ZIEBART INTERNATIONAL CORPORATION, PLAINTIFF-APPELLANT,

v.

AFTER MARKET ASSOCIATES, INC. AND THE PROTECTOR CORPORATION, DEFENDANTS-APPELLEES

WYATT, Senior District Judge.

This is an appeal by plaintiff (“Ziebart”), said in the notice of appeal to be “from the final judgment entered on the first day of August, 1984.” The five claims in the complaint were for infringement of registered trademarks and service marks (presumably claimed to be in violation of 15 U.S.C. § 1114(1)), for “common law infringement”, for “common law unfair competition”, for “false designation of origin”, said to be in violation of 15 U.S.C. § 1125(a), and for “dilution”, said to be in violation of the Illinois Anti-Dilution Act, Ill.Rev.Stat. ch. 140, § 22 (1981).

The business of Ziebart is the making and selling of “vehicle preservatives,” mainly for automobiles; a major part of the business was “the licensing of others to provide vehicle preservation services, including rustproofing services ...” (Complaint, para. 4).

The conduct complained of is the use of an “armoured knight motif design consisting of a helmet and shield to advertise the sale of vehicle rustproofing services and vehicle preservatives ...” (Complaint, para. 7).

Such conduct is said to infringe the federally-registered trademarks and service marks and to violate the common law and state statutory rights of Ziebart in an “armoured knight motif” when used in the sale of vehicle rustproofing goods and services (Complaint, paras. 11, 14, 16, 20, 23).

The district court had jurisdiction under 15 U.S.C. § 1121 of the principal claim and of the false designation of origin claim and had jurisdiction of the other claims under pendent jurisdiction principles; there also appears to be diversity jurisdiction. We have jurisdiction of the appeal under 28 U.S.C. § 1291.

The trial was without a jury before Judge Leighton on May 10, 29, 30, and 81, 1984. At the conclusion of the trial on May 31, Judge Leighton made oral findings and conclusions, ending with a statement that “as to all the counts in the complaint, there will be judgment entered for the defendant____” On August 1, 1984, Judge Leigh-ton filed written findings of fact and conclusions of law. These findings and conclusions, together with an order and a judgment for defendant, all dated August 1, 1984, were entered in the docket on August 7, 1984. It is from the judgment so entered (and not entered on the date stated in the notice of appeal) that this appeal is taken. We affirm the judgment below, la.

There are some preliminary procedural matters which should be mentioned.

Ziebart, a Michigan corporation with its principal place of business in Michigan, commenced the action against one defendant, After Market Associates, Inc. (“After Market”). After Market was an Illinois corporation with its principal place of business in Illinois. According to “uncontested facts” stipulated in the final pretrial order, After Market was dissolved as a corporation on December 31, 1980, before this action was commenced on January⁶, 1981.

The answer filed for “defendant,” presumably After Market, stated among other things, that “the proper party in interest is The Protector Corporation, a Delaware corporation ... assignee of After Market----” It appeared from the “uncontested facts” that Protector had its principal place of business in Illinois, and that the assignment of After Market to Protector occurred on June 20, 1980.

After the action was commenced, there was continuous confusion as to whether there was one defendant, After Market, or there were two defendants, After Market and Protector. Immediately before the trial, it was stipulated and “so ordered” by Judge Leighton that Protector “be added as a party Defendant”, but nothing was then done to accomplish this.

On June 26, 1984, a stipulated amendment to the complaint and an order of Judge Leighton were filed to the effect that the complaint be amended to show “on its face” that there are two defendants, After Market “and its successor corporation,” Protector. The decision of the district court and the judgment entered on that decision were “for the defendant”, in the singular. It seems that, considering the apparent agree ment of Ziebart, After Market, and Protector, the simplest way to clear up the confusion is for us to treat as established that there are two defendants in this action— After Market and Protector, that they are both parties to the action, and that both are bound by, and entitled to the benefit of, the judgment. For simplicity, the two parties defendant will be referred to as “Protector”; for the period before June 20, 1980 (date of the assignment), the word “Protector” will refer to After Market and, for the period subsequent to June 20, 1980, will refer to Protector. lb.

