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Page 1 Copyright © 1983, The International Trademark Association, The Trademark Reporter January, 1983 - February,

Copyright © 1983, The International Trademark Association, The Trademark Reporter

January, 1983 - February, 1983

LENGTH: 7224 words

73 TMR 11


Saul Lefkowitz *

* Former Chairman of the Trademark Trial and Appeal Board and of counsel to the firm of Finnegan, Henderson, Farabow, Garrett and Dunner, Washington, D.C. The valuable assistance of Mitchell S. Ettinger in the preparation of this article is gratefully acknowledged.


[*11] This article will address the topic of "double trademarking" -- the use and affiliation of the marks of two different entities on a single product. Use and acceptance of the practice of affixing multiple marks to a single product or service by manufacturers, producers, and merchants reflect both increased sophistication of consumers and the changes in current production and commercial marketing methods. The acceptance of this practice, and the consumers' ability to distinguish the specific function of each mark and to associate each with a particular (possibly anonymous) source, speak well of the effectiveness of present advertising and promotion methods. Innovative marketing techniques coupled with advances made in mass communications have laid the groundwork for the current increasing practice of "double trademarking" products.

Manufacturers and merchants have progressed from the parochial practice of employing a single, umbrella mark, usually a house mark, to embrace the entire orbit of their company's operations and products. In the past many companies only attempted to designate the products within a particular line by using such terms as "standard," "deluxe," "super deluxe," and "executive," which served merely to create price differentials for the products, and often resulted in consumer confusion.

The age of business diversification and mergers, and the opening of national markets hastened by improved means of transportation and communication, have created our highly complex and competitive economic society. Producers and merchants have restructured their marketing methods and have adopted sophisticated means of merchandising the fruits of their investment and labor. A significant cause of this change, in both concept and approach, has been the recognition of the ever increasing importance of the role that trademarks play in shaping consumer product preferences, not only as a symbol of quality, but as an advertising [*12] tool that can be exploited effectively to direct the attention of the consuming public to a particular product or service.

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As a consequence, producers and purveyors of goods and services have included in their arsenal individual product marks, ingredient or component marks which emphasize certain desirable properties of their products, design marks used alone or as distinctive settings for the product marks, slogans which take advantage of the communication media, and distinctive packaging and labeling to comport with supermarket self-service shopping. Sometimes these marks are used in conjunction with an established house mark or company logo so as to blanket all of the individual products and services with the reputation and good will of the business entity; the use of the different marks is designed to bestow an individual identity and appeal upon each product and service within a corporate family.

In an early case, n1 Judge Learned Hand acknowledged that a party may use multiple marks in association with a product and be entitled to protection of each of the multiple marks so long as the public recognizes each as a trademark.

n1 Loonen v. Deitsch, 189 F 487 (SDNY 1911).

Now, in principle, there is no possible ground for refusing to recognize any number of trade-marks which are really such. That is to say, if a man can show that the public has in fact come to recognize six marks each as separately indicating his manufacture, even though they are used together, it should be no concern of the court to interfere. The hypothesis presupposes that the public does interpret the marks each as indicating origin or manufacture, and that is simply a question of fact, though it might be a very hard thing to prove, especially if the marks were all put near [or]

together on the article. If a man uses four or five marks together, it may be, therefore, doubtful whether as matter of fact any single one ever got to mean his goods, but the trouble is merely one of fact, and there is no reason that I can see,

Certainly if

why if that fact exists, the court should take from him the means he has created of identifying his

the public has solved that difficulty of more than one mark, the court becomes officious in forbidding the maker from continuing to use what the public already understands. n2

n2 Id at 492.

Some courts, however, expressed concern over the difficulty that the public would have associating more than a single mark [*13] with a single product. The Court of Customs and Patent Appeals, although admitting that more than one mark can appear on a product label, expressed its concern as to public perception and the need for persuasive proof that each performs a trademark function.

