207 F.Supp. 9 (D.Conn. 1962), 7320, American Thermos Products Co. v. Aladdin Industries, Inc.

Docket Nº:7320.
Citation:207 F.Supp. 9
Case Date:June 26, 1962
Court:United States District Courts, 2nd Circuit, District of Connecticut

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207 F.Supp. 9 (D.Conn. 1962)

134 U.S.P.Q. 98




No. 7320.

United States District Court, D. Connecticut

June 26, 1962

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Wallace H. Martin, Walter J. Halliday and Robert Bonynge, Nims, Martin, Halliday, Whitman & Williamson, New York City, Shepherd, Murtha & Merritt, Hartford, Conn., for plaintiff.

Dugald S. McDougall, Theodore R. Scott, Ooms, McDougall & Hersh, Chicago, Ill., Curtiss K. Thompson, Thompson Weir & Barclay, New Haven, Conn., for defendant.

ANDERSON, Chief Judge.

1. This is an action for threatened trade-mark infringement. The plaintiff is a Michigan corporation, having its principal place of business at Norwich, Connecticut. The defendant, an Illinois corporation, has its principal place of business at Nashville, Tennessee. While both parties make and sell some other products, they are competitors in the manufacture and sale of vacuum-insulated containers of the type used to keep beverages and foods hot or cold. The case arises under the Trademark Act of July 5, 1946, as amended, U.S.C.A. Title 15, § 1051 et seq.; 1 there is also diversity of citizenship of the parties.

2. This action was filed on June 10, 1958. The complaint alleged that the plaintiff owned eight U.S. trade-mark registrations covering the word 'Thermos' and charged the defendant with threatening to sell its own goods under the name 'thermos', in alleged violation of plaintiff's trade-mark rights. (The complaint also charged the defendant with having actually sold goods thus marked, but no such sales have ever in fact been made.)

3. In its answer the defendant acknowledged the existence of a justiciable controversy between the parties, acknowledged its intention to sell vacuum-insulated containers as 'thermos bottles', and averred that the term 'thermos' or 'thermos bottle' is a generic word or phrase in the English language. Thus the issue defined by the pleadings is whether the word 'thermos' is, in fact, a generic descriptive term for a vacuum-insulated container or, on the other hand, is a trade-mark uniquely identifying a product made and sold by the plaintiff.

4. The plaintiff's original predecessor in the United States was a German company known as 'Thermos-Gesellschaft M.B.H.', which dealt in vacuum-insulated containers. The German company's business in the United States was taken over in 1907 by a newly organized Maine corporation named 'The American Thermos Bottle Company'; it acquired U.S. patent rights from the German company and set up a factory in Brooklyn, New York. A program of advertising and promotion was launched by the new company, and it prospered. As business grew, the headquarters was moved to Norwich, Connecticut.

5. In 1925, the business and assets of the Maine corporation were, through mesne conveyances, taken over by an Ohio corporation, also named 'The American Thermos Bottle Company'. In 1925, the Ohio company acquired a competitor, Icy Hot Bottle Company and in 1929 purchased

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another competitor, The Keapsit Company. In 1956 the corporate name of the Ohio Company was changed to The American Thermos Products Company, and business has continued under that name since then. On a few of its products, however, the plaintiff is still using the old name 'The American Thermos Bottle Company'.

6. The Ohio corporation was the original plaintiff in this action. In November of 1960, however, its business and assets were transferred to a Michigan corporation of the same name, which is now the party plaintiff. For convenience, the term 'plaintiff' will be used throughout the remainder of these findings to designate the present party plaintiff and its various predecessors, the particular corporation or corporations referred to in each instance being indicated by the context.

7. Vacuum ware, with which this suit is concerned, consists of double-walled glass vessels with a vacuum between the walls. Such vessels or containers are provided with protective metal or plastic casings and other improvements, including shock absorbers and various designs of closures. It is an adaptation of the vacuum flask perfected by Dewar about 1893, but not patented.

8. The defendant began to manufacture and sell substantial quantities of vacuum ware in 1945. Although in the years 1945 through 1960 sales by the plaintiff and by the defendant were in a few instances slightly less than those of the next preceding year, the general trend of their net sales was upward.

9. The net sales of vacuum ware of the plaintiff in 1907 were $114,987; in 1910, $381,184; in 1923, $1,405,677; and in 1936, $2,536,112. Its net sales in 1945 were $5,315,053 and in 1960 were $13,280,164. The net sales of vacuum ware by the defendant in 1945 totaled $560,128 and in 1960 were $6,805,283.