A further procedural matter is the stenographic transcript of the trial, which should be (Fed.R.App.P. 10(a)), but is not in fact, part of the record on appeal and was not transmitted to this court by the clerk of the district court.

It appears that the trial transcript was ordered by the parties on a daily basis during the trial (May 10, 29-31,1984).

The relevant statute (28 U.S.C. § 753(b)) requires that when any trial transcript is made, the reporter “shall promptly” deliver to the district court a certified copy of that transcript. No such delivery was made “promptly”, and, when the initial transmission of the record on appeal was made on September⁶, 1984, the trial transcript had not been delivered to the district court clerk and was not part of the initial transmission of the record on appeal. According to the docket of the district court, the trial transcript (in five volumes) was filed in the district court on October 9, 1984. The Rules of this Circuit (No. 4(a)(1)) require that when trial transcripts are filed after initial transmission of the record to this court, “they shall be immediately transmitted to this Court____” In the appeal now before us, the trial transcript has never been transmitted to this court; apparently it has been lost in the district court.

To remedy this situation, the parties to this appeal have stipulated that a copy of the trial transcript supplied by one of them is “a true copy” and may be used by us “in lieu of the official transcript”. The transcript as received by us is in five volumes. Because the pagination of Volumes 2 through⁵ of the transcript (pages 1-324) is separate from the pagination of Volume 1 of the transcript (pages 1-132), our system of citation must be explained. Volume 1 is the transcript for May 10,1984, and will be cited as “IT [page(s)]”. Volume 2 is the transcript for May 29, 1984, and will be cited as “2T [page(s)]”. Volume 3 is the transcript for May 30, 1984 (morning), and will be cited as “3T [page(s) ]”. Volume 4 is the transcript for May 30, 1984 (afternoon), and will be cited as “4T [page(s) ]”. Volume⁵ is the transcript for May 31, 1984, and will be cited as “5T [page(s)]”.

lc.

A final procedural matter is that the text of the findings and conclusions as originally filed by Judge Leighton on August 1, 1984, is not part of the record on appeal and has not been transmitted to this court. Counsel for Protector by letter dated August 9, 1984, suggested to Judge Leighton three corrections in the findings and conclusions as originally filed by him. Judge Leighton accepted these suggestions, and by order dated August 17, 1984 (entered in the docket as item 94 on August 20, 1984), the findings and conclusions originally filed were “withdrawn to correct typographical errors”, and corrected findings and conclusions were filed “nunc pro tunc”. The findings and conclusions originally filed were not included in the initial transmission of the record on appeal to this court; nor were they transmitted subsequently. In order to enable us to see the findings and conclusions as originally filed, we have caused a certified copy of them to be transmitted by the clerk of the district court to this court.

2.

The relevant background facts do not appear to be contested to any substantial extent. They are mostly stipulated, are set out in the pretrial order, and make up a large part of the findings below. Because of the volume of evidence and of the somewhat confusing nature of the business op erations of the parties, it is difficult to give a simple description of the controversy.

Ziebart takes its name from a Kurt Ziebart who developed a rustproofing process, useful for (among other things) automobiles and other motor vehicles such as trucks and vans (the word “automobiles” or “cars” is used hereafter to include all such vehicles).

Where the process was developed is not made to appear; presumably it was not in this country. In 1963, Kurt sold the name and the rustproofing process to Ziebart Process Corporation, of which plaintiff-appellant Ziebart is the successor. Ziebart makes and sells in the United States appearance and protection products for automobiles, principally rustproofing compounds; it makes and sells other products such as polishes, cleaners, waxes and the like. The only competing products in the case at bar are rustproofing compounds, the only products sold by both Ziebart and Protector. Our attention must therefore be directed to rustproofing compounds for automobiles.