While it may be that two or more distinct trademarks may be applied simultaneously to the same goods, that is clearly

not the usual practice, and where,

trademark, the natural inference would be that the remaining words on the label are not to be considered a trademark. n3

the most prominent feature of a label is a word which is unquestionably a

n3 In re Walker Process Equipment, Inc., 233 F2d 329, 332, 110 USPQ 41, 43 (CCPA 1956).

These fears were allayed in time, largely by the increased exposure of the public to multiple product marks, and the recognition that the average purchaser had become more sophisticated and knowledgeable in his or her purchasing methods.

It is now established that one may use more than one mark in connection with a particular product or service and establish protectible rights in each mark under the common law and by federal registration. The only restriction placed on such use is that each mark must create a separate and distinct impression, in and of itself, from the other marks and that each, in fact, serves purchasers as a means to identify and distinguish the product or service from other products in commerce. n4

n4 In re Ohmite Mfg. Company, 134 USPQ 30 (TTAB 1962); In re Hehr Mfg. Company, 279 F2d 526, 126

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USPQ 381 (TTAB 1960); Carter-Wallace, Inc. v. Procter and Gamble Co., 434 F2d 794, 167 USPQ 713 (CA 9 1970); and Blue Bell, Inc. v. Farah Mfg. Company, 508 F2d 1260, 185 USPQ 1 (CA 5 1975).

Often, the multiple marks are the property of a single party. The acceptance of the concept of multiple marks of one party affixed to a single product has been extended to the use and/or affixation of multiple marks owned by different parties to a particular product or service. Under appropriate circumstances, and with proper safeguards, courts have condoned the use of another's mark without the consent of the owner.

The sanction of these practices has been gradual, reflecting the emergence of merchants' marks, technological specialization, the increased cost of producing and promoting a product or service, the complexities of business relationships, the need for capital formation, and a broadening of the concept of "fair" business practices. These factors have caused manufacturers and others [*14] to combine efforts to produce finished products which enter the market place bearing the marks of each entity to identify the particular contribution of each to the creation of the product.

Interestingly, the restrictions on this practice are somewhat analogous to those imposed upon a manufacturer who employs multiple marks on its own product. The use of each mark applied to the product must not confuse the purchasing public as to its function or purpose, or derogate the trademark rights of anyone who contributed to the creation of the product, or those who handle the product during its journey to the market place. There are at least four situations in which multiple marks owned by separate entities will appear on a single product or be used in conjunction with a service. This article will discuss each of these uses and suggest guidelines which trademark proprietors may follow when engaging in multiple trademark use.

Joint Ventures

The owner of a mark is usually a single "person" or "entity." However, it has been recognized that a mark may be jointly owned, not merely by two individuals, but by any two legal entities and that this form of joint ownership may take on the character of a joint venture. n5 A joint venture is an undertaking in which separate legal entities combine to perform a specific function or to market the fruit of their joint labors, often under a particular mark. n6

n5 Section 45 of the Trademark Act of 1946 (15 USC § 1127) provides that "words in the singular include the plural and vice versa." See Ex parte Edward and Isabelle Stone Taylor, d/b/a Baby's Spray-Tray Co., 18 USPQ 292 (Comr Pats 1933) and Ex parte Pacific Intermountain Express Co.; Ex parte Spector Motor Service, Inc., 111 USPQ 187 (Comr Pats 1956).

n6 In re Hercofina, 207 USPQ 777 (TTAB 1980).

There is no common law or statutory impediment to the venturers conducting the business operations of the joint venture under their own identities. However, in order to carry out this type of business venture in an expeditious manner the parties usually establish a business organization with a separate legal identity. Under the supervision of a board of managers comprising officials from both companies, such an entity alleviates the need for constant communications between the venturers, provides a central office to handle day-to-day management duties, and serves to limit each entity's liability should the venture fail.

The mark adopted and used to identify and distinguish the product or service produced by the venture may be one that is [*15] new and unique to the venture; it may be a trademark of one of the venturers that has achieved recognition in the same or related field; or it may be a combination of a well-known mark of each party which lends established recognitions and reputations to the venture and aids in launching its products or service. The joint owners of the mark chosen to identify the source of a product or service produced by the joint venture, regardless of its derivation, may enjoy ownership of the mark to the same extent as any other "person" who possesses a proprietary interest in a mark for a particular product or service.

