conversation was not prejudicial. Also, we point out at this point that the procedure followed by most courts in questioning each individual juror where the allegation centers around a prejudicial newspaper article is not apposite to cases of "unauthorized" communication because the question in those cases is initially who, if anyone, has read the article.
The Court in its attempts to be abundantly careful dismissed juror No. 12 even though it may not have been necessary to do so. The substance of the conversation itself would appear to have helped the petitioner rather than prejudice him. Mr. McGee said nothing to inculpate either of the defendants and his statement tended to exculpate the petitioner. The reasonable interpretation of Mr. McGee's statement would tend to inject further doubt as to petitioner's guilt and would not tend to be detrimental to the juror's view of the case. Obviously even if the other jurors overheard the conversation, they would not have been prejudiced either. No one testified as to Mr. Allen's whereabouts on the day of the robbery so that the McGee communication did not contradict any witness' statement in that respect. The communication did not therefore tend to impeach the credibility of any witnesses other than those of the prosecution. It is our opinion, therefore, that the substance of the conversation between Mr. McGee and juror Myers did not include matters which would prejudice the defendant's case in any way.
The other two incidents do not require as thorough an explanation and can be dealt with in a single explanation. Each incident involved a bomb scare, one real and one a practical joke. The actual bomb scare did occur during a recess of the trial of the case. Apparently, the security force in the courthouse had information that a bomb had found its way to the sixth floor of the courthouse via the briefcase of a female observer of another trial. The security force walked into the courtroom in which the above case was pending and in view of most of the jury asked Mrs. Allen, petitioner's wife, if that was her briefcase in which the alleged bomb was placed. Mrs. Allen said that it was not her briefcase and the security guard continued with "Are you sure?" Mrs. Allen said she was sure and the matter was dropped.
The second bomb incident occurred outside the courtroom the day after the actual bomb scare described above took place and involved again Mr. James McGee. It seems that Mr. McGee was joking around in the corridor outside the courtroom with a bicycle inner tube box stating that he had a bomb "in here" and tapping it. Some jurors were out in the hall apparently watching McGee's antics.
Defendant asserts that both of these bomb scare incidents resulted in prejudice to his case. The second scare involving McGee could not have been harmful to petitioner's case and we reject his contention that it was so. There is absolutely no evidence to support any finding of prejudice with respect to such incident.
The bomb scare involving Mrs. Allen could have been prejudicial if Mrs. Allen had testified on an important point for her husband such as alibi but she did not. The case certainly did not rise or fall on her testimony as the record adequately indicates. The jurors' views of her credibility would not have prejudiced petitioner's case because her testimony although it certainly favored her husband, did not, even if believed completely, exculpate him from the commission of the crime. Again the standard of whether or not prejudice has occurred is left to the sound discretion of the trial judge and we are convinced that this petitioner received a fair trial before an impartial jury.
AND NOW, to wit, this 4th day of June, 1974, it is hereby Ordered that the amended motion of petitioner Donald Edward Allen to vacate sentence 2255 is DENIED.
IT IS SO ORDERED. and grant a new trial pursuant to 28 U.S.C. Section U.S. 400 (1965); Barber v. Page, 390 U.S. 719, 20 L. Ed. 2d 255, 88 S. Ct. 1318
On its face this would seem to be perfectly valid defense; plaintiff, however, has raised a number of arguments which allegedly invalidate this defense for defendant.
Plaintiff first contends that inasmuch as section 115(b) (5) indicates that the right to use the mark must be incontestable and since plaintiff's mark is not yet incontestable, the defense is unavailable to defendant. This contention is without merit. 15 U.S.C. § 1065 indicates that for a mark to be incontestable it must have "been in continuous use for five consecutive years subsequent to the date of such registration...." Obviously, five years have not elapsed since the registration of plaintiff's marks and therefore they are not as yet incontestable.
