*1 disсharged shipowner’s completely lia- of his because been insured would have actually Burlington v. North- bility. Folkestad Plaintiff never 1988 service. Cf. (9th Cir.1987)(bene- Inc., F.2d 1377 benefits ern of the SWP availed himself employee re- injured he had ac railroad because fit which which he was entitled However, through his railroad’s health and wel- insurance. quired Blue Cross ceived in favor and voluntary plan benefits not collateral source waiver of SWP fare was precluded him from coverage liability). FELA of Blue Cross could offset railroad’s agаinst the defen claiming right plaintiff’s to cure court has also considered This Express, assignments dants. Dowdle v. and has remaining of error Offshore Cf. Cir.1987) 259, (5th 809 F.2d them to be without merit. Accord- found free (where employer has tendered an is AF- ingly, the lower court’s decision the seaman refuses and medical care but FIRMED.8 physician, the seaman private consults a cure) right (citing Kos
usually forfeits 731, Co., 365 U.S. Fruit
sick v. United 886, (1961)).
S.Ct. 6 L.Ed.2d Appellant urged has also that SWP was BURKE-PARSONS-BOWLBY CORPO- payment inadequate delayed because of its RATION, Plaintiff-Appellant, However, (Kea- policy. Richard Keaton ton), manager, claims testified defendant’s shipowner paid all outstand-
that defendant HOMES, INC., APPALACHIAN LOG presen- ing immediately upon medical bills Defendant-Appellee. seek reim- tation and would thereafter No. 88-5025. from SWP after the sea- bursement Appeals, United States Court of necessary required men had received Sixth Circuit. testified further medical attention. Keaton that in the event did not afford an SWP Argued Oct. 1988. coverage, employee the defendant would April Decided 1989. payment of such in- nonetheless assume Rehearing Rehearing En Banc expenses. curred 22,May Denied 1989. Accordingly, defendant is not liable for plaintiff's expenses medical because the defendant's to the contributions SWP Co., punitive damages
8. Plaintiffs claim for and at- McDermott & 734 F.2d fees, "willful, Cir.1984) torney (shipowner’s predicated upon shipowner's conduct must be wages persistent,” "arbitrary capri- pay callous and willful refusal to his unearned which support during expiration accrued his illness and the cious" or "callous recalcitrant” to contract, attorneys punitive employment an award of fеes and dam- his is misconceived. Al- ages). though plaintiff including remiss formally complaint claim in his and in not prejudgment Plaintiffs claim for interest on notifying shipowner of this until demand damages, resulting the award of from an pretrial, the final which claim was acknowl- agreed-upon amount of accrued unearned edged shortly thereafter reduced to sum wages expenses, and other incidental is without judgment incorporated certain and into the merit because amount awarded was nom- subsequently immediately was trial, satisfied aftеr the comparison inal in his total demand of at upon the seaman’s insistence characteriz- $150,000. Consequently, least court trial did willful, ing shipowner’s conduct as denying plaintiffs abuse its discretion support. without The trial court re- prejudgment e.g. claim for interest. See Reeled jected charges G., the seaman’s of willfulness and Tubing, Chad M/V delayed payment concluded that the (5th Cir.1986) (when his un- admiralty damage wages earned was self-induced and resulted comparison award is nominal with the amount, from the untimeliness of his claim. The conclu- prejudgment claimed interest need not circumstances, awarded). explicit sion of the trial court was not an abuse of be In such I, Inc., duty discretion. See Breese v. AW specific the trial court had no ruling to make a (5th Cir.1987) (admiralty