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No difficulty arises when the mark chosen to carry out the joint venture is a newly created identification symbol separate, and readily distinguishable, from any mark used by any participating member of the venture. An example of this type of mark is HERCOFINA which was derived from the names of the joint venturers, HERCules Incorporated and American PetrOFINA. n7 Although any product or service offered under a newly created mark must succeed on its own merit, as it is not bootstrapped to any well-known marks, it nevertheless presents advantages. A venture is just what the name implies; like any other business operation, there is no guarantee of success. In the event that the product or service offered by the venture proves unsatisfactory, or otherwise fails to attract purchaser acceptance, it could involve a substantial loss of money to the joint venture, and possibly the demise -- or disrepute -- of the selected mark. However, in this situation, the chances are good that an unsuccessful adventure would not affect the reputation and good will of the marks of either joint venturer.

n7 See supra note 6. This statement, of course, assumes that HERCOFINA is not confusingly similar to either HERCULES or FINA -- a perfectly defensible position under today's law, but not necessarily one both owners of the "root" marks would adopt.

Difficulties may arise when joint venturers select a mark that is a composite of the marks owned independently by each entity or the well-known mark of one of the joint venturers. n8 The mark should not be owned by the venture itself, because such ownership will be inconsistent with ownership of the original marks. In one such instance, the owners of DIAMOND for nuts and SUNSWEET for dried fruits sought registration for the composite mark DIAMOND/SUNSWEET for gift packages containing nuts and fruits. The joint applicants created Diamond/Sunsweet [*16] Inc. (with fifty percent ownership in each applicant) to carry out the joint venture. Each joint applicant granted a trademark license to this corporation to use its portion of the composite mark in the marketing of the gift pack, but retained direct control and supervision over use of the mark.

n8 See, eg, In re Diamond Walnut Growers, Inc. and Sunsweet Growers, Inc., 204 USPQ 507 (TTAB 1979).

When application was filed to register this composite mark registration was refused under Section 2(d) of the Lanham Act n9 on the ground that registration of the same or a similar mark for like or similar goods to two or more separate legal entities, regardless of the relationship between them, is prohibited if use of the mark by the separate entities is likely to cause confusion as to the origin of the goods. In reversing the trademark attorney, the Trademark Trial and Appeal Board established certain criteria by which to judge the probability of likelihood of confusion where previously established trademarks are combined to identify the product of a joint venture.

n9 15 USC § 1052(d).

Certain elements should be included in the underlying trademark license or joint venture agreement to protect the integrity of the composite mark, as well as the rights established in the marks separate and apart from the joint venture. The key resides in the relationship between the joint venturers. Where the parties act "in tandem" and not in potentially conflicting roles, the probability of infringement of their respective marks or a likelihood of confusion is drastically reduced. Therefore, the relationship of the parties should be set out clearly in the agreement. This coupled with a provision establishing control and supervisory guidelines by each venturer over the use of the composite mark, is sufficient to protect the rights in the respective components of the mark, and to meet the criteria for federal registration of the composite mark. This is imperative to protect both (1) the integrity of the joint venture's mark and (2) the ownership rights in each individual mark. If a legal entity has been set up to conduct the venture's mission, the agreement(s) should require discontinuance of the composite mark at the termination of the venture; should prohibit the venture from using either of the individual marks, and, if necessary, should require the venture to change its corporate name to eliminate the composite mark therefrom upon termination or require it to dissolve its legal status. Another significant requirement is that the ownership rights of the individual marks, and their registrability status, [*17] should be noted whenever the composite mark is used by the venturers of its operating company.

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All of these precautions obviously should be included also in any joint venture agreement in which the mark or the marks of one of the parties is to be the identifying vehicle for the operation of the venture. Additionally, where the mark of one of the parties is used, that party should assume prime responsibility to insure the mark is used properly and that the quality of the goods or services offered under the mark is maintained. He also should require the joint venture to indemnify him against any litigation that might arise from the venture's use of the mark and to obtain insurance to insulate him from vicarious liability claims. Failure to take these precautions could result in abandonment of the marks or in incalculable damage that ultimately could result in the loss of valuable property rights.

