Gimix, Inc. v. JS & A Group, Inc.

• Citation: 217 U.S.P.Q. 677,699 F.2d 901
• Decision Date: 01 February 1983
• Docket Number: No. 82-1303,82-1303
• Parties: GIMIX, INC., Plaintiff-Appellant, v. JS & A GROUP, INC., Auto Page, Inc., and Iwata Electric Co., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 901

699 F.2d 901

217 U.S.P.Q. 677

GIMIX, INC., Plaintiff-Appellant, v. JS & A GROUP, INC., Auto Page, Inc., and Iwata Electric Co.,

Defendants-Appellees.

No. 82-1303.

United States Court of Appeals,

Seventh Circuit.

Argued Nov. 3, 1982.

Decided Feb. 1, 1983.

J.B. Muskal, Leydig, Voit, Osann, Mayer & Holt, Ltd., Chicago, Ill., for plaintiff-appellant.

George H. Gerstman, Pigott, Gerstman & Gilhooly, Ltd., George B. Newitt, Allegretti, Newitt, Witcoff & McAndrews, Chicago, Ill., for defendants-appellees.

Before PELL and CUDAHY, Circuit Judges, and BONSAL, Senior District Judge. ^*

CUDAHY, Circuit Judge.

This case comes before us under our jurisdiction over trademarks. 15 U.S.C. Sec. 1121, 28 U.S.C. Sec. 1338. Appellant Gimix, Inc. ("Gimix") sued defendants Iwata Electric Co. ("Iwata"), Auto Page, Inc., and JS & A Group, Inc. ("JS & A") for trademark infringement, false advertising, unfair competition, deceptive practices, injury to business reputation, dilution and unjust enrichment. The district court granted the defendants' motion for summary judgment on the grounds that the term in question--"Auto Page"--was generic and thus that Gimix had no protectible rights in it; thus Gimix also did not have standing to raise the false advertising claims. We affirm the district court's order, although we do so on grounds other than those relied on below.

I.

Plaintiff-appellant, Gimix, is a manufacturer of telephone products and computers. In 1975 Gimix began to market an automatic dialing device. The most common use of this device, although not the only use, ¹ is to connect an automatic telephone answering service with a paging terminal; the machine responds to a message left with an answering service by automatically dialing a paging terminal, causing it to notify the user, via the user's "beeper," that a message has been left on the telephone answering machine. Gimix markets this device through dealers, such as telephone stores and answering machine distributors; the machine is also promoted at trade shows.

On April 26, 1976, Gimix applied for a patent on this product, which it described in the application variously as an "automatic dialer" or as an "automatic page." The device has been advertised both under the name of "Gimix Auto Page" and under the name of "Gimix," although only the word "Gimix" was registered as a trademark. Gimix contends that it nonetheless holds trademark rights in the word "Auto Page."

Defendant-appellee Iwata, is a Japanese manufacturer and exporter. In 1977 Iwata conducted a trademark search in preparation for marketing a car theft warning device under the name "Auto Page." In January of 1978, having found no prior or pending registration, Iwata began to advertise its new product under that name. In March of 1978, Iwata filed an application to register "Auto Page" as a trademark for its car theft warning devices; the registration was subsequently granted in January 1980. Defendant Auto Page, Inc. was incorporated in 1979 to act as Iwata's United States distributor for these car theft warning devices.

In May or June of 1980 Iwata also began manufacturing and selling a wireless portable paging system consisting of a short-range transmitter and receiver for use in paging persons inside buildings or within a one-mile radius. The system includes a desk-top transmitter-receiver, a microphone, a CB antenna and portable pocket-size receivers, or "beepers." The desk-top transmitter-receiver has buttons that can be manually pressed to signal the beepers, and the person operating the buttons can communicate with a person carrying a beeper by talking through the microphone. Auto Page, Inc. is Iwata's United States distributor for this product, which is also marketed under the name "Auto Page." Defendant JS & A advertises and sells this product of Iwata by mail.

