Opticians Ass'n of America v. INDEP. OPTICIANS

• Decision Date: 18 April 1990
• Docket Number: Civ. A. No. 90-63 (MTB).
• Citation: 14 USPQ 2d 2021,734 F. Supp. 1171
• Court: U.S. District Court — District of New Jersey
• Parties: OPTICIANS ASSOCIATION OF AMERICA, a Pennsylvania Corporation, Plaintiff, v. INDEPENDENT OPTICIANS OF AMERICA, INC., a non-profit corporation of New Jersey, Robert C. Troast, an individual, Alfred Villavecchia, an individual, A. Villavecchia & Sons, Walter H. Neubert, Inc., B.D. Kovacs, Optician, Optical Illusion, Robert C. Troast, Guild Opticians, Gibba Guild Opticians, Arthur L. Wells, Rx Optician, Kubick & Kubick Eye & Ear, Carl H. Bergelt, Guild Optician, In Sight Optics, William H. Ackerman, Optician, Douglas R. Manhire, Optician, Gerald A. York, Optician, Saft Guild Opticians, Lawrenceville Optician, M. Wood, Guild Optician, Lynch-Wood Opticians, F. Meserall & Co., Opticians, Defendants.

734 F. Supp. 1171

14 USPQ 2d 2021

OPTICIANS ASSOCIATION OF AMERICA, a Pennsylvania Corporation, Plaintiff, v. INDEPENDENT OPTICIANS OF AMERICA, INC., a non-profit corporation of New Jersey, Robert C. Troast, an individual, Alfred Villavecchia, an individual, A. Villavecchia & Sons, Walter H. Neubert, Inc., B.D. Kovacs, Optician, Optical Illusion, Robert C. Troast, Guild Opticians, Gibba Guild Opticians, Arthur L. Wells, Rx Optician, Kubick & Kubick Eye & Ear, Carl H. Bergelt, Guild Optician, In Sight Optics, William H. Ackerman, Optician, Douglas R. Manhire, Optician, Gerald A. York, Optician, Saft Guild Opticians, Lawrenceville Optician, M. Wood, Guild Optician, Lynch-Wood Opticians, F. Meserall & Co., Opticians, Defendants.

Civ. A. No. 90-63 (MTB).

United States District Court, D. New Jersey.

April 18, 1990.

COPYRIGHT MATERIAL OMITTED

Saidman, Sterne, Kessler & Goldstein Washington, D.C. by Joan L. Dillon, McCarter & English, Newark, N.J. by Roslyn S. Harrison, for plaintiff.

Blum Kaplan, New York City by Steven B. Pokotilow, Anita K. Yeung, Pamela Mandel, Millburn, N.J., for defendants.

OPINION

BARRY, District Judge.

I. INTRODUCTION

Plaintiff Opticians Association of America ("OAA") has registered and maintained a group of seven collective marks (the "guild marks") that were intended to be used exclusively by its members. Defendants, former members of the OAA, used these guild marks while they were members of the OAA and have continued to use these marks despite having terminated those memberships. In June 1989, plaintiff demanded that all defendants cease use of the guild marks, but the defendants did not and have not complied.

Defendants Troast and Independent Opticians of America ("IOA"), an organization formed by former OAA members to challenge the rights of the OAA over the guild marks, commenced a proceeding on September 22, 1989 before the Trademark Trial and Appeals Board ("TTAB") of the United States Patent and Trademark Office ("PTO") to cancel several of the guild marks at issue in this action. On January 9, 1990, plaintiff instituted this action alleging infringement, false designation of origin, unfair competition, tortious interference with business relations and fraudulent misrepresentation.

Plaintiff now seeks a preliminary injunction (1) prohibiting defendants from using the federally registered guild marks, Federal Registration Nos. 404,350; 410,748; 622,201; 622,743; 751,449; 842,243; and the New Jersey service mark registration of "GUILD OPTICIANS" AND DESIGN, registered on July 21, 1983, in Class 101, in the advertising, distribution, or sale of defendants' goods or services; (2) prohibiting defendants from tortiously interfering with plaintiff; and (3) staying the proceeding for cancellation of plaintiff's federal guild mark registrations before the TTAB. The court heard oral argument on February 1, 1990.¹ For the reasons that follow, plaintiff's motion will be denied in its entirety.

II. FACTS

The OAA was originally organized in 1925 as the Guild of Prescription Opticians of America (the "Guild"), a corporation of the Commonwealth of Pennsylvania. (Hawkins Aff. at ¶ 3; Miller Aff. at ¶¶ 2, 3(d)). In this incarnation, the organization was primarily devoted to promoting the advancement of the science of optics. (Hawkins Aff. at ¶ 3). Membership was specifically restricted to retail optical dispensing firms that were not affiliated with a refractionist, a medical professional that prescribes eyewear. Id. As a matter of professional ethics, this prohibition served to prevent even the appearance of a conflict of interest between an optical firm, which fills the eyewear prescription, and a refractionist, assuring patients freedom of choice in shopping for prescription eyewear from an optician. Id. at ¶¶ 3, 14.