Accordingly, a party ought not to commit a mark that has achieved public acceptance and recognition for use in a joint venture which involves operations unrelated to the field(s) of expertise of its owner, or to one that entails a measure of risk. Failure of the venture to produce an acceptable product or service could blemish an otherwise well-received and accepted mark and affect the sales of products marketed under the mark.

The only exception to this admonition would be a situation similar to that involved in the DIAMOND/SUNSWEET joint venture wherein the product of the venture involved the well-known known trademarked products of each participant. The joint venture merely served as a conduit through which the unaltered products of each entity flowed. Even in this instance, the parties took the necessary precautions to insure the viability and integrity of their marks.

The safest approach to this problem is the selection of a new mark, such as HERCOFINA, that will be peculiar to the joint venture and the goods or services offered thereunder. Selection of an arbitrary mark will not jeopardize the good will of established marks of the joint venturers. Good will symbolized by a mark, although difficult to come by, can be dissipated easily, and eventually lost.

Manufacturer/Distributor Marks

Another situation where double trademarking occurs is where one source manufactures the finished product and another distributes [*18] it. The Lanham Act expressly recognizes that a trademark may be owned by a merchant as well as a manufacturer. Section 45 n10 defines a trademark as "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." Thus, a party other than a manufacturer, such as a merchant or distributor of goods, may acquire rights in and to a trademark used in the sale or distribution of the manufactured goods.

n10 15 USC § 1127.

Supermarket private label products are perhaps the most familiar example of products bearing a merchant's, but no manufacturer's, mark. But providing that the merchant's mark is used so as to denote the vendor or distributor of the goods, it is permissible for the manufacturer's mark also to appear on the goods. n11 As seen in other instances of double trademarking, the validity of the use of multiple marks depends upon whether each trademark performs a different function for consumers. Each mark must create a separate and distinct impression, and each must serve to identify without confusion the manufacturer of the goods and its distributor, respectively. The structural complexity of our marketing society has led to multi-functional uses and characteristics of trademarks. The different roles that a trademark may perform were set out in In re Expo '74 n12 as follows:

There is no question but that a party need not be a manufacturer of goods to own and register a trademark. In fact, any person in the normal channels of distribution including a manufacturer, a contract purchaser who has goods manufactured for him, and a retailer or merchant as well as any non-profit organization or institution can be the owner of a trademark "in commerce" if he applies or has someone in his behalf apply his own trademark to goods to which he has acquired ownership and title and sells or merely transports such goods in commerce as his own product with the mark, as applied thereto, serving to identify the particular product as emanating from the shipper or seller in his own capacity.

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n11 Amica Mutual Insurance Co. v. R. H. Cosmetics Corp., 204 USPQ 155, 161 (TTAB 1979).

n12 189 USPQ 48, 49 (TTAB 1975).

Thus, it is sufficient, for the purpose of acquiring ownership of a mark, that the goods pass through the hands of a person involved [*19] in the normal distribution or marketing of a product and that, by affixing his mark to it, he gives the product the benefit of his name and reputation. Of course the mark must be used in a manner reasonably likely to apprise the purchaser or recipient of the product of the origin-indicating role that the mark performs.

When a distributor's mark is used in conjunction with a manufacturer's mark, it is imperative that the manufacturer police the method and manner by which the marks are affixed to the goods so that each clearly delineates its owner's function, and the type of source that it identifies. Additionally, the maker should insure that the reputation of the distributor and his mark enhances, rather than diminishes, the appeal and reputation of his own product and mark. Similarly, the reputation of a merchant's mark is often dependent upon the quality and reputation of the trademarked products that he distributes and sells. Thus, both the manufacturer and distributor have a direct interest in protecting the good will of their marks from being tarnished by an association with inferior merchandise or with a merchant known for the distribution of poor quality products, or for unpopular merchandising policies.

