Norm Thompson Outfitters, Inc. v. General Motors Corp.

• Decision Date: 24 September 1971
• Docket Number: No. 24931.,24931.
• Citation: 448 F.2d 1293
• Parties: NORM THOMPSON OUTFITTERS, INC., an Oregon corporation, Appellant, v. GENERAL MOTORS CORPORATION, a Delaware corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

448 F.2d 1293 (1971)

NORM THOMPSON OUTFITTERS, INC., an Oregon corporation, Appellant, v. GENERAL MOTORS CORPORATION, a Delaware corporation, Appellee.

No. 24931.

United States Court of Appeals, Ninth Circuit.

September 24, 1971.

J. Pierre Kolisch, John W. Stuart, of Kolisch & Hartwell, Portland, Or., for appellant.

George L. Wagner, of McColloch, Dezendorf, Spears & Lubersky, Portland, Or., for appellee.

Before HAMLEY, CARTER and CHOY, Circuit Judges.

CHOY, Circuit Judge:

Norm Thompson Outfitters, Inc., an Oregon Corporation, sued General Motors Corporation, a Delaware corporation, for an injunction and damages charging unfair competition arising from the use by General Motors of the slogan "Escape From The Ordinary" in promoting sales of Oldsmobile automobiles. The District Court found that under the common law of Oregon (this being a case of diversity) the slogan is not a valid trademark and there was no unfair competition. (300 F.Supp. 274 (D.Or.1969)) Norm Thompson appeals from the adverse judgment. We affirm.

About 1958, appellant began using the slogan "Escape From The Ordinary" in advertising goods such as clothing, sports equipment and articles for smokers, which it sold mainly by mail order throughout the United States. Between 1958 and 1968, it made sales totaling about ten million dollars and expended about two million dollars in advertising, in many instances using the slogan "Escape From The Ordinary."

Commencing about 1954, General Motors had been using such slogans as "Get Out Of The Ordinary", "Rocket Out Of The Ordinary", and "Time To Get Out Of The Ordinary", in connection with its sales of Oldsmobiles. In 1968, it began to use "Escape From The Ordinary."

Norm Thompson does not sell automobiles. General Motors does not sell clothing and other goods purveyed by Norm Thompson.

The issues on this appeal are:

1. Whether the trial court was clearly erroneous in finding as facts:

a. That the slogan is descriptive, rather than a suggestive slogan, or a coined, arbitrary, or fanciful slogan.

b. That appellant\'s use of the slogan has not endowed it with a secondary meaning.

c. That appellee\'s use of the slogan is not likely to cause public confusion as to the source of appellant\'s goods.

2. Whether appellant is entitled to injunctive relief under the "dilution theory" of trademark protection, even if the findings of fact are sustained and despite the absence of competition between the parties.

In our review of the trial court's findings from disputed facts, we are subject to the "clearly erroneous" constraint imposed by Rule 52(a), Federal Rules of Civil Procedure.¹ K-S-H Plastics, Inc. v. Carolite, Inc., 408 F.2d 54, 58 (9th Cir. 1969). In Cataphote Chemical Corporation v. DeSoto Chemical Coatings, Inc., 356 F.2d 24, 26 (9th Cir. 1966) we noted:

"* * * the severe limitations imposed on an appellate court in reviewing findings of fact * * * It is not our function to reevaluate the evidence presented below * * * Our task, rather, is to determine if there exists evidence of substance to support the findings of fact of the trial court * * *"

I

The finding that the slogan is descriptive

3 Callmann, Unfair Competition, Trademarks and Monopolies 112, § 71.1 (3rd Ed.1969) defines descriptive marks as follows:

"Designations are descriptive if they naturally and normally direct attention to the qualities, ingredients, appearance, effect, purpose, or other features of goods or services * * *"

In Van Camp Sea Food Co. v. Westgate Sea Products Co., 28 F.2d 957, 958 (9th Cir. 1928) this court observed:

"* * * That terms merely descriptive of quality cannot be appropriated as trade-marks is too well settled to require citation of authorities * * *"

See also Carter-Wallace, Inc. v. Procter and Gamble Company, 434 F.2d 794, 800 (9th Cir. 1970), and the cases cited therein.

The cases which have determined the nature of a trademark in both federal and state jurisdictions, either pursuant to statute or at common law, are manifold. Each, of course, turns on its own unique set of facts.

