Wesley-Jessen Div. of Schering Corp. v. Bausch & Lomb Inc.
| Decision Date | 19 January 1983 |
| Docket Number | WESLEY-JESSEN,No. 82-2237,82-2237 |
| Citation | 698 F.2d 862 |
| Parties | DIVISION OF SCHERING CORPORATION, Plaintiff-Appellant, v. BAUSCH & LOMB INCORPORATED, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Jeremiah D. McAuliffe, Pattishall, McAuliffe & Hofstetter, Chicago, Ill., for plaintiff-appellant.
George B. Newitt, Allegretti, Newitt, Witcoff & McAndrews Ltd., Chicago, Ill., for defendant-appellee.
Before WOOD, ESCHBACH and POSNER, Circuit Judges.
Wesley-Jessen Division of Schering Corporation ("Wesley-Jessen") appeals from the district court's granting of a preliminary injunction enjoining it from using designations that Bausch & Lomb, Inc. ("Bausch & Lomb") claims are its trademarks. For the reasons below, we affirm.
Wesley-Jessen and Bausch & Lomb both manufacture soft contact lenses. In 1977, Bausch & Lomb introduced a spin cast, ultrathin soft contact lens with a diameter of 13.5 mm and a water content of approximately 38%. That lens was denominated U3, indicating its ultrathin thickness and its 13.5 mm diameter. In 1979, Bausch & Lomb introduced the U4, with a 14.5 mm diameter. These lenses proved very popular and were marketed with considerable success.
In 1980, Wesley-Jessen made its entry into the ultrathin market with its lathe cut "Gold Label" lens, which had a water content of approximately 30%. These lenses did not sell well. In August 1981, Wesley-Jessen introduced its Durasoft 2 line of ultrathin lenses with a water content approximating that of the Bausch & Lomb product. In its marketing efforts, Wesley-Jessen used the designations U3 and U4, it contends, to indicate thickness and diameter. Unlike the Gold Label lenses, these new lenses sold briskly.
On December 18, 1981, Wesley-Jessen filed a complaint seeking a declaratory judgment that its use of the designations U3 and U4 did not constitute trademark infringement or unfair competition. Bausch & Lomb counterclaimed, alleging, inter alia, that Wesley-Jessen's use of U3 and U4 is a false designation of origin or a false representation in violation of 15 U.S.C. Sec. 1125(a). Bausch & Lomb moved for a preliminary injunction enjoining Wesley-Jessen from using U3 and U4 in conjunction with its lenses. In July 1982, after an evidentiary hearing, the district court enjoined Wesley-Jessen from using those designations or any confusingly similar designations in selling, distributing or promoting its contact lenses. The district court granted a limited stay to allow Wesley-Jessen to develop alternative sales and marketing techniques.
Wesley-Jessen appealed from the order granting a preliminary injunction. A panel of this court extended the stay through the first week in November when oral arguments were heard. The stay was then extended until the date of entry of this decision and order.
Wesley-Jessen contends that the district court abused its discretion in granting a preliminary injunction. Wesley-Jessen argues that the court erred first, in relying on certain treatises not in evidence in evaluating the market surveys the parties offered; second, in determining that Bausch & Lomb would likely succeed in its case on the merits; and third, in determining that the equities of the situation weighed in favor of granting a preliminary injunction.
Decisions to grant or deny preliminary injunctive relief are addressed to the sound discretion of the district court, and appellate review of such a decision is limited. American Hospital Association v. Harris, 625 F.2d 1328, 1330 (7th Cir.1980); Ideal Industries v. Gardner Bender, Inc., 612 F.2d 1018, 1022 (7th Cir.1979), cert. denied, 447 U.S. 924, 100 S.Ct. 3016, 65 L.Ed.2d 1116 (1980). The court's discretion is not unrestrained however; it must be guided by consideration of four factors:
(1) whether the plaintiff will have an adequate remedy at law or will be irreparably harmed if the injunction does not issue;
(2) whether the threatened injury to the plaintiff outweighs the threatened harm the injunction may inflict on the defendant;
(3) whether the plaintiff has at least a reasonable likelihood of success on the merits; and,
(4) whether the granting of a preliminary injunction will disserve the public interest.