On December 10, 1980, Gimix filed a complaint charging Iwata, Auto Page, Inc. and JS & A with trademark infringement under federal trademark law and at common law, false advertising, unfair competition, deceptive practices, injury to business reputation, dilution and unjust enrichment, and demanded a jury trial. On April 9, 1981, Auto Page, Inc. and Iwata moved for summary judgment on the ground that "Auto Page" was a generic name for the plaintiff's product and thus not an interest protectible at law. Defendants asserted that Gimix' own use of the term in its patent application and in the deposition of Richard Don, Vice-President of Gimix ("Don Deposition"), demonstrated that "Auto Page" was a noun naming the device, rather than a mark referring to its source of origin. They argued, as well, that Gimix would not be able to establish secondary meaning and that there was no likelihood of confusion, since the products were different and non-competing. In response to the motion for summary judgment, Gimix argued that the generic name for its product was an automatic dialer and that confusion was likely because the end result of all the products involved in the lawsuit was the same: paging. To support its contention that the term "Auto Page" was not generic, Gimix adduced evidence that no competing producer of paging devices except the defendant used the term; the evidence consisted of advertisements, listings in the telephone Yellow Pages, and FCC classifications. Gimix also argued that Iwata was estopped to claim that the term was generic by its own application to register the term as a trademark for its car theft warning device. Moreover, Gimix maintained that the test for genericness is public perception and that summary judgment was inappropriate since that test involves subjective reactions and requires purchaser, distributor and user testimony.

On May 21, 1981, the district court denied the defendants' first motion for summary judgment. After a period of additional discovery, a second motion for summary judgment was filed on October 26, 1981. In it Iwata and Auto Page, Inc. not only renewed their argument that "Auto Page" was a generic term but also maintained, alternatively, that it was merely descriptive and thus not a protectible interest, since plaintiff could not meet the burden of establishing secondary meaning. As evidence that the term was used to impart information about the product's function, rather than its origin, defendants proffered Gimix' description in its patent application of the device as an "automatic page," the statement in the Don Deposition that "auto page" "might be a shorter corruption of 'automatic pager'," and various items of promotional literature in which Gimix listed the product as an "auto page." The defendants also maintained in their motion that the evidence about secondary meaning was insufficient as a matter of law since Gimix had not invested an adequate amount of time or effort to develop the term as a distinctive mark. Neither side presented surveys of public reaction on this or any other point.

In its response to the renewed motion for summary judgment, Gimix pointed to the fact that no testimony about secondary meaning in the minds of buyers, dealers and distributors had been advanced by the defendants and asserted that there remained genuine issues of material fact on this as well as on other allegations of the complaint.

On November 24, 1981, JS & A also filed a motion for summary judgment with respect to the false advertising claims, which were based on various statements by it about the cost, range, ownership and other asserted advantages of the Iwata Auto Page system. JS & A maintained that the various statements complained of were not false in relation to the wireless paging system advertised by it and that the statements had no relation whatever to Gimix' product.

On January 13, 1982, Judge Will granted the defendants' motions for summary judgment, finding that the term "automatic page"--and thus also "auto page"--were generic terms for which Gimix could not claim trademark protection. Further, since Gimix had no trademark rights in the term, Judge Will ruled that it had no standing to challenge the accuracy of JS & A's advertising. He nonetheless observed that the claims did not appear to be false. It is this order which is now before us.

II.

Appellant has chiefly taken issue with Judge Will's holding that "Auto Page" is a generic term. Although the issue on appeal has been drawn primarily in terms of genericness because of the district court finding and was briefed largely, although not entirely, in those terms, we may affirm the district court's granting of summary judgment on grounds different from those which formed the basis for its holding. See, e.g., United States v. Winthrop Towers, 628 F.2d 1028, 1037 (7th Cir.1980); Miller v. Gateway Transportation Co., 616 F.2d 272, 275 (7th Cir.1980). We do so with no prejudice to the parties since those alternate grounds were in fact before the court. ²

We will therefore consider the following questions in sequence: First, is Gimix' alleged trademark invalid, as Judge Will held, because it is generic? ³ Second, if "Auto Page" is not a generic term, is it nonetheless unprotectible as merely descriptive of the product's qualities or functions? Third, if "Auto Page" is in fact descriptive, has plaintiff Gimix created a genuine issue of material fact as to whether the term had acquired secondary meaning by long use? Fourth, do any of the false advertising or other claims alleged survive a finding that Gimix' trademark is invalid?

A. Genericness

A generic term is one which is commonly used as the name of a kind of goods. Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978). Unlike a trademark, which identifies the source of a product, a generic term merely specifies the type, or genus, of thing into which common linguistic usage consigns that product. A common source of evidence on genericness is the dictionary. For example, the Miller...