Kohler Co. v. Moen Inc.

Decision Date14 December 1993
Docket NumberNo. 92-2350,92-2350
Citation12 F.3d 632
Parties, 29 U.S.P.Q.2d 1241 KOHLER CO., Plaintiff/Appellant, v. MOEN INCORPORATED, f/k/a Stanadyne, Inc., Defendant/Appellee.
CourtU.S. Court of Appeals — Seventh Circuit

Robert L. Titley (argued), Laurence C. Hammond, Jr., Allan W. Leiser, Quarles &amp Brady, Milwaukee, WI, Lloyd L. Zickert, Adam H. Masia, Chicago, IL, John P. Fredrickson, Nilles & Nilles, Milwaukee, WI, for plaintiff-appellant.

Daniel C. McEachran (argued), Kinzer, Plyer, Dorn, McEachran & Jambor, Chicago, IL, for defendant-appellee.

Before CUDAHY and COFFEY, Circuit Judges, and ESCHBACH, Senior Circuit Judge.

COFFEY, Circuit Judge.

This action began in 1987 when Moen, Incorporated ("Moen") filed two applications in the United States Patent and Trademark Office ("PTO") to register a faucet design and a faucet handle design as trademarks. Kohler Company ("Kohler") opposed the applications before the PTO's Trademark Trial and Appeal Board ("TTAB") on the ground that product shapes were not registrable as trademarks. The TTAB dismissed Kohler's oppositions. Kohler sought review of the TTAB's decision under 15 U.S.C. Sec. 1071(b) in the district court. The parties filed cross summary judgment motions and stipulated first that they would rely on the record before the TTAB and further that no new evidence would be submitted. The district court entered summary judgment in favor of Moen and against Kohler. Kohler filed a timely appeal from the district court's judgment. We affirm.

I. BACKGROUND

Kohler and Moen are competitors in the business of manufacturing and selling plumbing products, including faucets and faucet handles. Moen sought and obtained trademark registration of its "LEGEND" kitchen faucet and the appearance of the handle used on the "LEGEND" and other Moen faucets. In support of registration of its product configurations as trademarks, Moen introduced voluminous evidence of sales and promotional expenses with respect to each design, and also submitted substantial evidence that purchasers of its products recognized the source of the faucets by their distinctive shapes. The record included hundreds of declarations from persons in the plumbing business and from individual purchasers attesting to the distinctiveness of the shape of Moen's faucet and handle without reference to any markings. One of Moen's vice-presidents submitted a declaration stating that Moen's faucet design is not based upon utility or function, is not inexpensive to manufacture, and is only one of many competitive designs in the industry performing the same function. Moen also submitted a declaration from the chairman of one of its chief competitors, Price Pfister, that stated that Moen's faucet is distinctive, its design indicates a single point of origin, the design is neither functional nor utilitarian, and that trademark protection for the configuration would not hinder competition in the plumbing trade. Finally, a market research survey of 273 licensed plumbers in six cities revealed that eighty-two percent of those surveyed identified the faucet as a Moen product, and eighty-three percent identified the handle as a Moen product.

In proceedings before the TTAB, in the district court, and in this court, Kohler has forthrightly conceded that if product shapes can receive protection under federal trademark law, Moen is entitled to registration of its LEGEND faucet and faucet handle. Thus, the issue before the district court and this court is legal in nature: does the Sec. 45 definition of "Trademark" in the Lanham Act, 15 U.S.C. Sec. 1127 (1988), 1 ("the Act") exclude trademark protection of product configurations?

II. STANDARD OF REVIEW

We review issues decided on summary judgment de novo and resolve all reasonable inferences in favor of the nonmoving party. Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 392 (7th Cir.1992). Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c), Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The parties agree there are no issues of material fact that would preclude entry of summary judgment. The central issue on appeal is whether the district court correctly determined that product configurations are entitled to trademark protection under Sec. 43 of the Act, 15 U.S.C. Sec. 1125 (1988).

