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September 29, 1995

ZIP DEE, INC., Plaintiff,

The opinion of the court was delivered by: SHADUR

 In this, the most recent skirmish in an ongoing battle between Zip Dee, Inc. ("Zip Dee") and The Dometic Corporation ("Dometic") over patent and trademark rights in slatted awning covers for recreational vehicles, Zip Dee has renewed its Fed. R. Civ. P. ("Rule") 12(f) motion to strike Dometic's Twelfth Affirmative Defense ("AD 12"). Specifically Zip Dee argues that Dometic will be unable to prove any set of facts showing that Zip Dee engaged in inequitable conduct *fn1" in the course of acquiring a trademark for the overall configuration of its slatted awning cover. For the reasons stated in this memorandum opinion and order and based on the facts before this Court, *fn2" Zip Dee's motion to strike is denied in principal part and granted in limited part.


 In 1967 Zip Dee obtained a patent for an awning cover, consisting of a single sheet of flexible metal, for use on recreational vehicles. Two years later Zip Dee began fabricating a flexible awning that comprised a series of metal slats, so that it could be rolled up and stored. It is not disputed that the 1967 patent was broad enough to cover the slatted design. Zip Dee was the only manufacturer of the slatted awnings through 1983, and of course it was necessarily the only manufacturer that "bright dipped" the awning cover and its arms to give the product a bright and shiny mirror-like finish.

 Shortly after Zip Dee's patent expired in 1983, A & E Systems, Inc. ("A & E") began to produce slatted awnings with such a finish. In 1986 Zip Dee sued A & E in a California District Court, claiming that A & E had violated Zip Dee's patent and had also engaged in common law unfair competition by infringing on Zip Dee's trade dress In April 1988 a jury verdict was returned in Zip Dee's favor on both its patent and trade dress claims, and the court entered judgment on the verdict. In addition the court enjoined A & E from further violating Zip Dee's trade dress. *fn3"

 Dometic, which acquired A & E in 1988, understood that injunction to apply only to slatted awnings with a mirror-like finish, and so it began to produce slatted awnings with a dull (matte) finish. In May 1989 Zip Dee instituted a contempt proceeding against Dometic, asserting that the injunction applied to the overall form and shape of the awnings irrespective of the type of finish. However, the California District Court rejected that contention and ruled that the injunction was limited to the totality of Zip Dee's trade dress, expressly including the mirror-like finish. *fn4"

 Denied that route for claiming an exclusive right in the slatted awning configuration, Zip Dee tried a different tack. On August 8, 1990 it filed an application with the United States Patent and Trademark Office ("Trademark Office") for a trademark for the "overall configuration of a slatted cover for an awning on a recreation vehicle." Dometic charges that Zip Dee engaged in inequitable conduct in several respects in the course of that application process.

 On January 9, 1991 an examiner at the Trademark Office (the "Examiner") notified Zip Dee that its proposed trademark had been refused on alternative grounds: both "because the proposed mark appears to be functional" and "because the proposed mark is not inherently distinctive" (Zip Dee Ex. 1 at 1, 2). That was not a final refusal, for the Examiner asked Zip Dee to respond to a number of inquiries about the functionality of the slatted awning configuration (id. at 1):

Applicant must state what advantage in protecting the awning or awning cover is gained by having the cover slatted.
With respect to the design at issue, please state whether there are similar designs being marketed by others, whether applicant owns patent(s) on awning covers for RV's, and whether the design is less costly to make than others.
Applicant must state whether its design is or has ever been at issue in infringement litigation.

 Zip Dee responded with a July 9, 1991 amendment (Zip Dee Ex. 2) in which it addressed the Examiner's questions and provided attachments to support its contentions. Included in the amendment or as attachments were (1) an affidavit from Zip Dee's general manager and secretary Robert Miller ("Miller") regarding advertising and sales information for the slatted awning; (2) secondary meaning surveys conducted for use in the California trial; (3) Zip Dee's assertion that the California case had "resulted in a determination by the jury that the Zip Dee awning had achieved secondary meaning"; (4) brochures produced by Zip Dee, A & E and Carter *fn5" (a rival manufacturer), each showing an awning consisting of a single piece of flexible metal; (5) Zip Dee's assertion that "the issue of functionality of the awning was addressed at trial and the jury found the awning was not functional"; (6) Zip Dee's statement "upon belief" that the slatted cover is more expensive to produce than a single sheet cover; and (7) Zip Dee's conclusory assertion that the "proposed mark is defacto functional and has acquired distinctiveness."

