The opinion of the court was delivered by: LUDWIG
This action concerns both parties' use of "Moore" in the marketing of some of their newer products. Upon hearing, cross-motions for preliminary injunction will be denied for the reasons set forth in this adjudication. Fed.R.Civ.P. 52(a).
The complaint alleges infringements of a common law trademark and, by supplemental complaint, of a Pennsylvania trademark registration, 54 Pa. C.S.A. § 1123 (Purdon 1987) and violation of Pennsylvania's "anti-dilution" statute, 54 Pa. C.S.A. § 1124 (Purdon 1987). Defendant's counterclaim is for infringement of a federally registered trademark, 15 U.S.C. § 1114(1) (1982). Both parties claim false representation under 15 U.S.C. § 1125(a) and common law unfair competition.
The following undisputed facts appear in the joint pretrial order and in the evidence received at hearing:
Plaintiff Moore Push-Pin Company manufactures, packages and distributes various fastening and hanging devices under the name "Moore" and has done so since 1900. Its advertising and sales distribution are national. Its customers include office supply houses and other retailers. As described by its president, its product line consists of items "associated with either hanging something up or pinning something down." (Tr. I at 7). Early products included push-pins, metal picture hangers, tacks, and filing card identification signals. In 1971, it began selling double-sided adhesive tape for mounting pictures and other items on walls.
Until perhaps 1985, these two companies coexisted peacefully in the business supply market using the "Moore" designations on their many products. In July 1985, Moore Business Forms began to make what it called a "repositional business form."
This is a piece of paper backed with a strip of transfer adhesive that allows it to be affixed to another piece of paper, or virtually any other surface, without forming a permanent bond.
Moore Business Forms now offers stock and custom forms with transfer adhesive, including memo pads, note pads, delivery notices, telephone message pads, packing slips, repair tickets, inspection slips, medical record checklists, reservation forms, clearance tags, and so on. These come in a variety of ink and paper colors. Laser graphics, consecutive numbering, perforation, hole punching and alternative adhesive location, varying width and configuration are also available.
About August, 1986 Moore Push-Pin became aware of defendant's transfer adhesive forms named "Note Stix." Its motion would preliminarily enjoin defendant from using "Moore" on its transfer adhesive items and from representing to the public that its federal trademark registration covers them.
Since October, 1985 Moore Push-Pin has sold a transfer adhesive dispenser under the mark "Moore." This is a roller applicator that gives paper the same adhesive qualities as the Moore Business Forms or "Post-it" type of product. Also, Moore Push-Pin introduced a transparent, one-sided adhesive tape and plastic clips, advertising the latter on a simulated background of notched computer paper. According to defendant, Moore Push-Pin's marketing of these three products interferes with its federal trademark -- as well as its rights acquired through prior marketing of a transparent, single-sided tape and its entrance into the computer supply field in 1976. It would preliminarily enjoin Moore Push-Pin from using "Moore" to sell these items.
In order to obtain a preliminary injunction, the movant must show: (1) a reasonable probability of success on the merits; (2) irreparable injury absent relief; (3) the likelihood of greater harm; and (4) if affected, the public's benefit. E.g., ECRI v. McGraw-Hill, Inc., 809 F.2d 223, 226 (3d Cir. 1987). Here, neither party's case discloses a reasonable probability of eventual success.
Protection from common law trademark infringement under 15 U.S.C. § 1125(a) depends on priority of use. Seiko Sporting Goods USA, Inc. v. Kabushiki Kaisha Hattori Tokeiten, 545 F. Supp. 221, 225 (S.D. N.Y. 1982), aff'd, 697 F.2d 296 (2d Cir.); Armstrong Cork Co. v. Armstrong Plastic Covers Co., 434 F. Supp. 860, 870 (E.D. Mo. 1977); Wiener King, Inc. v. Weiner King Corp., 407 F. Supp. 1274, 1279-81 (D. N.J. 1976), rev'd on other grounds, 546 F.2d 421 (3d Cir.), cert. denied, 430 U.S. 916, 97 S. Ct. 1328, 51 L. Ed. 2d 594 (1977), aff'd, 577 F.2d 731 (3d Cir. 1978).
Moore Push-Pin never marketed transfer adhesive forms. As to fasteners and hangers, it is the prior user. It argues that transfer adhesive forms are a normal and reasonable expansion of its product line. J. Wiss & Sons Co. v. W.E. Bassett Co., 59 C.C.P.A. 1269, 462 F.2d 567, 569 (C.C.P.A. 1972). See also Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). This argument, however, is not factually convincing. Fasteners and hangers are used for attachment -- something onto something else -- and, in this sense, they are intermediaries or extrinsic devices, not repositories. Other companies that sell fasteners and hangers have not entered the adhesive forms market. Moore Push-Pin does not sell any products used for recording and transmitting information. Informational forms entail a substantially different function and purpose from Moore Push-Pin's traditional business. The company would have to adopt a new production process. Scott Paper Co., 589 F.2d at 1228. Consumers would not immediately associate adherent paper with Moore Push-Pin simply because the backing was adhesive. J. Wiss & Sons Co., 462 F.2d at 569. Given Moore Business Forms' past use of adhesive forms, consumers would be more inclined to think of transfer adhesive paper as a Moore Business Forms product.
The evidence suggests some potentiality for confusion. However: "Ownership of a trademark does not guarantee total absence of confusion in the marketplace. Selection of a mark with a common surname naturally entails a risk of some uncertainty and the law will not assure absolute protection." Scott Paper Co., 589 F.2d at 1231. On this record it seems unlikely Moore Push-Pin could establish a right to "reach a choking hand" into the market of paper products currently sold by Moore Business Forms. ...