319 F.2d 830 (7th Cir. 1963), 13973, Polaroid Corporation v. Polaraid, Inc.

Docket Nº:13973.
Citation:319 F.2d 830, 138 U.S.P.Q. 265
Party Name:POLAROID CORPORATION, Plaintiff-Appellant, v. POLARAID, INC., Defendant-Appellee.
Case Date:June 27, 1963
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit
 
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Page 830

319 F.2d 830 (7th Cir. 1963)

138 U.S.P.Q. 265

POLAROID CORPORATION, Plaintiff-Appellant,

v.

POLARAID, INC., Defendant-Appellee.

No. 13973.

United States Court of Appeals, Seventh Circuit.

June 27, 1963

Page 831

Roger A. Bjorvik, Ebers, Metskas & Bjorvik, Chicago, Ill., for appellee.

Before SCHNACKENBERG, KILEY and MAJOR, Circuit Judges.

MAJOR, Circuit Judge.

Polaroid Corporation (plaintiff) brought this action against Polaraid, Inc. (defendant) for injunctive and other relief, based upon the use by defendant of plaintiff's corporate name or a colorable imitation thereof in connection with the former's business operation. Plaintiff sought relief in a three-count complaint. The first count charged defendant with infringement of plaintiff's federally registered trademark, 'Polaroid,' by reason of defendant's later adoption and use of 'Polaraid' as its trademark, its corporate name and its trade name. The second count charged defendant with unfair competition in appropriating and using as its corporate name its trademark and its trade name, 'Polaraid,' which is substantially identical and confusingly similar to plaintiff's corporate name, its trade name and its trademark. The third count charged defendant with infringement of plaintiff's Illinois registration of the trademark, 'Polaroid,' in violation of the Illinois Anti-dilution Statute, Sec. 22, Chap. 140, Smith-Hurd Illinois Revised Statutes. Defendant by answer denied certain material allegations of the complaint.

The case came on for hearing in the District Court solely upon facts as stipulated by the parties. The Court made its findings of fact which in the main follow the stipulated facts, entered its conclusions of law and, based thereon, its judgment dismissing the complaint and each count thereof on the merits. From this judgment entered June 12, 1962, as well as the Court's order of September 18, 1962, denying plaintiff's motion for a new trial, plaintiff appeals.

It may be pertinent to observe that the Court in its order denying plaintiff's motion for a new trial ordered stricken conclusions of law 8, 9, 10, 11 and 12, which related to plaintiff's third cause of action, based upon the Illinois Antidilution Statute. Thus, we are presented with a record which contains no conclusions of law relating to the relief sought in count 3. We assume, however, inasmuch as the entire complaint was dismissed, that whether plaintiff was entitled to the relief sought under this count is properly before us. The facts, agreed to by defendant with the exception subsequently noted, are set forth at length in plaintiff's brief. Even though they are not in dispute, we think the importance of the case and the questions involved justify a rather complete statement.

Plaintiff, a Delaware corporation, was incorporated in 1937 and has its principal place of business in Massachusetts. Its predecessor in business used and registered in the United States Patent Office the trademark, 'Polaroid.' Plaintiff acquired from its predecessor this trademark and good will and has used the trademark since its incorporation. During this period it has obtained 23 additional United States registrations of the trademark, all of which are valid, subsisting and uncanceled.

'Polaroid,' plaintiff's trademark and its trade name, is a coined or invented word, it has never been used as a trademark or trade name by any other individual or corporation, and it has acquired the status of a famous-brand trademark. It has been used by plaintiff as its trademark on a wide variety of products, including but not limited to, optical devices, such as polarizing materials, lenses, lamps, display apparatus, advertising signs, goggles, sun glasses, molded plastic filters and other optical elements, photographic products such as cameras, films,

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prints, flash guns, processing devices, projectors and the like, television and electrical devices and many other products.