attorney prejudgment on interest. Noritake fee/punitive damages subject Champion, claim is to abuse Hellenic M/V standard); (5th Cir.1986). Ray of discretion Holmes v. J. *2 and as in December of 1981 of the establishment Patent and meaning, BPB informed the $100,- spent Trademark Office that it had *3 APPALA- advertising in the name and had re- CHIAN LOG STRUCTURES $2,000,000 gross in approximately ceived log residences under that name. sales of 30, 1983, August the Patent and Trade- On Office, pursuant Title 15 U.S.C. to 1052(f), registra- certificate of issued a for the mark APPALACHIAN LOG tion STRUCTURES. 1980, BPB January
From advertised the name APPALACHIAN LOG STRUC- regular peri- in TURES on a basis various Guide, including Log odicals Home Coun- Homes, Annual, try Log Home Moth- News, er Earth Alternative House Build- er, spe- BPB Building and Better Ideas. (argued), David E. Cecilia S. Lambert during the cifically advertised in Tennessee Kramer, McVeigh, Rodgers, Rayson, Leake April Home in Knoxville Show Tenn., Knoxville, fоr Burke- Rodgers, & including newspaper advertising. radio and Parsons-Bowlby Corp. Appalachian Log dealership A for Struc- Dougherty (argued), Boone Harwell W.P. Seymour, tures was established in Tennes- Knoxville, Tenn., Nichols, Appala- for & addition, In in January see in of 1981. Homes, Log chian Log Appalachian June of 1981 an Structure dealership Smyrna in New was established GUY, KRUPANSKY and Before Beach, Florida, notably which MEREDITH, Judges Circuit Winter, Appa- home of Ken the financier of Judge.* District Homes, Inc., Log though lachian no evi- MEREDITH, Judge. prior indicated that District dence Winter knowledge Appalachian Log Structures. 30, 1987, the On November Honorable Homes, Inc., Log Judge Appellee, Appalachian entered his Thomas G. Hull Order injunctive appellant began using its name in the east Tennessee denying relief to (BPB), August Burke-Parsons-Bowlby Corporation area in of 1981. The name was Virginia corporation, represent the in which owned a val- chosen to location which idly registered phrase trademark in the AP- the business was located and the kind of Ap- product that Thе record does not PALACHIAN LOG STRUCTURES. was sold. pellants argued appellee, Appalachian any prior knowledge part reflect on Homes, Inc., Log corporation, appellee Appalachian a Tennessee of the existence of enjoined Log APPA- should be from their use of Structures.
LACHIAN LOG HOMES as it constituted Appalachian Log Homes builds infringement registered an of BPB’s mark. log using handcrafted homes Western The District ruled for the defendant- Court logs Hemlock flat hand-hewn sur- appellee and affirm the dеcision of we now connecting face and dovetail notches on the the District Court. logs. logs The Western Hemlock are taken tree, applied
BPB
for a
from the
six
trademark
core
measure
depth,
height
term APPALACHIAN LOG inches in
inches in
twelve
*
Meredith,
sitting by designation.
Honorable Ronald E.
United States
Court,
Kentucky,
District
Western District of
forty
length.
appellee
Their
up
are
feet
mas-
offered the testimony of
Larry Hagood,
(15)
requires
attorney
a fifteen
ton
licensed
sive size
crane
State of Tennessee
who fоund
virtue of
logs
thus the residences cannot
set
his research that
the term APPALA-
do-it-yourself kit.
be sold as a
buildings
tailed ends.
tures hand-hewn
by
much shorter
chian
ety
primarily
form a solid wood wall and can be erected
logs
On the other
the home
are notched so that
Log
log
round,
Structures,
structures
length
log
buyer. hand,
pressure
residences.
square logs
made from
BPB
including
manufactures a vari-
through Appala-
they ultimately
treated
also manufac-
commercial
with dove-
pine.
logs
utilizes
nent
North
nia.