Under the Chevron doctrine, established in Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 104 S.Ct. 2778, 81 L.Ed.2d 694 (1984), "when a court reviews an [administrative] agency's construction of the statute which it administers, it is confronted with two questions." Id. at 842, 104 S.Ct. at 2781. First, the court must determine whether Congress addressed the precise question at issue in the statute's plain language. If so, "that is the end of the matter; for the Court, as well as the agency, must give effect to the unambiguously expressed intent of Congress." Id. at 842-43, 104 S.Ct. at 2781-82. If, however, the statute is silent or ambiguous with respect to the specific issue, the reviewing court must inquire whether Congress authorized the agency to make the legal interpretation at issue. Id. at 843-44, 104 S.Ct. at 2782; Condo v. Sysco Corp., 1 F.3d 599, 603 (7th Cir.1993); Homemakers North Shore, Inc. v. Bowen, 832 F.2d 408, 411-12 (7th Cir.1987). If Congress did not intend such delegation, "the reviewing court must interpret the statute with little deference to the agency's interpretation, for the judiciary is the final authority on issues of statutory construction." Condo, 1 F.3d at 604 (citing Chevron, 467 U.S. at 843 n. 9, 104 S.Ct. at 2781 n. 9). If, however, Congress delegated to the agency the authority to interpret the statute, "the question for the court is whether the agency's answer is based on a permissible construction of the statute." Chevron, 467 U.S. at 843, 104 S.Ct. at 2782. To uphold the agency's interpretation, the court does not have to conclude the agency's interpretation was the only possible construction or the construction the court would have reached on its own reading of the statute. Id. n. 11. The agency's interpretation need only be reasonable. 2 Id. at 866, 104 S.Ct. at 2793; see also Pauly v. Bethenergy Mines, Inc., --- U.S. ----, ----, 111 S.Ct. 2524, 2535, 115 L.Ed.2d 604 (1991) (applying "reasonableness" standard). 3

III. ANALYSIS

In dismissing Kohler's oppositions, the TTAB necessarily concluded that Sec. 45 of the Act provides trademark protection for product configurations. Section 45 of the Act defines trademark to "include[ ] any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." 15 U.S.C. Sec. 1127 (1988). As Kohler notes, Sec. 45 does not list "product configuration" among its examples of trademarks. Early decisions under the Act strictly construed the language of Sec. 45 and held that a product or container shape was not entitled to trademark protection. See 1 McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 7.31 (3d ed.1992) [hereinafter McCarthy on Trademarks]; Ex Parte Minnesota Mining & Mfg. Co., 92 U.S.P.Q. 74 (1952). Subsequent TTAB decisions and the courts reviewing TTAB rulings, however, have interpreted Sec. 45 to allow trademark protection for product configurations.

In Application of Kotzin, 276 F.2d 411, 414-15 (C.C.P.A.1960), the Court of Customs and Patent Appeals 4 ("C.C.P.A.") held that the Sec. 45 list ("word, name, symbol or device") did not restrict other items from receiving trademark protection if they satisfied the requirements for registration on the Principal Register. 5 The court in Kotzin supported its interpretation of the statute by noting that the provision stated that trademarks "include" words, names, symbols or devices, not that "trademark" "means" words, names, symbols or devices. Furthermore, the court noted that the language of Sec. 2 of the Act, 15 U.S.C. Sec. 1052, which lists exceptions to registrability under the Act, supported its ruling that Congress did not intend Sec. 45 to be an all-inclusive list. Id. at 414. Section 2 states that "[n]o trademark ... shall be refused registration on the principal register on account of its nature," unless one or more of the specified exceptions to registrability set forth in the statute apply. 15 U.S.C. Sec. 1052 (emphasis added). Neither trouser tags (the item the applicant sought to register in Kotzin ) nor product configurations fall within any of the exceptions to registrability set forth in Sec. 2.

In Application of Mogen David, 328 F.2d 925 (C.C.P.A.1964), the C.C.P.A. held that the configuration of a container could be registered as a trademark for the product it contains. Id. at 929-30. The C.C.P.A. thereafter held that a product configuration itself could be registered as a trademark in Application of Honeywell, Inc., 497 F.2d 1344 (C.C.P.A.), cert. denied, 419 U.S. 1080, 95 S.Ct. 669, 42 L.Ed.2d 674 (1974). The C.C.P.A., the Federal Circuit, and the TTAB have since interpreted Sec. 45 to allow trademark protection for qualifying product configurations. See In re Teledyne, 696 F.2d 968 (Fed.Cir.1982); In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A.1982); Oxford Pendaflex Corp. v. Rolodex Corp., 204 U.S.P.Q. 249 (TTAB 1973); In re Superba Cravats, Inc., 145 U.S.P.Q. 354 (TTAB 1965). Because Congress did not specify in Sec. 45 that product configurations are entitled to trademark protection, however, we must determine whether Congress authorized the Commissioner of Patents and Trademarks and the TTAB to interpret Sec. 45 of the...

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