Wiley v. American Greetings Corp., 84-1896

• Decision Date: 13 May 1985
• Docket Number: No. 84-1896,84-1896
• Citation: 762 F.2d 139
• Parties: , 82 A.L.R.Fed. 1, 226 U.S.P.Q. 101 Colleen A. WILEY, d/b/a Wiley Creations, Plaintiff, Appellant, v. AMERICAN GREETINGS CORP., et al., Defendants, Appellees.
• Court: U.S. Court of Appeals — First Circuit

Page 139

762 F.2d 139

82 A.L.R. 1, 82 A.L.R.Fed. 1, 226

U.S.P.Q. 101

Colleen A. WILEY, d/b/a Wiley Creations, Plaintiff, Appellant, v. AMERICAN GREETINGS CORP., et al., Defendants, Appellees.

No. 84-1896.

United States Court of Appeals, First Circuit.

Argued March 4, 1985.

Decided May 13, 1985.

Paul J. Hayes, Boston, Mass., with whom Steven M. Bauer, New York City, and Weingarten, Schurgin, Gagnebin & Hayes, Boston, Mass., were on brief, for plaintiff, appellant.

Carol Simkin, New York City, with whom Robert J. Bernstein, Cowan, Liebowitz & Latman, P.C., New York City, William R. Hulbert, Gregory A. Madera and Fish & Richardson, Boston, Mass., were on brief, for American Greetings Corp., et al.

John L. Welch, Boston, Mass., with whom Wolf, Greenfield & Sacks, P.C., Boston, Mass., Melville Owen, Mary Rossman, and Owen, Wickersham & Erickson, P.C., San Francisco, Cal., were on brief, for R. Dakin & Co.

Before CAMPBELL, Chief Judge, COFFIN, Circuit Judge, and Re, ^* Judge.

LEVIN H. CAMPBELL, Chief Judge.

Plaintiff Colleen Wiley, proprietor of Wiley Creations, appeals from a decision of the United States District Court for the District of Massachusetts denying her motion for summary judgment and allowing defendants' summary judgment motions. 597 F.Supp. 736.

Wiley contends that the district court erred when it "estopped" her from asserting the existence of any genuine issues of material fact because cross-motions for summary judgment had been filed. Wiley also claims that the district court erred when it determined that a solid red heart permanently affixed to the left breast of a teddy bear is not "inherently distinctive" and thus cannot be protected as a common law trademark under Massachusetts law absent proof of a secondary meaning. We hold that, although the district court misspoke concerning estoppel, it reached the right result since on no construction of this record could Wiley's alleged trademark be found "inherently distinctive" as a matter of law. We affirm the judgment of the district court.

Wiley owns and operates a small business, Wiley Creations, which manufactures and sells stuffed teddy bears ("Wiley Bears"). Wiley claims that in January 1980 she adopted as her trademark for the teddy bears the design of a red heart permanently affixed to the left breast of the bear. She asserts that defendants, all of whom are national manufacturers, licensors, or distributors of childrens' toys, began using her mark on their bears in 1983 without her permission. She therefore filed this action, alleging trademark infringement, unfair competition, and false designation of origin, and demanding a permanent injunction and damages.

Shortly after initiating discovery, all parties moved for summary judgment and submitted affidavits, declarations, and exhibits in support of their motions. The district court ruled that:

All parties to this case have moved for summary judgment. All parties are thus estopped to assert any material issues of fact. The only question is whether the facts stated in the record with all possible inferences to be drawn therefrom would warrant a judgment for the plaintiff as a matter of law.

The court then ruled that Wiley's claim to a common law trademark failed because the mark was not "inherently distinctive" and had not become distinctive by acquiring a secondary meaning in the minds of consumers. Wiley does not contest the district court's conclusion that she did not show a secondary meaning, but she challenges its determination that the red heart sewn on her teddy bears was not "inherently distinctive."

Wiley is correct that cross-motions for summary judgment are not ordinarily to be treated as the equivalent of submission upon an agreed-upon record. Cross-motions for summary judgment

are no more than a claim by each side that it alone is entitled to summary judgment, and the making of such inherently contradictory claims does not constitute an agreement that if one is rejected the other is necessarily justified or that the losing party waives judicial consideration and determination whether genuine issues of material fact exist. If any such issue exists it must be disposed of by a plenary trial and not on summary judgment.

Rains v. Cascade Industries, Inc., 402 F.2d 241, 245 (3d Cir.1968). See also Redman v. Warrener, 516 F.2d 766, 768 & n. 2 (1st Cir.1975); 6 J. Moore, Moore's Federal Practice p 56.13 (2d ed. 1981) ("The well-settled rule is that cross-motions for summary judgment do not warrant the court in granting summary judgment unless one of the moving parties is entitled to judgment as a matter of law upon facts that are not genuinely disputed.") (footnotes omitted).

The court's misstatement does not, however, warrant a reversal in this case because the critical disputed issue--whether Wiley's alleged mark of a red heart affixed to her bear is "inherently distinctive"--is not capable of resolution in her favor.

The "inherent distinctiveness" of Wiley's mark is critical because symbols and designs that are "inherently distinctive" can be protected as common law marks without the need for proof of secondary meaning, while symbols and designs that are not "distinctive" per se can only achieve trademark status upon proof, lacking here, of secondary meaning. J. McCarthy, Trademarks and Unfair Competition Sec. 7:7, at 164 (1973). A design is considered "inherently distinctive" if it is fanciful ¹ or arbitrary, ² as opposed to descriptive ³ or generic. ⁴ See, e.g., President and Trustees of Colby College v. Colby College-New Hampshire, 508 F.2d 804, 807 (1st Cir.1975) ("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 circumstances, plaintiff has properly assumed the burden of showing not only 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.").

Whether a design is "inherently distinctive," i.e., whether it is arbitrary or merely descriptive, is ordinarily a question of fact, see Brooks Shoe Manufacturing Co. v. Suave Shoe Corp., 716 F.2d 854, 857 (11th Cir.1983), that is decided by reference to the following factors:

whether [the design] was a "common" basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as dress or ornamentation for the...