Santana Products, Inc. v. Compression Polymers, Inc. Sanatec Industries, Inc. Delbert P. Keisling, Jr. Alan P. Keisling
8 F.3d 152
3rd Cir.
1993
Check Treatment

*1 PRODUCTS, SANTANA INC. POLYMERS, INC.;

COMPRESSION Sa Industries, Inc.;

natec Delbert P. Keis

ling, Jr.; Keisling, Appellants. Alan P.

No. 93-7099. Appeals,

United States Court

Third Circuit.

Argued Sept. 29, 1993.

Oct.

James (argued), J. Kutz Mark D. Brad- shaw, Mellott, Eckert Seamans Cherin & PA, Harrisburg, Westerhoff, Richard V. Ec- Mellott, kert Seamans Cherin & Pittsburgh, PA, appellants.

William (argued), E. Jackson B. Aaron Schulman, Taylor, Arlington, YA, Larson & Butler, Solfanelli, Gerald J. Butler & La- Belle, Scranton, PA, appellees. MANSMANN, Before: GREENBERG, WEIS, Judges. *2 Act, 1125(a); § Federal Trademark U.S.C. OF THE COURT OPINION (II) infringement registered mark of a state GREENBERG, Judge. (state (III) claim); of a infringement law and name valid at common law mark a trade I. (state (IV) (state claim); law dilution law AND PROCEDURAL FACTUAL (V) claim); Compression and cancellation of

HISTORY Polymers’ registration pursuant to 15 federal U.S.C. 1119. Products subse- Santana jurisdictional appeal raises a issue This partial summary for quently filed a motion to not have been addressed which seems V, judgment the cancella- on Count claim for opinion. appeals reported in a court The court referred Santana tion. interlocutory district is whether an The issue magistrate judge, Products’ motion to a who directing the Commissioner court order the mo- report recommending issued a that cancel a trade- and Trademarks to tion be denied. in action which the registration, party, is an Commissioner objections the filed to Santana Products 1292(a)(1) and therefore within 28 U.S.C. 2, 1993, February report. On the district it We conclude that disagreeing opinion court its with the issued will and thus we dismiss is not an magistrate judge the issue. on from such an as it has been taken appeal this Accordingly, the the district court ordered disposition, we need In view of this order. and to Commissioner of Patents Trademarks background case. only summarize Polymers’ Compression cancel however, order, did not This terminate Products, plaintiff-appellee, The Santana action, complaint as other counts of the Inc., partitions, which manufactures restroom pending are still and it under the name “Santana.” markets counterclaim, pend- filed a which also is has claims to have Though Products ing. partitions mark on since used the “Santana” registered its mark with the 1979 and has

Department of State of the Commonwealth II. registered Pennsylvania, has DISCUSSION mark with the United States Patent defendant-appellant, Trademark Office. The correctly agree parties that we do Inc., Polymers, also makes Compression 28 U.S.C. pursuant and, keeping partitions with its restroom judgment not been 1291 as a final ending naming products with the practice of Compression in the district court. entered partitions “tec,” has marketed its restroom however, jur- Polymers argues, that we have Compression name “Sanatee.” under the pursuant isdiction U.S.C. August Polymers registered this name directing because Patent with United States and Trade- of Patents the Commissioner “Polyethylene Office Trademark registration is marks to cancel its federal In its federal and Urinal Partitions.” Toilet injunctive in nature. Compression indicated application, 2, 1993, used mark around October it first this February The order of taken, recites appeal has been which part: material 1, 1991, February Products On par- [Santana Products] the motion of against action

