West & Co., Inc. v. Arica Institute, Inc.

• Decision Date: 08 June 1977
• Docket Number: D,No. 696,696
• Citation: 557 F.2d 338,195 USPQ 466
• Court: U.S. Court of Appeals — Second Circuit
• Parties: WEST & COMPANY, INC., Plaintiff-Appellant, v. ARICA INSTITUTE, INC., Defendant-Appellee, v. WEST & COMPANY, INC., Steven West, Steven West d/b/a MacDonald-Winchester Publishers, and Jonathan Advertising, Inc., Counterclaim Defendants-Appellants. ocket 76-7513.

Page 338

557 F.2d 338

195 U.S.P.Q. 466

WEST & COMPANY, INC., Plaintiff-Appellant, v. ARICA INSTITUTE, INC., Defendant-Appellee, v. WEST & COMPANY, INC., Steven West, Steven West d/b/a

MacDonald-Winchester Publishers, and Jonathan

Advertising, Inc., Counterclaim

Defendants-Appellants.

No. 696, Docket 76-7513.

United States Court of Appeals, Second Circuit.

Argued March 30, 1977.

Decided June 8, 1977.

Arthur W. Baily, New York City (Michael C. Duban, New York City, of counsel), for plaintiff-appellant and counterclaim defendants-appellants.

David H. T. Kane, New York City (Siegrun D. Kane, Virginia R. Richard and Kane, Dalsimer, Kane, Sullivan & Kurucz, New York City, of counsel), for defendant-appellee.

Before LUMBARD, MANSFIELD and GURFEIN, Circuit Judges.

PER CURIAM:

This is an appeal from a judgment of the District Court for the Southern District of New York (Stewart, D. J.) dismissing the complaint and granting injunctive relief on the defendant's counterclaim. The injunction was based on the district court's determination that plaintiff had infringed defendant's service mark. ¹ It held that the mark was "descriptive," but was, nevertheless, entitled to protection because it had acquired "secondary meaning." We hold that the mark is not merely "descriptive" but is sufficiently fanciful to be a valid mark. We therefore affirm without reaching the issue of whether the mark had acquired secondary meaning.

I

Appellant West & Co. ("West") commenced an action in November, 1975 against appellee Arica Institute, Inc. ("Arica") in New York State Supreme Court for unfair competition and misappropriation of its service mark "psycho-calisthenics." Arica removed the action to the federal court and counterclaimed for service-mark infringement of its mark "psychocalisthenics" under the Lanham Act, 15 U.S.C. §§ 1121, 1125(a), and also for unfair competition. ²

Shortly thereafter, Arica moved for a preliminary injunction on its counterclaim. It sought to restrain West from distributing its recently published book, Psycho-Calisthenics, and from using the term "psycho-calisthenics" in any other manner. After an evidentiary hearing, Judge Gagliardi denied the motion. He held that the mark did not indicate origin, but was "descriptive" because "it refers generically to the general class of physical and mental exercises which are intended to affect mental processes." He also held that "psychocalisthenics," as a merely descriptive term, had not achieved the necessary "secondary meaning" required to become a valid mark. See 15 U.S.C. § 1052(f); W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 661 (2d Cir. 1970).

A trial on the merits was held before Judge Stewart sitting without a jury. He reaffirmed the previous ruling that the term was descriptive, but found that it had acquired the necessary secondary meaning to make it a valid mark. Having concluded that Arica's "psychocalisthenics" mark was valid, he then held that West's use of the term "psycho-calisthenics" was an infringement of the Arica mark.

The district court permanently enjoined West from using the term in the promotion or advertising of its service or products. It also ordered West to cease distributing any books, literature, cassettes or other materials containing the term in its label or title and to withdraw all books or materials in circulation which had not yet been sold. The court refused, however, to award either monetary damages or attorneys' fees. The parties have stipulated to the withdrawal of Arica's cross-appeal on this issue. We consider only West's appeal.

II

The facts found by the district court are apparently not in dispute.

