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53 Trademark Rep. 384 (1963)
G. LeBlanc Corporation v. H. A. Selmer, Inc.

handle is hein.journals/thetmr53 and id is 576 raw text is: G. LEBLANC CORPORATION v. H. A. SELMER, INC. Nos. 13232, 13233-C. A. 7- November 21, 1962-135 USPQ 338 500.76a-COURTS-PLEADING AND PRACTICE-DEFENSES-IN GENERAL 500.9-COURTS-APPELLATE PROCEDURE Invalidity of a trademark is a proper defense of plaintiff to a charge of alleged infringement. The question of validity is properly before the appeal court even though plaintiff did not appeal from that part of the decree finding the defen- dant's trademark RESONITE valid. Defendant appealed from a decree finding no infringement and plaintiff may properly urge invalidity of defendant's mark on appeal as a ground for sustaining the trial court's finding of no infringement. 500.77-COURTS-PLEADING AND PRACTICE-FINDING OF FACT Trial court's finding of facts was not clearly erroneous. Defendant's adver- tising and use of trademark RESONITE in its narrow sense was limited to a particular line of clarinets. Even though defendant used RESONITE in a descriptive sense as applying to the material of which its BUNDY RESONITE clarinets were made, RESONITE was always emphasized as the trademark. 500.37-COURTS-BASIS OF RELIEF-SECONDARY MEANING MARKS (SECTION 2 (f)) Use of the trademark RESONITE by defendant for six years and the commercial success resulting therefrom added strength to the claim that the trade recognized the mark as applied to 3UNDY grade clarinets. Use and not registration is para- mount in establishing rights to a trademark and the record shows, and the court finds that defendant had acquired a property right in it entitling it to registration. 500.19-COURTS-BASIS OF RELIEF-DESCRIPTIVE AND GENERIC MARKS RESONITE for clarinets is not a descriptive word. It is unique, arbitrary and coined for a particular use. 400.1-CONFUSING SIMILARITY-IN GENERAL The test of infringement is likelihood of confusion. The question is whether NORMANDY RESOTONE, plaintiff's mark, was likely to cause customer confusion when used on the same goods as defendant's BUNDY RESONITE mark. 500.74a-COURTS-PLEADING AND PRACTICE-EVIDENCE-IN GENERAL 500.19-COURTS-BASIS OF RELIEF-DESCRIPTIVE AND GENERIC MARKS The court is not precluded from considering any inherent weakness in the registered mark RESONITE in determining if the use of NORMANDY RESOTONE by plaintiff infringed defendant's rights. RESONITE conferred no rights in its use as descriptive of a plastic material but only as an indication in the minds of the public of the producer, not the product. 400.3-CONFUSING SIMILARITY-NOT CONFUSINGLY SIMILAR MARKS Defendant registered the single word RESONITE for clarinets; however, the inherent weakness of the mark is shown by the limited use under which the defen- dant's rights must be established, i.e., BUNDY RESONITE. The court found no evi- dence of likelihood of confusion especially since plaintiff always used NORMANDY in conjunction with RESOTONE on its clarinets. 500.74a-COURTS-PLEADING AND PRACTICE-EVIDENCE-IN GENERAL In determining infringement, other citations of trademark registrations may indicate a pattern, but are not conclusive since evidence of confusion usually varies. Generally, the court looks to the same set of facts in support of a case of infringement as for unfair competition. Action by G. Leblanc Corporation v. H. & A. Selmer, Inc., for patent infringement in which defendant counterclaims for trademark infringe- THE TRADEMARK REPORTER 384 Vol. 53 TMR

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