brought summary to Count V complaint, judgment tial In an Santa- Polymers.1 amended (I) complaint granted, counts: the amended na in five 43(a) Trademarks of Patents and of the Commissioner competition section unfair under defendants, opinion Compression further three Sanatee In- 1. There are other Inc., dustries, .corporation registered related to Patent the trademark with the corpo- Polymers, their and two of Trademark office. We need to mention them rate officers. have no pendente by contempt necessary.” lite if to cancel the defendants U.S. Id. is directed 1,609,803 al., Registration (citing Wright A. No. Charles et Federal Trademark (1977)). Practice & Procedure it is related restroom the extent Accordingly, developed three-part partitions. test *3 determining injunctive: for an when order is expressly does not state While the order injunction, entering an this omis the court is far, injunctions Thus have been defined compel in itself us to conclude does not negatively by delineating orders that are injunction, an as “we are not that it is not injunctive. purposes For of 28 U.S.C. by the district court’s character constrained 1292(a)(1), injunctions may be affirma- Bailey Systems ization of its order.” See tively defined as follows: (3d Innovation, Inc., 93, 96 Cir. party, that are directed Orders to a en- 1988). Rather, inquiry our crucial is as to by contempt, designed forceable of the order. the See New protect accord or ‘some or all of the Treacy, Jersey Nurses Ass’n v. 834 State sought by complaint’ relief substantive Cir.1987) (“certain (3d orders not F.2d in [temporary] more than a fashion. styled injunctions may in- explicitly added) (emphasis (quoting at 1465 n. Id. effect”). junctive 29). Federal Practice & Procedure naturally quite refer to our in banc We opinion in Cohen v. Board Trustees only The district court’s order satisfies Dentistry, University Medicine & requirements. Significantly, last these (3d 1989), guidance for in F.2d 1455 Cir. de district court’s order is not directed to Com- may termining an order consid whether be pression Polymers, but rather to the Com- injunctive ered within 28 U.S.C. missioner of Patents and Trademarks. recognized In that not all orders Cohen we ways, analogous in some it is to the tradition- grant party may relief and which be security al devices such as attachment and injunctive. by contempt civil are enforced replevin. See 16 Federal Practice & Proce- compelling discovery (“Enforcement example, For an order dure at 43 of the tra- injunctive, though might it be even security ditional devices of attachment and Rather, enforced we stated replevin ordinarily thought not to involve injunctive purposes that to for of section be an the-meaning within of the stat- deny party ute.”). grant Moreover, the order must or probably impor- more sought by the ultimate relief it. Id. at 1464. tantly, the order is not enforceable con- acknowledged But we that this factor alone is tempt against Compression Polymers. Rath- too broad a to determine that er, below, basis which Compression Poly- as we discuss court has issued for it disputed mers can continue to use the trade- in could describe an order an action at law. during litigation the course of the with- Thus, we stated: being contempt, though out risk of held in it may damages be for that Ac- liable use. chief distinction between actions at cordingly, injunc- the district court’s order is not equity seeking law and actions nature, injunctive jurisdiction. relief, lack tive thus lies in the mode of execu- person, Equity tion. acts on the who can Compression Polymers controverts contempt noncompliance. be held in conclusion, contending that inasmuch as the Id. at 1465. immediately nega- order is enforceable2 and Therefore, injunc- tively rights, order for affects its order is However, purposes only of section “must not tive. these circumstances in them- adjudicate the relief some of selves do not mean that the order is an Cohen, complaint; injunction. inquiry it must also be of such a nature critical Under grants granted by that if it it could be enforced is whether the relief the order disputes provided Santana Products that the order is in 15 U.S.C. 1119. We do not ad- 2.. because, designed assuming to take effect because the dress this contention even n wrong yet point, court has not certified the order to that Santana Products is on this injunctive. the Commissioner of order nevertheless is not Trademarks as through pendente lite con- 819. It therefore follows that can be enforced inasmuch Cohen, right F.2d at 1465. to use the mark tempt. prior arises from use, registration, and not from federal Com- fact, compel the order does not pression Polymers right will not lose its nor to take action simply use the mark because of the cancella- doing any- the order restrain does Indeed, tion of its Thus, Compression Polymers cannot thing. acknowledges in its letter address- contempt failing comply held in ing pro- the order contains no the order because mers “has not been anything ordered to do comply. which it must The or- visions with and it is free continue its use of the similar to that of the der is thus somewhat permanently trademark ‘Sanatec’ until it is in American Ins. district court Motorists Co. *4 enjoined.” Lorentzen, Inc., 879 F.2d v. Levolor (3d Cir.1989), 1172-73 which we declined to cites Wrist-Rocket injunction Co., Mfg. Archery under 28 U.S.C. treat as Co. v. Saunders 516 F.2d 1292(a)(1). (8th Cir.), denied, In American Motorists cert. “effectively” (1975), held that a district court order support S.Ct. 46 L.Ed.2d 100 defining company’s duty jurisdiction. an insurance to de- of its contention that we have Wrist-Rocket, appealable infringement fend a claim was not inasmuch as In a trademark claims, company to parties appealed it “did not order the undertake case with related [anything]” resolving and thus could not be enforced from the district court’s order lia pendente bility lite 879 F.2d at though issues on certain claims even fact, Compression Polymers’ damages open. 1172-73. In issues remained The court of jurisdiction appeals jurisdiction under claim for 28 U.S.C. held that it did not have 1292(a)(1) than is even weaker the