KSH Plastics, Inc. v. Carolite, Inc.

• Decision Date: 08 April 1969
• Docket Number: No. 22049,22049
• Citation: 408 F.2d 54
• Parties: K-S-H PLASTICS, INC., a Missouri corporation, Appellant, v. CAROLITE, INC., a California corporation and J. W. Carroll & Sons, a California corporation, Appellees. K-S-H PLASTICS, INC., a Missouri corporation, Appellant, v. SUNBEAM LIGHTING COMPANY, Inc., a California corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

408 F.2d 54 (1969)

K-S-H PLASTICS, INC., a Missouri corporation, Appellant, v. CAROLITE, INC., a California corporation and J. W. Carroll & Sons, a California corporation, Appellees.

K-S-H PLASTICS, INC., a Missouri corporation, Appellant, v. SUNBEAM LIGHTING COMPANY, Inc., a California corporation, Appellee.

Nos. 22049, 22049-A.

United States Court of Appeals Ninth Circuit.

February 26, 1969.

Rehearing Denied April 8, 1969.

COPYRIGHT MATERIAL OMITTED

Owen J. Ooms and E. F. Adams, Chicago, Ill., Wm. T. Brandlin, Los Angeles, Cal., for appellant.

Spensley, Horn & Jubas, Los Angeles, Cal., for appellee.

Before DUNIWAY, ELY and HUFSTEDLER, Circuit Judges.

DUNIWAY, Circuit Judge:

The plaintiff below, K-S-H Plastics, Inc., appeals from judgments entered in two companion cases involving trademark and unfair competition questions. The cases were tried together, but the trial judge made separate findings and entered a separate judgment in each case. K-S-H sought injunctions against the use by defendant Carolite, Inc.,¹ of certain of its trademarks and trade symbols, and against the palming off of Carolite's products as those of K-S-H by defendants Carolite and Sunbeam Lighting Co., Inc. The district court found for defendants regarding the trademark and trade symbol claims and granted narrowly restricted relief on one palming-off claim. We affirm.

Jurisdiction in the Sunbeam case is founded on diversity. 28 U.S.C. § 1332. Jurisdiction in the Carolite case rests on 28 U.S.C. § 1338 as read with 15 U.S.C. § 1121 (trademark and joined unfair competition claims). See Ross-Whitney Corp. v. Smith Kline & French Laboratories, 9 Cir., 1953, 207 F.2d 190.

K-S-H manufactures plastic lighting panels, as does Carolite. Sunbeam makes lighting fixtures which use the plastic panels as a component part.

The manufacturers of plastic lighting panels are a part of the building construction industry. A number of manufacturers like K-S-H and Carolite supply lighting panels to a channel of trade which includes the fixture manufacturer, electrical contractor, general contractor, and building owner. Architects or lighting engineers, as agents for building owners, prepare specifications identifying the electrical equipment, including lighting fixtures and the lighting panels to be used with the fixtures. Lighting fixture manufacturers then prepare bids from the specifications. Based on these bids, the owner awards the contract to a general contractor or an electrical equipment contractor. In either case, a purchase order will be placed with an electrical equipment distributor. The distributor orders the fixtures from the lighting fixture manufacturers. The fixture manufacturers order the panels from suppliers like K-S-H or Carolite. If the lighting panel is specified to be that of a particular lighting panel manufacturer, the panel is ordered from that manufacturer, or approval is obtained by the fixture manufacturer for a substitute panel; otherwise the fixture manufacturer will buy the panel from any panel manufacturer that makes it.

This case primarily involves questions of confusion over the designation of panels on the part of lighting engineers and fixture manufacturers, and of palming off one panel manufacturer's products for those of another.

I. The Manufacturers' Trademarks

K-S-H claims that Carolite has infringed its registered trademark "K-LITE" by use of the latter's registered trademark "CAROLITE." In its Finding No. 15, in case No. 22,049, the trial court found that: "The term CAROLITE is not confusingly similar to the mark K-LITE; the plaintiff has shown no actual confusion or a likelihood of confusion, mistake or deceit by reason of the use of the terms in connection with similar goods."

The question is whether Carolite's use of the trademark CAROLITE "is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services." Fleischmann Distilling Corp. v. Maier Brewing Co., 9 Cir., 1963, 314 F.2d 149, 151-152. This test requires consideration of a number of factors, including the visual, verbal, and intellective similarity of the marks, Sleeper Lounge Co. v. Bell Mfg. Co., 9 Cir., 1958, 253 F.2d 720, the class of goods to which the marks are applied, Fleischmann Distilling Corp. v. Maier Brewing Co., supra, the marketing channels through which the goods are sold, Durox Co. v. Duron Paint Mfg. Co., 4 Cir., 1963, 320 F.2d 882, and the intent of defendant in adopting the mark. Fleischmann Distilling Corp. v. Maier Brewing Co., supra.