Apart from any ill-advised association, there is normally little, if any, likelihood of confusion arising from the normal relationship between a manufacturer and a retail or wholesale distributor. The usual manner in which manufacturers and retailers affix their respective marks to products makes the function of each mark relatively clear to the average purchaser. (This is particularly true when each mark has independent renown.) n13

n13 See, eg, Yard-Man, Inc. v. Getz Exterminators, Inc., 157 USPQ 100, 106 (TTAB 1968) and Educational Development Corp. v. Educational Dimensions Corp., 183 USPQ 492 (TTAB 1974).

There is one situation that may produce problems for a manufacturer in its relationship with authorized distributors or with an exclusive distributorship. This involves the use -- with or without the permission of the manufacturer -- of the latter's mark in direct association with the distributor's mark. Examples of this are, MAYTAG BY SEARS, MAYTAG BY WARDS, MAYTAG-SEARS, and like designations. Notwithstanding the normal precautions incorporated in a distributorship or joint venture agreement spelling out the ownership of the marks and their manner of use, steps should be taken to indicate clearly on the product itself, and on the container therefor, that MAYTAG is the registered [*20] trademark of the manufacturer. Failure to take this measure can lead purchasers to regard SEARS, WARDS, or other distributors utilizing such an appellation, as the manufacturing source of the product and/or to regard MAYTAG as either a mark of the distributor or, possibly, even as the common descriptive name for the product. In either event, it can result in the loss to the manufacturer of a viable and valuable trademark.

Double trademarking of manufacturer and merchant marks requires that whenever these marks are used in tandem they should be used to indicate clearly to those encountering the marks their specific and different functions.

Product Marks and Ingredient/Component Marks

An ingredient or component of a product, and the mark used to identify it, may originate with the producer of the finished product or with a company that manufactures the component and sells it under its own mark to manufacturers of the final product in which it is incorporated.

Although the connotation of "double trademarking" presented in this article relates to the ingredient-producer/finished-product manufacturer relationship, the development of the utilization of product and ingredient marks on the same product originated with the practice of individual manufacturers of adopting trademarks for both finished products and ingredient components thereof. Public acceptance and recognition of this practice has given impetus to what now is common usage of double trademarking in linking an ingredient mark of one party with a

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finished product of another party for their mutual benefit. Examples of this are "WEAREVER pans with TEFLON coating" or "CLARISSE dresses made of DACRON fabric."

The situation in which the ingredient mark originates with the producer of the finished product presents no conflict, as the proprietor of both marks used on the products has complete control over the use and destiny of the marks. Nonetheless, an ingredient mark should be used in a manner to indicate clearly its particular or significant function as distinguished from that of the product mark. Such use is not directed toward diminishing the risk of appropriation by another, but rather to insure consumer recognition of the role it plays in the finished product and thereby to establish the requirements necessary to obtain a federal registration.

[*21] The question as to whether a mark that identifies an ingredient or component, never sold separately from the article or merchandise in which it is incorporated, constitutes proper subject matter for registration was a topic of legal uncertainty for many years. In 1934, the Commissioner of Patents in Ex parte Eastman Kodak Company n14 answered this question affirmatively, but nevertheless refused registration. Kodak sought registration of TWINDAR as a trademark for photographic lenses. While holding that parts of an article of manufacture may bear separate trademarks, the Commissioner refused registration on the ground that the mark, as affixed, did not serve as an indication of origin.


n14 22 USPQ 136 (Comr Pats 1934).

n15 The mark was affixed to the body of a camera and did not appear on the lens casing itself and was therefore held not to meet affixation requirement of the 1905 Act.