basis to review the district court’s order with re jurisdiction appeal issues, predicated spect to on the to these but that it did have entry “jurisdiction, pursuant of an order considered to 28 U.S.C. all, 1292(a)(1), American Motorists. After to examine the merits of that suggest even that part granting appellee court did not of the order to the could not continue to use the mark. permanent [against the use of the court, ordering Therefore the unlike the district court trademark] and of Motorists, appellant’s registration.” in American did not define the Id. at 849 ie., (footnote omitted). appellant’s, Compression Polymers’ Thus, is Wrist-Rocket case, distinguishable duties. from this because the in district court in issued an Wrist-Rocket we could rest our While conclusion junction forbidding the use of the mark. foregoing reasoning, appropriate it is suggestion There no Wrist-Rocket party’s right that a observe to use trade jurisdiction in the court have exercised would dependent mark is not on its unques the absence of the Thus, McGinley, in In re tionably appealable.3 was (C.C.P.A.1981), the Court of Customs and appeal "will In view of the aforesaid the be Appeals Patent stated that the Patent and dismissed. register per Trademark refusal to Office’s right son’s trademark “does not affect his MANSMANN, Judge, dissenting. Volkswagenwerk Aktiengesells it.” In (1st Wheeler, Cir.1987), disagree I respectfully F.2d I dissent because chaft Circuit, majority by the Appeals with the conclusion reached the Court of for the First stated, federally registered citing McGinley, after that the cancellation of a “as this court held, immediately appealable and the cancellation of a trademark trademark therefore, we, jurisdiction in this registration extinguish does not common law that lack rights I find that the district registration did not create.” Id. at case. Because interlocutory accompanies an clearly appealable Inasmuch as Wrist-Rocket is distin- when- guishable, we do not comment on whether we injunction. agree an order for cancellation should practical effect inquiry focus on the must of directing the Commissioner the district court’s order. of to cancel Trademarks registration is in- federal mer’s Here, of the district practical effect effect, I practical junctive in nature of directing the Commissioner court’s order jurisdiction over that we have conclude would Compres- to cancel Patents and Trademarks 28 U.S.C. appeal pursuant registration Polymer’s trademark Prod- injunction to Santana granting of an 1292(a)(1) courts provides that the Section competi- to claims of unfair ucts. In addition appeals have appeals shall (both tion, infringement of state trademark “[ijnterlocutory orders of the district law) statutory at common and dilution granting, ... of the United States courts reputation, Santana Prod- business Santana’s dissolving modifying, refusing or continuing, complaint sought cancellation uct’s ” jurisdiction pursuant injunctions.... Our regis- Polymer’s federal trademark “or to the review of extends grants the district court order tration. deny injunctions and or grant or ders that important precisely to ders that have it seeks. aspect of the ultimate relief ‘serious, per injunctions denying or ” addition, susceptible of the order is consequence.’ haps irreparable, Gulf *5 majority by contempt. As the enforcement Corp. Mayacamas Aerospace v. stream directly observes, enforce- the order is not 1133, 271, 287-88, Corp., 108 S.Ct. 485 U.S. against contempt pendente lite Com- by able (1988) 1142-43, (emphasis 99 L.Ed.2d 296 Polymers. It is the Commissioner pression Brands, added) (citing v. American Carson that would be the of Patents and Trademarks 993, 996, Inc., 79, 83, 101 S.Ct. comply subject contempt for failure to of (1981)). See also United States L.Ed.2d 59 fact, This the district court’s order. with (3d Cir.1992). Santtini, v. 963 F.2d however, my not alter view that does scope of and be To fall within the effect.1 is in both nature and order must be “injunction”, the order deemed an Compression Polymers not have to should by contempt party, enforceable directed to a willingness to rely on the Commissioner’s protect or all designed to accord or some Compression contempt risk order for sought by a" com of the substantive of its trademark mers to have the dissolution concluded Co plaint. Id. at 591. As we appeal. right reviewed (3d Trustees, hen v. 867 F.2d Board of Cir.1989) (en banc), put on the the “label” majority’s conclusion that The prevent by court does not the district Compression compel order “does not treating injunction pur us from it as an action, nor does the Polymers to take (citations poses Id. at 1466 anything” doing exalts order restrain it omitted.) eye a blind substance and turns form over observes, is denied majority the fact the fact that as federally registered trademark of its court’s order here does not the use that the district (federal statutory protection) trademark as entering an expressly that the court is state enjoined by effectively expressly if it injunction compel as were the conclusion does using its federal court from not an as “we are the district that the order is of the dis- by court’s charac trademark. not constrained the district order,” order is that Com- Systems trict court’s cancellation Bailey v. terization of its (3d repre- Innovation, Inc., prohibited from pression 852 F.2d Cir. enjoys pro- 1988); senting the benefits Jersey v. State Nurses Assoc’n New (3d Cir.1987). Rather, registration as tection of federal trademark Treacy, 834 F.2d case, In that distinguishable was not Mo defense 1. This case is from American court, Lorentzen, Inc., defining effectively AMICO's while v. district duty, torists Insurance Co. Levolor defense, (3d Cir.1989) did not order it to undertake in which 1172-73 Lorentzen, pendente lite could not be enforced thus the order Levolor found the order case, contempt. is an order that summary judgment In our there partial Inc.'s motion for respect obligation provide a is enforceable AMICO]to [of to the granted surely if an had been Products.2 COMPANY, NEHI BOTTLING Plaintiff-Appellant, INCORPORATED, summary judg- respect to its claim for cancellation

