and made findings on them. The panel of the Court of Appeals was aware that these findings could only be disturbed if "clearly erroneous", in view of F.R.Civ.P. 52(a), but felt that inferences drawn from basic facts are subject to less restrictive review, and implied that the "clearly erroneous" standard does not strictly apply to findings of fact in cases decided primarily on documentary evidence, where the reviewing court is in an equally good position to evaluate the evidence, and that review in such situations is not as constrained as in cases where credibility of a witness may be an issue. See 589 F.2d at p. 1229, footnote 3.
Those comments in the Scott Paper case do not provide any guidance to trial judges dealing with other cases in the field, except, perhaps for the undoubtedly correct statement that: "Each case of trademark infringement must be evaluated on its own facts and circumstances." 589 F.2d at p. 1231.
Barring one point to be mentioned in a moment, the opinion in Scott Paper has all the marks of a trial de novo on the record compiled below, as though the trial judge had made no findings of fact and had drawn no inferences.
The process is thereby rendered essentially subjective and ad hoc, turning away to that extent from the usual effort (imperfect though it be) to achieve more and more of objective tests, more and more predictability of result, and the other like features of a system of law.
The subject also involves the usual debate about differences in review of decisions by fact finders depending on whether the fact finder is a jury or a judge, and about whether reviewing courts have original jurisdiction. See the discussion in McNeil v. McDonough, 515 F. Supp. 113, at 127-129 (D.N.J. 1980).
Both the Holiday Inn and the Scott Paper cases are out of character with the general trend, in this broad class of cases, to insist upon adherence to high levels of business ethics, to press for raising those levels, and putting it to the newcomer or infringer to show justification. Neither one mentions this factor, not even the list of 10 factors in Scott Paper, yet many of the earlier cases referred to, both State and Federal, place a significant emphasis on it, as a court of conscience would be expected to by long-established standards.
This is not to suggest that either the Holiday Inn or the Scott Paper case produced an unjust result. An outsider who can view only the published opinions and not the trial record, cannot have any opinion at all on that point. It does mean that, putting the question aside, the articulation of reasons is of that kind which does not provide a path or a beacon to the next who enters the thicket.
Thus, for example, both the cases would have been entirely consistent with the primary approach to these cases if the small Holiday Inn had been enjoined with reasonable terms to make the change, and if Scott's Liquid Gold had had its rights limited to its furniture polish (for the time being) with the requirement to make its style for the use of the name "Scott" as different as possible from plaintiff's.
The facts are well enough known to be subject to judicial notice: Holiday Inn did open a facility in St. Thomas, but it chose to present it as "Frenchman's Reef". The defendant Holiday Inn still exists in downtown St. Thomas. In the case of Scott, current TV ads include one of an air freshener device, a spray can mounted inside a wall mount, made by Scott's Liquid Gold. This is an expansion by the defendant in that case to a product as far from furniture polish as the latter is from paper goods, and that Lee Scott, no doubt gone from the scene, never thought of.
The point reserved for mention here is that in Scott Paper, where the products were not the same though the names were, the Court of Appeals ruled that the prior user relying on secondary meaning must show, by a preponderance, that it had established secondary meaning in the market for defendant's goods at some time before defendant "began using its mark". See 589 F.2d at 1231-1232.
Since both sides were using surnames, one would expect that the rule would be that plaintiff would need to establish a secondary meaning at a time before the defendant established such a meaning; but the opinion clearly does not say that.
This court is inevitably bound by the law laid down by the Court of Appeals in this circuit, and by the Supreme Court of the United States, no matter what its own views and analysis of the law may be. In this case, since the plaintiff has never marketed wire or cable of any kind under the name "Lapp" (and this puts to the side the short lengths of insulated conductors of entrance bushings), there obviously cannot be any evidence of secondary meaning in the market for wires and cables, no matter how rational it may seem to sophisticated customers that the manufacturer of Lapp ceramic insulators and pole hardware and electrical capacitors should expand into wire and cable. Since defendant has used the name "Lapp" for wire and cable, the rule of law laid down in the Scott Paper case precludes the award of any injunctive relief.
Despite the court's view that, aside from the rule of Scott Paper, the circumstances would call for some form of declaratory relief, a limited injunction, and perhaps a reservation of jurisdiction to be invoked for further relief at the foot of the decree as the future unfolds, it is of the view that the rule of law just referred to bars that result.
Submit order dismissing the complaint, without allowance of costs.
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