Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp.

• Decision Date: 07 October 1983
• Docket Number: No. 82-5003,82-5003
• Citation: 716 F.2d 854
• Parties: BROOKS SHOE MANUFACTURING CO., INC., a Pennsylvania Corporation, Plaintiff- Appellant, v. SUAVE SHOE CORPORATION, a Florida Corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 854

716 F.2d 854

221 U.S.P.Q. 536

BROOKS SHOE MANUFACTURING CO., INC., a Pennsylvania Corporation, Plaintiff- Appellant, v. SUAVE SHOE CORPORATION, a Florida Corporation, Defendant-Appellee.

No. 82-5003.

United States Court of Appeals Eleventh Circuit.

Oct. 7, 1983.

Richard M. Leslie, Shutts & Bowen, Miami, Fla., Alan H. Bernstein, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., for plaintiff-appellant.

Greenberg, Traurig, Askew, Hoffman, Lipoff, Quentel & Wolff, Marlene K. Silverman, Barry D. Hunter, Miami, Fla., Allan M. Lowe, Arlington, Va., for defendant-appellee.

Appeal from the United States District Court for the Southern District of Florida.

Before GODBOLD, Chief Judge, ANDERSON, Circuit Judge, and GOLDBERG ^*, Senior Circuit Judge.

R. LANIER ANDERSON, III, Circuit Judge:

Appellant, Brooks Shoe Manufacturing Co., Inc. ("Brooks") brought this action for trade dress infringement against Suave Shoe Corporation ("Suave"). After a non-jury trial, the District Court for the Southern District of Florida entered judgment in favor of Suave. We affirm.

I. FACTS ¹

Brooks is a Pennsylvania corporation which has been selling athletic shoes and related products since 1914. ² Most of the shoes Brooks sells are "high performance" shoes, made of lightweight, durable, high-quality materials and designed to meet the needs of serious athletes. The majority of Brooks' sales are to stores which sell a full line of sporting goods or stores which specialize in selling athletic shoes. In 1978, Brooks shoes generally sold at retail prices in excess of $25 per pair.

In 1973, Brooks began selling shoes with a "V" design on the sides. By 1977, this "V" design appeared on almost every shoe in the Brooks line. In the late 1970's, Brooks engaged in substantial promotional activities, advertising its shoes in magazines such as "Runner's World" and "Running Times," sponsoring races and other athletic events, and paying various professional athletes to wear Brooks shoes. During this same period of time, the sales of Brooks shoes increased rapidly. ³

Suave, a Florida corporation, is primarily engaged in manufacturing and selling casual, athletic, work, dress and leisure shoes. Traditionally, Suave has been a major manufacturer of canvas shoes. In response to changing consumer preferences in the mid-1970's, however, Suave began manufacturing athletic and leisure shoes with vinyl, man-made suede and nylon uppers. Suave sells most of its shoes to mass merchandisers, variety stores, drug stores, and discount stores. Generally, Suave shoes are unbranded or carry the retailer's brand name. Suave shoes are made of inexpensive materials, and in 1978 Suave shoes generally sold at retail prices ranging from $8 to $12.

In January of 1979, Suave began manufacturing and selling a line of athletic and leisure shoes which had a "V" design on the sides. ⁴ Brooks, through its attorney, promptly notified Suave that it believed that the use of the "V" design infringed on Brooks' trademark and trade dress rights. When Suave did not immediately discontinue production of shoes with the "V" design, ⁵ Brooks brought an action in the district court alleging violations of Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), the Florida Deceptive and Unfair Trade Practices Act, the Florida Anti-Dilution Statute, and the common law of unfair competition. The district court refused to grant a preliminary injunction and, after a six-day non-jury trial, entered judgment for Suave on all counts. On appeal, Brooks contends that the district court erred in entering judgment for Suave on the Lanham Act claim. ⁶

II. DISCUSSION

In order to prevail on a trade dress infringement claim under Sec. 43(a) of the Lanham Act, a plaintiff must prove that its trade dress has acquired secondary meaning, ⁷ that features of its trade dress are primarily nonfunctional, and that the defendant's product has trade dress which is confusingly similar to its own trade dress. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir.1983). In this case, the district court found that Brooks had failed to prove that the "V" design on its shoes had acquired secondary meaning as of January 1979, when Suave began selling shoes with a similar trade dress. ⁸ Brooks attacks this finding on three grounds, each of which is considered below.