CHIAN was used in 132 business titles in
tion
No
of its nature unless it—
goods of others shall be
*4
applicant may
part
trademark
[*]
on the
Carolina, Virginia
The Lanham Act
that:
[*]
principal register
be
[*]
which the
distinguished
[*]
refused
provides
West
[*]
on account
from the
registra-
Virgi-
perti
[*]
(e)
which, (1)
Consists of a mark
when
testimony
of Dr. Leonard W. Brink-
applied
goods
to the
applicant
of the
man,
Geography
Associate Professor of
at
merely descriptive
(2)
... or
ap-
when
University
the
by
of Tennessee was offered
plied
goods
to the
of
applicant
the
appellee
geographically
as
of the
primarily geographically descriptive....
descriptive nature of the term APPALA-
(f) Except
expressly
as
para-
excluded in
Dr.
CHIAN.
Brinkman testified that he
(a) (d)
graphs
section,
of
nothing
this
—
University
teaches a course at the
of Ten-
chapter
prevent
registra-
shall
the
“Geography Appalachia”
nessee entitled
tion of a mark used
applicant
the
and that the term APPALACHIAN refers
which has become
appli-
distinctive of the
“extending
to an area
from the southern
goods
cant’s
and commerce. The Com-
part of the State of New York to the cen-
may
missioner
accept
prima
as
facie evi-
Alabama,
part
tral
the
state of
and in an
dence that the mark has become distinc-
direction from the
Ridge
east-west
Blue
tive,
applied
applicant’s
to the
Smokey
plateau
and
Mountains to the
re-
commerce, proof
substantially
ex-
gions of Ohio and states to the southwest.”
clusive and continuous use thereof as a
(Joint
68A).
Appendix Pg.
Furthermore,
applicant
the
in commerce for
the term
gov-
APPALACHIAN is used in
years
preceding
the five
next
the date of
activity
Regional
ernmental
to name a
filing
application.
the
area,
Appаlachian
Commission in the
Receipt
reg-
Title 15 U.S.C. 1052.
of a
§
identify
region
study
for
within the De-
automatically
istered trademark
invokes a
partment Agriculture
report
and in a
statutory presumption that the trademark
regarding
rivers,
the news media
the
for-
1115(a).
is valid. Title 15 U.S.C.
ests, and
Appa-
mountains of the southern
statutory presumption shifts the burden of
region.
Appalachian
lachian
In
the
proof
party challenging
validity
to the
the
Knoxville,
Exposition
was held
Tennes-
WSM,
Hilton,
of the mark.
Inc. v.
see. Dr. Brinkman testified that the term
(8th Cir.1984);
Scientific
has
pub-
APPALACHIAN
been used
Applications,
v. Energy
Conserva-
map prepared by
lic domain since 1902. A
(D.C.Ga.1977).
Corp.,
F.Supp.
tion
Geological
Survey
United States
was Furthermore,
may
the District Court
map
introduced and the title of the
was the
overrule
of registerability
the decision
“Appalachian Region.”
map
indicated
(PTO)
the Patent and Trademark Office
“Appalachian Region”
that the
extends into
party challenging
unless the
the mark ar-
the east Tennessee area as well as West
gues persuasively that the mark was ineli-
Virginia,
Virginiа
the western counties of
gible
protection.
Applica-
Scientific
tions,
the western counties of North Car-
Validity
at 360.
of a
olina.
contingent
trademark is
on de-
(1)
potential users those names of subdivi-
mark is
termining first whether
(3)
nations,
fanciful;
(2)
regions,
suggestive;
sions
arbitrary and
earth —
Cen-
town, rivers,
lakes,
WLWC
(4) generic.
counties,
other
descriptive; or
ters,
Corp., Inc. v. Winners
geographical
artificial
natural
generic
(D.Tenn.1983). Neither
employed
could be
to draw
units —which
with-
protectable
are
descriptive
nor
terms
origin
prоduct
to the
of a
public attention
secondary meaning. 20th
establishing
out
of a business.