Ziebart sells rustproofing compounds in bulk and in consumer packages only to licensed dealers, often called “licensees” or “franchisees”. Apparently, these licensees operate under the Ziebart name and sell only Ziebart products; rustproofing compounds are among the principal of these products. The licensed dealers are not owned by Ziebart; their ownership is in persons or entities independent of Ziebart. The licensees, as an important part of their business, offer rustproofing services', an owner of a car can turn it over to the licensee for rustproofing with a Ziebart compound; licensees are encouraged and trained by Ziebart to do this. If the car owner prefers to do the rustproofing himself, a Ziebart compound can be purchased in a package from the licensee and then applied by the car owner. The Ziebart rustproofing business in the United States began in the mid-1960s; this appears from the claims to “first use” of the Ziebart marks in suit contained in applications by Ziebart for the registration of those marks.

The registered marks on which Ziebart here bases its claims are two service marks and two trademarks.

The first, a service mark (PX1; “PX” references are to numbers of the exhibits for Ziebart), is a helmet (suggestive of those used by medieval knights in armor) and a shield with the word “Ziebart” shown prominently in a diagonal across the shield. The helmet faces left.

The second, a service mark (PX2), is a helmet (facing right) with the word “Ziebart” displayed below.

The third, a trademark (PX3), is substantially the same as the first except much larger. The fourth, a trademark (PX4), is the same in size and overall design as the third except that there is cross-hatching within the design perimeters and that the word “Ziebart” is not shown on the shield. It is uncontested, however, that this mark “is displayed only in proximity to the word 'Ziebart’ on Ziebart’s packaged products sold at retail level” (PTO attachment 1, para. 10; PTO references are to the Pretrial Order); for all practical purposes, therefore, it is the same as though “Ziebart” was a part of the mark itself, as is the case with the other three Ziebart registered marks.

The service marks were registered by Ziebart in 1968 and 1969; the trademarks were registered by Ziebart in 1979.

In its brief to this court, Ziebart often describes its marks as an “armoured knight motif” or “knight motif” (e.g. Brief, pp. 1, 4, 5, 7, 8, etc.); the description is inexact. The marks are simply the design of an armoured helmet and shield; there is no figure of a knight. There may be some suggestion of a knight from the helmet, but the suggestion is vague at best.

The evidence, as we view the record, shows that, except for one exhibit (PX52, an orange and black plastic litter bag), Ziebart uses only the colors yellow and blue for its marks; the finding below was based on the stipulated facts and was that Ziebart used “primarily” yellow and blue.

The Ziebart marks in yellow and blue appear on its rustproofing compounds sold in packages at retail by licensees to car owners. When a Ziebart rustproofing compound is applied to a car by a Ziebart licensee, a yellow and blue Ziebart helmet mark with the word “Ziebart” on a sticker is placed on a window of the car. It was found and is not here disputed that the word “Ziebart” is an integral and “important” feature of appellant’s marks.

It is uncontested that many companies in the United States use a “knight’s helmet” design as part of a trademark or service mark; other companies use a knight’s helmet in marks registered for automobile related products.

The evidence indicates that, beginning about 1965 to the present, Ziebart has enjoyed a good reputation in the United States as a well known and successful provider of rustproofing products and services for automobiles, operating entirely through licensed dealers. Ziebart has spent substantial sums in promoting the sale of its rustproofing products and services, and the volume of sales resulting has likewise been substantial.

3.

The business of Protector began in March 1978 with the incorporation of its predecessor, After Market Associates, Inc. The word “aftermarket” (one word, not two) is defined by a standard dictionary (Webster’s Third International, p. 38) as follows: “the market for parts and accessories for a manufactured article (as an automobile) for repair and replacement as distinguished from the use of such parts as original components”. The term “aftermarket” figured prominently, and was used frequently, in the opinion in Ford Motor Co. v. United States, 405 U.S. 562, 565-67, 571, 92 S.Ct. 1142, 31 L.Ed.2d 492 (1972).

Protector does not itself manufacture anything, but it buys from others products for automobiles which it then packages under its own name, trademarks and service marks, and introduces such products into the chain of distribution for sale.

The only products which Protector markets in competition with those of Ziebart are rustproofing compounds.

