268 F.Supp. 162 (S.D.N.Y. 1967), 67 Civ. 786, Car Freshner Corp. v. Turtle Wax, Inc.

Docket Nº:67 Civ. 786.
Citation:268 F.Supp. 162
Party Name:153 U.S.P.Q. 789 CAR-FRESHNER CORPORATION and Jules Samann, Plaintiffs, v. TURTLE WAX, INC., Defendant.
Case Date:May 01, 1967
Court:United States District Courts, 2nd Circuit, Southern District of New York
 
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Page 162

268 F.Supp. 162 (S.D.N.Y. 1967)

153 U.S.P.Q. 789

CAR-FRESHNER CORPORATION and Jules Samann, Plaintiffs,

v.

TURTLE WAX, INC., Defendant.

No. 67 Civ. 786.

United States District Court, S.D. New York

May 1, 1967

Page 163

Arthur, Dry, Kalish, Taylor & Wood, for plaintiffs, Harvey E. Bumgardner, Jr., New York City, Robert F. Conrad, J. Russell Verbrycke, III, Washington, D.C., of counsel.

Shenier & O'Connor, New York City, for defendant, Henry L. Shenier, Francis M. O'Connor, New York City, Prangley, Baird, Clayton, Miller & Vogel, David A. Vogel, Chicago, Ill., of counsel.

OPINION

HERLANDS, District Judge:

This is a motion for a preliminary injunction to enjoin defendant Turtle Wax, Inc., pending the determination of this action, 1 from infringing United States Registered Trademark No. 675,796 entitled 'CAR-FRESHNER', an air deodorizer. The trademark is owned by plaintiff Jules Samann; it is being used by plaintiff Car-Freshner Corporation under an exclusive license granted by Samann. The conduct on defendant's part sought to be restrained is, generally stated, the selling, offering for sale or advertising in New York City, or elsewhere in the United States, of air deodorizers under the designation 'CAR FRESHENER'.

The first use of the trademark, 'CAR-FRESHNER', took place in 1952 by Car-Freshner Company, then a partnership

Page 164

of the plaintiff Samann and another person. In 1953, Samann became sole owner of this company. In 1954, Car-Freshner Corporation, the corporate plaintiff, became incorporated in New York State and succeeded to Car-Freshner Company. Its principal place of business is Watertown, New York.

Since its formation, the corporate plaintiff has had the exclusive right to use the trademark 'CAR-FRESHNER', Samann (as owner of the trademark) having granted it an exclusive license to use this mark in the United States.

Samann has been a member of the board of directors of the corporate plaintiff continuously since 1954. He has been and is completely informed at all times of the day-to-day operations of the corporation. He has submitted an affidavit in support of the present motion.

Since 1952, the corporate plaintiff or its predecessor has sold products under the trademark 'CAR-FRESHNER'; and since 1953 such sales have been nationwide. Sales by the corporate plaintiff and its predecessor since 1952 under the 'CAR-FRESHNER' trademark have been as follows:

U.S.A. Foreign
------ -------
Deodorizer 18,583,000 669,000
Chrome Cleaner 1,252,000 368,000
Window Cleaner 98,000 11,000
-------------- ------------
Total 19,933,000 1,048,000

The application for the registration of plaintiff's trademark 'CAR-FRESHNER' was filed September 17, 1957. The trademark was registered by the United States Patent Office as Registration No. 675,796 on March 24, 1959 for absorbent bodies impregnated with a perfumed air deodorant, under Section 2(f) of the Lanham Act, 15 U.S.C.A. § 1052(f). This statute relevantly provides that, while registration shall be refused on the principal register where the mark is 'merely descriptive' when applied to the applicant's goods, nothing in the statute shall prevent the registration of a mark used by the applicant 'which has become distinctive of the applicant's goods.' In this connection, the statute further provides: 'The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding the date of the filing of the application for its registration.' The 'CAR-FRESHNER' trademark is the principal asset of the plaintiff Car-Freshner Corporation. As a result of approximately fourteen years' continuous use that trademark has come to be associated by the public with the Car-Freshner Corporation as the source of all goods in the automotive accessory field bearing that name. The trademark 'CAR-FRESHNER' has acquired nationwide goodwill and a well-established secondary meaning as the symbol of goods sold by Car-Freshner Corporation, the corporate plaintiff, and intended principally for ultimate sale to the motorist. Where a trademark is merely descriptive and the evidence adduced at a plenary trial shows that it has acquired no secondary meaning, the Court will treat the trademark, though registered, as invalid. Flexitized, Inc. v. National Flexitized Corporation (2d Cir. 1964) 335 F.2d 774, 780. In the present case, plaintiffs have demonstrated with sufficient clarity for purposes of interlocutory relief that their trademark 'CAR-FRESHNER' has become a recognized brand name and that thereby a secondary meaning has been established. The rebuttable presumption created by the statute, 15 U.S.C.A.§ 1052(f), has been reinforced by the evidence. While the Court does not regard 'CAR-FRESHNER' as merely descriptive, any problem arising out of a merely descriptive designation is obviated by the fact that the Court finds and concludes that it has a secondary meaning. Page 165 The corporate plaintiff markets its products through the following channels of distribution: automotive accessory jobbers, automotive accessory stores and chain stores, automobile service stations, and automotive accessories departments of discount houses. In August, 1952, plaintiff Samann adopted the device of a pine tree in connection with the sale and distribution of perfumed air deodorants under the trademark 'CAR-FRESHNER'. This pine tree has included at all times up to the present a block-like base and a white panel displayed at a slight angle on the body of the tree, the base has printed in green over a white background the words 'For 'Forest-Fresh' Air'. The white panel on the body of the tree has printed in green the words 'Car-Freshner'. Above these latter words is a small circular white area over which is imprinted the letter 'R' in green. The absorbent blotter stock is impregnated with the desired perfumed air deodorant. The trees are then sealed in cellophane envelopes and a number of such envelopes are stapled to a card-board easel or display panel. Sales to retailers are of these display cards, the ultimate consumer detaching from the card the number of individual envelopes he wishes to purchase. Defendant Turtle Wax, Inc., an Illinois corporation having its principal place of business in Chicago, is a manufacturer and distributor of products intended principally for sale to the motorist. The corporate plaintiff and defendant are competitors. Each markets its products through the same channels of distribution: automobile accessory jobbers, gasoline stations, auto accessory stores, etc. Defendant is more than ten times the size of the corporate plaintiff. Defendant manufactures and distributes about forty different products for the automotive trade. The corporate plaintiff's main item is its air deodorant 'CAR-FRESHNER'. Late in 1966 or in January 1967, defendant inaugurated a promotion campaign to market a new product, an air deodorizer in aerosol can containers, designating this product 'CAR FRESHENER'. It advertised its air deodorizer under the designation 'CAR FRESHENER' in 'Home and Auto Retailer', AAMA Show edition (January 1967 edition). On January 31, 1967, several days after it first acquired knowledge of the use of the designation 'CAR FRESHENER' by defendant, the corporate plaintiff, through its attorneys, notified defendant of its registered trademark. In this letter it stated that the use of the designation 'CAR FRESHENER' infringed its trademark; it requested an immediate cessation of...

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