President and Trustees of Colby College v. Colby College-New Hampshire

• Decision Date: 09 January 1975
• Docket Number: COLLEGE-NEW,No. 74-1178,74-1178
• Citation: 508 F.2d 804
• Parties: The PRESIDENT AND TRUSTEES OF COLBY COLLEGE, Plaintiff-Appellant, v. COLBYHAMPSHIRE, Defendant-Appellee.
• Court: U.S. Court of Appeals — First Circuit

Page 804

508 F.2d 804

185 U.S.P.Q. 65

The PRESIDENT AND TRUSTEES OF COLBY COLLEGE, Plaintiff-Appellant, v. COLBY COLLEGE-NEW HAMPSHIRE, Defendant-Appellee.

No. 74-1178.

United States Court of Appeals, First Circuit.

Argued Nov. 4, 1974.

Decided Jan. 9, 1975.

Vincent L. McKusick, Portland, Me., with whom Pierce, Atwood, Scribner, Allen & McKusick, Portland, Me., Everett P. Ingalls, III, Lawrence E. Spellman, and Sulloway, Hollis, Godfrey & Soden, Concord, N. H., were on brief, for plaintiff-appellant.

R. Graham McSwiney, Concord, N. H., with whom McSwiney & Jones and Hall, Morse, Gallagher & Anderson, Concord, N. H., were on brief, for defendant-appellee.

Before ALDRICH, McENTEE and CAMPBELL, Circuit Judges.

ALDRICH, Senior Circuit Judge.

This is an action brought by the President and Trustees of Colby College, hereinafter plaintiff, who are engaged, and have been since 1813, in conducting a four-year college in Waterville, Maine, from 1867 under the name of Colby University, and since 1899 under the name of Colby College. Plaintiff seeks to enjoin the use of the name Colby College-New Hampshire by defendant, and educational institution in New London, New Hampshire. ¹ The district court denied a preliminary injunction, 359 F.Supp. 571, and thereafter dismissed the complaint. 374 F.Supp. 1141. (Citation to these opinions will hereafter be by page, only.) Plaintiff appeals.

Defendant, having for many years provided coeducational secondary schooling under several names, in 1878, in recognition of benefactions from a prominent New Hampshire family, changed its name to Colby Academy. In 1928 it dropped males from its enrollment and added two years of college instruction. In 1933 it discontinued secondary education and changed its name to Colby Junior College for Women. Commencing ten years later, it gradually extended its courses, and began awarding baccalaureate degrees in such subjects as Medical Technology, Theatre, Music, and Business Administration. This ultimately led to the conclusion to drop the Junior, and because males were again admitted, to drop the reference to women. In October 1972 defendant's board of trustees voted to change its name to Colby College-New Hampshire, effective Jury 1, 1973. This suit was instituted on May 3, 1973.

Defendant makes, and the district court accepted, two basic points: that no 'exclusive' secondary meaning had attached to plaintiff's name, Colby College, and that defendant's name change did not increase, or threaten the likelihood of increasing, confusion that already existed between the two institutions. We hold that the decision on the first point embraced one, and possibly two, errors of law, and that as to both there were unwarranted conclusions of fact.

I. Secondary Meaning.

While plaintiff's name is not, strictly, a descriptive phrase of general usage, neither can it be termed fanciful, coined, or arbitrary in the same sense as Xerox or Kodak. In such circumstance, plaintiff has properly assumed the burden of showing not only the likelihood of confusion between itself and defendant, but also that its name has acquired a secondary meaning associating plaintiff with its name in the minds of the consuming public. See Kellogg Co. v. National Biscuit Co., 1938, 305 U.S. 111, 116, 118, 59 S.Ct. 109, 83 L.Ed. 73. Our first question is whether in respect to this the court imposed too high a standard.

In order to find secondary meaning, the district court required proof that 'the name 'Colby College' . . . exclusively signif(ies) the plaintiff institution in the mind of the public.' (359 F.Supp. 575). See also (374 F.Supp. 1144). Careful reading of both opinions suggests the court may have felt that exclusivity was lost if, to some persons, the name meant the wrong party. This is not so; plaintiff need only prove a 'primary significance.' Kellogg Co., ante, 305 U.S. at 118, 59 S.Ct. 109. The 'lack of exclusivity in the use of the word . . . (is merely) a factor militating against a finding of secondary meaning.' American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 5 Cir., 1974, 494 F.2d 3, 13. Carter-Wallace, Inc. v. Procter & Gamble Co., 9 Cir., 1970, 434 F.2d 794, 802 (accord). There is sufficient secondary meaning as long as a significant quantity of the consuming public understand a name as referring exclusively to the appropriate party, for it is undesirable that such a quantity be deceived even if some, relatively small, number is not. See Food Fair Stores v. Food Fair, Inc., 1 Cir., 1949, 177 F.2d 177, 185; G. & C. Merriam Co., v. Saalfield, 6 Cir., 1912, 198 F. 369, 373, aff'd and modified, 238 F. 1, cert. denied, 243 U.S. 651, 37 S.Ct. 478, 61 L.Ed. 947.