Protector employs for its sales a trade channel entirely different from that employed by Ziebart. Protector sells its rustproofing compounds only to distributors of aftermarket products to new car dealers (3T 156); these distributors in turn sell the Protector rustproofing compounds to new car dealers. The new car dealers offer rustproofing services in connection with their sales of new cars, using Protector rustproofing compounds in performing such services, or, in some instances, sell Protector rustproofing compounds at retail to customers who themselves apply those compounds to their cars. Protector itself, however, has no licensed dealers, operates no facilities for the application of its rustproofing compounds, and has no contacts with the new car dealers who buy such Protector compounds from distributors of aftermarket products. Protector does, however, supply (through its distributors) rustproofing training manuals and window stickers for use by new car dealers in promoting their rustproofing services.

We have difficulty in determining, from Ziebart’s argument, what marks or usages of Protector are claimed to infringe Ziebart’s marks. The “primary” offenders (Ziebart Brief, p. 6) seem to be the two window stickers, apparently developed by Protector in 1979, received in evidence as PX16 and PX16a. The two are very similar, but PX16a is said by Ziebart (Brief, p. 6) to be Protector’s “primary symbol” and to be “updated” from PX16. It (PX16a) is described by Ziebart (Brief, pp. 6-7) as follows: it “features a helmet on top of a cartouche in which is found the words ‘The Protector’ ” (The word “cartouche” — a French word — is defined in relevant part in a standard English dictionary as follows: “an oval figure containing the name or title of a ruler or deity” (Webster’s New World Dictionary (college ed.) p. 225)).

The origi nal exhibit is in color and, according to testimony at trial (IT 69), is an example of the sticker applied by a new car dealer to the window of a car after the dealer has rustproofed the car with a Protector compound. The colors used in the window sticker are red, black, and white. (The parties stipulated that Protector “never uses yellow or blue colors in connection with the display of its trademarks” (PTO Uncontested Fact 24), and our examination of the trial exhibits shows that the Protector marks, always use black and red, and sometimes use gray or white.) The window sticker measures 3% inches by T% inches, and contains in the upper left portion the words “THIS VEHICLE SHIELDED BY”. Under these words appears the “cartouche”, on which in larger block white letters appear the words “THE PROTECTOR”. Connected to the upper right portion of the “cartouche” is a black, white and red helmet, facing left and measuring 13/i⁶ of an inch by 9/ie of an inch; the helmet, which does not resemble Ziebart’s knight helmet in any respect other than that it is a helmet, is much smaller than the “cartouche” bearing the words “THE PROTECTOR”. The most striking part of the window sticker are the words “THE PROTECTOR”, this because of their size and the contrast of white letters on a bright red background.

The evidence indicates that, beginning in 1978 and continuing to the present, Protector has provided rustproofing products for automobiles, operating entirely through distributors of aftermarket products to new car dealers, which distributors sell Protector rustproofing compounds only to new car dealers. Protector — on a smaller scale than Ziebart — has spent substantial sums in promoting the sale of its rustproofing products and the volume of sales resulting has likewise been substantial.

4.

Ziebart at some point learned of the activities of Protector in respect of the sale of automobile rustproofing compounds. By letter dated September 18, 1980, to Protector, broad claims were asserted by Ziebart in respect of the use by Protector of “window decals” (PX68). We understand that the term “window decals” referred to the “window stickers” above described; these were placed by Ziebart licensed dealers on a window of a car to which the Ziebart licensed dealer had applied Ziebart rustproofing compound; the Protector window stickers were placed by new car dealers on a window of a new car to which the dealer had applied Protector rustproofing compound.

Ziebart in substance asserted exclusive rights in respect of rustproofing products and services to use a “Helmet and Shield Mark” and “the armored knight motif”. Ziebart expressed concern that the use of a Protector window sticker and the promotion by it of an “armored knight motif” would bring Protector “so close to Ziebart’s trading style and marks that there is a serious likelihood of confusion____” Ziebart threatened that it would bring an action against Protector unless it received satisfactory assurances, etc. Not receiving such assurances, Ziebart commenced this action on January⁶, 1981.