It would be patently absurd for this Court to rule that an incontestable service mark is subject to a statutory defense while a contestable one is not. An incontestable mark, by definition, enjoys greater procedural protection than one of a lesser status. Tillamook County Creamery Ass'n v. Tillamook Cheese and Dairy Ass'n., 345 F.2d 158 (9th Cir.), cert. denied, 382 U.S. 903, 15 L. Ed. 2d 157, 86 S. Ct. 239 (1965). If this be the case, clearly a defense to an infringement action based on an incontestable service mark must also be applicable to a contestable mark. Avon Shoe Co. v. David Crystal, Inc., 171 F. Supp. 293, 299 (S.D.N.Y. 1959), aff's, 279 F.2d 607 (2d Cir. 1960), cert. denied, 364 U.S. 909, 81 S. Ct. 271, 5 L. Ed. 2d 224 (1960).
Next, plaintiff contends that since the president of defendant corporation, the individual who actually signed the New Jersey papers relating to registration of the mark, is deceased, evidence of his state of mind is inadmissible as hearsay; therefore, defendant cannot rely on innocent adoption as a defense. This argument would be quite compelling but for two facts: 1) Mrs. Bonanni, wife of the deceased president of defendant, was also a part owner of the business at the time the New Jersey state registration was obtained. Therefore, she is clearly competent to testify as to her own state of mind at the time of registration and has done so; 2) on an evidentiary basis, plaintiff cannot postulate, as it attempts to do, that Mr. Bonanni did know of the plaintiff's motel operations. This would present as much of a hearsay problem as Mrs. Bonanni's testimony. In short, plaintiff cannot do what it objects to Mrs. Bonanni's doing. Therefore, the position of neither party shall benefit or be harmed by the state of the mind of Mr. Bonanni. In conclusion the defense of innocent adoption is available to defendant based on Mrs. Bonanni's own state of mind and her impressions during the proceedings devotes much time and energy to discussing the collocations of common features between plaintiff's and defendant's motel advertising. Plaintiff argues that the mere fact of exact reproduction of its service mark clusters by defendant is sufficient to show willful infringement. The general proposition propounded by plaintiff is undoubtedly accurate. Dumore Co. v. Richards, 52 F.2d 311 (W.D. Mich. 1930), aff'd, 52 F.2d 312 (6th Cir. 1931), 3 Callmann, Unfair Competition, Trademarks, and Monopolies. § 82.1(h) at 711 n. 64 (3d ed. 1969). However, in the case at bar these collocations of common features are not at all as extensive as plaintiff would have the Court believe. Both parties utilize a man with a cape with red and black coloring. Additionally, the lettering of the word MATADOR is nearly identical Defendant, however, despite plaintiff's contention, does not place this figure in an archway, although the man is positioned above the word. Moreover, plaintiff no longer uses the stylized "M" because it increases the cost of signs too greatly.
Defendant asserts that its corporate owners determined that their motel should have a Spanish or Mediterranean motif. Subsequently, a brochure
was called to their attention which contained a certain style door titled MATADOR. Defendant seized upon this concept and decided to use that name for their motel since it characterized the design motif already chosen. Defendant then claims that the alleged deliberate common collocations all flowed naturally from the choice of the name MATADOR. In support of this argument, defendant has submitted reproductions of the Official Gazette of the United States Patent Office. These pages show three products named MATADOR - each of which has a logo of a matador with a cape. In essence, defendant argues that once the name MATADOR was chosen, all other similarities flowed naturally and logically from that choice. Additionally, defendant has submitted the affidavit of Harry Lanza, the signmaker for New Jersey MATADOR. This affidavit states that Lanza brought the name MATADOR to the attention of defendant's owner, after he had observed it on the above mentioned door brochure in a lumberyard.
It should also be pointed out that plaintiff's reputation is not such that the general public would be aware of its existence. Matador Motor Inns was not exactly a household word in 1970 or even now. Therefore, in light of the deposition, uncontroverted affidavits, and exhibits submitted by defendant, this Court is unwilling to infer from certain limited similarities of advertising that the defendant intentionally copied plaintiff's service mark cluster.
Plaintiff next maintains that since the door brochure
from which defendant obtained the name MATADOR, was published by Ideal Millworks Co., a division of the corporation of which plaintiff's parent corporation is a subsidiary, the "related company" doctrine of 15 U.S.C. § 1055 must be considered. This contention is largely without merit in that plaintiff and Ideal are not related companies within the meaning of the Lanham Act. In order for the doctrine to apply, it must be shown that Ideal is controlled by plaintiff, the registrant of the trademark, with respect to the doors Ideal manufactures. Alligator Co. v. Robert Bruce, Inc., 176 F. Supp. 377, 378 (E.D. Pa. 1959). No such showing has been made or even attempted by plaintiff, except for the statement that the related companies doctrine is applicable. This Court finds as a matter of law that Ideal and plaintiff are not related companies.
