Ross Bicycles, Inc. v. Cycles USA, Inc.
| Citation | 765 F.2d 1502,226 USPQ 879 |
| Decision Date | 22 July 1985 |
| Docket Number | No. 84-3354,84-3354 |
| Parties | ROSS BICYCLES, INC., Plaintiff-Appellant, v. CYCLES USA, INC., Defendant-Appellee. |
| Court | United States Courts of Appeals. United States Court of Appeals (11th Circuit) |
Paul Watson Lambert, Tallahassee, Fla., Bruce E. Lilling, White Plains, N.Y., Burton L. Lilling, Scarsdale, N.Y., for plaintiff-appellant.
Albert Robin, Robin, Blecker & Daley, New York City, for defendant-appellee.
Appeal from the United States District Court for the Northern District of Florida.
Before GODBOLD, Chief Judge, HATCHETT, Circuit Judge, and TUTTLE, Senior Circuit Judge.
Ross Bicycles sued alleging trademark infringement and false designation of origin. The facts are stated in the district court's opinion, reproduced as an appendix.
The district court held that there was no trademark infringement because there was no likelihood of confusion between the trademarks at issue and that there was no trade dress infringement because there was no likelihood of confusion between the trade dress of the two products. It also denied the defendant's request for attorney's fees and Ross' motions to amend the pre-trial stipulation.
On appeal, Ross contends that the district court erred by finding no trademark infringement, failing to rule on its false designation of origin claim, failing to award it attorney's fees, and denying its motions to amend the pre-trial stipulation. We affirm the district court's holding as to trademark infringement on the basis of its opinion. We also reject Ross' other contentions.
Count two of Ross's complaint asserted a claim for false designation of origin under 15 U.S.C. Sec. 1125(a). It appears that the district court treated this as a claim of trade dress infringement. It held that its finding that there was no likelihood of confusion between the two trademarks meant that there was no likelihood of confusion between the trade dress of the two products. Despite treating the false designation of origin claim as a claim of trade dress infringement, the district court ruled properly.
To prevail on a false designation of origin claim under 15 U.S.C. Sec. 1125(a) a plaintiff must establish that the defendant adopted a mark confusingly similar to the plaintiff's mark such that there was a likelihood of confusion as to the origin of the goods. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir.1984). The factors relevant to establishing this are identical to the factors relevant to establishing a likelihood of confusion with respect to trademark infringement under 15 The district court's denial of Ross' motions to amend the pre-trial stipulation was not error. The pre-trial stipulation was filed January 5, 1984. On March 7 Ross moved to amend the stipulation to add seven additional exhibits and three witnesses, all with respect to a survey it had conducted on February 3 and 26 concerning the likelihood of confusion issue. On March 26, at the opening of the trial, Ross moved to further amend the pre-trial stipulation to add Thomas Payne as a trial witness. Payne was to testify to an incident that occurred four months prior to the submission of the pre-trial stipulation.
U.S.C. Sec. 1114. Compare id. at 1514 () with John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 973-79 (11th Cir.1983) (trademark infringement). Accordingly, the district court's finding of no likelihood of confusion with respect to trademark infringement precluded finding a likelihood of confusion with respect to the false designation of origin claim.
Despite Ross' contentions that the district court indicated at the time of the pre-trial conference that discovery would remain open, that there was little time to conduct discovery, and that Payne's testimony did not come to its attention until after the pre-trial stipulation, we hold that the district court did not commit a clear abuse of discretion. U.S. v. Koziy, 728 F.2d 1314, 1320 (11th Cir.1984), cert. denied, --- U.S. ----, 105 S.Ct. 130, 83 L.Ed.2d 70 (1984). Cf. Typographical Service, Inc. v. Itek Corp., 721 F.2d 1317, 1319 (11th Cir.1983) (); Jackson v. Seaboard Coast Line Railroad Co., 678 F.2d 992, 1019 (11th Cir.1982) ().
Finally, because Ross has not prevailed on any issue it has not satisfied the prevailing party requirement of 15 U.S.C. Sec. 1117 and is not entitled to attorney's fees.
AFFIRMED.
APPENDIX
The complaint in this case alleges infringement of a registered trademark, 15 U.S.C. Sec. 1114(1), and the false designation of the origin of defendant's bicycles, 15 U.S.C. Sec. 1125(a). The complaint seeks injunctive relief against defendant's alleged infringement and false designation, an accounting of profits, damages, punitive damages, destruction of infringing materials, costs and reasonable attorneys' fees.
