The opinion of the court was delivered by: DENLOW
Plaintiffs Thomas & Betts Corporation and Thomas & Betts Holdings, Inc. (hereinafter collectively referred to as "T&B"), bring this action in five counts against defendant Panduit Corporation (hereinafter "Panduit"). On August 15, 1996 this Court granted Panduit's motion for summary judgment as to four counts and reserved ruling on count II. Count II alleges that Panduit's use of the trademark BARB-TY constitutes a misleading use under 15 U.S.C. § 1125(a)(1) and seeks cancellation of Panduit's trademark registration of the BARB-TY mark under 15 U.S.C. § 1064(3) on the grounds that it is generic. This Court conducted oral argument on September 11, 1996 and accepted additional briefing on count II. For the reasons set forth below the Court grants Panduit's motion for summary judgment as to count II.
The Court has previously discussed the facts in its August 15, 1996 decision granting summary judgment on all counts other than count II. See Thomas & Betts Corp. and Thomas & Betts Holdings, Inc. v. Panduit Corp., 935 F. Supp. 1399, 1996 WL 509922. A brief discussion of the facts relevant to count II follows. Both parties sell a variety of cable ties. In 1965, T&B obtained a patent on the two-piece cable tie ("the Schwester patent"). That patent disclosed a two-piece cable tie with an oval head, metal barb and transverse slot. T&B marketed its patented two-piece cable tie under the trademark TY-RAP. Though the Schwester patent expired in 1982 and a related patent also held by T&B expired in 1986, until 1993 T&B remained the sole producer of two-piece cable ties with annual sales of almost $ 100 million worldwide which it marketed under the TY-RAP trademark.
In 1993, Panduit entered the two-piece cable tie market with the BARB-TY, an oval-headed, metal-barbed cable tie essentially identical to T&B's TY-RAP. BARB-TY is a registered trademark. T&B claims that Panduit's use of the trademark BARB-TY constitutes a misleading use and violates § 43(a)(1) of the Lanham Act. Also, T&B requests that Panduit's trademark be canceled pursuant to § 14 of the Lanham Act because of either the genericness of the term "barb tie" or the fraudulent procurement of the BARB-TY mark.
II. SUMMARY JUDGMENT STANDARD
The Court will apply the summary judgment standard set forth in section II of its August 15, 1996 decision.
III. PANDUIT'S USE OF THE TERM BARB-TY DOES NOT VIOLATE THE LANHAM ACT
Panduit's use of the term BARB-TY does not violate § 43(a)(1) of the Lanham Act as a matter of law because the term "barb tie" is not generic and the BARB-TY trademark does not create confusion as to source.
T&B alleges that Panduit's use of the trademark BARB-TY is a violation of Section 43(a) of the Lanham Act. That section provides that:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which --
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1)(A).
It is obvious that if the name . . . has a two-fold significance, one generic and the other pointing to the origin of manufacture, and the name is availed of by another without clearly indicating that the machine upon which the name is marked is made by him, then the right to use the name because of its generic signification would imply a power to destroy any good will which belonged to the original maker. It would import, not only this, but also the unrestrained right to deceive and defraud the public by so using the name as to delude them into believing that the machine made by one person was made by another.
Thus, where a particular term is deemed to have a "two-fold significance", courts are required to protect the investment of the prior user and protect the public from confusion by requiring subsequent users to take appropriate measures to prevent a likelihood of confusion from occurring.
Section 43(a)(1) of the Lanham Act prohibits the misleading use of a term which has both a source identifying quality and a generic quality. Blinded Veterans Ass'n v. Blinded Am. Veterans Found, 277 U.S. App. D.C. 65, 872 F.2d 1035 (D.C. Cir. 1989). The source indicating quality results from the fact that there existed only a single manufacturer of a particular product over a long period of time, such that the relevant public has come to associate the term used to denote the product with that manufacturer. The generic quality stems from the common use of a term as the descriptor for a product. T&B ...