The Supreme Court of Oregon, to which we look for authority in this diversity case,² adheres to the general rule. It held in 88¢ Stores, Inc. v. Martinez, 227 Or. 147, 361 P.2d 809 (1961) that the name "88¢ Store" was purely descriptive of the price range of goods sold by a store chain, and not entitled to exclusive use protection. See also Truck Ins. Exchange v. Truck Ins. Exchange of 649 South Olive Street, Los Angeles, Cal., 165 Or. 332, 107 P.2d 511 (1940); Liquidators v. Clifton, 132 Or. 448, 286 P.2d 152 (1930).

There was ample evidence adduced at the trial to support the District Court's finding that "Escape From The Ordinary" was descriptive of the "out of the ordinary" goods vended by appellant. We need look only to evidence presented by appellant itself:

1. Bernard A. Alport, appellant's president, described himself as a "finder of unique items" and an "expert in selling things that people don't need but that they would like to have." Mr. Alport named as exemplary of products sold by his company such items as an Afrikan Shikari hat, a buckskin shirt, a Buffalo Bill bowie knife, water buffalo shoes, leopard cloth cufflinks, Cowegan Indian sweaters, Irish whiskey cake, a knit suit for men, and a replica of the hat "reputedly worn by Sir Francis Chichester on his recent solo trip around the world."

2. Appellant's catalogs were liberally sprinkled with such adjectives as "rare", "unusual", "unique" and "extraordinary" in describing the articles touted in them. Mr. Alport admitted such representations were "characteristic" of the company's advertising copy.

3. Practically every catalog carried a résumé of the "Norm Thompson Story", a narration of company efforts to travel the world in search of unusual items "researched and tested by experts" which, upon acquisition, had been "improved and developed" by the company's key personnel.

Appellant urges, however, that "Escape From The Ordinary" qualifies as a "suggestive" common law trademark, relying on 3 Callmann, supra, 154-55, § 71.2:

"Trademarks can, of course, serve a function in advertising. Any advertisement, to be effective, must be suggestive, and the trademark which truly functions as an advertising medium, whether descriptive or arbitrary, must likewise be suggestive.

"Between the primarily descriptive and the clearly arbitrary mark, there is a middle ground wherein terms of mingled qualities are found. It cannot be said that they are primarily descriptive, or that they are purely arbitrary or fanciful without any indication of the nature of the goods which they denominate. Such terms, indeed, shed some light upon the characteristics of the goods, but so applied they involve an element of incongruity, and in order to be understood as descriptive, they must be taken in a suggestive or figurative sense through an effort of the imagination on the part of the observer. Many such suggestive terms have been approved as valid trade-marks by the courts."

The District Court considered and saw fit to disregard this "suggestive" contention. In its opinion (300 F.Supp. 274, 276) it found that: "* * * appellant has used the slogan `Escape From The Ordinary' purportedly suggesting a frame of mind in potential purchasers that they are getting something special or different when they buy the appellant's products * * *" and that: "Common English words used in a combination can be a valid trademark if they are merely suggestive rather than primarily descriptive of the characteristics of one's goods," but ruled that the phrase was "primarily descriptive of the characteristics of appellant's goods * * *" As we have concluded above, we can not hold the District Court's finding to be clearly erroneous.

II

The finding that the slogan had not acquired a secondary meaning.

We also deem not clearly erroneous the District Court's finding that the appellant's use of the slogan had not endowed it with a secondary meaning.

Although a merely descriptive term fails to endow its originator with the exclusive right to it, if it has by use and association acquired a "secondary meaning", it may confer such exclusivity. 3 Callmann, supra, 337-340 § 77.1.

Secondary meaning "contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article in the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trade-mark. So it was said that the word had come to have a secondary meaning, * * *" G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373 (6th Cir. 1912), aff'd and modified, Saalfield Pub. Co. v. G. & C. Merriam Co., 238 F. 1 (6th Cir. 1917), cert. denied 243 U.S. 651, 37 S.Ct. 478, 61 L.Ed. 947 (1917). See also Carter-Wallace, Inc. v. Procter and Gamble Company, 434 F.2d 794, 802 (9th Cir. 1970).

In 88¢ Stores, Inc. v. Martinez, 227 Or. 147, 152-153, 361 P.2d 809, 812 (1961) the Oregon Supreme Court said that:

"If a name acquires a secondary meaning, the originator of the name is entitled to exclude use of it by others to the extent that the imitator\'s use causes or is likely to cause confusion of source in the market. 3 Restatement, Torts, Ch. 35 (1938). Confusion of source results if the imitator\'s use of the name misleads present or prospective purchasers into believing that the imitator\'s goods or services are in fact those of the originator of the trade name, with the attendant consequences of diverting business from the originator or obtaining the benefits of the originator\'s advertising or otherwise interfering with his protectible business interests. 3 Restatement, Torts, §§ 728-730, and especially Comment a

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