Just three years later in Ex parte A. Stein & Co., n16 the Commissioner held that a trademark identifying a buckle for garment supporters, which was permanently attached to the belt, was not registrable, because the applicant had failed to show itself to be a trader in buckles. The same year in Crosley Radio Corp. v. Sparks Sparks Withington Co., n17 it was held that a trademark was unregistrable for metal frames that were attached to the inside of refrigerator doors because the frames had never been sold apart from the refrigerators and that the only manner in which the trademark appeared on the product was on a label pasted to the inside surface of the refrigerator door. Whether this case turned on improper affixation of the mark or on applicant's failure to sell the frames separate and apart from the refrigerator is not clear. Finally, in Ex parte Pepsodent Co. n18 the Commissioner recognized that an ingredient mark can serve as a source of origin when properly applied. Pepsodent sought registration of the word IRIUM for dentifrices. However, applicant used the term IRIUM merely to identify the ingredient and the Examiner held it to be merely "a statement of the quality of the product." n19 The mark subsequently was registered for an ingredient of a dentifrice in another application.

n16 33 USPQ 54 (Comr Pats 1937).

n17 33 USPQ 162, 163 (Comr Pats 1937).

n18 36 USPQ 75 (Comr Pats 1937).

n19 Ibid.

Enactment of the Lanham Act in 1946 did not harmonize the inconsistency in the application of the Kodak decision. However, case law under the Lanham Act appears to have settled the issue. [*22] In In re Libbey-Owens-Ford Glass Co. n20 the mark BONDERMETIC SEAL was held registrable for metal seals used in glass casing. In what seems to be a reiteration of the Kodak dicta, the Commissioner stated:

Where a manufacturer is employing a new device in connection with a composite product, and desires to advertise

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and publicize the advantages of such new device, he should be able to protect the chosen name thereof by registration of

a trade

may by the very nature of the product be sold only as a part of a larger unit. n21

This will be true regardless of whether the special device is capable of separate purchase and sale or

n20 75 USPQ 202 (Comr Pats 1947).

n21 Id at 203.

The gravaman of the Kodak and Libbey decisions was espoused by Assistant Commissioner Leeds in Winthrop-Sterns Inc. v. Milner Products Co. n22 and appears to have laid to rest any question regarding the registrability of marks used to identify components or ingredients of goods sold in commerce. In Winthrop, the applicant sought registration of the mark KOCAL to identify an added ingredient to its PINE-SOL detergent. The Examiner refused registration on the ground that the mark was used to identify an ingredient and not the source of origin. In reversing the Examiner, Commissioner Leeds reasoned:

The question is one of fact. If the mark is used to identify a component -- e.g., an ingredient, an added substance, a finish, or a part -- and distinguishes such component from those of others, and it is properly used on or in connection with the goods, or on displays associated with the goods, and the goods are sold or transported in commerce, it is registrable even though it may have originally been an "advertising gimmick" to aid in sales promotion. n23

n22 106 USPQ 382 (Comr Pats 1955).

n23 Id at 384-85.

It since has become an established principle that a mark selected to designate the origin of a component or

ingredient, which is properly affixed to the finished product, may be registered providing it does, in fact, serve to identify the ingredient and distinguish such component from those of others. In essence, it must possess an identity separate and apart from that projected by the product mark. [*23]

This principle has paved the way for the use of an ingredient mark owned by one party in association with a product mark of another party. However, this situation, unlike that presented in Kodak and Winthrop, involves ingredient and product marks of different parties. Each party is concerned with protecting the integrity and viability of its mark, and its reputation. Underlying this concern is the interest in avoiding a situation whereby purchasers, after relying on the quality and source denoting functions of the trademarks appearing on the goods, are dissatisfied with the product.

It is therefore essential that the marks of the parties in this type of arrangement be used in a manner sufficient to

denote to purchasers and to prospective purchasers the function and source of both the ingredient mark and the product mark. This should maintain the integrity and individual status of each mark and avoid the possibility that the marks would be subsumed in the lexicon of the English language thereby losing their status as trademarks.

A component or ingredient, and the mark used in connection therewith, is no better than the finished product in

which it is incorporated. Similarly, a finished product and its identifying mark depends for its essential characteristics and saleability on the components it incorporates. Generally, a manufacturer of a product has control over the selection of the ingredients it incorporates into its final product. A component manufacturer whose mark will be used can -- and should -- also exercise discretion in the selection of the ultimate finished product in which it is used. The component manufacturer must realize that the image of its fibers, filaments, coating, chemical or other product will survive in the market place only if the end products incorporating its ingredients are of a high quality. Indiscriminate sales of an ingredient to end users -- at least those who identify it by its trademark -- without exercising control over the quality of the finished products is short-sighted; in the long run, it can lead to the demise of a potentially profitable business and a

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potentially valuable mark. Experience with "shoddy" or "inferior" merchandise containing the ingredient, identified by the mark, can cause purchasers to refrain from purchasing any product, regardless of its quality, containing that identified ingredient, notwithstanding that the ingredient performed up to its expectations.