It would
or the situs
Wear, Inc. v. Sanmark-Stardust
Century
competition to
obviously promote unfair
(2nd
A
single producer
proscribe for all save a
descriptive:
mark is
thereby pre-
region
the name of
pur-
intended
if it describes:
“...
prod-
producers
other
of the same
clude
goods;
use of the
pose, function or
region
indicating
uct in the same
goods; a desirable
of users of the
class
origin.”
product’s
their
goods; or the end
characteristic
New
Carpets, Inc. v. Dick Littrell’s
World
upon
effect
the user.”
Carpets, World
Cir.
& Classic Car Wash
Wynn Oil Co.
1971).
Where it is determined that
Thomas,
(6th Cir.1988).
1183, 1190
*5
by potential purchasers
perceived
mark as
directly,
“imparts
If
information
the
geographic origin
the
describes
the
Anheuser-Busch, Inc. v.
descriptive.”
it is
primarily geographically
goods the mark is
Co.,
330,
F.Supp.
Brewery
587
335
Stroh
Nantucket,
95,
In re
descriptive.
(E.D.Mo.1984);
F.2d 631
750
affirmed
P.A.1982).
(U.S.Ct.C.
To further clar
99
&
LOG STRUC-
APPALACHIAN
ify
primarily geo
the mark is
whether
origin of the
refers to either the
TURES
graphically descriptive, it is valuable to ex
log
particular style
a
log structures or to
geographic
possibility
amine the
that
generic
The term LOG is a
structures.
“minor, obscure,
remote or uncon
term is
commonly
rough
denote a
cut
term
used to
Nantucket,
goods.”
nected with the
677
portion
a tree and the term STRUC-
Carpets, Inc. v. Dick
F.2d at 99. World
commonly
descriptive
used
TURE is a
Carpets, Littrell’s New World
parties
dispute
do not
the classi-
term. The
(5th Cir.1971); In re Brauere:
482,
of the terms LOG and STRUC-
fication
Inselkammen, KG, 217 U.S.
Aying Franz
by
In-
TURE as made
the District Court.
Food
73,
(T.T.A.B.1983);
V & V
P.Q.
controversy centers on whethеr
stead the
Products,
Cacique
Cheese
LOG STRUCTURES is a
APPALACHIAN
662,
(N.D.Ill.1988).
Use of a
descriptive term.
primarily geographically
geographic
such as
de
term
DUTCH to
appellee introduced substantial evi-
The
paint,
carpets,
to
scribe
WORLD
describe
supporting
deter-
dence
the District Court’s
spas,
to describe health
TOU-
EUROPEAN
mination
that APPALACHIAN LOG
coffee, and
RAINE to describe
NANTUCK
primarily geographically
entirely
ET to
men’s shirts is
arbi
describe
Appalachian region has
descriptive. The
trary.
protected
The
mark has no relation
distinct,
рublicly acknowledged as a
been
goods
ship to the source of the
since none
region
Further-
identifiable
since 1902.
goods
were manufactured
more,
regionally descriptive
term AP-
geographic area
In each of
described.
in 132
PALACHIAN is used
businesses
protectable
these instances the mark was
Appalachian region.
located
precluded
primarily geo
under the
protect primarily geo-
Act
Lanham
does not
graphically descriptive category.
graphically descriptive marks.
15 U.S.C.
1052(e)(2).
Wolfe,
National Lead Co. v.
plain
congressionally
“It is
es-
denied,
(9th Cir.);
cert.
F.2d
against
prohibition
tablished
883,
135,
(1955);
U.S.
