

Berner, in support of its position, has offered the testimony of Erling Berner, the Founder of Dyfoam, Miniveil and now Berner Corporation, who asserts that both "air curtain" and "air door" were common descriptive names for his product during the period from 1957 to 1962. Moreover, Berner has introduced four trade journal articles from the relevant time period that refer to the products at issue as "air doors" and has offered a number of its own business records from 1960-62 that also refer to these products as "air doors." Berner has also offered Mars publicity articles that Berner contends use the term "air door" generically. Finally, Berner offers one dictionary from 1963 that defines "air door" as "[a] door for controlling air currents in a mine."

II.

The district court had jurisdiction over this Lanham Act case pursuant to 28 U.S.C. §§ 1331 and 1338. This court has appellate jurisdiction over the final order of the district court pursuant to 28 U.S.C. § 1291.

This court's review of a grant of summary judgment is plenary. See Erie Telecommunications, Inc. v. City of Erie, 853 F.2d 1084, 1093 (3d Cir.1988). "On review the appellate court is required to apply the same test the district court should have utilized initially." Goodman v. Mead Johnson & Co., 534 F.2d 566, 573 (3d Cir.1976), cert. denied, 429 U.S. 1038, 97 S.Ct. 732, 50 L.Ed.2d 748 (1977).

A court may grant summary judgment only when the submissions in the record "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." Fed.R.Civ.P. 56(c). "The inquiry performed is the threshold inquiry of determining whether there is the need of a trial--whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). The party opposing summary judgment must "do more than simply show that there is some metaphysical doubt as to material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). If the opposing party's "evidence is merely colorable or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. at 2510-11 (citations omitted).

However, in determining whether summary judgment is appropriate, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Id. at 255, 106 S.Ct. at 2513. The inquiry is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Id. at 251-52, 106 S.Ct. at 2512. If the district court failed "to apply the correct legal standard" to its threshold factual inquiry, we must reverse or remand for reevaluation of the record. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 307 (3d Cir.1986).

III.

In the present case, Berner sought a declaratory judgment that the term "air door" is a generic term and was so at the time Mars adopted the mark in 1962; Berner also sought an injunction prohibiting Mars from threatening to sue Berner for its use of the term. The motion for summary judgment was limited to the issue of whether the term "air door" was generic in 1962 when it was first adopted by Mars. ¹ The district court found that the term was generic at that time and, therefore, cannot properly be the subject of trademark protection. See Berner Int'l Corp. v. Mars Sales Co., No. 89-1999 (W.D.Pa. July 15, 1991) [hereinafter "district court opinion"], at 7-13. The court held that "members of the manufacturing industry" commonly used the term "air door" prior to 1962 and, therefore, that no genuine issue of material fact existed regarding whether the term was generic and...