This demonstrates that care must be taken to insure proper trademark usage and that discretion is exercised in the selection [*24] of the manufacturers to whom the product is sold. There is a preferred method of approaching this problem which can serve to maintain the reputation and saleability of both the component product and its identifying symbol.

In lieu of sales to any and all potential purchasers and users of the component, the most practicable and protective approach to follow is the institution of a license program when the ingredient mark will be used. n24 By this method, the proprietor of the ingredient can restrict the sale of the product to manufacturers and producers who agree to meet

certain reasonable quality standards, prescribed by the ingredient proprietor, for the finished product. The advantage of

a license agreement is that the licensor has the right to choose his licensees as he pleases, and to specify guidelines for

proper use and identification of the ingredient mark by the manufacturer on its goods; such agreement also should establish quality control standards for the end product. The quality control provision will necessitate the institution of some reliable means of monitoring the quality standards. This can be accomplished by approval of preproduction sample, requiring no departure therefrom thereafter, and by permitting a random sampling of the finished product by the ingredient proprietor. n25 Through a properly instituted and controlled license program, an ingredient manufacturer can maintain the essential functions of its trademark as a symbol of quality and of a single source.

n24 Selling a well-known fiber, fabric or other ingredient to a manufacturer whose product will reflect poorly upon it is, of course, a temptation; why forego the profit? In some cases -- where the ingredient's presence is not apparent -- this can perhaps be done under a contract forbidding identification of the ingredient by its trademark (if not by its generic name).

n25 See In re Monsanto Company, 201 USPQ 864 (TTAB 1978).

Association of Mark With That of Competitor

Another instance in which two trademarks may appear simultaneously on the same package involves one

merchant's use of another's mark in advertising its goods. Truthful reference to the trademark of another is permissible provided the "unauthorized" reference does not cause confusion as to the source. n26 A likelihood of confusion may result from even truthful references to the trademark of another if its placement or form is misleading. The public may be misled into believing that the infringing [*25] product was approved or sponsored by the trademark holder and such

a result is prohibited by the Lanham Act. n27

n26 Invicta Plastics (USA) Ltd. v. Mego Corp., 523 F Supp 619, 214 USPQ 650, 652 (SDNY 1981).

n27 See 15 USC §§ 1114 and 1125(a).

While truthful references to another's mark are permissible so long as confusion is avoided, even absent confusion,

a merchant is prohibited from trading on the good will of another's mark. In Invicta, the plaintiff was the owner of the

trademark MASTERMIND for a "hidden code logic" game. The defendant was the owner of the mark SIXTH SENSE for a similar game designed by the inventor of the MASTERMIND game. Defendant's trade dress for its game referred to the plaintiff's MASTERMIND mark twenty-three times with such statements as "Created by Marko Meirovitz,' the inventor of MASTERMIND." n28 Radio advertising also made reference to plaintiff's trademark but did not refer to the plaintiff's ownership. In holding for the plaintiff the court was not only persuaded by the probability of a likelihood of confusion but that the defendant was trading on the good will established in plaintiff's mark.

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n28 The owner of a trademark for a game must be careful that the mark does not become the generic name of the game rather than its designation of origin. See Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F2d 1316 (CA 9 1982), cert denied BNA's PTCJ, Vol 25, No 618, p 351 (US 2/22/83) (2/24/83).

It is thus clear that [defendant] was deliberately seeking to use the goodwill plaintiff has acquired in its success

with MASTERMIND to sell its own

Defendant clearly hoped that the public's familiarity and satisfaction with MASTERMIND, and not with Mr. Meirovitz, would lead them to purchase SIXTH SENSE. The benefit to [defendant] would be derived from connecting the two games in the public's mind. This connection obviously led to confusion in the public's mind as to who made MASTERMIND and who made SIXTH SENSE. n29

n29 Supra note 26 at 623-24, 214 USPQ at 652-53.