76 S.Ct.
596 PTO, of the undisputed evidence of use meaning is Seсondary not exist. did was before preponderance very mark for a short duration by a proved when that the atti determined find that the additional it can be the Court. We evidence public toward the consuming was, the Dis- tude duration as evidence of short coming thing from single “a mark denotes noted, “highly relevant” trict Court Laborato Cream Aloe single source.” to rebut the PTO therefore sufficient (5th F.2d Milsan, ries v. secondary meaning. finding of v. Koke Cir.1970), Co. quoting Coca-Cola secondary meaning BPB asserts that 113, 113, 143, 146, 41 S.Ct. 254 U.S. expenditures, advertising рroven by proof of second (1920). Direct L.Ed. 189 achieved, company’s climb to the sales Aloe to obtain. meaning is difficult ary testimony of industry and the top of the direct Cream, at 849. Absent LOG APPALACHIAN Mr. Parsons that in draw reasonable must proof, the Court secondary meaning. long-term usage, ferences from submitted. consumer evidence was No expenditure effort considerable necessary to establish evidentiary burden developing reputation money toward meaning is Bank substantial. trademark. WLWC good for the will Southwest, Inc., volume, Cеnters, 723. Sales Texas v. Commerce at of F.2d relevant, necessarily Though suffi though recognition of the for the advertising expenditures to indicate cient BPB’s source. indication of the relevant, as an purchasers is no evidence to mark are there Foods, Foods Inc. v. Bar-Well Seabrook or to as extensive establish the amount (U.S.C.C.P.A. Ltd., necessary to beyond it distinguish as Inc., 190 1977); Spike, International In re gross sales in the market. survive (TTAB 1976). U.S.P.Q. 505, Advertis $2,000,000 encompasses three figure of not, will ing expense also is relevant but includes commеrcial as well years and alone, secondary mean standing establish averages approxi- buildings residential Energy Applications v. ing. Scientific $666,000 gross sales each of mately Corp., 436 Conservation BPB’s significance of years. three advertising expendi (N.D.Ga.1977). Where *7 by is limited top of the market climb to “merely required to survive” tures are it evidence establishes that the fact that no market, advertising ex competitive using appellee began its occurred before prove used to second penditures cannot be meaning must estab- Secondary be name. Centers, meaning. 563 ary WLWC use of a similar name. prior lished to others However, extensive adver F.Supp. at 724. Lehman, Vichy Spring Co. v. Saratoga in consumer associa tising which results (2nd Cir.1980). 1037, F.2d 1043 625 single can sec tion with a source establish APPA- testimony Fletcher Parsons that of added). ondary meaning. (Emphasis Scott had ac- LACHIAN LOG Liquid 589 Paper v. Gold Co. Scott’s meaning quired secondary must be viewed 1225, (3rd The dura F.2d 1228 Parsons, skepticism. Mr. as co-owner with the mark can establish sec tion of use of BPB, recognizable has a interest ob- ondary meaning the duration is where sup- taining ruling and without a favorable relatively period. In than a short more porting portion testimony of his facts this Centers, determined that the Court WLWC disregarded. Secondary prove years insufficient to that three meaning by BPB. was not established secondary meaning. acquired the mark had Centers, F.Supp. at 723. 563 WLWC Having agreed the District Court’s with LOG finding that APPALACHIAN registration APPA- granted PTO unprotectable, there is STRUCTURES was solely LACHIAN LOG STRUCTURES raised on no need to review the issues and advertisement. upon evidence of sales registerability. appeal assume which Though given the deference is PTO deci- Therefore, judgment of the District sion, presumption is In ad- rebuttable. AFFIRMED. presented dition to the evidence to the Court is
597
KRUPANSKY,
Judge,
dentiary
necessary
Circuit
burden
to establish sec-
concurring.
ondary meaning for
geographically
de-
substantial); Zatarains,
scriptive
term is
briefly
express my
I write
concurrence
Smokehouse, Inc.,
Inc. v. Oak Grove
698
majority
in the
articulated
result
786,
(5th Cir.1983) (if
F.2d
794
descrip-
term
1115(a),
opinion. Under 15 U.S.C.
tive, rather than inherently distinсtive, bur-
registration
“prima
PTO’s
creates
necessary
den
to establish secondary mean-
presumption
facie”
that
the mark is valid.
ing
substantial);
Corp.
