Nat. Nonwovens v. Consumer Products Enterprises

• Decision Date: 31 October 2005
• Docket Number: No. CIV.A. 04-30078MAP.,CIV.A. 04-30078MAP.
• Citation: 397 F.Supp.2d 245
• Parties: NATIONAL NONWOVENS, INC., Plaintiff v. CONSUMER PRODUCTS ENTERPRISES, INC., Defendant.
• Court: U.S. District Court — District of Massachusetts

397 F.Supp.2d 245

NATIONAL NONWOVENS, INC., Plaintiff v. CONSUMER PRODUCTS ENTERPRISES, INC., Defendant.

No. CIV.A. 04-30078MAP.

United States District Court, D. Massachusetts.

October 31, 2005.

Arthur F. Dionne, McCormick, Paulding & Huber LLP, Springfield, MA, for National Nonwovens, Inc., Plaintiff.

James C. Duda, Bulkley, Richardson & Gelinas, Springfield, MA, for Consumer Product Enterprises, Inc., Defendant.

Joshua P. Grey, Bulkley, Richardson & Gelinas, Springfield, MA, for Consumer Product Enterprises, Inc., Counter Claimant.

Wm. Tucker Griffith, McCormick, Paulding & Huber LLP, Hartford, CT, for National Nonwovens, Inc., Plaintiff.

James K. Grogan, McCormick, Paulding & Huber, LLP, Springfield, MA, for National Nonwovens, Inc., Plaintiff.

MEMORANDUM REGARDING DEFENDANT'S MOTIONS FOR SUMMARY JUDGMENT AND ATTORNEY'S FEES (Docket Nos. 23, 24)

PONSOR, District Judge.

I. INTRODUCTION

Claiming infringement of its trademark in the term "WoolFelt," Plaintiff, National Nonwovens, Inc. ("Nonwovens"), brought this eight-count complaint against its competitor, Consumer Products Enterprises ("CPE"), alleging multiple violations of the Lanham Act, 15 U.S.C. §§ 1051 et seq. (2005), copyright infringement under the United States Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. (2005), and unfair competition under Mass. Gen. Laws. ch. 93A (2005).

Defendant responded with a counterclaim in four counts alleging: invalid trademark registration based on both the generic nature of the supposed mark and fraud, 15 U.S.C. §§ 1064, 1119 (2005); a violation of the Sherman Act, 15 U.S.C. § 2 (2005); and unfair business practices under Mass. Gen. Laws ch. 93A. Defendant also moved for summary judgment and an award of attorney's fees.

In an order dated September 30, 2005, the court allowed Defendant's motion for summary judgment and denied its motion for attorney's fees. This memorandum outlines the reasoning supporting that order.

II. FACTS

Nonwovens is a Delaware corporation with its principal place of business in Easthampton, Massachusetts. Originally known as the National Felt Company, Nonwovens has been manufacturing textile products for a range of industries since 1905. At least as early as July 1982, Nonwovens began selling felted wool products under the trademark "WoolFelt" and using a sheep design to promote these products.

Nonwovens has used at least five different types of sheep designs in connection with its products. The first design shows a clothed anthropomorphic sheep wearing glasses. In the second design, an unclothed cartoon-like sheep is shown seated, usually by a tree. The third design shows a ram in profile. The ram has a black head and a black tail. Its body is shaded in grey, and its feet rest on a black horizontal line. The fourth design is a variation on the third. Eight rams are shown in profile: seven are black and one is white. The final design shows three fairly primitive sheep surrounded by a wooden fence. On each sheep, the dominant attribute is a large shaded fleece. A small portion of a featureless face is visible on the left, and each sheep has two roughly rectangular legs. (See Dkt. No. 1, Compl. Ex. D; Dkt. No. 23, Def.'s Mem. Supp. Summ. J. Attach. R.)

On March 4, 1986, Plaintiff received U.S. Trademark Registration No. 1,385,577 for the stylistic mark "WoolFelt — There's nothing like the real thing ..." The trademarked goods were identified as "wool felt," and Nonwovens specifically disclaimed any "exclusive right to use `wool felt,' apart from the mark as shown." (Dkt. No. 1, Compl.Ex. A.) Plaintiff initially applied for placement on the Principal Register, but the Patent and Trademark Office (the "Trademark Office") denied this request because the mark was deemed "merely descriptive." Nonwovens therefore amended its application and was allowed placement on the Supplemental Register.¹ (See Dkt. No. 23, Def.'s Mem. Attachs. C, D.)

In 1997, Nonwovens acquired another trademark, U.S. Trademark Registration No. 2,073,811, for the word mark "WOOLFELT." The registration identified the relevant goods as "fabric, namely, felt consisting of woo[l]."² "WOOLFELT" was placed on the Principal Register, and at this time — in contrast to the 1986 registration — Plaintiff did not disclaim exclusive use of the phrase "wool felt." (Dkt. No. 1, Compl.Ex. B.)

In March 2004 Nonwovens obtained copyright registrations for two sets of promotional materials posted on its website:³ "Franny's Features," an area of the website with project suggestions and special offers, and "Boiled Woolfelt Instructions," one of these project suggestions.

