Polaroid Corporation v. Polarad Electronics Corp.

Decision Date28 February 1961
Docket NumberNo. 162,Docket 26460.,162
PartiesPOLAROID CORPORATION, Plaintiff-Appellant, v. POLARAD ELECTRONICS CORPORATION, Defendant-Appellee.
CourtU.S. Court of Appeals — Second Circuit

Donald L. Brown, Cambridge, Mass. (Silver, Saperstein & Barnett, and Isaac M. Barnett, New York City, Tracy R. V. Fike, Scarsdale, N. Y., and Herbert S. Kassman, Cambridge, Mass., on the brief), for plaintiff-appellant.

Morris Relson, New York City (Darby & Darby and Howard C. Miskin, New York City, on the brief), for defendant-appellee.

Before MEDINA, FRIENDLY and SMITH, Circuit Judges.

FRIENDLY, Circuit Judge.

Plaintiff, Polaroid Corporation, a Delaware corporation, owner of the trademark Polaroid and holder of 22 United States registrations thereof granted between 1936 and 1956 and of a New York registration granted in 1950, brought this action in the Eastern District of New York, alleging that defendant's use of the name Polarad as a trademark and as part of defendant's corporate title infringed plaintiff's Federal and state trademarks and constituted unfair competition. It sought a broad injunction and an accounting. Defendant's answer, in addition to denying the allegations of the complaint, sought a declaratory judgment establishing defendant's right to use Polarad in the business in which defendant was engaged, an injunction against plaintiff's use of Polaroid in the television and electronics fields, and other relief. Judge Rayfiel, in an opinion reported in D.C.1960, 182 F. Supp. 350, dismissed both the claim and the counterclaims, concluding that neither plaintiff nor defendant had made an adequate showing with respect to confusion and that both had been guilty of laches. Both parties appealed but defendant has withdrawn its cross-appeal. We find it unnecessary to pass upon Judge Rayfiel's conclusion that defendant's use of Polarad does not violate any of plaintiff's rights. For we agree that plaintiff's delay in proceeding against defendant bars plaintiff from relief so long as defendant's use of Polarad remains as far removed from plaintiff's primary fields of activity as it has been and still is.

The name Polaroid was first adopted by plaintiff's predecessor in 1935. It has been held to be a valid trademark as a coined or invented symbol and not to have lost its right to protection by becoming generic or descriptive, Marks v. Polaroid Corp., D.C.D.Mass.1955, 129 F.Supp. 243. Polaroid had become a well known name as applied to sheet polarizing material and products made therefrom, as well as to optical desk lamps, stereoscopic viewers, etc., long before defendant was organized in 1944. During World War II, plaintiff's business greatly expanded, from $1,032,000 of gross sales in 1941 to $16,752,000 in 1945, due in large part to government contracts. Included in this government business were three sorts on which plaintiff particularly relies, the sale of Schmidt corrector plates, an optical lens used in television; research and development contracts for guided missiles and a machine gun trainer, both involving the application of electronics; and other research and development contracts for what plaintiff characterizes as "electro-optical devices employing electronic circuitry in combination with optical apparatus." In 1947 and 1948 plaintiff's sales declined to little more than their pre-war level; the tremendous expansion of plaintiff's business, reaching sales of $65,271,000 in 1958, came after the development of the Land camera in 1948.

