National Van Lines, Inc. v. Dean
Decision Date | 14 April 1961 |
Docket Number | No. 13026.,13026. |
Parties | NATIONAL VAN LINES, INC., Plaintiff-Appellant, v. Alfred E. DEAN and Dean Van Lines, Inc., Defendants-Appellees. |
Court | U.S. Court of Appeals — Seventh Circuit |
Kenneth T. Snow, Chicago, Ill., for appellant, Edward L. Benno, Chicago, Ill., of counsel.
George B. Newitt, W. M. Van Sciver, Bair, Freeman & Molinare, Chicago, Ill., for appellees.
Before HASTINGS, Chief Judge, and DUFFY and SCHNACKENBERG, Circuit Judges.
National Van Lines, Inc. (National), an Illinois corporation, plaintiff-appellant, brought this action for damages and injunctive relief. Named as defendants were Dean Van Lines, Inc. (Dean), a California corporation, Alfred E. Dean, President of Dean, a California citizen, defendants-appellees, and John Mechanic, a Wisconsin citizen and National Van Lines, a Wisconsin corporation. National dismissed the action as to Mechanic and the Wisconsin corporation, and they are no longer parties to this proceeding.
National charged defendants with infringement of its service marks, Registration Nos. 548,018 and 563,950, alleged unfair competition and asked that defendants be found to have violated a prior injunction issued by the United States District Court for the Southern District of California.
The present action was filed and tried in the United States District Court for the Northern District of Illinois, Eastern Division. The district court entered judgment in favor of defendants, from which judgment this appeal was taken.
The errors relied on for reversal arise out of the failure of the trial court to grant National any relief.
All parties to this action are engaged in the business of moving household goods by motor van in interstate commerce.
The California action was brought by National (plaintiff here) against Alfred E. Dean (one of defendants here), trading under the firm name and style of National Transfer & Storage Co. That proceeding contained counts for breach of contract, trade-mark infringement and unfair competition. After the trial court entered judgment for defendant on all counts, the Ninth Circuit, on appeal, found unfair competition and reversed on that issue. National Van Lines v. Dean, 9 Cir., 1956, 237 F.2d 688.
A summary of the factual background leading up to the present litigation is set out in that opinion:
On remand to the California district court, judgment was entered holding National's registered mark No. 548,018 good and valid in law and finding unfair competition. Alfred E. Dean and all others acting in concert with him were permanently enjoined and restrained as follows:
It was stipulated in the present action:
Plaintiff's marks, Registration No. 548,018, registered on September 11, 1951, and Registration No. 563,950, registered on September 9, 1952, are described in the Ninth Circuit opinion, supra. Plaintiff's mark, Registration No. 699,573, issued after the present appeal was filed. It covers a service mark similar to No. 548,018, except that there is no wording thereon.
Presently Dean identifies its services by a mark consisting of the name `Dean Van Lines' superimposed on an outline map of the United States, the map carrying alternate red and white stripes or black and white stripes in the lower portion below the name. Also, below the name appear the words "World Wide Service."
Dean also uses an ancillary mark "STO-PAK" superimposed on an outline similar to the one above described. It appears that it is always used in the proximity of "Dean Van Lines."
As stated in National Van Lines v. Dean, supra, at page 693:
(Emphasis added.)
In plaintiff's application for its service mark Registration No. 548,018, it was expressly stated, "No claim is made to the words `Nation Wide' and `Van Lines Inc.' apart from the work as shown."
Title 15, U.S.C.A. § 1114(1) in pertinent part provides:
"Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any * * * services * * * which * * * use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such * * services; * * * shall be liable to a civil action by the registrant * * *."
Title 15, U.S.C.A. § 1127 defines "counterfeit" as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." "Colorable imitation" is defined as including "any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive purchasers."
On the issues of infringement and unfair competition, the ultimate question to be determined is whether purchasers of moving services are likely to be confused or mistaken or deceived by reason of Dean's use of its corporate name superimposed on an outline map of the United States, including red and white or black and white stripes below the name, in competition with National's use of its corporate name superimposed on a shield, including alternate red and white or black and white stripes below the name.
National's first two principal contentions charge that the trial court erred in:
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