CPE is a Georgia corporation with its principal place of business in Union, South Carolina. Defendant began selling the products it calls "wool felt" in the fall of 2003. CPE admits that it became aware of Plaintiff's "WoolFelt" trademarks in the summer of 2003. Nonetheless, a few months later, Defendant introduced products under the names "Classic Wool Felt" and "Imperial Wool Felt." Defendant also posted "Instructions for Boiling Classic Wool Felt" on its website, http://www.cpe-felt.com. (See Dkt. No 1, Compl. Ex. H.)

In connection with these new products, CPE also began using a ram logo in its promotional materials. CPE's ram is a simple line-drawing that shows a sheep in profile. No part of the figure is shaded, but a horn and an eye are shown in outline.

After this lawsuit was filed, Defendant applied for trademark registrations for "Classic Wool Felt" and "Imperial Wool Felt." On September 20, 2005, "Classic Wool Felt" received U.S. Trademark Reg. No. 2,999,328 and was placed on the Supplemental Register. The "Imperial Wool Felt" application is still pending.⁴

At the center of this case is a dispute over the generic name for a textile product, namely felt consisting of wool. Plaintiff argues that the textile is properly referred to as "felted wool fabric" or "felt." In its papers, Plaintiff uses a number of other variations, including "felted wool," "felted wool products," "felt fabric," and "felt consisting of wool." (See, e.g., Dkt. No. 10, Am. Compl. ¶¶ 7, 18; Dkt. No. 32, Pl.'s Opp'n *5.) Plaintiff's registration for the word mark "WOOLFELT" identifies the relevant goods as "fabric, namely, felt consisting of wool."

Significantly, despite Plaintiff's claim that "wool felt" is not a generic term for its goods, Plaintiff nonetheless does use the uncapitalized two-word term "wool felt" when discussing its product. In the Amended Complaint, Plaintiff refers to a trademark obtained "for wool felt." (See Dkt. No. 10, Am. Compl. ¶ 6; see also Dkt. No. 32, Pl.'s Opp'n *2 (discussing the trademark registration).) As this language suggests, Plaintiff's 1986 trademark registration did in fact identify the relevant product simply as "wool felt." Further, on its own website, Nonwovens claims that the company "originated as a manufacturer of wool felt for use in apparel and home furnishings." See Nat'l Nonwovens, Company Profile, http://www.national nonwovens.com/compny.htm (last visited Oct. 24, 2005); see also Nat'l Nonwovens, Press Releases, http://www.national nonwovens.com/pr. htm (similar) (last visited Oct. 24, 2005). "WoolFelt" is also referred to in several places as "the original wool felt." See, e.g., Nat'l Nonwovens, Felts of Distinction, http://www.national nonwovens.com/ Applications/c & h.htm (last visited Oct. 24, 2005); Nat'l Nonwovens, WoolFelt, http://www.national nonwovens.com/Applications /craft/woolfelt.htm (last visited Oct. 24, 2005).⁵

Defendant claims that "wool felt" is the common name of the product it sells. Defendant points to Plaintiff's use of the term and offers extensive additional evidence of long-term and widespread generic use. This evidence includes uses of the term 1) in government documents, 2) in books and articles, 3) on internet and Nexis search sites, and 4) by retailers.

Defendant introduces several examples of official use of the term "wool felt." Among these is a 1952 Department of Commerce Commercial Standard for "wool felt." The standard applies to felt used "for the apparel and decorative trade," and under the heading "Definitions" explains: "Felt as defined here is commonly referred to as wool felt." (See Commercial Standard 185-52 (Dep't of Commerce) Feb. 21, 1952, excerpted in Dkt. No. 34, Def.'s Reply Attach. Y (emphasis added).) In addition, a search of Trademark Office records reveals at least nine expired marks from as early as 1932 that include the term "wool felt" in the description of the goods. Four of these marks are for goods in the same class as Plaintiff's goods, International Class 24 (fabrics), and the remainder are in the classes for apparel or "fancy goods." (See Dkt. No. 34, Def.'s Reply Attach. JJ.)

Defendant also cites books and articles that use the uncapitalized term "wool felt." For example, when defining felt, one author notes, "Wool felt is used as interfacing under highly embellished garment details to support weight." (See Sandra Betzina, Fabric Savvy 195 (2002), excerpted in Dkt. No. 34, Def.'s Reply Attach. CC; see also Chad Alice Hagen, Feltmaking 7, 8 (2002), excerpted in Dkt. No. 34, Def.'s Reply Attach. EE (discussing "[w]ool felt's unique properties" and noting "tall tales about Noah discovering wool felt on the floor of the ark").) See also FeltCrafts, What Is Wool Felt?, http://www . feltcrafts.com/history.htm (last visited Oct. 25, 2005). There are also references to "wool felt" that — like those in the government documents introduced by Defendant — clearly predate Plaintiff's claim to the term. See, e.g., Catherine Christopher Roberts, The Complete Book of Doll Making and Collecting 71 (1971) (discussing "[c]olored wool felt, snipped into tiny motifs and designs").

These texts also use the term "felted wool," one of the terms Plaintiff prefers. In some instances, it is used as a synonym for "wool felt." (See Jane Swiggum, Needle Felting 101, SewNews, Jan. 2005, at 36,...