United States Jaycees, a Missouri Corporation v. San Francisco Junior Chamber of Commerce, a California Corporation

ELY, Circuit Judge

(concurring):

I agree that the judgment of the District Court must be affirmed. Its opinion is carefully reasoned, but I wish to add a few words of my own.

The dissenting opinion of my Brother Merrill is entirely correct in noting that a term that is generic (the name of a product or service itself) cannot function as a trademark to indicate origin. Thus, for example, while “Dial” or “Ivory” or “Lifebuoy” can function as trademarks, the word “soap” cannot. The test is “what does the public think the word connotes — the generic name of the product or a mark indicating merely one source of that product?” 1 J. McCarthy, Trademarks and Unfair Competition 407 (1973) (footnote omitted). From this premise my dissenting Brother reasons that because the term “chamber of commerce” is listed in Webster’s Dictionary (defined as a group of businessmen united to promote the commercial and industrial interests of a community, state or nation), the term “Junior Chamber of Commerce” is a generic term used in a common descriptive sense. Even if a secondary meaning attaches to a generic term, argues the dissent, it is still not protectible.

The appellant’s position in the…

(dissenting):-

This is an action arising under the trade-mark laws. Appellees United States Jaycees and California State Junior Chamber of Commerce have alleged infringement of certain registered marks and unfair competition by appellant, San Francisco Junior Chamber of Commerce, 1 with jurisdiction conferred by 28 U.S.C. § 1338 . Upon appeal.the only issue of moment is the contention of appellees that they have a common-law right to exclusive use of the unregistered name “Junior Chamber of Commerce.” Conceding that such name is not inherently distinctive, but is descriptive (and thus was not entitled to protection immediately upon adoption and use), ap-pellees contend that distinctiveness has been acquired through the attaching of secondary meaning. They alleged:

The Junior Chamber of Commerce movement began in St. Louis, Missouri, in 1915, when a group of young men organized under the name of the “Young Men’s Progressive Civic Association.” The name was later changed to “Junior Citizens.” In 1918 the association affiliated with the St. Louis Chamber of Commerce and officially became known as the Junior Chamber of Commerce. In 1920 the “United States Junior Chamber of Commerce”…

On Petition for Rehearing

The Petition for Rehearing is denied.

Judge MERRILL would grant rehearing to decide whether the existence of issues of fact render summary judgment improper and whether, upon that question, this case can be distinguished from Starsky v. Williams, 512 F.2d 109 (9th Cir.1975). 1

. The majority believes that its disposition of the appeal is in no way inconsistent with our court’s recent decision in Starsky v. Williams, 512 F.2d 109 (9th Cir.1975), cited by Judge Merrill. In Starsky our court, reviewing the entry of judgment upon cross motions for summary judgment, held that even if it were assumed arguendo that the district judge did resolve genuinely disputed issues of material fact, the district judge nevertheless acted properly because the parties had in effect submitted the case to the court for trial on an agreed statement of facts embodied in a limited record. The trial judge was thus entitled to resolve any remaining disputed factual issues..

Although it might be possible for us to bring the present case within Starsky , because this case also involved motions for summary judgment by both parties and two comprehensive agreed statements of fact…

The judgment is affirmed on the basis of the district court’s opinion, United States Jaycees v. San Francisco Jr. Cham. of Com., 354 F.Supp. 61 (N.D.Cal. 1972).

Affirmed.

513 F.2d 1226 185 U.S.P.Q. 257 UNITED STATES JAYCEES, a Missouri Corporation, et al., Plaintiffs-Appellees, v. SAN FRANCISCO JUNIOR CHAMBER OF COMMERCE, a California Corporation, et al., Defendants-Appellants. No. 73-1451. United States Court of Appeals, Ninth Circuit. March 21, 1975. As Amended on Denial of Rehearing May 1, 1975. H. Paul Breslin (argued), San Francisco, Cal., for appellant. John P. Sutton (argued), of Limbach, Limbach & Sutton, San Francisco, Cal., for appellee. Before MERRILL, ELY and INGRAHAM, * Circuit Judges. OPINION PER CURIAM: 1 The judgment is affirmed on the basis of the district court's opinion, United States Jaycees v. San Francisco Jr. Cham. of Com., 354 F.Supp. 61 (N.D.Cal.1972). 2 Affirmed. ELY, Circuit Judge (concurring): 3 I agree that the judgment of the District Court must be affirmed. Its opinion is carefully reasoned, but I wish to add a few words of my own. 4 The dissenting opinion of my Brother Merrill is entirely correct in noting that a term that is generic (the name of a product or service itself) cannot function as a trademark to indicate origin. Thus, for example, while "Dial" or "Ivory" or "Lifebuoy" can function as trademarks, the…