Black Hills Jewelry Mfg. Co. v. LaBelle's

• Decision Date: 01 May 1980
• Docket Number: CIV79-5070 and CIV79-5125.,No. CIV79-5108,CIV79-5108
• Citation: 489 F. Supp. 754
• Parties: BLACK HILLS JEWELRY MANUFACTURING CO., a South Dakota corporation; F. L. Thorpe Company, a South Dakota corporation and Stamper Jewelry Manufacturing, a South Dakota corporation, Plaintiffs, v. LaBELLE'S, a corporation, and Gold Rush, Inc. et al., and Herberger's Department Store, a corporation, Defendants.
• Court: U.S. District Court — District of South Dakota

489 F. Supp. 754

BLACK HILLS JEWELRY MANUFACTURING CO., a South Dakota corporation; F. L. Thorpe Company, a South Dakota corporation and Stamper Jewelry Manufacturing, a South Dakota corporation, Plaintiffs, v. LaBELLE'S, a corporation, and Gold Rush, Inc. et al., and Herberger's Department Store, a corporation, Defendants.

Nos. CIV79-5108, CIV79-5070 and CIV79-5125.

United States District Court, D. South Dakota.

May 1, 1980.

George A. Bangs and James P. Hurley, Rapid City, S. D., for plaintiffs.

Gene N. Lebrun, Rapid City, S. D., Ronald L. Haskvitz and J. Christopher Cuneo, Minneapolis, Minn., for defendants.

MEMORANDUM OPINION

BOGUE, District Judge.

Plaintiffs bring this action under 15 U.S.C. § 1125(a), which is § 43(a) of what is commonly known as the Lanham Act. This section provides:

Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.

Plaintiffs are claiming that under this section they have the exclusive right to the use of the term Black Hills Gold Jewelry.

Under the Lanham Act the interests of the public are supreme. Ebeling and Reuss Co. v. International Collectors Guild, Ltd., 462 F.Supp. 716 (E.D.Pa.1978). The ultimate test under the Act is whether there is a likelihood of confusion among consumers. New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194 (9th Cir. 1979); Quabaug Rubber Co. v. Fabiano Shoe Co., Inc., 567 F.2d 154 (1st Cir. 1977); Boston Professional Hockey Ass'n, Inc. v. Dallas Cap and Emblem Manufacturing, Inc., 510 F.2d 1004 (5th Cir. 1975). To establish such confusion it is not necessary that there be specific examples of consumer confusion presented to the court. Continental Distilling Sales Co. v. Brancato, 173 F.2d 296 (8th Cir. 1949); John Wright, Inc. v. Casper Corp., 419 F.Supp. 292 (E.D.Pa. 1976) aff'd 587 F.2d 602 (3rd Cir. 1978); Apollo Distributing Co. v. Apollo Imports Inc., 341 F.Supp. 455 (S.D.N.Y.1972); State of Florida v. Real Juices, Inc., 330 F.Supp. 428 (M.D.Fla.1971). The court need only find a likelihood of confusion.

This court has found that the use of the term Black Hills Gold Jewelry by the defendants has created the likelihood of consumer confusion. Defendants, however, claim that plaintiffs are barred from recovery as a matter of law because they are unable to establish secondary meaning, which defendants assert is a necessary part of plaintiffs' claim under § 1125(a). Defendants argue that the prime element of secondary meaning is an association in the mind of the consumer between the mark in question and a single source of the product. Defendants cite numerous cases and other authorities to support this position. Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296 (9th Cir. 1979); RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058 (2nd Cir. 1979); Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir. 1976), cert. denied 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976); Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976); President & Trustees of Colby College v. Colby College-New Hampshire, 508 F.2d 804 (1st Cir. 1975); Carter-Wallace Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970); Aloe Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845 (5th Cir. 1970) cert. denied 398 U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d 90 (1970); Spangler Candy Co. v. Crystal Pure Candy Co., 353 F.2d 641 (7th Cir. 1965); Shoppers Fair of Arkansas, Inc. v. Sanders Co., 328 F.2d 496 (8th Cir. 1964); G & C Merriam Co. v. Saalfield, 198 F. 369 (6th Cir. 1912); John Wright, supra; Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F.Supp. 129 (S.D.N.Y.1972); Douglas Laboratories Corp. v. Copper Tan, 108 F.Supp. 837 (S.D.N.Y.1952); In re Charles S. Loeb Pipes, Inc., 190 U.S.P.Q., 238 (1975); McCarthy, Trademarks & Unfair Competition, § 15:2A. Although there are cases in which courts have found secondary meaning without a single source, Pillsbury-Washburn Flour Mills Co. v. Eagle, 86 F. 608 (7th Cir. 1898), Community of Roquefort v. William Faehndrich, Inc., 198 F.Supp. 291 (S.D.N.Y. 1961) aff'd 303 F.2d 494 (2nd Cir. 1962), this court does not argue with the authority cited by defendants or with the general proposition that to establish secondary meaning there must be a single source of the product in question.