ment with Polymers’ mark without summary judgment relating

seeking to the competition infringement, unfair trademark ALL-AMERICAN BOTTLING Clearly, claims. and dilution CORPORATION, Defendant- requiring cancellation of court’s order Com- Appellee. Polymers’ provided significant and substantive relief to Santana Products. ARMES, Plaintiff-Appellee, v. John Indeed, grant because of the district court’s favor, partial summary judgment in its able, through Santana Products has been litigation, strategic piecemeal to achieve one ALL-AMERICAN BOTTLING lawsuit, is, goals ultimate in this of its CORPORATION, Defendant- prevention Compression Polymers’ Appellant. of “Sanatec” as its trademark. 92-1139, Nos. 92-1140. holding that the cancellation a feder- ally registered Appeals, Court of United States appealable, majority deprived Fourth Circuit.

pression Polymers of the means for review- ing propriety of the district court’s can- Argued June review, appellate cellation order.3 Without free, simply *6 Decided Oct. suggests, to continue its use of the trademark If “Sanatec.”

pression Polymers represent continues to proprietary rights disputed

that it has in the mark, it does so at the risk of

“Sanatec”

being damages, possibly held liable for receiving

the risk of other sanctions as well.

Cognizant Compres- that this situation leaves proverbial between the “rock place”, recognize a hard I would

district court’s order has the and conclude that order is denied, (8th Cir.), may S.Ct. 2. The fact that still cert. (1975) have federal common law or state trademark (appellate court had 46 L.Ed.2d protection import. Compression Poly- is of no jurisdiction review order of cancellation and required forego mers should not be the bene- trademark). injunction against use of legislation simply fits of federal trademark be- Products, however, partial in its motion sum protection may cause other forms of trademark mary judgment, en did not seek an available. disput joining Compression Polymers’ use of the Rather, ed mark. Santana Products asked the specifically sought 3. Had Santana Products effect, relief, grant equitable to the same court to injunction against Compression Polymers' directing of Patents and the Commission mark, clearly the "Sanatec” would have had Trademarks to cancel dispute. over this See Wrist-Rocket registration "Sanatec”. for the mark Co., Mfg. Archery Co. v. Saunders 516 F.2d 846