321 F.2d 577 (2nd Cir. 1963), 284, King-Seeley Thermos Co. v. Aladdin Industries, Inc.

Docket Nº:284, 27965.
Citation:321 F.2d 577, 138 U.S.P.Q. 349
Party Name:KING-SEELEY THERMOS CO., Plaintiff-Appellant, v. ALADDIN INDUSTRIES, INCORPORATED, Defendant-Appellee.
Case Date:July 11, 1963
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 577

321 F.2d 577 (2nd Cir. 1963)

138 U.S.P.Q. 349

KING-SEELEY THERMOS CO., Plaintiff-Appellant,



No. 284, 27965.

United States Court of Appeals, Second Circuit.

July 11, 1963

Argued April 22, 1963.

Page 578

Nims, Martin, Halliday, Whitman & Bonynge, New York City (Walter J. Halliday, Oliver P. Howes, Jr., William H. Buchanan, M. L. Severn, New York City, of counsel), for appellant.

Dugald S. McDougall, Theodore R. Scott, Chicago, Ill., Curtiss K. Thompson, New Haven, Conn., for appellee.

Before LUMBARD, Chief Judge, and WATERMAN and MOORE, Circuit Judges.

LEONARD P. MOORE, Circuit Judge.

This action by brought by appellant King-Seeley Thermos Co. (King-Seeley) 1 to enjoin the defendant, Aladdin Industries, Incorporated from threatened infringement of eight trademark registrations for the word 'Thermos' owned by appellant. Defendant answered, acknowledging its intention to sell its vacuum-insulated containers as 'thermos bottles', asserted that the term 'thermos' or 'thermos bottle' is a generic term in the English language, asked that plaintiff's registrations of its trademark 'Thermos' be cancelled and that it be adjudicated that plaintiff have no trademark rights in the word 'thermos' on its vacuum bottles. The trial court held that plaintiff's registrations were valid but that the word 'thermos' had become 'a generic descriptive word in the English language * * * as a synonym for 'vacuum insulated' container.' 207 F.Supp. 9.

The facts are set out at great length in the comprehensive and well-reasoned opinion of the district court and will not be detailed here. In that opinion, the court reviewed King-Seeley's corporate history and its use of the trademark 'Thermos'. He found that from 1907 to 1923, King-Seeley undertook advertising and educational campaigns that tended to make 'thermos' a generic term descriptive of the product rather than of its origin. This consequence flowed from the corporation's attempt to popularize 'Thermos bottle' as the name of that product without including any of the generic terms then used, such as 'Thermos vacuum-insulated bottle'. The court found that by 1923 the word 'thermos' had acquired firm roots as a descriptive or generic word.

At about 1923, because of the suggestion in an opinion of a district court 2 that 'Thermos' might be a descriptive word, King-Seeley adopted the use of

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the word 'vacuum' or 'vacuum bottle' with the word 'Thermos'. Although 'Thermos' was generally recognized in the trade as a trademark, the corporation did police the trade and notified those using 'thermos' in a descriptive sense that it was a trademark. It failed, however, to take affirmative action to seek out generic uses by non-trade publications and protested only those which happened to come to its attention. Between 1923 and the early 1950's the generic use of 'thermos' had grown to a marked extent in non-trade publications and by the end of this period there was wide-spread use by the unorganized public of 'thermos' as a synonym for 'vacuum insulated.' The court concluded that King-Seeley had failed to use due diligence to rescue 'Thermos' from becoming a descriptive or generic term.

Between 1954 and 1957, plaintiff showed awareness of the widespread generic use of 'thermos' and of the need to educate the public to the word's trademark significance. It diversified its products to include those not directly related to containers designed to keep their contents hot or cold. It changed its name from the American Thermos Bottle Company to The American Thermos Products Company and intensified its policing activities of trade and non-trade publications. The court found, however, that the generic use of 'thermos' had become so firmly impressed as a part of the everyday language of the American public that plaintiff's extraordinary efforts commencing in the mid-1950's came too late to keep 'thermos' from falling into the public domain. The court also held that appellant's trademarks are valid and because there is an appreciable, though minority, segment of the consumer public which knows and recognizes plaintiff's trademarks, it imposed certain restrictions and limitations on the use of the word 'thermos' by defendant.

We affirm the district court's decision that the major significance of the word 'thermos' is generic. No useful purpose would be served by repeating here what is fully documented in the opinion of the court below.

Appellant's primary protest on appeal is directed at the district court's finding that

'The word 'thermos' became a part of the public domain because of the plaintiff's wide dissemination of the word 'thermos' used as a synonym for 'vacuum-insulated' and as an adjectival-noun, 'thermos', through its educational and advertising campaigns and because of the plaintiff's lack of reasonable diligence in asserting and protecting its trademark rights in the word 'Thermos' among the members of the unorganized public, exclusive of those in the trade, from 1907 to the date of this action.' 207 F.Supp. at 14.

We are not convinced that the trademark's loss of distinctiveness was the result of some failure on plaintiff's part. Substantial efforts to preserve the trademark significance of the word were made by plaintiff, especially with respect to members of the trade. However, there was little they could do to prevent the public from using 'thermos' in a generic rather than a trademark sense. And whether the appropriation by the public was due to highly successful educational and advertising campaigns or to lack of diligence in policing...

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