Dow Corning Corp. v. Applied Power Industries, Inc.
| Decision Date | 11 August 1970 |
| Docket Number | No. 68 C 2297.,68 C 2297. |
| Citation | 322 F. Supp. 943,167 USPQ 730 |
| Parties | DOW CORNING CORPORATION, Plaintiff, v. APPLIED POWER INDUSTRIES, INC., Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
William A. Marshall and Owen J. Murray, Merriam, Marshall, Shapiro & Klose, Chicago, Ill., and Richard O. Ballentine, Dow Corning Corp., Midland, Mich., for plaintiff.
Roy E. Petherbridge, Petherbridge, O'Neill & Lindgren, Chicago, Ill., for defendant.
This is an appeal from a decision of the Trademark Trial and Appeal Board, 159 U.S.P.Q. 683 (1968), which refused to register Dow Corning's proposed trademark in Class 21 (Electrical Apparatus) and which ordered the cancellation of the same trademark in Class 6 (Chemicals). The opponent in that proceeding was Applied Power Industries, Inc., through its Blackhawk Manufacturing Co. division, which was the holder of a trademark in Class 23 (Cutlery, Machinery and Tools and Parts Thereof). Dow Corning commenced this civil action under 15 U.S.C. § 1071(b) to review the decision of the Trademark Trial and Appeal Board (hereinafter cited as Board).
Plaintiff manufactures chemical products which are sold as adhesives, protective coatings, and insulation. Defendant manufactures products used to repair automobiles, particularly frame straighteners and hydraulic jacks. The parties developed the trademarks in issue at about the same time. There was evidence to show that the designer of plaintiff's mark saw defendant's mark in the office of the designer of defendant's mark. However, it is clear that the trademarks were designed and developed independently of each other.
The important fact for purposes of development of the mark is that, as found by the Board, defendant was the first to apply its mark to its line of goods. Nothing in the evidence introduced in this court contravenes that finding. Plaintiff did offer testimony to show that it had used certain experimental labels up to two years prior to defendant's first use, but those labels differed considerably in design from the double rectangle trademark employed by defendant.
The trademark in question consists of two simple, equal rectangles, one located above the other, with a small space between them. The top rectangle in each trademark has a black background. Plaintiff has the words "DOW CORNING" written in white across the top rectangle, while defendant has "BLACKHAWK" written across the top rectangle in white. The bottom rectangle in both trademarks varies in color and has no writing on it.
The central issue is whether the Dow Corning trademark and the trademark of defendant Blackhawk Manufacturing Company are so similar that when applied to the products they sell, confusion or mistake is likely. 15 U.S.C. § 1052(d). The Board found that the substantially identical design portions of the two trademarks were distinctive and therefore distinguishing, per se. The Board also found that the parties applied their marks to overlapping products. It concluded that confusion or mistake was likely when the parties applied their respective marks to the goods they sold.
Before considering plaintiff's claims, this court's scope of review under 15 U.S.C. § 1071(b) must be defined. Upon review of a decision of the Board before the district court, the party dissatisfied with the decision is entitled to a trial de novo. That is, it is entitled to introduce new evidence before the court. Wilson Jones Co. v. Gilbert & Bennett Mfg. Co., 332 F.2d 216 (2d Cir. 1964). However, the Board's findings of fact must be accepted by the court as controlling, unless the contrary is established by evidence which in character and amount carries thorough conviction. Morgan v. Daniels, 153 U.S. 120, 14 S. Ct. 772, 38 L.Ed. 657 (1894); Watkins Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496 (7th Cir. 1962), cert. denied, 373 U.S. 904, 83 S.Ct. 1291, 10 L.Ed.2d 199 (1963).
Plaintiff introduced substantial new evidence in this court. Expert testimony was introduced to the effect that the word portion of the marks in question was dominant, and that the background portion was not distinctive per se. Moreover, a marketing expert testified that the products of the parties did not overlap, and this testimony was supported by the testimony of plaintiff's automotive market manager to the effect that plaintiff sold few products in the automotive after-market. Testimony was also given showing that plaintiff's mechanical oil was readily distinguishable from defendant's hydraulic oil. And plaintiff also introduced examples of third-party marks, including some in the automotive industry, which used double-rectangle backgrounds.
The Board found that the design portion dominated the trademarks to the exclusion of the word elements. It concluded that the double rectangle design was distinctive and therefore distinguishing, per se. With this conclusion I cannot agree.
The trademarks in issue are composite marks, composed of figurative and literal elements. In determining whether they are distinctive, they must be examined in their entirety, although individual features of the two marks may be analyzed in order to determine whether they are confusingly similar. House of Worsted-Tex. v. Deering Milliken & Co., 233 F.2d 333, 43 C.C.P.A. 908 (1956).
Assuming, contrary to the Board's finding, that the literal portion of the trademarks is the dominant feature, the two are clearly distinguishable. The words "DOW CORNING" cannot be mistaken for the word "BLACKHAWK". The Board found that the word marks of the parties might well merge into their dark backgrounds when viewed from a distance. However, the parties' products are not the type that are purchased at a distance, hence the words will not likely be merged into the background. Cf. Rock of Ages Corp. v. Hudak Bros. Monument Works, 128 U. S.P.Q. 346 (T.T.A.B.1961).
Assuming that the Board was correct in finding that the design portion of the mark is dominant, it erred in concluding that the double rectangles are distinctive and distinguishing, per se. The designer of the Blackhawk trademark testified that two rectangles, by themselves, had no distinctiveness. On direct examination by defendant, Mr. MacMurray testified:
"I would have to say that through the years I have seen thousands of combinations of rectangles, some of which undoubtedly were red and black."
It is well settled that common basic shapes such as circles, squares, ovals, and rectangles, when used as vehicles...
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...374 (1976); Conard-Pyle Co. v. Thuron Industries, Inc., 201 U.S.P.Q. 733, 736 (N.D.Tex.1978); Dow Corning Corp. v. Applied Power Industries, Inc., 322 F.Supp. 943, 944 (N.D.Ill.1970); Anglo Fabrics Co. v. Fabriken Anglomac A/S, 282 F.Supp. 454, 457 (D.D.C.1968).5 Both parties to the civil a......
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...Products, Inc. v. Sunway Fruit Products, Inc., 7 Cir., 311 F.2d 496, 498 (1962) . . . . Accord, Dow Corning Corp. v. Applied Power Industries, Inc., 322 F.Supp. 943, 944 (N.D.Ill.1970). Thus while the alternative review procedures under Section 1071(b) are designed to allow the litigants to......
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