10. Since 1957 the plaintiff's net sales of its 'Thermos' trade-mark products have exceeded $225,000,000; they have been extensively advertised both by the plaintiff, at a cost in excess of $9,000,000, and by plaintiff's customers under the trade-mark 'Thermos' throughout the United States.

11. The plaintiff is the owner of the following registrations of its trademark 'Thermos' in the United States Patent Office:

Registration No. Registration Date Trademark

----------------- ---------
67,002 (renewed) January 7, 1908 "Thermos"
176,064 (renewed) November 13, 1923 "THERMOS"
229,816 (renewed) July 5, 1927 "THERMOS"
700,748 July 12, 1960 "THERMOS"
724,440 November 28, 1961 "THERMOS"
725,313 December 19, 1961 "THERMOS"
725,447 December 19, 1961 "THERMOS"
729,146 March 27, 1962 "THERMOS"

12. From about 1893 to the present time vacuum-insulated vessels and containers have been called by the descriptive names of 'vacuum bottle', 'vacuum flask', and 'vacuum vessel' and from 1908 to the present time all of plaintiff's competitors in describing or referring to their vacuum-insulated products have used the terms 'vacuum bottle', 'vacuum jug', etc. 13. The plaintiff's predecessor, Thermos-Gesellschaft M.B.H., in March of Page 12 1904 began calling its products of double-walled glass vessels with a vacuum between the walls, 'Thermos' products. 14. On March 20, 1907 Thermos-Gesellschaft M.B.H applied to the patent office for registration of 'Thermos' as a trade-mark. It became registered as a trade-mark January 7, 1908. 15. Between 1907 and 1923 the plaintiff used the word 'Thermos' almost exclusively in referring to its vacuum-insulated products. Its advertising and literature during those years referred to its product as 'Thermos bottle' without reference to or connection with any then used generic term as, for example, 'Thermos vacuum bottle' or 'vacuum bottle by Thermos'. 16. Although the plaintiff, during this period, in most instances accompanied the use of the stylized form of the word (Image Omitted) with a notation in relatively small letters that it was a trade-mark, it used 'Thermos', as a noun or adjective, as the sole designation and description of its vacuum-insulated containers. 17. As early as 1910 plaintiff asserted 'that Thermos had become a household word.' 18. In the latter part of this period the plaintiff included a page in its catalogue which pointed up the stylized (Image Omitted) as a registered trade-mark followed by some discourse about the qualities of the products, including the sentence: 'By adhering to these principles since the inception of this industry, linked with our extensive educational publicity campaigns, confidence has been established in the minds of the public that Thermos, the original temperature retaining vessels in the various designs, has become a necessary commodity and a boon to humanity.' In most instances the descriptive material in the catalogue shows the use of 'Thermos' as a synonym for 'vacuum-insulated'. 19. The word 'Thermos', used as a synonym for 'vacuum insulated', was, in the latter part of this period, used by the unorganized public in reading-notices, editorials, and other writings for publication. The plaintiff recognized this as an 'enormous amount of free advertising' worth, at that time, between three and four million dollars based upon what the plaintiff would have had to pay for it. 20. As a result of plaintiff's plainly generic uses of the word as a name for its product and its uses of 'Thermos' as a synonym for 'vacuum-insulated', with the complete absence of the use of 'Thermos' followed by the words 'vacuum bottle', 'vacuum jug', or 'vacuum carafe', etc., or any other generic term, disseminated through the plaintiff's 'extensive educational publicity campaigns', 'thermos', as a descriptive word, came into popular use. 21. On February 25, 1922 in American Thermos Bottle Co. v. W. T. Grant Co., 279 F. 151, aff'd 282 F. 426, the United States District Court for the District of Massachusetts said: 'Belatedly defendant's counsel suggests that 'Thermos' is a descriptive word, and that the trade-mark is therefore not valid. This issue was not pleaded, if it needs to be. When the stipulation was made, the parties probably intended by implication to cover the validity as well as the ownership of the trade-mark. The question is not absolutely free from doubt. The vacuum bottles are vessels excluding and including heat, and in that aspect 'Thermos' is descriptive. There is no evidence in the record that Thermos means to the public vacuum bottles produced by the plaintiff. Compare Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146, 41 Sup.Ct. 113, 65 L.Ed. 189. For present purposes I assume without deciding that the plaintiff has a valid trade-mark.' 279 F. at 152. 22. While this...

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