JOHN R. BROWN, Circuit Judge.
This is an action for trademark infringement in which Continental Motors
The facts, mostly stipulated, can be briefly summarized. Continental Motors is the largest independent manufacturer of internal combustion engines in the world, having been continuously engaged in the industry since 1902 with approximately 25% of its output being sold for use in aircraft. Since 1946, Continental Aviation and Engineering Corp., a subsidiary of Continental Motors, has also been engaged in the business of manufacturing, selling, and servicing aircraft engines and related parts and equipment. Their products are sold and distributed in every state of the United States and in every continent of the world. Continental Motors and its subsidiary have registered with the United States Patent Office no less than 20 trademarks between the years 1917 and 1958, most of which are of the word "Continental," but also including the words "Continental Aviation." Testimony presented in the District Court established substantial annual expenditures for advertising in publications widely circulated in connection
Continental Aviation Corp., a Florida Corporation, is located and does business at the Opa Locka Airport in Dade County, Florida. Continental Aviation manufactures nothing, but rather is engaged in the business of servicing, overhauling, and repairing aircraft engines, accessories, instruments, and electronic devices, and in furnishing the necessary parts and materials for such work.
At the conclusion of the evidence presented by Continental Motors, the Florida Corporation moved that the District Court dismiss the cause for failure to state a claim upon which relief could be granted. F.R.Civ.P. 12(b). The Court granted the motion and entered judgment for Continental Aviation. Whether its action be considered as a judgment on the pleadings,
In an action for trademark infringement, this Court has often repeated that the controlling issue is whether the alleged infringer's use of a particular mark "is likely to cause confusion, or to cause mistake, or to deceive, * * *." Lanham Act, 15 U.S.C.A. § 1114(1)
Here the case would ordinarily end on the simple ground that the trademark owner failed in its proof. But this would not reckon with the basis for the Judge's ruling in favor of non-infringement. And examination of the Court's fact findings and conclusions of law especially when read in the light of the continuing colloquy between Court and counsel, indicates that the District Court was laboring under the serious misapprehension that two factors compelled the denial of relief: (1) the absence of competition between the parties, one a manufacturer of internal combustion engines, the other engaged primarily in the servicing of transient aircraft, and (2) the fact that the claimed trademark incorporated a geographical adjective, "Continental", which we said years ago is inherently incapable of being appropriated either as a trade mark or as a trade name.
Often and recently we have made plain that direct competition between the products is not a prerequisite to protective relief. Chemical Corp. of America v. Anheuser-Busch, Inc., 5 Cir., 1962, 306 F.2d 433; Abramson v. Coro, Inc., 5 Cir., 1957, 240 F.2d 854; American Foods, Inc. v. Golden Flake, Inc., 5 Cir., 1963, 312 F.2d 619; Pure Foods, Inc. v. Minute Maid Corp., 5 Cir., 1954, 214 F.2d 792, cert. denied 348 U.S. 888, 75 S.Ct. 208, 99 L.Ed. 697; Fleischmann Distilling Corp. v. Maier Brewing Co., 9 Cir., 1963, 314 F.2d 149; Safeway Stores, Inc. v. Safeway Properties, Inc., 2 Cir., 1962, 307 F.2d 495. The remedies of the owner of a registered trademark are not limited to the goods specified in the certificate, but extend to any goods on which the use of an infringing mark is "likely to cause confusion * * *." (Emphasis added.) American Foods, Inc. v. Golden Flake, Inc., supra, 312 F.2d at 623. Confusion, or the likelihood of confusion, not competition, is the real test of trademark infringement. Whether or not direct competition exists is but one of the elements to be considered in determining whether there is or will be a likelihood of confusion.
With respect to the geographical adjective "Continental," the Florida company presses hard the distinction between a "strong" and a "weak mark". It then characterizes the trademarks of Continental Motors as weak and therefore not entitled to the protection that would be accorded a trademark which is original, arbitrary or fanciful. Majestic Mfg. Co. v. Majestic Elec. Appliance Co., 6 Cir., 1949, 172 F.2d 862; Sunbeam Lighting Co. v. Sunbeam Corp., 9 Cir., 1950, 183 F.2d 969, 973.
Regardless of whether a word or words adopted and used as a trademark or trade name could be characterized as geographical in nature, where such words have acquired a "secondary meaning," the courts will afford equitable protection to the party whose use of the word has created the secondary meaning. Safeway Stores, Inc. v. Safeway Properties, Inc., 2 Cir., 1962, 307 F.2d 495, 499. It deserves protection when, because of association with a particular product or firm over a period of time, the word has in the mind of the public come to stand as a name or identification for that product or firm. Safeway Stores, Inc. v. Safeway Properties, Inc., supra; Restatement, Torts § 716(b), com. b (1934). Protection is warranted on what it has come to signify regardless of any original weakness, actual or supposed. Day-Brite Lighting, Inc. v. Sta-Brite Flourescent Mfg. Co., 5 Cir., 1962, 308 F.2d 377, 382; Keller Prod. v. Rubber Linings Corp., 7 Cir., 1954, 213 F.2d 382, 386.
The issue of "secondary meaning", although stipulated by the parties as one of the controlling questions (note 10, supra), was completely overlooked by the District Court. To the erroneous concept of "no competition", the Judge also gave too much uncritical and literal significance to our early decision in Continental Ins. Co. v. Continental
Time, tide, and the relentless movement of the copywriter's pen makes what we once said no longer controlling, not so much from change in the law, but from change in economic fact. Not the least of these is the restless, undulating habits of our air-minded, air-traveling public, many of whom for sport, or pleasure, or business, or an areonautical combination of them, hop across the nation relying, as they must, on dependable service at airports small and large. And it is here that modern, intense advertising creates the "image" upon which the public depends or may depend.
The case must therefore be reversed and remanded to the District Court. The parties are to be free to offer additional evidence both on the aspect to "secondary meaning" of the mark as well as to the element of "likelihood of confusion."
Reversed and remanded.
Question (b) necessarily, and question (a) probably, involves a finding of whether confusion is likely to result, but this fact is nowhere made explicit.
"Findings of Fact
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"7. There is no competition between the plaintiffs and defendant, as plaintiffs are engaged in manufacturing and selling aircraft engines and defendant is not a manufacturer but confines its business to selling and servicing aircraft.
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"Conclusions of Law
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"2. The word `Continental' is a geographical adjective, and cannot be appropriated as a trade-mark or trade name. Continental Insurance Company v. Continental Fire Association, 101 Fed. 255, (C.A.5, 1900)."
"We think that the word `Continental', a geographical adjective, meaning pertaining to or relating to a continent, is a word in common use, more or less descriptive of extent, region, and character, and, like the words `Columbian', `International', `East Indian', and some other geographical adjectives, it cannot be exclusively appropriated as a trade-mark or trade-name." 101 F. at 257.