Plaintiff's sales of products under its trademark, 'Polaroid,' have exceeded 450 million dollars and it has spent approximately 30 million in advertising its products under the said trademark. Since prior to the formation of defendant, plaintiff has sold its products widely in Illinois, Indiana and Iowa, its sales in Illinois alone exceeding 1 million dollars per year. It is licensed to do business in Illinois, maintains a sales office in Chicago and, since March 1960, a regional office in Melrose Park, Illinois.

Plaintiff's products are sold to individual customers, to dealers, to industrial customers including virtually all major United States corporations, to the United States Government, and through wholesale and retail outlets. Its products are sold in every state and in approximately 70 foreign countries. It has more than 12,000 dealers, 620 being in Illinois. Plaintiff enjoys a high reputation with respect to the quality of its products, its financial standing and its credit rating. Its stock is actively traded on the New York Stock Exchange. It is widely and favorably known and, since long prior to the incorporation of defendant, it and its products have been the subject of many gratuitous feature articles appearing in the leading newspapers of Chicago and New York and in numerous other publications of national repute. Plaintiff's trademark, 'Polaroid,' has acquired such fame that it has appeared in many dictionaries, encyclopedias and textbooks, has been referred to in a number of United States patents issued to other than plaintiff, and has been coupled with 'Kodak' and other famous trademarks as an outstanding example of a technically strong, coined famous mark.

Defendant, Polaraid, Inc., is an Illinois corporation, incorporated September 8, 1953, and has its principal office and place of business in Chicago. It is a general contractor specializing in the designing and installation of refrigeration and heating systems. Many of defendant's installations are, like many of plaintiff's products, electrically powered. It buys equipment from others, assembles, installs and at times maintains it. It does an interstate business in Illinois, Indiana and Iowa, and uses 'Polaraid' as its trade name and trademark. It affixes its name plate to the equipment which it installs and uses 'Polaraid' as a trade name and trademark on its stationery, in its advertising and promotional literature and on its office window. Its sales prior to 1960 never exceeded $500,000 per year, and it spent about $1,000 per year in advertising and promotional literature.

At the time of its incorporation, defendant's present officers and incorporators knew of plaintiff and plaintiff's trademark and trade name, 'Polaroid.' They adopted 'Polaraid' as defendant's corporate name and then used it as defendant's trade name and trademark without the consent of plaintiff. In June 1956, shortly after learning of defendant's unauthorized use of 'Polaraid,' plaintiff notified defendant that the use of 'Polaraid' in its corporate name and as its trademark and trade name infringed upon plaintiff's registered trademark and constituted unfair competition. When defendant persisted in its use, this action was brought.

The stipulation states:

'Instances of confusion in which newspapers, magazines or others have referred to one of the parties while intending to refer to the other or in which mail or other matter intended for one has been directed to or received by the other have occurred * * *.'

Then follows a description of seven instances where this sort of confusion took place. Since the entry of the judgment in this case, three additional instances of such confusion have occurred. Defendant on brief agrees that the above statement fairly states the factual situation, with the following addition:

'At the time of defendant's incorporation, the trademark and trade

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name POLARAID was selected by defendant's incorporators without considering the possibility of confusion and consisted of the combination of two words, 'POLAR' for cold and 'AID' for service.'

Thus, in summary, we have a stipulated situation wherein 'Polaroid' is a coined or invented word; that it has been for many years a famous trademark; that it indicates to the public that plaintiff is the source and origin of goods sold and rendered under that trademark; that it has never been used as a trademark or trade name by any other individual, association or corporation; that because of the high quality of plaintiff's products and the quality of its research activities, plaintiff has attained a position of renown in the scientific and commercial worlds and its products, all of which are sold under the trademark, 'Polaroid,' are well and favorably known to the public, and that plaintiff has acquired valuable good will in its corporate and trade name, 'Polaroid.' It is stipulated further that defendant, a late-comer with full knowledge of the situation, adopted 'Polaraid' as its trade name and trademark, without giving any consideration to the possibility of confusion.

Plaintiff in its brief states:

'This appeal raises primarily the issue of defendant's unfair competition. While the first cause of action is for infringement of plaintiff's federally registered...

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