O'Conner v. Board of Education, 645 F.2d 578, 580 (7th Cir.), cert. denied, 454 U.S. 1084, 102 S.Ct. 641, 70 L.Ed.2d 619 (1981). While the district court's judgment must be exercised within this framework, this court will not substitute its judgment for that of the district court unless we are convinced that the court abused its discretion. See Helene Curtis Industries v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir.1977), cert. denied, 434 U.S. 1070, 98 S.Ct. 1252, 55 L.Ed.2d 772 (1978). Moreover, if the district court decides that a preliminary injunction is appropriate, it has considerable discretion in fashioning suitable temporary relief. Banks v. Trainor, 525 F.2d 837, 841 (7th Cir.1975), cert. denied, 424 U.S. 978, 96 S.Ct. 1484, 47 L.Ed.2d 748 (1976).
The only issue before us at this preliminary stage is whether the district court abused its discretion; we do not decide the ultimate merits of the case. See Kolz v. Board of Education, 576 F.2d 747, 748 (7th Cir.1978). We therefore consider Wesley-Jessen's objections to the district court's actions within the scope of the limited nature of our review.
Wesley-Jessen contends that the district judge erred in relying on certain treatises provided by Bausch & Lomb in analyzing the market survey data submitted by both parties. Each party had conducted a survey and had presented a survey expert at the evidentiary hearing. The district judge asked both experts to recommend literature to assist her in evaluating the surveys. Bausch & Lomb's expert recommended two books. Neither Wesley-Jessen's expert nor its counsel made any objection to this recommendation, and when given an opportunity, neither made any alternative recommendation. Bausch & Lomb arranged to have the books delivered to the judge and notified Wesley-Jessen of the delivery. Again no objection was made at the time of the delivery of the books. The judge used the books as background reference in analyzing the market surveys and ultimately concluded that Bausch & Lomb's survey was sound.
According to Wesley-Jessen, the district court's actions violated Rule 201 of the Federal Rules of Evidence, which allows a court to take judicial notice only of adjudicative facts that are generally known within the territorial jurisdiction of the court or that are capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned. Wesley-Jessen contends that the court, by relying on books not in evidence, in effect took judicial notice of the contents, which did not qualify for Rule 201 notice.
We do not regard the district judge's actions as taking judicial notice of the contents of the books. Judicial notice is based on the concept that there are certain facts or propositions which will be taken as true without requiring a party to prove them with evidence. See 9 Wigmore on Evidence Sec. 2565 (Chadbourn rev. 1981). Judicial notice, in essence, is a substitute for evidence. The district judge did not use the books as a substitute for evidence, but rather as background information to help her interpret the evidence before her. This she did in an unbiased, open, and evenhanded manner. In open court, she solicited from both parties recommendations for reference materials. Wesley-Jessen knew precisely which reference works the judge would be considering and neither its expert nor its counsel made any objection until after the judge had made her decision. It is too late now for Wesley-Jessen to complain about the judge's use of the books.
Wesley-Jessen next asserts that the district court erred in assessing Bausch & Lomb's likelihood of success on the merits. The district court concluded that Bausch & Lomb would likely establish that U3 and U4 are protectible trademarks because they had acquired secondary meaning. The court further preliminarily concluded that there is a likelihood of confusion between the parties' lenses with such designations and that Wesley-Jessen was infringing on Bausch & Lomb's trademark rights in using U3 and U4 as series designations.
It appears undisputed that U3 and U4 originated as merely descriptive terms and are protectible trademarks only if they have acquired secondary meaning denoting the source of the lenses. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978). Terms that originally designated style, grade or size are treated as any other merely descriptive terms and such terms can acquire secondary meaning. Ideal Industries v. Gardner Bender, Inc., supra, 612 F.2d at 1022. A designation has acquired secondary meaning if the primary significance of the term in the minds of the consuming public is the producer rather than the product. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 (1938); Walt-West Enterprises, Inc. v. Gannett Co., 695 F.2d 1050, 1056 (7th Cir. Dec. 21, 1982). Wesley-Jessen challenges the district court's finding that the designations U3 and U4 have acquired secondary meaning.
On the issue of secondary meaning, Wesley-Jessen first disputes the district court's interpretation of the market survey data submitted by both parties. Bausch & Lomb's market survey indicated that 96.7% of eye care professionals named Bausch & Lomb as the source of U3 and U4 lenses. Wesley-Jessen's market survey showed that only 7.7% said that U3 and U4 were brand names as opposed to sizes. Each party had its own survey expert to interpret the data and each party had an opportunity to recommend background reference materials to the court. The court ultimately credited the...
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