Mr. Gasket Co. v. Travis

• Decision Date: 02 August 1973
• Citation: 35 Ohio App.2d 65,299 N.E.2d 906
• Parties: , 179 U.S.P.Q. 811, 64 O.O.2d 192 MR. GASKET CO., Appellee, v. TRAVIS et al., Appellants.
• Court: Ohio Court of Appeals

Page 65

35 Ohio App.2d 65

299 N.E.2d 906, 179 U.S.P.Q. 811, 64 O.O.2d 192

MR. GASKET CO., Appellee, v. TRAVIS et al., Appellants.

Court of Appeals of Ohio, Eighth District, Cuyahoga County.

Aug. 2, 1973.

[299 N.E.2d 908] Syllabus by the Court

1. Federal patent and trademark law does not preclude a state from enacting legislation to prevent deceptive trade practices that mislead purchasers as to the source of goods.

2. To entitle the trade dress of a product to protection against a deceptive trade practice under R.C. 4165.03, it must be shown that the competing trade dress either 'causes likelihood of confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods or services,' (R.C. 4165.02(B)) or 'causes likelihood of confusion or misunderstanding as to affiliation, connection, or association with . . . another,' (R.C. 4165.02(C)) and it must be established that the trade dress had acquired a secondary meaning. There can be no confusion of source without secondary meaning.

3. To establish the secondary meaning of a trade dress, it must be shown that members of the consuming public have come to associate the trade dress with a particular producer; thus source association may be demonstrated by considering the length and manner of use of the trade dress involved, the nature and extent of advertising and promotion of the trade dress, efforts toward promoting a conscious connection in the minds of the public between the trade dress and the particular producer, together with competent customer testimony and/or surveys demonstrating the consumer identification of the product source with the trade dress.

4. Opinion testimony of persons in close association and intimate contact with the business of one claiming a deceptive practice by virtue of the similarity of the trade dress of a competitor, which testimony is not based upon any direct evidence of the consuming public's identification of the source of claimant's product with its distinctive trade dress, is insufficient to prove secondary meaning.

5. Where a trial court advertently or inadvertently misleads a party with the burden of proof as to the necessity for a particular proof or misleads that party as to the sufficiency of proof already offered on an essential element of a case, there is an error at law, upon which reversal may be predicated.

Gerald N. Boston and Don Pace, for appellee.

Lance B. Johnson, for appellants.

DAY, Judge.

This appeal is directed only at errors claimed to affect the corporate defendant, Speed Industries, Inc., except for Assignments of Error Nos. 7 and 8. Those two assignments challenge the award of attorney's fees, litigation expenses, and costs which was made jointly and severally against defendants Speed Industries, Inc., Gilbert Edward Travis, and Charles Klick (see paragraph 2, Journal Entry of February 10, 1972, by the trial court) and a claim that an element of proof necessary for the award of attorney's fees, properly the plaintiff's burden, was placed on the defendants.

Plaintiff-appellee and defendants-appellant, Speed Industries, Inc., will be referred to hereafter as 'Gasket', or 'Speed', or as the 'plaintiff', and the 'corporate defendant,' respectively.

I.

After extensive findings of fact and conclusions of law the trial court, Ohio Com.Pl., 283 N.E.2d 208, declared the defendants to be in violation of R.C. 4165.02(B) and (C) ¹ and issued an injunction broadly limiting the defendants in the use ² of any trade-mark, symbol, or logo which is confusingly 'similar to, a simulation of, or in any manner' imitating the plaintiff's logo in existence at the time the suit began.

A similar limitation was placed on the defendants' use of the 'products or parts, identification numbers or parts descriptions which are substantially similar, identical to, or which in major part contain a sequence of product numbers or part descriptions similar, or identical to, the product numbers, part descriptions or sequence' used by the plaintiff as they appeared in its catalogs in existence at the time the suit was initiated. Dissimilarity is not achieved, under the order, by using an alphabetical prefix or suffix. ³

Also enjoined was the use by Defendant Speed on packaging materials of certain specified primary colors used by the plaintiff at the time of suit in packaging products comparable to those sold by Speed. Particular restrictions were imposed on the use of the color blue on the front or back of any Speed product or price catalog.

In addition, the defendants were prohibited from doings acts in the course of their business which would deceive the consumers and the public into believing that Speed or its products were in any way 'connected with, endorsed by, or licensed by Mr. Gasket Co.' Further, defendants were not to do or attempt to do anything in the course of their business 'likely to cause confusion as to the source of defendants' goods by confusing members of the public into the belief that defendants are in any way affiliated with Mr. Gasket Co.'

Finally, the defendants were prohibited from any use, exploitation or divulgence of any confidential or proprietary information which individual Defendants Travis may have obtained while in the employ of the plaintiff.