Brooks' first contention is that it did not have to prove secondary meaning because its "V" design is inherently distinctive. Brooks points out that the former Fifth Circuit's decision in Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695 (5th Cir., 1981) (Unit A), ⁹ indicated that a plaintiff in a trade dress infringement action need not prove secondary meaning when the product's trade dress is inherently distinctive. Cf. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d at 981 n. 25 (suggesting in dicta that the approach taken in Chevron Chemical "has merit"). Thus, Brooks argues, the district court erred when it required Brooks to prove that its design had acquired secondary meaning.

The difficulty with Brooks' argument is that the district court assumed that a plaintiff need not prove secondary meaning when its trade dress is inherently distinctive, but found, as a matter of fact, that "there is nothing arbitrary or fanciful about the Brooks' 'V' that would make it inherently distinctive." 533 F.Supp. at 77. The district court's factual finding cannot be set aside unless clearly erroneous. Fed.R.Civ.P. 52(a); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 855, 102 S.Ct. 2182, 2188-2189, 72 L.Ed.2d 606 (1982) (noting, in a trademark case, that an appellate court must accept the trial court's findings of fact unless it has a " 'definite and firm conviction that a mistake has been committed' ") (quoting United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948)). Our review of the record indicates that the district court's finding was not clearly erroneous.

In Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (Cust. & Pat.App.1977), the Court of Customs and Patent Appeals outlined several factors which should be considered when determining whether a particular design is inherently distinctive. Among the factors are "whether it [is] a 'common' basic shape or design, whether it [is] unique or unusual in a particular field, [and] whether it [is] a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods ...." Id. at 1344 (footnotes omitted).

In this case, each of these factors indicates that Brooks' trade dress is not inherently distinctive. As the district court noted, the design on the sides of Brooks shoes "could be characterized as a 'V' on its side, an arrow, or a '7'." 533 F.Supp. at 77. Such a basic geometric shape generally is not considered inherently distinctive. See 1 J.T. McCarthy, Trademarks and Unfair Competition, Sec. 7:12, at 172 (1973) ("ordinary geometric shapes ... are regarded as non-distinctive and protectable only upon proof of secondary meaning"). Moreover, Brooks' trade dress is not unique or unusual in the field of athletic shoes, but is merely a "refinement of a commonly-adopted and well-known form of ornamentation ... for the goods." Seabrook Foods, 568 F.2d at 1344. ¹⁰ In fact, in an amendment to its application to register the "V" design on its shoes with the patent and trademark office, Brooks itself noted that "the buying public is constantly exposed to a dizzifying number of 'V's', 'flashes' and 'swooshes' in the course of purchasing running shoes." Defendant's Exhibit 92 (amendment to Brooks' application to register trademark, October 20, 1978).

Further, although Brooks relies heavily on the former Fifth Circuit's decision in Chevron Chemical, supra, to support its contention that the "V" design is inherently distinctive, examination of the facts of that case indicates that Brooks' reliance is misplaced. The trade dress which the court found was inherently distinctive in Chevron Chemical involved "the combination of particular hues of colors, arranged in certain geometric designs, presented in conjunction with a particular style of printing, in such fashion that, taken together, they create a distinctive visual impression." 659 F.2d at 703. The "V" design on the sides of Brooks shoes is much more similar to the three-stripe design on the sides of Adidas athletic shoes, which the Trademark Trials and Appeals Board found could be registered as a trademark only after the manufacturer offered proof of secondary meaning. See In re Dassler, 134 U.S.P.Q. 265, 266 (T.T.A.B.1962) ("In view of applicant's extensive promotion of its '3 stripe' mark over the years together with the trade recognition of this design as indicating origin in applicant ... applicant has made a sufficient prima facie showing that the design in issue does identify its goods"); cf. 1 J.T. McCarthy, supra, Sec. 7:7, at 164-66 (discussing the Adidas case and other cases in which applicants argued that their designs were inherently distinctive). Accordingly, we hold that the district court did not err when it ruled that Brooks had to prove secondary meaning because the "V" design on its athletic shoes is not inherently distinctive.

Brooks' second contention on appeal is that it did not have to prove secondary meaning because the district court found that Suave "intentionally copied the 'V' design and the color schemes used by Brooks and other shoe manufacturers." 533 F.Supp. at 75. According to Brooks, once the district court made this finding of intentional copying, the court should have presumed secondary meaning as a matter of law.

We recognize that some courts have indicated that proof of certain egregious conduct by a defendant, such as palming off, ¹¹ is sufficient to establish secondary meaning. See 1 J.T. McCarthy, ...