Defendant was organized in December, 1944. Originally a partnership called Polarad Electronics Co., it was converted in 1948 into a New York corporation bearing the name Polarad Television Corp., which was changed a year later to Polarad Electronics Corp. Its principal business has been the sale of microwave generating, receiving and measuring devices and of television studio equipment. Defendant claimed it had arrived at the name Polarad by taking the first letters of the first and last names of its founder, Paul Odessey, and the first two letters of the first name of his friend and anticipated partner, Larry Jaffe, and adding the suffix "rad," intended to signify radio; however, Odessey admitted that at the time he had "some knowledge" of plaintiff's use of the name Polaroid, although only as applied to glasses and polarizing filters and not as to electronics. As early as November, 1945, plaintiff learned of defendant; it drew a credit report and had one of its attorneys visit defendant's quarters, then two small rooms; plaintiff made no protest. By June, 1946, defendant was advertising television equipment in "Electronics" — a trade journal. These advertisements and other notices with respect to defendant came to the attention of plaintiff's officers; still plaintiff did nothing. In 1950, a New York attorney who represented plaintiff in foreign patent matters came upon a trade show display of defendant's television products under the name Polarad and informed plaintiff's house counsel; the latter advised plaintiff's president, Dr. Land, that "the time had come when he thought we ought to think seriously about the problem." However, nothing was done save to draw a further credit report on defendant, although defendant's sales had grown from a nominal amount to a rate of several hundred thousand dollars a year, and the report related, as had the previous one, that defendant was engaged "in developing and manufacturing equipment for radio, television and electronic manufacturers throughout the United States." In October, 1951, defendant, under its letterhead, forwarded to plaintiff a letter addressed to "Polarad Electronics Corp." at defendant's Brooklyn address, inquiring in regard to "Polaroid material designed for night driving"; there was no protest by plaintiff. In 1953, defendant applied to the United States Patent Office for registration of its trademark Polarad for radio and television units and other electronic devices; in August, 1955, when this application was published in the Official Gazette of the Patent Office, plaintiff for the first time took action by filing a notice of opposition, which was overruled by the Examiner in April, 1957. Still plaintiff delayed bringing suit until late 1956. Through all this period defendant was expending considerable sums for advertising and its business was growing — employees increasing from eight in the calendar year 1945 to 530 in the year ended June 30, 1956, fixed assets from $2,300 to $371,800, inventories from $3,000 to $1,547,400, and sales from $12,000 to $6,048,000.

Conceding that the bulk of its business is in optics and photography, lines not pursued by defendant, plaintiff nevertheless claims to be entitled to protection of its distinctive mark in at least certain portions of the large field of electronics. Plaintiff relies on its sales of Schmidt corrector plates, used in certain types of television systems, first under government contracts beginning in 1943 and to industry commencing in 1945; on its sale, since 1946, of polarizing television filters, which serve the same function as the color filters that defendant supplies as a part of the television apparatus sold by it; and, particularly, on the research and development contracts with the government referred to above. Plaintiff relies also on certain instances of confusion, predominantly communications intended for defendant but directed to plaintiff. Against this, defendant asserts that its business is the sale of complex electronics equipment to a relatively few customers; that this does not compete in any significant way with plaintiff's business, the bulk of which is now in articles destined for the ultimate consumer; that plaintiff's excursions into electronics are insignificant in the light of the size of the field; that the instances of confusion are minimal; that there is no evidence that plaintiff has suffered either through loss of customers or injury to reputation, since defendant has conducted its business with high standards; and that the very nature of defendant's business, sales to experienced industrial users and the government, precludes any substantial possibility of confusion. Defendant also asserts plaintiff's laches to be a bar.

The problem of determining how far a valid trademark shall be protected with respect to goods other than those to which its owner has applied it, has long been vexing and does not become easier of solution with the years. Neither of our recent decisions so heavily relied upon by the parties, Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe Co., Inc. v. David Crystal, Inc., 2 Cir., 1960, 279 F.2d 607 by defendant, affords much assistance, since in the Ritchie case there was confusion as to the identical product and the defendant in the Avon case had adopted its mark "without knowledge of the plaintiffs' prior use," at page 611. Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities — the court may have to take still other variables into account. American Law Institute, Restatement of Torts, §§ 729, 730, 731. Here plaintiff's mark is a strong one and the similarity between the two names is great, but the evidence of actual confusion, when analyzed, is not impressive. The filter seems to be the only case where defendant has sold, but not manufactured, a product serving a function similar to any of plaintiff's, and plaintiff's sales of this item have been highly...