Also with regard to Count One, plaintiff finally contends that the doctrine of innocent adoption is inapplicable in motel cases because of the mobility of actual and potential patrons in high-powered automobiles on a vast network of interstate highways. Although the mobility of the American public with respect to automobile travel is certainly open to question in these energy conscious times, the Court will deal with this contention.
Plaintiff's argument centers around the proviso of 15 U.S.C. § 1115(b) (5), supra. The position taken is that the defense is only applicable in the area in which the prior continuous use is proved but that courts, when dealing with hotels, motels, and restaurants, have in effect read out that proviso because of travelling mobility and the wide geographical area from which establishments of this type draw their clientele.
The Court need not concern itself with this aspect of the argument. All cases cited by plaintiff, and to some extent refuted by defendant, involved unfair competition and either of two situations: 1) where the owner of a registered trademark shows a likelihood of entry into the innocent prior user's market area, or 2) where the owner of a registered trademark actually enters into the market area of the innocent prior user. Neither of these situations is present in the instant controversy over Count One. The unfair competition claim of plaintiff, infra, presents a different situation. The only relevancy market areas have in this case is for determining the area of prior continuous use by the defendant. In this regard, a further hearing is required to determine the extent of defendant's market area. This issue will be determined at trial.
In conclusion, there being no disputed material facts, summary judgment plaintiff's complaint. The trier of fact will determine the area of defendant's prior continuous use.
In this count plaintiff seeks relief pursuant to 15 U.S.C. § 1125(a) alleging a "false designation or origin" on the part of defendant.
15 U.S.C. § 1125(a) states in part:
Any person who shall...use in connection with...services,...a false designation of origin, or any false description or representation, including words or other symbols...shall be liable to a civil action...by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.
It should be noted at the outset that a cause of action under the above section is not dependent on possession of a federally registered trademark. Potato Chip Institute v. General Mills, Inc., 333 F. Supp. 173, 179 (D. Neb. 1971). "The misconceptions are obviously attributable to the fact that section 43(a) [ 15 U.S.C. § 1125(a)] is a part of the Trademark Act where, of course, it does not logically belong." Callmann, Unfair Competition, Trademarks, and Monopolies, § 18.2(b) at 622 n. 26 (3d ed. 1967).
Of course, in the instant action a service mark is involved. We have held, however, that the defendant is an innocent prior adopter within an area yet to be determined. This decision places the Court on the proverbial "horns of a dilemma": Can an innocent prior adopter of a service mark be in violation of § 1125(a), or would such a determination be a contradiction in terms? This Court feels compelled to hold that if innocent prior adoption in a particular area has been proved as a defense to a service mark infringement action, then that innocent prior adoption must also serve as a defense to a section 1125(a) action.
A brief examination of the policies involved in the two statutes will illustrate the absence of any contraction in this holding. The trademark statutes were devised to: 1) protect the businessman in his property rights to the mark, and 2) protect the public. Wells Fargo & Co. v. Wells Fargo Exp. Co. 358 F. Supp. 1065 (D. Nev. 1973).Section 1125(a) was also developed to protect consumers and competitors against all forms of misdescription or misrepresentation of products and services in commerce. Yameta Co. v. Capitol Records, Inc., 279 F. Supp. 582 (S.D.N.Y. 1968). Obviously, the policies of the two enactments are virtually the same. The difference lies in the initiation point of protection. The general trademark statutes protect a federally registered mark from a statutorily defined infringement, while Section 1125 protects one competitor from the actions of another amounting to a form of unfair competition. Just as, in some cases, a finding of infringement of a service mark will a fortiori lead to a violation of Section 1125(a), so too will a finding of innocent adoption of a service mark lead to the almost inescapable It would be incongruous for this Court to find that giving defendant the right to use that mark in the area of continuous prior use, and then find that defendant has engaged in a false designation or representation of origin. The two statutes in question could not have been intended to achieve that result; Section 1125(a) "must still be read in the context of the statute in which it appears...." General Pool Corp. v. Hallmark Pool Corp., 259 F. Supp. 383, 386 (N.D. Ill. 1966).