The Guild and its successor in name registered and maintained guild marks which have been in continuous use. The federally registered marks include: (1) United States Trade Mark Registration No. 404,350 for the collective mark "GUILD OPTICIANS" stylized in Gothic script registered on November 23, 1943 in Class 26, and renewed for a twenty year term on November 23, 1983; (2) United States Trade Mark Registration No. 410,748 for a collective mark comprising the words "GUILD OPTICIANS" and a circular design including a stylized "Rx" symbol, registered on December 19, 1944 in Class 26, and renewed for a twenty year term on December 19, 1984; (3) United States Collective Mark Registration No. 622,201 for a mark comprising the words "GUILD OF PRESCRIPTION OPTICIANS OF AMERICA" and a circular design including a stylized "Rx" symbol, registered on February 28, 1956 in Class 26, and renewed for a twenty year term; (4) United States Trade Mark Registration No. 622,743 for a mark comprising the words "GUILD OF PRESCRIPTION OPTICIANS OF AMERICA" and a circular design including a stylized "Rx" symbol, registered on March 6, 1956 in Class 38, and renewed for a twenty year term;² (5) United States Collective Membership Mark Registration No. 751,449 for a mark comprising the words "GUILD OPTICIANS" and a circular design including a stylized "Rx" symbol, registered on June 18, 1963 in Class 200, and renewed for a twenty year term on June 18, 1983; and (6) United States Collective Membership Mark No. 842,243 for a mark comprising the words "GUILD OPTICIANS INTERNATIONAL" and an oval design including a stylized "Rx" symbol superimposed over the intersection of circular depictions of the continents in the Western and Eastern hemispheres of the globe. Id. at ¶ 6 & Exh. 3; Shaw Aff. at ¶ 4 & Exhs. 2-6. In addition, the organization registered and maintained New Jersey Service Mark "GUILD OPTICIANS" AND DESIGN, registered on July 21, 1983 in Class 101. (Hawkins Aff. at ¶ 6 & Exh. 3). Plaintiff contends that these guild marks, with the exception of Federal Registration No. 622,743,³ have served as both collective membership marks and collective trademarks. (Hawkins Aff. at ¶¶ 6, 11; Shaw Aff. at ¶ 5; Miller Aff. at ¶ 4(i); Tr. at 48).

In 1972, the Guild changed its name to the Opticians Association of America and thereafter expanded its mandate to become a trade organization with the goals, inter alia, of fostering a broader understanding and acceptance of retail optician dispensing and providing physicians and the public with efficient optical dispensing services through its membership. (Hawkins Aff. at ¶¶ 4, 5 & Exhs. 1, 2; Shaw Aff. at ¶ 2 & Exh. 1; Miller Aff. at ¶¶ 2, 3(d)). This expansion was memorialized in the modification of the Constitution and Bylaws,⁴ by which membership was opened to optical firms that were affiliated with refractionists. (Hawkins Aff. at ¶ 8). The shift in policy was motivated primarily by a desire to admit to membership and, consequently, to represent a wider spectrum of opticians in order to become a viable force in promoting national legislation. (Miller Aff. at ¶ 3(a); Troast Aff. at ¶ 6). In addition, the transmogrification was, in part, an acknowledgement of the increasing trend toward "one-stop" shopping for prescription eyewear and a perception that new regulations promulgated by the Federal Trade Commission would be more effective in ensuring the freedom of the public to make an informed choice regarding an eyewear provider. (Hawkins Aff. at ¶ 14).

Despite this change, the OAA did not completely jettison the more stringent professional standards that had previously existed. In response to the concerns of a vocal minority of members, the OAA established a separate division within its membership, appropriately entitled the Guild of Prescription Opticians of America (the "Guild Division"), that pledged to continue the tradition of conducting business in the absence of an association with refractionists. Id. at ¶ 9. Accordingly, membership in the Guild Division was limited to retail optical dispensing firms that remained members in good standing of the OAA and, in addition to other accreditation requirements, eschewed affiliation with refractionists. Id.; OAA Const. at 19.

Although the Guild Division is a distinct group of OAA members governed by an elected, representative body — the Guild Council — direct control over this group is maintained by the OAA. While the members of the Guild Division may create standards and guidelines for membership and accredit members, the final authority on determining membership in the Guild Division is the Board of Directors of the OAA. (Shaw Aff. at ¶ 6 & Exhs. 7-9; OAA Const. at 22). Moreover, the five-person committee which nominates slates of candidates to fill expired terms on the Guild Council is appointed by the President of the OAA, subject to the approval of the Guild Council. (OAA Const. at 21). Finally, the OAA controls the percentage of OAA revenues allotted to the Guild Division and, thus, its operating budget. (Shaw Aff. at Exhs. 37, 43, 54, 59, 61).

The Constitution and Bylaws of the OAA specify that the guild marks are owned by the OAA and may be used only by optical dispensing firms that have been accredited by the Guild Council and are members in good standing of the OAA and the Guild Division. (OAA Const. at 19). There is no other reference in the OAA Constitution and Bylaws to the authority of Guild Division members to use the guild marks; indeed, the only evidence submitted by the parties concerning the right to use the guild marks is one reference in a June 1989 policy statement of the OAA Board of Directors. (Shaw Aff. at ¶ 9 & Exh. 13).

Extensive use is made of the guild marks. The Guild Division provides its members with large decals suited for windows or doors of the optical firm and membership certificates emblazoned with one of the guild marks. (Fairbarns Aff. at Exhs. B, D). The Guild Division members themselves adorn stationery, promotional material, prescription blanks, business cards and receipts with the guild marks. (Hawkins Aff. at Exh. 69). The guild marks are also used by Guild...