To continue reading

Request your trial
1160 cases
  • Tustin Community Hospital, Inc. v. Santa Ana Community Hospital Assn.
    • United States
    • California Court of Appeals Court of Appeals
    • February 27, 1979
    ... ... Santa Ana Community Hospital Association, a corporation, and Santa Ana-Tustin Community Hospital, a corporation, ... Milk Co., supra, 132 F.2d 822, 825 (2 Cir.); Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 497-498 ... ...
  • Cousteau Soc'y, Inc. v. Cousteau, Civil No. 3:19-cv-1106(AWT)
    • United States
    • U.S. District Court — District of Connecticut
    • October 8, 2020
    ...(2d Cir. 1984) ). "This determination must be made, in the first instance, by application of the venerable Polaroid [Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)] factors." Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993). The eight ......
  • PaF Srl v. Lisa Lighting Co., Ltd.
    • United States
    • U.S. District Court — Southern District of New York
    • May 2, 1989
    ...infringement are no different. Keystone Camera, 667 F.Supp. at 1224. Judge Friendly's landmark decision in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961), presents the recognized analysis for determining......
  • Carl Zeiss Stiftung v. VEB Carl Zeiss, Jena
    • United States
    • U.S. District Court — Southern District of New York
    • November 7, 1968
    ...Arabic Order of Nobles of the Mystic Shrine v. Michaux, 279 U.S. 737, 49 S.Ct. 485, 73 L.Ed. 931 (1939); Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), cert. denied, 368 U.S. 820, 82 S. Ct. 36, 7 L.Ed.2d 25 (1961); and the extent of harm or prejudice suffered by t......
  • Request a trial to view additional results
8 firm's commentaries
  • Pinterest Spurs Online Sales - And Trademark Risks
    • United States
    • Mondaq United States
    • January 10, 2013
    ...by the consumers in purchasing the parties' goods or services; any actual confusion, as in Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492, 495 (2d Cir. 1961); In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 1361 (CCPA 1973); and AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-4......
  • Warby Parker Beats Back 1-800's Infringement Claims
    • United States
    • Mondaq United States
    • September 29, 2022
    ...commonly referred to as the Polaroid Factors, so-named for the Second Circuit's decision in Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492 (2d (For readers outside the Second Circuit, each federal circuit has its own, comparable test for likelihood of confusion. For example, the Nint......
  • Hermès' Trademark Tussle: The Birkin And MetaBirkin Dispute
    • United States
    • Mondaq United States
    • February 18, 2023
    ..."explicitly mislead[ing]" the public can be determined by applying the eight Polaroid factors in Polaroid Corp v. Polaroid Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), including (1) the strength of Hermès' mark; (2) the similarity between Hermès' "BIRKIN" mark and the "MetaBirkin" mark; (3) w......
  • Two 'Greek Freak' Lawsuits Over The Same Trademark Lead To Different Outcomes
    • United States
    • Mondaq United States
    • September 21, 2021
    ...true. In assessing the likelihood of confusion, the court considered the Polaroid factors (see Polaroid Corp. v. Polarad Electronics Corp, 287 F2d 492 (2nd Cir. 1961)). Observing that plaintiff's marks are strong and successful, defendant's marks were 'essentially identical,' and that defen......
  • Request a trial to view additional results
18 books & journal articles
  • The Public Policy Argument Against Trademark Licensee Estoppel and Naked Licensing.
    • United States
    • Missouri Law Review Vol. 85 No. 4, September 2020
    • September 22, 2020
    ...See, e.g., Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981); Polaroid v. Polarad Elects. Corp., 287 F.2d 492 (2d Cir. 1961); Interspace v. Lapp, 721 F.2d 460 (3d Cir. 1983); George & Co., LLC v. Imagination Entm't Ltd., 575 F.3d 383 (4th Cir. 2009);......
  • Table Of Cases
    • United States
    • ABA Antitrust Library Antitrust Counterattack in Intellectual Property Litigation Handbook
    • January 1, 2010
    ...Cir. 2003), 45. Playboy Enters. v. Webbworld, Inc., 991 F. Supp. 543 (N.D. Tex. 1997), 76. Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), 81. Practice Mgmt. Infor. Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir. 1997), 91, 121. Prasco v. Medicis Pharm. (Prasco I),......
  • Basics of Intellectual Property Laws for the Antitrust Practitioner
    • United States
    • ABA Antitrust Library Antitrust Counterattack in Intellectual Property Litigation Handbook
    • January 1, 2010
    ...use covers the defendant’s use of a trademark to identify the plaintiff. 419 An 416. See , e.g. , Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495–96 (2d Cir. 1961); AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979). 417. 15 U.S.C. § 1115(b)(4); see KP Permanent Make......
  • The trademark dilution revision act of 2006: prospective changes to dilution definition, claim analyses, and standard of harm.
    • United States
    • The Journal of High Technology Law Vol. 6 No. 2, July 2006
    • July 1, 2006
    ...media used, (6) the defendant's intent, and (7) any evidence of actual confusion"); see also Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) (noting factors for confusion analysis include: "(1) the strength of plaintiffs mark; (2) the similarity of the parties'......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT