Spraying Systems Co. v. Delavan, Inc., 89 C 8447.
| Decision Date | 22 March 1991 |
| Docket Number | No. 89 C 8447.,89 C 8447. |
| Citation | 762 F. Supp. 772 |
| Parties | SPRAYING SYSTEMS COMPANY, Plaintiff, v. DELAVAN, INC., Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
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Lawrence S. Wick, John Michael Curtin, Mary Catherin Merz, Leydig, Voit & Mayer, Chicago, Ill., for plaintiff.
Daniel M. Riess, Daniel R. Pastirik, Lockwood, Alex, Fitzgibbon & Cummings, Chicago, Ill., for defendant.
Spraying Systems Company ("Spraying Systems") has sued Delavan, Inc. ("Delavan") to obtain (1) cancellation of Delavan's two federal trademark registrations for various spray nozzles and related goods bearing the mark "COLOR JET," alleging likelihood of confusion (Count I) and fraud in the procurement (Count II), and (2) injunctive relief on several claims: federal trademark infringement in violation of Lanham Act § 32(1)(a) (15 U.S.C. § 1114(1)(a)) (Count III), federal unfair competition in violation of Lanham Act § 43(a) (15 U.S.C. § 1125(a)) (Count IV), and pendent state law charges of infringement and unfair competition (Count V). Delavan has now moved for summary judgment under Fed. R.Civ.P. ("Rule") 56, and both parties have complied with the filing requirements of this District Court's General Rule 12(m) and 12(n) applicable to such motions. For the reasons stated in this memorandum opinion and order, Delavan's motion is granted as to Counts I through IV, while Count V is dismissed without prejudice.
Spraying Systems has for many years been engaged in the manufacture, distribution and sale of spray nozzles and other spraying apparatus used in agricultural or industrial capacities. Beginning as far back as 1938, it has adopted and used a number of "-JET" suffix trademarks in connection with its goods, and it owns at least 35 valid federal trademark registrations to that effect — to name a few, AIRJET, BOOMJET, CASTERJET, CONEJET, FOAMJET, QUICKJET and SNOWJET. In fact, many of Spraying Systems' customers refer to the company and know it better as "TeeJet," a trademark first used in 1948. Spraying Systems' annual sales of its goods marketed under various of the "-JET" composites have exceeded $20 million since 1981 and $30 million since 1986.
Delavan is the owner of two federal trademark registrations for the mark COLOR JET,2 used in connection with spray nozzles and equipment that Delavan admits are similar to Spraying Systems' and that Delavan also admits move through the same channels of trade to the same class of purchasers. COLOR JET is used principally in connection with nozzle tips used in agricultural applications. It seems most likely that Delavan first used its COLOR JET trademark in 1985, when it appeared in a price list (see Westergaard Dep. 37, P.Mem.Ex. 56), but in any case its first use was no earlier than 1982 — long after Spraying Systems' first use of a "-JET" suffix in connection with goods sold in interstate commerce.
Both Spraying Systems and Delavan color code various of their spray nozzles. Individual colors are used to designate specific nozzle capacities or flow rates at a given liquid pressure. Spraying Systems promotes its color-coding system under the registered trademark VISIFLO in connection with its goods marked CONEJET, FLOODJET, FULLJET, SUPER TEEJET, QUICKJET, QUICK TEEJET, TEEJET, TWINJET, XR TEEJET, KQT QUICKJET, and QUICKFLOODJET. Delavan promotes its color-coding system under the registered trademark COLOR-BRATE in connection with its goods marked COLOR JET. Delavan began using its COLOR-BRATE system in 1982 and Spraying Systems began using its VISIFLO system in 1983. VISIFLO has the colors orange, green, yellow, blue, red, brown, gray and white. COLOR-BRATE has all of those colors with the exception of white and also has tan, light blue and light green.3 However, the two systems do not use the same color to designate a particular nozzle capacity.
Spraying Systems and Delavan use different packaging in the sale and distribution of their goods (though the goods themselves are otherwise admittedly similar in appearance). Spraying Systems' packaging is yellow with black labeling, while Delavan's is red, white and blue. Each company clearly marks the source of the product with the relevant trademark "Spraying Systems" or "Delavan" on the packaging.
In 1983 there was a brief exchange of letters between lawyers for the companies, in which Spraying Systems requested that Delavan cease and desist in its efforts to register its COLOR JET trademark. When the COLOR JET mark appeared in Delavan's December 1988 catalog, it was Spraying Systems' first indication of actual marketing of the COLOR JET mark. On January 26, 1988 Spraying Systems petitioned the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (the "Board") to cancel the two registrations for COLOR JET in Consolidated Cancellation 16,950. On September 14, 1989 the Board granted Delavan's motion for summary judgment and (in the "Decision") dismissed Spraying System's Petition for Cancellation. Spraying Systems then filed this action pursuant to Lanham Act § 21(b) (15 U.S.C. § 1071(b)) within 60 days of the Board's Decision.
This action is in part an appeal from the Decision. In that respect this Court reviews decisions of the Board de novo, and the parties can introduce new evidence not brought before the Board (Dow Corning Corp. v. Applied Power Industries, Inc., 322 F.Supp. 943, 944 (N.D.Ill.1970)). However, it is "well settled" that a Board decision "must be accepted as controlling upon a finding of fact about confusing similarity of trademarks, unless the contrary is established by testimony which in character and amount carries thorough conviction" (Fleetwood Co. v. Hazel Bishop, Inc., 352 F.2d 841, 844 (7th Cir.1965), citing Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 773-74, 38 L.Ed. 657 (1894)).
In the action before the Board, it found factually (1) Spraying Systems' priority in use of trademark (which Delavan does not deny), (2) similarity of the goods, channels of trade and purchasers (all three of which have been conceded by Delavan in both that and this action), (3) substantial use and advertising by Spraying Systems of its trademarks and (4) no instances of actual confusion (because none were shown) (Decision 8-9, Complaint Ex. C). Spraying Systems argued to the Board that the combination of the "-JET" suffix and the color coding on both companies' spraying nozzles, as well as use of the word "COLOR" in Delavan's trademark, made consumer confusion likely. But because Spraying Systems did not plead that color coding was a trademark, the Board found that aspect did not raise a genuine issue of material fact (id. at 9-10). Instead it considered likelihood of confusion only between the registered trademarks themselves, noting the sole similarity to be the "-JET" suffix.
On that score Delavan presented evidence of 48 third-party trademark registrations bearing the suffix "-JET" and copies of third-party literature evidencing widespread use of "JET" marks for spray nozzles and related goods. Such evidence, the Board noted, is (id. at 10):
competent to show that a common portion of a mark has a readily understood and well-known meaning in relation to the goods at issue so as to suggest that said common portion was adopted to convey that meaning or a suggestion thereof and also to show that the inclusion of that portion in each of the parties' marks is alone an insufficient basis on which to predicate a likelihood of confusion.
Upon consideration of the third-party registrations and uses, the Board found that at least 40 of the registrations, as well as all of the trade literature, were for nozzles or related goods and were "sufficiently related to spray nozzles as to make those uses relevant to our determination of whether `JET' has a commonly understood meaning" (id. at 11). In conclusion, the Board found (id. at 12) (footnote omitted):
There exists no genuine issue of fact that the use of that particular word in all of these marks was intended to convey its dictionary meaning, i.e., (The American Heritage Dictionary (1976)) Because marks must be considered in their entireties, the use of a common, highly suggestive or descriptive portion is usually not enough to support a finding that there is a likelihood of confusion. See Tektronix, Inc. v. Daktronics, Inc. 534 F.2d 915 (C.C.P.A. 1976).
None of Spraying Systems' marks, in its entirety, was found likely to cause confusion with Delavan's COLOR JET mark (id. at 13).
As the ensuing discussion will demonstrate, an independent review of the tenets of trademark law fortifies the Board's holding. And Spraying Systems has offered nothing new to lead to a "thorough conviction" (the Fleetwood standard) that the Board's holding was incorrect.
Spraying Systems is suing Delavan for both federal trademark infringement and what is commonly thought of as the federal common law of unfair competition under the Lanham Act. 1 McCarthy, Trademarks and Unfair Competition § 8:1, at 282-83 (2d ed. 1984) (footnote omitted) sets out the distinction between the two claims:
The emphasis and thrust of trademark protection is deciding whether a given symbol in fact functions as a mark and whether defendant's mark is likely to cause confusion. Thus, for trademark infringement purposes, it is only the symbol characterized as a "trademark" which is juxtaposed against defendant's usage. On the other hand, unfair competition protection is not so limited in scope. The court need not focus on merely one facet of plaintiff's total selling "image," as in trademark law. To determine...
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