The order awarded attorney fees, litigation expenses, and costs to the plaintiff to be paid by all the defendants under joint and several liability.

II.

Although nine errors are assigned, ⁴ all are encompassed in the four principal issues raised by the defendants on appeal. These are:

(1) Whether leglaly, there can be a proprietary interest in color or numbers which is entitled to protection by injunction or other relief.

(2) Whether before that can be protection for a combination of factors used in trade dress there must be proof that the dress has acquired secondary meaning, and if so, was there such proof in this case.

(3) Whether deceit was practiced on the Court below in connection with plaintiff's exhibits 8 and 16, and exhibits 11, 12, 13, and 14. ⁵

(4) Whether there was a basis for the award of attorney fees under R.C. 4165.03. ⁶

III.

The applicable law ⁷ is more easily stated than applied. For this reason there is relatively little controversy over the principles governing this case but a great deal over the consequences of that governance.

Federal pre-emption through patent, copyright, and trade-mark regulation has restricted state action in deceptive trade practice law to the prevention of confusion of sources ⁸ by regulating such matters as trade dress, labeling, and passing off to prevent source confusion, Sears, Roebuck v. Stiffel Co. (1964), 376 U.S. 225, 232, 233, 84 S.Ct. 784, 11 L.Ed.2d 661, 667-668; Compco Corp. v. Day-Brite Lighting, Inc. (1964), 376 U.S. 234, 238, 84 S.Ct. 779, 11 L.Ed.2d 669, 672-673. ⁹ In the remaining area, the only one in which the states have room to regulate, it is clear that protectable proprietary interests cannot be acquired in color or numbering as such. Neither trade-mark nor unfair competition concepts extent protection that far. See Life Savers Corp. v. Curtiss Candy Co. (7th Cir. 1950), 182 F.2d 4, 9; Campbell Soup Company v. Armour & Co. (3rd Cir. 1949), 175 F.2d 795, 798; Diamond Match Co. v. Saginaw Match Co. (6th Cir. 1906), 142 F. 727, 729 (colors); Bechik Products Inc. v. Federal Silk Mills, Inc. (D.Md.1955), 135 F.Supp. 570, 577-578; Mathews Conveyor Co. v. Palmer-Bee Co. (6th Cir. 1943), 135 F.2d 73, 84 (numbers). On the other hand if a constellation of characteristics has acquired a secondary meaning, ¹⁰ i. e., a distinctive trade dress, an interest is created which a state can act to protect in order to prevent the likelihood of consumer confusion as to source, COMPCO CORP. V. DAY-BRITE LIGHTING, INC., SUPRA, NOTE 8¹¹.

Because the likelihood of confusion fades to the point of extinction in the absence of an acquired secondary meaning ¹² for the trade dress, ¹³ we adopt that view which holds that proof of secondary meaning is an essential element in the proof of likelihood of confusion of sources. See Tas-T-Nut Co. v. Variety Nut & Date Co. (6 Cir. 1957), 245 F.2d 3, 7; Lucien Lelong, Inc. v. Lander Co. (2 Cir. 1947), 164 F.2d 395, 397. Stated in the flatest terms, the proposition is that if there is no secondary meaning, no consumer cares about the source and the likelihood of confusion, if any, is neutralized by apathy. ¹⁴ Thus the dispositive questions in this case are whether the plaintiff has sustained its burden of proving, see 88cents Stores, Inc. v. Martinez (1961), 227 Or. 147, 153-154, 361 P.2d 809, 812, secondary meaning for its trade dress and if it has, whether it has also established that such similarity exists between that dress and defendant's that the statutory test-'likelihood of confusion or misunderstanding'-is satisfied. ¹⁵ These issues are questions of fact. 88cents Stores, Inc. v. Martinez, supra, 227 Or. at 153, 361 P.2d at 812. See, also, Zippo Manufacturing Co. v. Rogers Imports, Inc. (S.D.N.Y.1963), 216 F.Supp. 670, 679. ¹⁶

IV.

The plaintiff, Mr. Gasket Co., was formed in 1964 as a proprietorship and gradually expanded its original line of gasket products for the 'high performance' ¹⁷ replacement market to include more than eleven hundred items for the same market.

The plaintiff devised a numbering system to identify replacement parts on different makes of cars, e. g., a 100 series for Chevrolet gaskets, a 200 series for Ford, and 300 series for Chrysler. It put its gaskets on identifying colored boards using, for example, blue for intake gaskets, red for exhaust gaskets, and orange for valve cover gaskets. The boards were covered with a clear 'skin' of plastic material drawn tightly over the product in place on the board.

Plaintiff also developed a logo, ¹⁸ revised in 1970 to include a block 'G'. Part of the logo was a small stylized figure of a man carrying a checkered flag (see Def. ExMM).

It is apparent...