unmistakably stating . . . that the machines are made by the defendant, as distinguished from the sewing machines made by the Singer Manufacturing Company."
In Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119, 59 S. Ct. 109, 113-14, 83 L. Ed. 73 (1938) the Court held that when a trademarked term becomes generic because the public associates the product and the term with a single manufacturer, another producer is required to "use reasonable care to inform the public of the source of the product."
Finally, in King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 581 (2d Cir. 1963) the court found that the trademark "thermos" had become the generic denotation of a vacuum-insulated container, and therefore required defendant to distinguish its product from plaintiff's by preceding "thermos" with "Aladdin's", by using only the lower case "t", and by never using the words "original" or "genuine" in describing the product.
In all the aforementioned cases a trademarked term became generic after the prolonged use by the sole manufacturer. In the present case T&B does not have a trademark on the term "barb tie". Also, T&B has failed to show that the consuming public recognizes the product as a barb tie. It is apparent that the primary designation by which the product is more commonly known is a cable tie. Therefore the above mentioned cases differ from the case at bar in two ways. First, T&B does not have trademark rights in the term "barb tie". Second, T&B has failed to show that the public has come to know the product as a barb tie.
2. Consumer Testimony
T&B has not presented any consumer evidence that the term "barb tie" is synonymous with T&B. T&B argues that the testimony of Mr. O'Neill, Mr. Taggart, and Mr. Andrews establish that consumers have come to associate the term "barb tie" with T&B. (O'Neill Tr. 93, 98, 104, 105, 111, 112; Taggart Tr. 55, 56, 83; Andrews Dep. 14.) However the relevant inquiry is not what the distributors and employees of T&B think their customers know, but rather what the customers themselves believe. The Lanham Act seeks to protect the consuming public from confusion and it is their perception that is pivotal in deciding whether a term has a source indicating quality. Without more than the bald assertions of T&B's distributors and employees the Court is compelled to find that T&B has failed to carry their burden. T&B has not presented any evidence from consumers which would establish a fact question as to whether consumers have come to associate the term "barb tie" with T&B.
3. Documentary Evidence
T&B has failed to produce any documentary evidence which would tend to show that consumers have come to associate the term "barb tie" with T&B. T&B has not produced any customer orders, customer correspondence, or any other documents showing that the term "barb tie" is associated with T&B. Also, T&B has failed to produce any advertising or promotional materials demonstrating that the term "barb tie" is a source indicator for T&B.
Therefore the Court finds that T&B has failed to submit sufficient evidence that the term "barb tie" has either a source indicating quality as to T&B or that the term is a generic or principal designation of a cable tie. Further, the Court finds that the use of the term "barb tie" and its phonetic equivalent BARB-TY, will not likely confuse the general public.
IV. CANCELLATION OF THE BARB-TY TRADEMARK
T&B also requests that Panduit's trademark be canceled pursuant to § 14 of the Lanham Act because of either the genericness of the trademark BARB-TY or its fraudulent procurement. The Court has found that the term "barb tie" is not generic and will only discuss the alleged fraudulent procurement of the trademark.
A. Fraudulent Procurement
T&B has not created an issue of fact for consideration by a jury that Panduit's BARB-TY registration was obtained fraudulently. Fraud must be proved with clear and convincing evidence. Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 670 (7th Cir. 1992).
T&B requests that Panduit's registration be canceled pursuant to § 14 of the Lanham Act. This section provides that:
A petition to cancel a registration of a mark . . . may . . . be filed as follows by any person who believes that he is or will be damaged by the registration of a mark on the principal register established by this chapter . . .