Telemed
v. Tel
registration
preclude
op
“shall not
an
Corp.,
Med
213,
(7th Cir.1978)
588 F.2d
posing party
proving
legal
220
any
or
(same).
equitable
might
defense or defect which
have been asserted if such mark had not
It
“clearly
was not
erroneous” for the
Id.
registered.”
It
been
well-settled
district court to conclude
plaintiff
Act, registration
that “under the Lanham
failed to meet
this substantial burden.
enlarge
registrant’s
itself does not
advertising
Plaintiff’s
was in itself insuffi
a mark.” Amer. Her
rights in
substantive
prove
cient to
secondary meaning. Appli
itage
Heritage
Ins. Co. v.
Ins.
Life
Life
Candies, Inc.,
cation
Andes
478 F.2d
Co.,
3,
(5th Cir.1974)
494 F.2d
10
(citing
1264,
(C.C.P.A.1973);
Amer. Foot
1267
Co.,
Turner HMH Publishing
Corp.
wear
Corp.,
Gen’l Footwear
609
denied,
224,
(5th Cir.),
cert.
228
389 U.S.
655,
(2d Cir.1979),
F.2d
denied,
cert.
1006,
566,
(1967)).
88 S.Ct.
Elec.
Lamp
v. Dura Elec.
testimony
sumer
secondary meaning,
as to
(D.N.J.1956) (same),
plaintiff
I conclude that
has not met
its
aff'd,
(3d
1957).
defendant had rebutted the
ma facie presumption
plain-
anchored in
GUY, Jr.,
Judge,
RALPH B.
Circuit
tiff’s
of the mark
evidence
dissenting.
that
the mark
merely geographically
agree
I
majority’s
While
with the
conclu
descriptive and that
it had not been used
sion that APPALACHIAN LOG STRUC
time,
period
for an extended
of
defendant
geographically
dеscriptive
TURES is a
going
had satisfied its burden of
forward.
mark, I
major
dissent because I
presumption
When the
believe the
arising
regis-
rebutted,
ity
finding
secondary meaning
erred in
no
tration was
the ultimate burden
proof
including proof
of
been established. When the Patent
secondary
of
meaning
registers
proposed
and Trademark Office
plaintiff.
reverted to the
On re-
buttal,
mark,
plaintiff
satisfy
presumptively
failed to
that mark is
its ultimate
valid.
proof by
Circuit,
burden of
Aluminum Fabri
introducing
The Second
sufficient
cating Company
secondary meaning
Pittsburgh
See
v. Season-
of
the mark.
of
Southwest,
Bank
Tex. v. Commerce
Corp.,
All Window
(2d
F.Supp. 313 This court language Wynn
used similar Oil Com Thomas, F.2d 1183 Cir.
pany that,
1988), recognized in which we absent challenger, from the dis
strong evidence accept judgment of
trict courts should Office,
the Patent and Trademark
“which
undoubtedly expert in these matters.”
America,
UNITED STATES
general pre
1190. Nоt
does this
At
Plaintiff-Appellee,
exist,
sumption
ap
when the
but
PTO
1052(f),it
proves a mark under 15 U.S.C. §
JERKINS,
necessarily
Joseph
that the mark
has
determined
J.
acquired secondary meaning.
Defendant-Appellant.
has
Coun
Bureaus,
cil
Better Business
88-1507,
Nos.
88-1508.
Florida,
Better Business Bureau
South
(BNA)
(1978);
U.S.P.Q
Iowa Farm
Appeals,
United States Court of
ers Union v. Farmers’ Educational and
Sixth Circuit.
(8th Cir.1957).
Union,
Coop.
court could find the defendant to have re *9 presumption if only the defen
butted convincing proof
dant offered that the PTO Here, Appa
determination was erroneous. Log
lachian Homes’ real evidence is
the fact that used its mark for a
relatively approval. short time before length of time the mark has been
While factor, undoubtedly
used is a relevant it is
only one of several to be considered. Corp.
American Footwear v. General