The opinion of the court was delivered by: BIUNNO
BIUNNO, Senior District Judge.
On February 18, 1983, the plaintiff-counterdefendants, Natural Footwear Limited, Don Green and Michael Budman, (hereafter "Natural") filed a motion for partial summary judgment, i.e., for summary judgment on Count 1 of the complaint, seeking an order:
2. To direct the Commissioner of Patents and Trademarks to dismiss the Petition for Cancellation, No. 11,602 filed there by the defendant-counterclaimant, Roots, Inc. (hereafter "Roots").
Roots' brief in opposition took the position that rather than being entitled to the partial summary judgment sought, the court should enter a partial summary judgment in favor of Roots and against Natural, directing the cancellation of Natural's two registrations.
When the Natural motion came on for hearing, the court observed that Roots wished to have its de facto cross-motion heard on short notice. Roots was then allowed to make that cross-motion orally, at the start of the hearing on the Natural motion, as allowed by F.R.Civ.P.7(b)(1). The two motions were heard together, without objection, as shown by the transcript of March 14, 1983 pages 2 and 3.
The parties also agreed in their briefs to the proposition that the court is authorized, under 15 USC § 1119, to determine the right to registration and also to order the cancellation of registrations, in any action involving a registered mark. The section also provides that such orders are to be certified for appropriate entry on the trademark office records.
These cross-motions for partial summary judgment are thus directly opposed, and the parties diverge on the question whether Roots may successfully oppose Natural's registrations without establishing a secondary meaning for the word "Roots", which the opposing parties both use.
The general background is outlined in the memorandum dated December 4, 1979 granting Roots' application for preliminary injunction, later affirmed by the Court of Appeals, 620 F.2d 289 (CA-3, 1980).
Roots began as a family store, continued by the son, Perry Root, incorporated, then sold to Hart, Schaffner & Marx in about 1965 along with the right to use the name "Roots", and now continues as a wholly owned subsidiary under the management of Perry Root. The Roots stores sell wearing apparel of all kinds, and accessories, both for men and women, aimed at a quality-conscious clientele.
While it does no manufacturing, it has its merchandise made for it, by well-known quality manufacturers, to its specifications of style, materials, workmanship and the like, and carries its labels, sometimes together with those of the manufacturer, on the goods. Most of its sales are made out of the New Jersey stores, and it does make interstate sales primarily via a mailing list to which it mails catalogs periodically. Exhibits marked at the original hearing, at discovery, and during several trial dates, include such catalogs going back at least to 1961. The articles of apparel are "suited" to all parts of the body from head to toe, from hats to shoes. A separate shoe store was opened in 1969.
Attempts to catalog or tabulate the volume of sales in different parts of the country have shown limited data. The "Rolodex" list, reproduced and provided for Natural's analysis, shows customers formerly in New Jersey who have moved elsewhere, whose new addresses are recorded, and who continue to receive catalogs. What cannot be determined is the number and activity of these customers who, on one or another trip to New Jersey to visit friends or relatives, or to attend sports events, or reunions with classmates, and the like, go to the New Jersey stores and make purchases while they are here. If there are any such patrons, their numbers do not appear and so the analyses show, at most, a minimum or floor. Others outside New Jersey have asked to be put on the mailing list.
The critical date for the purposes of this suit is May 14, 1973, when Natural filed to register "Roots" as a trademark in Canada, issuance being on December 7, 1973. The first U.S. application was filed August 13, 1973 and registered October 15, 1974, for "Footwear -- Namely, Shoes, Slippers and Boots -- in Class 39 (Int. Cl. 25)," No. 995,891. The benefit of the earlier Canadian date is by treaty, and there is no dispute on the point.
The second U.S. application was filed August 22, 1973, registered April 8, 1975 for the same category, No. 1,008,601. The only difference is that the second registration uses, in addition to the word "roots" (in lower case letters) a figure of a beaver in an extended semicircle, with the words "NATURAL FOOTWEAR" in smaller and finer line, below. The suit here only relates to the word "ROOTS" in either form.
Natural started up business in Canada sometime in or after 1973. The deposition testimony of Don Green, as well as the Budman affidavit, Exh. A-3, indicate that the first shipment of shoes with the claimed trademark was on December 14, 1973. The Green deposition also indicates that a store opened in Berkeley, California under the name "Roots Natural Footwear Store" sometime between December 25, 1973 and January 10, 1974. Other stores opened in 1974 and thereafter, one being a store at 118 E. 59th Street, New York City.
It was in connection with inquiries about an ad run by Natural's New York City store that the existence of Natural came to Roots' attention in 1975. Perry Root tried to identify the principal and eventually wrote a letter of objection to a Mr. Novak who he understood was manager of that store, Roots Exh. 16. Some weeks later, he received a phone call from one he noted as Mr. "Goodman", but who may have been Mr. "Budman", and discussed the risk of conflict from the use of the same name by both Natural and Roots. There is no indication that the person who phoned Mr. Root made any mention of the registration of either trademark by Natural.
Natural says that on June 2, 1977, Roots filed with the U.S. Patent and Trademark Office [PTO] a petition for cancellation of Natural's two registrations. More than two years later on October 12, 1979, Natural filed the present complaint seeking (among other things) the relief under ...