A likelihood of confusion is not the only prohibited effect where one employs another's trademark in its

advertising. If use of another's mark is likely to dilute the ownership rights in the trademark the courts often will enjoin such use. n30 In Polyglycoat, the defendant sold an automotive silicone paint finish remover under the trademark POLYCRACKER. Plaintiff, the owner of the trademark POLYGLYCOAT for "protective coating [*26] and sealant for automotive finishes" brought suit under Sections 32(1) and 43(a) of the Lanham Act as well as the state anti-dilution statute to enjoin defendant's use of the POLYGLYCOAT mark in its advertising. Plaintiff contended that consumers would be confused or led to believe that plaintiff manufactured, sponsored, or approved of defendant's product. In granting a preliminary injunction, the District Court found that irreparable harm was likely to flow from defendant's unfettered use of the POLYGLYCOAT mark as it was likely to become so diluted as to render the term generic for all sealants for automobile finishes.

n30 Polyglycoat Corp. v. Environmental Chemicals, Inc., 509 F Supp 36, 214 USPQ 52 (SDNY 1980).

The court, in finding for the plaintiff, structured the injunction to remedy the asserted harm. The injunction was worded to eliminate the likelihood of confusion and dilution problems. The Court did not enjoin defendant from using the POLYGLYCOAT mark entirely, but only when "the mark is singled out as the generic, shorthand term standing for the species of paint finished sealants which POLYCRACKER is said to remove." n31

n31 Id at 40, 214 USPQ at 55.

Therefore while defendant is enjoined from using the POLYGLYCOAT mark alone on the POLYCRACKER label, advertisements, promotional or other material, defendant may continue making reference to the name in such conjunctive phrases as "silicone finishes, like POLYGLYCOAT." In any such use, the mark must not appear in letters which distinguish it from other words in the conjunctive phrase by size, color typeface or any other characteristic. n32

n32 Id at 40, 214 USPQ at 56.

A party may use its mark in association with the mark of another, without the consent of that party, providing: it is

not used to disparge the mark or product of that party; the other party's mark is not used in a manner likely to cause the mark to become a common descriptive appellation for the product; and the use of both marks on the product is not likely to cause confusion among purchasers as to its source.


There undoubtedly are other instances of "double trademarking," both with and without the consent of the owners

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of the respective marks, that can cause problems if the precautions previously mentioned are not instituted and maintained. A prime [*27] example is the use of a product or service mark by one party in association with a certification or collective mark of another, i.e., "to indicate or certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of a union or other organization" or to indicate that the goods or services are produced by members of a union, an association or other collective organization. n33

n33 See 15 USC § 1127.

Misuse of either a certification or a collective mark, or a failure to exercise care as to the individual or firm authorized to use the particular mark, can result in the loss of the distinctive character of the mark and its value to both the public and to the authorized users. n34

n34 Cf In re Monsanto Company, supra note 23 and In re Florida Citrus Commission, 160 USPQ 495 (TTAB 1968).

The "double trademarking" situations, notwithstanding their different nature, generally generate the same concern and problems which should be considered before being a party to such an arrangement on a voluntary or involuntary basis. The marks should be used on goods or in connection with services, as well as in advertising and promotional material, so as to indicate clearly the particular function of each mark. Neither mark should be used in any manner likely to disparage the validity of the other mark or to cause it to lose its function as an indication of origin. The marks should not be used in a manner likely to cause purchaser confusion as to any source of the finished product -- manufacturer, merchant, supplier or competitor. Finally, if possible, the partners to such a venture should be chosen with care to insure the quality function of the marks and the success of the venture.

Double trademarking must be employed with appropriate safeguards for several reasons -- to prevent the unscrupulous from "reaping where they have not sown"; to avoid destroying the viability of trademarks of others; and to prevent proprietors of valuable trademarks from "acts of omission or commission" which literally can extinguish valuable property rights.