Here the marks are somewhat similar — both use the suffix "lite." But "Kay" (for K) and "Caro" are quite different. The marks apply to goods purchased by fixture manufacturers and designated by architects or lighting engineers who deal with the products continuously and with a fair degree of sophistication. K-S-H argues that the logotype used with the mark CAROLITE adds to the confusion. The letters "caro" are placed within a large "C" to give the following appearance:

Nonetheless, in light of the market and the purchasers, the "K" is sufficiently distinguishable from the

Further, no wrongful intent may be imputed to Carolite through the use of the suffix "lite," as this suffix commonly is used in lighting industry marks. Evidence as to wrongful intent on Carolite's part is, at the most, conflicting. The trial court correctly held that the mark CAROLITE does not infringe the mark K-LITE.

II. The Alphanumeric Symbols

K-S-H designates its panel types by "alphanumeric" symbols, i. e., combinations of letters and numbers, or "K-numbers," e.g., K-4, K-5, K-11, and K-12. Carolite employs a similar system of letters and numbers for its panels of identical design, e. g., C-4, C-55, C-11, and C-12. At the time of the filing of the complaint, neither K-S-H nor Carolite had registered its symbols as trademarks.

K-S-H sought to enjoin Carolite from "advertising, selling or in any manner using the product designations or symbols consisting of a capital letter and numbers which are identical or confusingly similar to those used by plaintiff." K-S-H also sought to prevent Sunbeam from passing-off panels made by Carolite or other suppliers when panels were ordered by the K-number designation with or without the terms K-S-H or K-LITE. Sunbeam and Carolite conceded that they had supplied Carolite panels when panels had been specified by K-number alone.

The trial court held that the Carolite C-number designations were not confusingly similar to the K-number pattern designations, and also that K-S-H had not established a secondary meaning of the K-number terms, but that "the primary significance of K-numbers, alone and apart from K-LITE or KSH, both in the trade and among purchasers is one of pattern and not producer." Finding No. 10, in case No. 22,049A. Accordingly, the court refused to enjoin Sunbeam from supplying Carolite or another manufacturer's panels when the order or specification was solely by K-number. It did enjoin Sunbeam from supplying other than K-S-H panels when the order used a K-number in conjunction with K-S-H or K-LITE, and Carolite from knowingly palming off or knowingly inducing or abetting fixture manufacturers like Sunbeam to palm off Carolite's panels as those of K-S-H when the order used a K-number with the terms K-S-H or K-LITE.

A. Trademark rights in the symbols

Since the alphanumeric symbols or K-numbers are not registered marks, any protection must arise from the common law. The parties have debated the common law distinction between technical and non-technical trademarks, as each seeks a favorable burden of proof allocation. K-S-H contends that the symbols are technical trademarks because they are "fanciful, arbitrary, unique, distinctive, and nondescriptive in character." See 3 R. Callmann, Unfair Competition and Trademarks, § 66.1 (2d ed., 1950). From this K-S-H argues that Carolite had, and has failed to sustain, the burden of proving that the K-numbers had become pattern designations or generic symbols. See Dresser Industries, Inc. v. Heraeus Englehard Vacuum, Inc., 3 Cir., 1968, 395 F.2d 457; Ross-Whitney Corp. v. Smith Kline & French Laboratories, 9 Cir., 1953, 207 F.2d 190. Carolite contends that the symbols are not fanciful, etc., and thus not technical marks, and that therefore K-S-H carried, and has failed to sustain, the burden of proving that the symbols had acquired a secondary meaning sufficient to raise them to the status of nontechnical marks. Everest & Jennings, Inc. v. E & J Manufacturing Co., 9 Cir., 1958, 263 F.2d 254, 259-260.

The symbols here are not so distinctive that they are valid per se as technical marks and do not require the showing of secondary meaning. Other panel manufacturers use similar alphanumeric designations for their panel configurations. Accordingly, we must examine whether the trial court was clearly erroneous in concluding that the symbols had not acquired a secondary meaning, and did not serve primarily to designate origin. William H. Keller, Inc. v. Chicago Pneumatic Tool Co., 7 Cir., 1923, 298 F. 52, 59. See also Kellogg Co. v. National Biscuit Co., 1938, 305 U.S. 111, 118-119, 59 S.Ct. 109, 83 L.Ed. 73; Everest & Jennings, Inc. v. E & J Manufacturing Co., supra.

The evidence indicates that other panel manufacturers used very similar symbols, e. g., P-4, R-4, and that some of them used their symbols before K-S-H began using its K-designations. The evidence is sufficient to show that while the "K" usage may have been peculiar to K-S-H, the overall trade use of similar numbers was such that the K-numbers cannot be said primarily to designate origin.

Further, the trial court's finding that the symbols had become generic terms designating pattern and not producer is fully supported by the evidence. A number of fixture manufacturers testified that K-numbers had become a short-hand industry expression...