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REED-UNION CORP. v. TURTLE WAX, INC.
869 F.Supp. 1304 (1994)
United States District Court, N.D. Illinois, Eastern Division.
November 15, 1994.
This a final and appealable order under Fed.R.Civ.P. 54(b). SUPPLEMENTAL MEMORANDUM OPINION AND ORDEROn November 14, 1994, we entered judgment in favor of Turtle Wax and against Reed-Union on all claims remaining in the complaint.1 Reed-Union, in its motion to alter or amend under Fed.R.Civ.P. 59(e), points out that we have not clearly dealt with three of Turtle Wax's counterclaims. We do so now. Turtle Wax's first counterclaim seeks cancellation of U.S. Supplemental Trademark Registration No. 1,061,450 for "once a year car polish" on the grounds that the mark is generic. We agree. As discussed in the original opinion, the mark is not entitled to protection because the phrase defines a "central characteristic of car waxes in general." Reed-Union Corp. v. Turtle Wax, Inc.,869 F.Supp. 1304, 1308 (N.D.Ill.1994). The evidence at trial demonstrated that the once-a-year car polish or wax has been used by Turtle Wax and other competitors for many years prior to Reed-Union's registration. Reed-Union argues that Turtle Wax was required to prove that the term is a commonly recognized name among consumers for a kind or genus of product. This assertion is really irrelevant to the question of whether the mark is generic, but in any event, we find sufficient evidence of common usage of this term in the industry to overcome Reed-Union's objection. Judgment is entered in favor of Turtle Wax on its first counterclaim, and the commissioner of Patents and Trademarks is ordered to cancel Registration No. 1,061,450 pursuant to 15 U.S.C. § 1119. For the reasons already discussed in the Court's original memorandum opinion and order, the mark "NU FINISH" is entered for Reed-Union and against Turtle Wax on the second counterclaim. Turtle Wax's third counterclaim alleges copyright misuse — use of Reed-Union's registration of a "junkyard" commercial to restrain Turtle Wax's use of a similar commercial — was, we believe, decided in the decision granting summary judgment on this claim.
Accordingly, judgment is entered on Turtle Wax's third counterclaim in favor of Turtle Wax, and Reed-Union's copyright registrations on this junkyard commercial are declared unenforceable against Turtle Wax.
1. Most of the facts discussed in this introductory section are uncontested. To the extent they are not, they are findings of fact by the Court.
2. Granted, Reed Union's trademark "NU FINISH" has become uncontestable. 15 U.S.C. 1065. However, uncontestable status does not speak to the strength of the mark or make an otherwise weak mark strong. Kozak Auto Drywash, Inc. v. Enviro-Tech Int'l,823 F.Supp. 120 (W.D.N.Y.1993).
3. This discussion is not meant to be exhaustive. We have considered all the so-called actual instances of confusion and reject them. In many cases, it would have been possible to corroborate the stories of the interested witnesses. This was not done.
1. On November 30, 1993, we granted summary judgment in favor of Turtle Wax on a limited number of claims of Reed-Union.
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