FS Services, Inc. v. Custom Farm Services, Inc.

• Decision Date: 04 December 1972
• Docket Number: No. 71-1294.,71-1294.
• Citation: 471 F.2d 671
• Parties: FS SERVICES, INC., Plaintiff-Appellant, v. CUSTOM FARM SERVICES, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

471 F.2d 671 (1972)

FS SERVICES, INC., Plaintiff-Appellant, v. CUSTOM FARM SERVICES, INC., Defendant-Appellee.

No. 71-1294.

United States Court of Appeals, Seventh Circuit.

Argued April 7, 1972.

Decided December 4, 1972.

Richard R. Trexler, Richard Bushnell and Caliste J. Alster, Chicago, Ill., for plaintiff-appellant.

Dean A. Olds, Richard H. Compere, Chicago, Ill., for defendant-appellee.

Before CUMMINGS, PELL and SPRECHER, Circuit Judges.

PELL, Circuit Judge.

Appealing from the district court's refusal to grant injunctive relief¹ for alleged trademark infringement and unfair competition, the plaintiff, FS Services, Inc. (FS), attacks the trial court's detailed findings of fact and conclusions of law, 325 F.Supp. 153, as unsupported by substantial evidence.

Plaintiff FS is an Illinois corporation organized as a farm cooperative selling a wide variety of farm oriented goods and services. Comprised of approximately 145 member companies, FS operates throughout Illinois, Iowa, and Wisconsin selling fertilizers, agriculture chemicals, livestock feeds, feeding equipment, field seeds, and petroleum products for farm equipment.

The defendant, Custom Farm Services (CFS), is a wholly owned subsidiary of the Cities Service Company specializing in the retail sales of the parent company's fertilizer and Ag chemicals. As a part of its sales program for these products, CFS offers farmers an advisory service which conducts extensive soil tests in order that fertilizers can be custom blended to the individual farmer's soil conditions. FS conducts a similar program. The two companies maintain substantially similar operations and compete for the same market in Illinois and Iowa.

The instant controversy involves the symbols employed by each party in its advertising and promotional activities. In 1956, Illinois Farm Supply Company, plaintiff's immediate predecessor, registered with the Office of Federal Trademark Registrations the FS mark currently employed by plaintiff. Since that time plaintiff has applied for and obtained eight separate registrations of the FS mark.² The FS mark is currently used not only to identify plaintiff's products but also to identify plaintiff's member businesses and the various services they offer.

While plaintiff's brief refers to its trademark as being shown in a circle design, and the Quaker Oats registry did show the letters FS in an unadorned circle, all of the registrations accomplished directly by plaintiff, and its entire field use, show the FS block letters encased in a bright red parallelogram as follows:

Defendant's mark used in connection with its business operations has the letters CFS in a circle, the margins of which have oppositely extending arrows, an example thereof being as follows:

The CFS logotype customarily employs a red background with white letters and arrows. The evidentiary exhibits reflect that the mark is ordinarily accompanied by the epexegetic words, Custom Farm Services, Inc. Use of the mark began in July of 1965 in connection with defendant's sale of bulk blend fertilizer and agricultural chemicals. There is no indication that any attempt has been made to register this mark.

On March 21, 1967, plaintiff notified defendant of the alleged trademark infringement and urged the abandonment of the CFS mark. Custom Farm Services took the position that it was not infringing plaintiff's mark by the employment of the common letters FS in its mark since those letters had come to be recognized as descriptive designations for the words "farm services," "farm supply" or "farm store." Plaintiff then instituted this infringement proceeding at which it sought to prove that the alleged infringement had occasioned actual confusion in the public mind and particularly among the customers sought to be reached by plaintiff's advertising and promotional efforts. Having failed to convince the district court of the alleged confusion, plaintiff here attacks the detailed findings of fact and conclusions of law entered by the district court as being clearly erroneous and unsupported by substantial evidence.

We turn our attention first to the question of the relative strength of the FS mark. In doing so, we recognize the well-established distinction between strong and weak trademarks: the former merely requiring proof of a likelihood of confusion to establish infringement and the latter requiring proof of a strong secondary meaning in addition to proof of likelihood of confusion. See Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627 (7th Cir. 1968), cert. denied, 392 U.S. 927, 88 S. Ct. 2286, 20 L.Ed.2d 1386; 3 Callman, Unfair Competition and Trade-Marks § 69 (2d ed.). As this court noted in Westward Coach Manufacturing Co., supra, 388 F.2d at 634, quoting Callman:

"The distinctiveness and popularity of the trademark will determine its relative strength or weakness and will accordingly define the scope of protection to be accorded the mark against the confusing similarity of others. A mark is strong if it is conspicuously distinctive; it is distinctive if the public has already been educated to accept it as the hallmark of a particular source. Then too, a mark can be distinctive either because it is unique, that is, distinctive in itself, because it has been the subject of wide and intensive advertisement, or because of a combination of both."

In the present case, we would have no difficulty in holding that plaintiff possessed a strong trademark in the red and black FS parallelogram motif. The FS symbol in the parallogram form has been the subject of extensive advertising compaigns and is widely recognized throughout the market area in question. That, however, is not at issue here for plaintiff is not seeking to prevent the use of the registered logo. Rather plaintiff seeks to prevent the use of a particular part of its symbol. The question before us is whether the letters F and S, used in colors and motif totally dissimilar to plaintiff's mark, are protected from use by anyone other than the plaintiff. Resolution of that question requires us to look beyond the distinctive FS parallelogram to determine the strength of plaintiff's mark.

We find that the letters FS do not constitute a strong mark where they are used without the parallelogram. Two separate factors impel us to this conclusion. Although the FS parallelogram is clearly distinctive and carries with it a well-established secondary meaning denoting source of origin, the letters FS when used alone hardly qualify as inherently distinctive or unique. We find no basis for finding the public has been educated to accept the letters FS as a hallmark of a particular source. Westward Coach, supra at 634. Further, we agree with defendant that the letters FS have come to signify "farm service" or "farm supply," at least to the farmers within the area in which both parties do business. The words "farm service" or "farm supply" are descriptive or generic terms as to which public policy militates against monopolization of use. Farm Service, Inc. v. United States Steel Corp., 90 Idaho 570, 414 P.2d 898 (1966). See also American Aloe Corporation v. Aloe Creme Laboratories, Inc., 420 F.2d 1248 (7th Cir. 1970), cert. denied, 398 U.S. 929, 90 S.Ct. 1820, 26 L. Ed.2d 91 and 400 U.S. 820, 91 S.Ct. 37, 27 L.Ed.2d 47; Donald F. Duncan, Inc. v. Royal Tops Manufacturing Co., 343 F.2d 655 (7th Cir. 1965). Abbreviations for generic terms where they are generally recognized must be treated similarly.

We do not say that a weak mark is entitled to no protection. However, the party alleging infringement must establish, in addition to likelihood of confusion over the competing mark, that his mark, although weak, has attained a strong secondary meaning in the mind of the public. American Aloe Corp. v. Aloe Creme Laboratories, Inc., supra, 420 F.2d at 1251; John Morrell & Co. v. Reliable Packing Co., 295 F.2d 314 (7th Cir. 1961); Farm Service, Inc. v. United States Steel Corp., supra, 90 Idaho at 591-592, 414 P.2d 898. A secondary meaning exists when a party through advertising or massive exposure has established its mark in the minds of consumers as an indication of origin from one particular source.

Reviewing the record, we find that plaintiff failed to establish a secondary meaning with respect to the letters FS where they are depicted without the parallelogram motif. Other companies operated within the same general...