Most of the cases dealing with § 1125(a) concern an attempt to protect an unregistered common law trade mark and obtain exclusive use of that mark. See, e. g., New West Corp., supra; L'Aiglon Apparel v. Lana Lobell, 214 F.2d 649 (3rd Cir. 1954). This appears to be what plaintiffs are asking for in this case. In order to establish exclusive use to a mark it appears secondary meaning and a single source must be established. As noted above, plaintiffs are unable to do this. However, this does not foreclose their ability to recover under the Lanham Act.

Defendants assert that geographic names, if they are not generic, are descriptive and as such require secondary meaning before they are entitled to protection under the Lanham Act. Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365 (1901); Aloe Creme Laboratories, supra; Continental Motors Corp. v. Continental Aviation Corp., 375 F.2d 857 (5th Cir. 1967); North American Aircoach Systems v. North American Aviation, 231 F.2d 205 (9th Cir. 1955); National Lead Co. v. Wolfe, 223 F.2d 195 (9th Cir. 1955); Capehart v. Lund, 14 Alaska 11, 107 F.Supp. 10 (1952). This court agrees that if a geographic name is to be used exclusively by a producer that secondary meaning and a single source must be established. However, there are certain instances where geographic names are entitled to limited protection without the necessity of establishing secondary meaning and that the product in question comes from a single source.

A number of cases predating the Lanham Act dealt with situations where a manufacturer or a group of manufacturers from a certain area asserted their right to the use of a geographic designation. Grand Rapids Furniture Co. v. Grand Rapids Furniture Co., 127 F.2d 245 (7th Cir. 1942); Pillsbury-Washburn, supra; California Fruit Canners' Ass'n v. Myer, 104 F. 82 (D.Md.1899); City of Carlsbad v. Kutnow, 68 F. 794 (S.D.N.Y. 1895) aff'd 71 F. 167 (2nd Cir. 1895); Southern White Lead Co. v. Cary, 25 F. 125 (N.D.Ill.1885); Anheuser-Busch Brewing Ass'n v. Piza, 24 F. 149 (S.D.N.Y.1885); Northcutt v. Turney, 101 Ky. 314, 41 S.W. 21 (1897); El Modello Cigar Mfg. Co. v. Gato, 25 Fla. 886, 7 So. 23 (1890); Newman v. Alvord, 51 N.Y. 189 (1872). See also La Republique Francaise v. Saratoga Vichy Spring Co., 191 U.S. 427, 24 S.Ct. 145, 48 L.Ed. 247 (1903); Manitou Springs Mineral Water Co. v. Schueler, 239 F. 593 (8th Cir. 1917); Finchley v. Finchly Co., 40 F.2d 736 (D.Md.1929). Several of these cases involved a situation similar to what we have here where a group of manufacturers from a certain area banded together to prevent an outsider from using a geographic description that the complainants had been using to identify their product.

In Pillsbury-Washburn, supra, a group of flour manufacturers in Minneapolis who produced flour labelled with the words "Minneapolis Patent" or "Minneapolis, Minnesota" brought a suit for injunctive relief against a company which produced flour in Chicago also using the word "Minneapolis" to identify its product. The court held that the plaintiffs had built a reputation for quality and enjoined the defendants from using the word "Minneapolis" to describe any flour not produced in Minneapolis.

Another case dealing with multiple plaintiffs is California Fruit Canners, supra. In that case the plaintiffs were a number of California corporations engaged in pear canning who employed the term "California Pears" to label their product. The defendants were engaged in the canning business in Baltimore. They also labelled their pears as "California," although they were neither grown nor canned there. In holding for the plaintiffs the court stated:

This is a clear case of fraudulent competition by the use of a geographical name which the complainants are entitled to use, but the respondents are not. It is true that no one single packer can acquire an exclusive right to use, as a private trademark, "California Pears," or "California," as a label on canned pears; but all the persons who put up California grown pears in California have a right to use it; and it has acquired . . . an especial trade significance of value. Id. at 83.

One more case involving multiple plaintiffs asserting the right to a geographical term is Grand Rapids Furniture, supra. The plaintiffs in that case were a group of furniture manufacturers from Grand Rapids, Michigan who produced high quality furniture which was designated as "Grand Rapids furniture." They sought to enjoin a Chicago furniture manufacturer from operating under the name of the Grand Rapids Furniture Company. The court, in finding the equities in the case strongly supporting plaintiffs' position, issued the injunction. In doing so the court stated:

The defendants have formed corporations under the name "Grand Rapids Furniture Company"

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