Appellee Arica is a nonprofit corporation organized in 1971 by a group of people who had studied a "system for personal development" under a South American named Oscar Ichazo. The stated purpose of Arica is "to introduce into our contemporary American culture an integrated system of personal development centered at the physical, emotional, mental and spiritual levels with the aim of developing totally integrated, rounded human beings."

Arica created training courses ranging from three hours to three months and gave them in centers or "houses" throughout the United States and Europe. It also presented them or demonstrations of them at conferences, hospitals, schools and prisons. Arica claims that 4,000 people have participated in its 40-day training program alone with another 50,000 people attending its other courses or demonstrations.

One of the techniques used by Arica in all of its courses is a series of physical exercises. These exercises are related to yoga exercises but are distinct in that they require continual motion. Arica's brochures describe the exercises as "a combination of various yoga systems, dance and calisthenics." An Arica trainer testified that "psychocalisthenics is a combination of movements coordinated with breathing that produces specific physical results that then generates (sic) specific intellectual and emotional results."

During the first two years after its formation Arica named these exercises "gym." Then in June, 1973, Arica changed the name to "psychocalisthenics." (This, as will be seen, was over two years before West's first public use of his term.) The origin of the term "psychocalisthenics" is not known, but some people attribute it to the South American Ichazo.

Since June, 1973, Arica had used "psychocalisthenics" continually in its brochures, advertisements and promotion of its courses, and has used it also as the title of its cable television show. It has spent approximately $300,000 in this effort.

In the summer of 1972, Steven West, who had previously become involved in the study of "humanistic psychology," decided to name a series of mental exercises which he had been developing "psycho-calisthenics." Appellant claims that Steven West coined the term himself. At first he used it only in meetings attended by a few friends during the course of that summer. Later, in order to protect the term as a name for the book he was writing, he attempted to register it as a service mark. Claiming a first use in October, 1974, West obtained a New York State service mark in November, 1974. His federal application was rejected in August, 1975, after the examiner decided that the term was "merely descriptive." West did not pursue the application.

Before 1975 West did not use the term publicly either in literature or advertisements, although he had used the term in drafts of his manuscript. In October, 1975, he began to use it extensively in the advertisements for his book. In addition, West had made three cassette programs for persons troubled by their weight, smoking habits, and sexuality. He used "psycho-calisthenics" in the title and promotion of these cassettes. In the spring of 1975 West had attended an Arica demonstration and therefore was aware of Arica's use of "psychocalisthenics" before his first public use of "psycho-calisthenics."

The district court found that Arica had attempted to maintain the exclusive use of its mark through the supervision and policing of those who taught its courses. As noted, West first began his extensive publicity using the "psycho-calisthenics" mark in October, 1975. Arica served him with a notice of infringement that November. During the pendency of this action both parties have continued to use their respective terms in connection with their products and services. West has also used the federal trademark registration symbol, 15 U.S.C. § 1111, although he has no such registration. Arica obtained federal registration in July, 1976. ³

III

Appellant West's principal claim on appeal is that it cannot be held to have infringed because the "psychocalisthenics" service mark is invalid. ⁴ It contends that the mark is merely descriptive and has not acquired the necessary secondary meaning to make it a valid mark.

At the extremes of trademark protection are generic terms which can claim no protection, and arbitrary or fanciful terms which may always claim protection. See e. g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9, 11 (2d Cir. 1976). In the broad middle ground where most of the trademark battles are fought are the terms which are primarily descriptive and those which are only suggestive. The distinction, while not always readily apparent, ⁵ is important, because those which are descriptive may obtain registration only if they have acquired secondary meaning, while suggestive terms are entitled to registration without such proof. See Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 9-11; W. E. Bassett Co. v. Revlon, Inc., supra, 435 F.2d at 661; 3 R. Callmann, The Law of Unfair Competition, Trademarks and Monopolies, § 70.1 (3d ed. 1976).

One of the more useful standards for distinguishing between those terms which are merely descriptive and those which are suggestive is that used by Judge Weinfeld in Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968):

A term is suggestive if it requires...