Sebastian International, Inc. v. Longs Drug Stores Corporation

Per Curiam; Concurrence by Judge FERGUSON.

Sebastian International sued Longs Drug Stores for trademark infringement and unfair competition. The district court preliminarily enjoined Longs from selling Sebastian’s hair care products. Longs appealed. We reverse.

Facts

Sebastian manufactures hair care products including shampoos, conditioners, hair sprays and styling lotions. Sebastian affixes its trademark, a large, stylized “S,” to the front of each container.

Sebastian seeks to have its products distributed to consumers only through professional salons. It sells only to professional salons and distributors who are members of an organization created and controlled by Sebastian called the “Sebastian Collective Membership Program.” Members must agree to resell Sebastian’s products only to other members of Sebastian’s “Collective” or to salon clientele. Sebastian registered a collective membership mark consisting of the words “Sebastian Collective Salon Member,” 1 and affixes this mark to the back of containers of its products.

Longs purchases and resells Sebastian products, although it is not a member of Sebastian’s “Collective.” Since Sebastian sells its products only to…

concurring:

I concur in the reversal of the district court’s preliminary injunction prohibiting Longs from selling Sebastian’s hair care products. I write separately, however, in order to resolve an issue not discussed by the majority. The district court erred in holding that the collective membership and service mark in this ease is valid. For this reason, Sebastian’s motion for a preliminary injunction was meritless.

A collective mark, be it a collective trademark, membership mark, or service mark, is different from a trademark:

15 U.S.C. § 1127 . A primary consequence of this difference is that an “[ajpplication to register a membership mark must be made by the organization which controls or intends to control the use of the mark, and therefore, owns or is entitled to use the mark; application may not be made by a member.” Trademark Manual.of Examining Procedure, § 1304 (emphasis added). In F.R. Lepage Bakery v. Roush Bakery Products Co., 851 F.2d 351, 353 (Fed.Cir.1988), a case factually similar to the case at hand, the court held:

(Emphasis in original.) If an individual member of a collective does register a collective mark, the mark is invalid. Id.

The district court…

53 F.3d 1073 34 U.S.P.Q.2d 1720 SEBASTIAN INTERNATIONAL, INC., Plaintiff-Appellee, v. LONGS DRUG STORES CORPORATION, Defendant-Appellant. No. 94-55461. United States Court of Appeals, Ninth Circuit. Argued and Submitted Dec. 7, 1994. Decided May 8, 1995. Ferguson, J., filed concurring opinion. 1 E. Lynn Perry, Mark T. Jansen, Townsend and Townsend Khourie and Crew, San Francisco, CA, for defendant-appellant. 2 Richard H. Zaitlen and Thomas C. Reynolds, Spensley, Horn, Jubas & Lubitz, Los Angeles, CA, for plaintiff-appellee. 3 Peter J. Kadzik, Dickstein, Shapiro & Morin, Washington, DC, for amicus. 4 Michael D. Sandler and Lynne Graybeal, Foster, Pepper & Shefelman, Seattle, WA, for amicus. 5 Appeal from the United States District Court for the Central District of California. 6 Before BROWNING, GOODWIN and FERGUSON, Circuit Judges. 7 Per Curiam; Concurrence by Judge FERGUSON. PER CURIAM: 8 Sebastian International sued Longs Drug Stores for trademark infringement and unfair competition. The district court preliminarily enjoined Longs from selling Sebastian's hair care products. Longs appealed. We reverse. Facts 9 Sebastian manufactures hair care products including…