 On August 23, 1991 the Examiner wrote Zip Dee that the secondary meaning surveys were not in the application file, asking that the surveys be resubmitted (Zip Dee Ex. 3). In addition the Examiner requested that Zip Dee (1) furnish "any written decision or other legal document in support of the nonfunctional nature of the applicant's mark" and (2) "state what advantage in protecting the awning or awning cover is gained by having the cover slanted [sic]." That second office action concluded by informing Zip Dee that "the refusals of record are continued."

 Zip Dee responded on February 24, 1992 (Zip Dee Ex. 4). As to the secondary meaning surveys, Zip Dee provided a copy of a mail room postcard showing that the Trademark Office had in fact received the surveys and said that the surveys submitted "may have been the last two surveys with original photographs in the applicant's possession." While stating that it would continue to search for other copies, Zip Dee encouraged the Trademark Office to continue to search for the surveys as well. Zip Dee also attached a copy of the original decision of the Court of Appeals for the Federal Circuit affirming the California District Court's decision on the patent and trade dress claims. Finally Zip Dee said:

Evidence was adduced at trial that there were alternative commercial designs to the slatted construction for metal covers in recreational vehicle awnings which provided all the functional advantages that a slatted metal cover provides.

 On May 5, 1992 the Examiner filed a "Trademark Interview and Amendment Record" summarizing a phone interview with Zip Dee's counsel (Zip Dee Ex. 5). In addition to noting technical changes, the Examiner reported:

Applicant claims that the mark has become distinctive of its goods, based on the sales and advertising figures of record.

 Apparently no other communications took place until September 22, 1992, when the Examiner concluded that "the mark of the application identified appears to be entitled to registration" and instructed that the mark be published in the Official Gazette (Zip Dee Ex. 5). When no opposition was raised, a trademark for the slatted awning configuration was registered on December 15, 1992. Zip Dee then launched this suit in May 1993, advancing (as the case went on) not only patent but also federal trademark and common law trademark claims.

 Positions of the Parties

 AD 12 asserts that because Zip Dee engaged in inequitable conduct in obtaining its trademark on the slatted awning configuration, it should be barred from obtaining relief based on a violation of the trademark. Dometic identifies three areas in which Zip Dee allegedly made false representations to the Examiner: *fn6"

1. misrepresentations as to whether the slatted awning configuration was functional;
2. misrepresentations as to whether the slatted awning configuration had acquired secondary meaning; and
3. a misrepresentation in the application when Zip Dee attested that it believed that no other parties had the right to use the slatted configuration.

 For its part, Zip Dee advances two arguments in support of its motion to strike AD 12. First it contends that most of the things claimed by Dometic were not misrepresentations at all. As a fallback position it argues that even if it loses on its first contention, any misrepresentations made to the Examiner were not material.

 At this threshold pleading stage the sufficiency of AD 12 is evaluated as a matter of law. Although Zip Dee's motion is technically advanced as a motion to strike pursuant to Rule 12(f), the applicable standard is the same as that used for considering a Rule 12(b)(6) motion to dismiss ( Instituto Nacional de Comercializacion Agricola v. Continental Ill. Nat'l Bank & Trust Co., 576 F. Supp. 985, 988 (N.D. Ill. 1983)). Hence the test is whether, accepting all of Dometic's factual allegations as true and drawing all reasonable inferences in its favor, relief could be granted if Dometic were able to prove facts consistent with those allegations ( Hishon v. King & Spalding, 467 U.S. 69, 73, 81 L. Ed. 2d 59, 104 S. Ct. 2229 (1984)).

 Inequitable Conduct Defense

 As Zip Dee repeatedly points out, it is relatively difficult to prove inequitable conduct in obtaining a trademark registration. That result flows conceptually from the notion that trademark rights exist "from the fact of use and the common law, independently of registration in the Patent Office" ( Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 888 56 C.C.P.A. 946, (C.C.P.A. 1969)). As Morehouse, id. went on to say:

It is in the public interest to maintain registrations of technically good trademarks on the register so long as they are still in use. The register then reflects the commercial reality. Assertions of "fraud" should be dealt with realistically, comprehending. . .that trademark rights, unlike patent rights, continue notwithstanding cancellation of those additional rights which the Patent Office is empowered by statute to grant.

 To rephrase that position, because it is in the public interest to keep valid trademarks on the register to protect the public from confusion, and because common law trademark rights exist with or without federal registration, a party alleging inequitable conduct must in effect prove that no trademark rights would exist had the applicant not fraudulently persuaded the ...

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