The action involves the production and sale of "cruiser" bicycles by plaintiff and defendant. The word "cruiser" is used throughout the industry to describe fat or balloon tire bicycles (larger than ten-speed bicycle tires) with large saddle seats and upright handlebars which permit the rider to ride sitting straight up. Cruisers generally come in single, three or five speeds. The cruiser bicycles became popular in the late 1970's and defendant developed its cruiser lines to tap into this market. In Florida, where defendant does most of its business, the cruiser can be used to ride on the beaches.
Plaintiff Ross Bicycles, Inc. (Ross) was incorporated in New York in 1946 under the name "Chain Bike Corporation". The name was changed to "Ross Bicycles, Inc." on May 21, 1982. Since 1946 Ross has manufactured and sold over ten million bicycles bearing the Ross trademark throughout the United States. Ross sells a complete line of bicycles including children's, BMX, touring, cruiser, mountain, racing and stationary exercise bicycles.
Plaintiff is the owner of the Ross trademark for bicycles and structural parts which has been registered with the United States Patent and Trademark Office. The Ross mark generally appears in two places. A logo consisting of the letter "R" above the name Ross in a rectangle appears on the head tube (the tube running vertically between the handle bar and the front wheel). The name Ross, in one of several Plaintiff advertises its bicycles in bicycling magazines and promotes their sales with catalogs, brochures and point-of-sale materials and by participation in trade shows and the sponsorship of racing teams. The total direct and indirect advertising budget for all Ross bicycles is over one million dollars a year.
different letter styles and spacing, appears on the down tube (the tube running from the head tube to the crank). On some of plaintiff's bicycles a model name, without the name Ross, appears on the top tube (the tube running from the head tube to the seat tube).
Defendant East Coast Cycles and Imports, Inc., was incorporated in Florida in August of 1975. Defendant's principal, Ronald E. Jamis, entered the bicycle business in 1973. Defendant is engaged in the business of having bicycles manufactured for it for sale, and distributing various types of bicycle parts and accessories.
In 1979 defendant entered the cruiser bicycle market with its "Earth Cruiser" model, a bicycle manufactured in Taiwan and sold by retailers principally in Florida and neighboring states. In 1980 defendant added the "Taxi" model cruiser to its line, and in late 1982 defendant added the "Boss Cruiser" model to its line.
The Boss Cruiser was developed because of a perception by defendant that a large bicycle was needed to complete its line of cruisers. The Boss Cruiser was designed for above average height people to insure pedal knee clearance with the handlebars. Defendant wanted to provide a bike which gave a "macho" or "strength" image. To accomplish this, the first frame developed was 23"' (measured from the center of the sprocket to the top of the seat tube), and used oversized tubing (30% larger in diameter than the tubing used by Ross cruisers).
Ronald Jamis and John Register, an employee of defendant, designed the specifications of the Boss Cruiser. Mr. Jamis had some experience racing and building cars and motorcycles during highschool and college. Mr. Register had no experience in designing bicycles. The Boss Cruiser was designed over a one year period. In designing the Boss Mr. Jamis and Mr. Register rode various cruiser bicycles to compare and decide what features they wanted including the Ross Diamond Cruiser. After determining the approximate frame dimensions they desired, the defendant communicated the measurements to a Taiwan factory. Five or six prototype frames were sent to defendant by the factory before defendant chose the final dimensions for the Boss. Defendant has sold over 7,000 Boss Cruisers.
At the time defendant adopted the name Boss Cruiser for its new bicycle it was aware of the use and ownership by plaintiff of the Ross mark in connection with bicycles. The name "Boss Cruiser" was developed by Mr. Jamis and his employees over a three to four month period. The name was chosen to give the bicycle a macho or strength image. Defendant obtained two trademark searches as to the availability of the name Boss Cruiser, and neither search cited plaintiff's mark. Although Mr. Jamis knew of the Ross mark, he did not copy it in naming the Boss Cruiser, nor did defendant adopt the Boss mark to confuse the public or to capitalize on the Ross name.
The name "Boss Cruiser" appears on the front fork, on the top tube, and on the chain guard. There is no name or logo on the down tube. On the seat tube (the tube running vertically between the seat and the crank) a logo appears which consists of a "boss" figure and the words "The Boss". Since ...
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