Even if the court correctly understood this limited meaning of exclusivity, it overstated the 'militating' evidence. It found that defendant 'has, at times, been referred to, both formally and informally, as Colby College.' (374 F.Supp. 1144). Support for this finding is of a very unsatisfactory character. ² It does not, in any event, rebut the controlling fact, if otherwise established, that a substantial number of persons regarded 'Colby College' as referring exclusively to the plaintiff. As to this the evidence leaves but one answer.

Secondary meaning is established in a number of ways. First, from the admitted fact of long and exclusive use. See Norm Thompson Outfitters, Inc. v. General Motors Corp., 9 Cir., 1971, 448 F.2d 1293, 1296; G. & C. Merriam Co. v. Saalfield, ante, 198 F. at 373. The district court's observation that defendant has shared the name 'Colby' with plaintiff since 1878, and was frequently referred to by some by that name alone, does not destroy this inference, since secondary meaning may attach to the conjunction Colby College.' Cf. Food Fair, ante, 177 F.2d at 185. There is no evidence that defendant has ever held itself out, either formally or informally, as 'Colby College.' Despite the mistaken impressions of a few, only plaintiff has made use of that name.

Second, as defendant concedes, the size or prominence of an enterprise may warrant the inference that its name has acquired secondary meaning. See Shaler Co. v. Rite-Way Products, 6 Cir., 1939, 107 F.2d 82, 84, cert. denied, 310 U.S. 634, 60 S.Ct. 1076, 84 L.Ed. 1403; Wisconsin Elec. Co. v. Dumore Co., 6 Cir., 1929, 35 F.2d 555, 557-558, appeal dismissed, 282 U.S. 813, 51 S.Ct. 214, 75 L.Ed. 728. Without intending invidious comparison, we note that plaintiff outdistances defendant in size, reputation, and achievement. ³

Third, while secondary meaning is shown by the success rather than by the mere fact of an enterprise's promotional efforts, cf. General Time Instr. Corp. v. 165 F.2d 853, 854-855, cert. denied, 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770, the normal consequence of substantial publicity may be inferred. See Carter-Wallace, ante, 434 F.2d at 800; Beef/Eater Restaurants, Inc. v. James Burrough Ltd., 5 Cir., 1968, 398 F.2d 637, 639-640. Defendant does not dispute the evidence that plaintiff's numerous and varied publications, of appreciable distribution, its public service activities, and its membership in professional associations, as well as the activities and associations of its students and faculty, all serve to promote its name and good will.

Finally, in addition to the inference we believe these factors, cumulatively, compelled, plaintiff presented direct evidence that its name has acquired a secondary meaning. Dr. Armstrong, president of Middlebury College, Vermont, testified that the name 'Colby College' is exclusively understood 'in the academic field as meaning the plaintiff.' The district court accepted his testimony. ⁴ (374 F.Supp. 1144). It then erred in concluding that reputation in the academic community fails to show secondary meaning "broadly known to the public." Id., citing 52 Am.Jur. Trademarks, Tradenames, and Trade Practices, 1944, 73. Of course the concept of secondary meaning assumes public recognition, but this does not define what is the product's public.' Even the case cited by the court indicates that the concept of secondary meaning 'contemplates that a word or phrase . . . might nevertheless have been used . . . so exclusively by one producer . . . that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product . . ..' Merriam, ante, 198 F. at 373. See Mortellito v. Nina of California, Inc., S.D.N.Y., 1972, 335 F.Supp. 1288, 1295 (secondary meaning of needlepoint manufacturer among needlepoint purchasers); Fund of Funds, Ltd. v. First American Fund of Funds, Inc., S.D.N.Y., 1967, 274 F.Supp. 517, 524 (secondary meaning of mutual fund among 'members of the investing public or professional investment community.'). We hold that a college may establish that its name has acquired secondary meaning sufficient to invoke protection against infringement by demonstrating the congruence of its name and its institution in the minds of an appreciable number of individuals broadly associated with other institutions of higher education in a given geographic area.

It could be argued that a strongly held opinion in academic circles suggests that a similar view is held by the public at large. Plaintiff did not rest upon such an inference, but offered empirical evidence in the form of a survey conducted by the Becker Research Corporation of Boston, Massachusetts, concluding that New England residents associate the name 'Colby College' with plaintiff. Becker interviewed by telephone 1500 New England residents, 500 from Maine, 500 from New Hampshire, and 500 from metropolitan Boston, chosen as a representative cross-section of the population in these areas. Seventy-nine per cent of the Maine respondents, 40% Of the Boston respondents, and 37% Of the New Hampshire respondents identified 'Colby College' as located in Maine, where plaintiff is located, while only 2%, 7%, and 18% Respectively placed 'Colby College' in...