Plaintiff has cited Parkway Baking Co. v. Freihofer Baking Co., 255 F.2d 641 (3d Cir. 1958) as authority for the proposition that innocent adoption is irrelevant in a section 1125(a) action. Parkway does not stand for such theory. The Parkway court said: "[Mistake] is not a defense to an action under this section for there is no requirement that the falsification occur wilfully and with intent to deceive." Id. at 648. Defendant does not claim mistake as lack of intent in this action; rather, defendant maintains that as a matter of right it can use the name MATADOR which it innocently adopted. The issue of falsification is not at all present in Count Two.
In Steak & Brew, Inc. v. Beef & Brew Restaurant, Inc., 370 F. Supp. 1030 (N.D. Ill., 1974), a case closely analogous to the one at bar, the court held that the defendant had not violated Section 1125(a) because "[they] innocently adopted the name for use in a market area in which plaintiff was then unknown. They are entitled to the continued use thereof." Additionally, in discussing the issuance of a preliminary injunction in a section 1125(a) case the court, in Sulton Cosmetics (R.R.) v. Landers Co., 455, F.2d 285 (2d Cir. 1972), indicated that priority of use would not necessarily prevail over an innocent second use. Id. at 289.
Therefore, for the foregoing reasons, plaintiff's motion for summary judgment as to Count Two will be denied and that of defendant's will be granted.
This count is founded on 15 U.S.C. § 1126(g) which provides that trade or commercial names shall be protected regardless of filing or registration. The persons protected are defined by subsection (b). In L'Aiglon Apparel v. Lana Lobell, Inc., 214 F.2d 649, 653 (3d Cir. 1954), the court held that Section 1126(h) was not applicable to a controversy between United States citizens. L'Aiglon analyzed the legislative history of the section as well as its title - International Conventions. We find that the reasoning of L'Aiglon, as applied to subsection (h), is equally applicable to subsection (g) and therefore defendant's motion for summary judgment as to Count Three will be granted.
This count has a dual basis: 1) 15 U.S.C. § 1126(h) and 2) unfair competition.
In light of this Court's reasoning in L'Aiglon Apparel v. Lana Lobell, Inc., supra, summary judgment will be granted to defendant as to the 15 U.S.C. § 1126(h) aspect of this count.
The remaining facet of this case is plaintiff's claim of common law unfair competition. Ordinarily, this Court would be without jurisdiction to hear this claim in the absence of pendent jurisdiction. Plaintiff, however, has also alleged diversity of citizenship and the requisite jurisdictional amount. As a result, jurisdiction exists independently of the federal statutory actions.
Additionally, since the law of unfair competition developed independently of, or at least tangentially to, federal trademark statutes, we are not faced with the disturbing prospect met earlier - that is, resolution of results based on the same facts and the same policy. It is within the realm of possibility that the law of unfair competition might forbid what the trademark statutes would seemingly permit. With this, in mind, the Court can proceed to analyze this last claim.
It is fundamental to the law of unfair competition, particularly in cases dealing with restaurants, hotels and motels, that geographical trading areas, likelihood of public confusion, and extent of reputation are of paramount importance. See, e.g., Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 60 L. Ed. 713, 36 S. Ct. 357 (1916); Holiday Inns of America v. B & B Corporation, 409 F.2d 614 (3d Cir. 1969); Fred Harvey v. Harvey House, Inc., 278 F. Supp. 172 (E.D. Pa. 1968); Tisch Hotels, Inc. v. Atlanta Americana Motor Hotel Corp., 254 F. Supp. 743 (N.D. Ga. 1966); Quality Courts United, Inc. v. Quality Courts, Inc., 140 F. Supp. 341 (M.D. Pa. 1956). All of these factors are seriously and rigorously disputed in this case. Some of them are only mentioned in passing in opposing briefs. we find that there are disputed material facts and therefore the grant of summary judgment would be inappropriate. Accordingly, both plaintiff's and defendant's motions for summary judgment, as to the unfair competition aspect of Count Four, will be denied.
Counsel may submit an order in accordance with the foregoing opinion.