WE Bassett Company v. Revlon, Inc.

Decision Date10 November 1970
Docket NumberDockets 34755-34757.,No. 61-63,61-63
Citation435 F.2d 656
PartiesThe W. E. BASSETT COMPANY, Plaintiff-Appellant, v. REVLON, INC., Defendant-Appellee. The W. E. BASSETT COMPANY, Plaintiff-Appellee, v. REVLON, INC., Defendant-Appellant (two cases).
CourtU.S. Court of Appeals — Second Circuit

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Leon Singer, New York City (Blumberg, Singer, Ross, Gottesman & Gordon, and Alfred K. Kestenbaum, New York City, on the brief), for appellant.

Clifton Cooper, New York City (Beer, Richards, Haller & O'Neil, and Stewart W. Richards and Edward R. Hughes, New York City, on the brief), for appellee.

Before CLARK, Associate Justice,* LUMBARD, Chief Judge, and KAUFMAN, Circuit Judge.

LUMBARD, Chief Judge:

This is an action for trademark infringement and unfair competition in which plaintiff Bassett claims that defendant Revlon violated the Lanham Trademark Act of 1946, 15 U.S.C. § 1051 et seq., and the laws of New York by using the mark "Cuti-Trim" for its cuticle trimmer. The district court, in an opinion reported at 305 F.Supp. 581 (S.D. N.Y.1970), held Revlon liable for trademark infringement; granted a permanent injunction against Revlon's use of the mark "Cuti-Trim"; held Revlon in contempt for having procured a stay of a preliminary injunction by fraud and for having violated this court's modification of that preliminary injunction; and awarded Bassett damages in the amount of its expenses in prosecuting the contempt or, alternatively, Revlon's profits made on sales after the preliminary injunction, whichever is higher. Revlon appeals from the foregoing part of the district court's decision. However, the district court also denied Bassett's claim for an accounting of all of Revlon's profits on the trimmers marked "Cuti-Trim"; denied Bassett's claim for expenses in prosecuting the contempt in addition to, rather than as an alternative to, other damages; and referred the case to a master for a determination of the amount of Bassett's expenses in prosecuting the contempt and the amount of Revlon's profits after the preliminary injunction. Bassett appeals from this part of the district court's decision.

We affirm the district court's decision insofar as it held Revlon liable for trademark infringement, granted a permanent injunction against the use of the name "Cuti-Trim," and held Revlon in contempt. But we reverse the denial of an accounting for all of Revlon's profits from the trimmers marked "Cuti-Trim" and the denial of Bassett's claim for expenses in prosecuting the contempt in addition to the accounting; and we remand to the district court for proceedings consistent with this opinion.

I.

Plaintiff, the W. E. Bassett Company, is a leading manufacturer of manicuring implements. It sells its products under the basic trademark "Trim" and under other trademarks derived from the word trim (e. g. "Trim-clip," "Trim-pac," "Trim-ette"). "Trim" and the variants used by Bassett are the subjects of Patent Office registrations. Since 1947, Bassett has sold over 200,000,000 implements under its registered trademark "Trim." To enhance sales, and specifically for advertising and promotion of the "Trim" mark, Bassett has spent over $1,100,000 since 1954.

Defendant, Revlon, is a well-known manufacturer of beauty care and other products, including a full line of cosmetics and manicuring articles. Its products are sold under its trademark and name "Revlon." In the manicuring-implements field Bassett and Revlon are direct competitors. Although Revlon has substantial manufacturing facilities of its own, a large staff of trained personnel, and widespread warehousing facilities, it made unsuccessful efforts before the institution of this suit to acquire the business, including trademarks, of the Bassett Company.

In January 1965, Revlon placed on the market a cuticle trimmer designated "Cuti-Trim," and sold it in packages bearing the legend "Revlon Cuti-Trim." On June 4, 1965, Bassett instituted this action for trademark infringement seeking a permanent injunction against Revlon's use of the name "Cuti-Trim." Shortly after bringing the action, Bassett moved for a preliminary injunction pendente lite against any further use by Revlon of the mark "Cuti-Trim" or of any similar mark. On November 19, 1965, Judge Palmieri granted such a preliminary injunction, finding inter alia that Bassett's "Trim" mark was valid, that it had acquired secondary meaning through its exclusive and heavily advertised use over the course of 18 years, that Revlon adopted the mark "Cuti-Trim" with full knowledge of Bassett's trademark rights and in disregard of the confusion and deception the "Cuti-Trim" mark would cause to the purchasing public and to consumers, and that there was reasonable cause to believe that Revlon had infringed and was infringing Bassett's "Trim" mark to the irreparable injury of the plaintiff.

Revlon appealed that decision to this court, and petitioned this court for a stay of the preliminary injunction pending appeal. On November 23, 1965, we granted a stay on the basis of an affidavit submitted by Revlon, stating that it had in its inventory over 80,000 fully assembled cuticle trimmers marked "Cuti-Trim," that it was impossible to eradicate the words "Cuti-Trim" without mutilating the implements and thereby rendering them unsalable, and that therefore Revlon would sustain immediate and irreparable harm unless we granted the stay.1 On January 3, 1966, we affirmed the preliminary injunction, but modified it to permit Revlon to market its existing stock of "Cuti-Trim" — the 80,000 implements which it had averred were fully assembled on November 19. W. E. Bassett Co. v. Revlon, Inc., 354 F.2d 868 (2d Cir. 1966).

At the trial Judge Frankel granted Bassett a permanent injunction, but denied it an accounting of all of Revlon's profits on the "Cuti-Trim" trimmers. He also found that Revlon had procured the stay of the preliminary injunction by fraud and had violated our modification and hence was in contempt; and, as stated above, he awarded Bassett partial damages. By orders dated March 12, 1970, we granted both Bassett and Revlon leave to appeal pursuant to 28 U.S.C. § 1292(b).

II.

Revlon's first claim on appeal is that it did not infringe Bassett's mark because that mark was not valid and worthy of protection, because there was no substantial likelihood of confusion between "Cuti-Trim" and Bassett's marks, and because Bassett had unclean hands thus barring an equitable relief. Judge Frankel found to the contrary on each of these assertions, and there is substantial evidence to support his findings.

The first question is whether Bassett's mark "Trim" is descriptive of the function performed by the implements or whether it is so distinctive that, on its face, it identifies the producer. If it is the latter, Bassett does not have to show that the mark acquired secondary meaning. As we stated in our previous opinion, however, "Trim" is a weak mark descriptive of the products' function and hence it can be protected only if it had acquired secondary meaning so as to identify the product with the producer. See Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495 (2d Cir. 1962); Triumph Hosiery Mills, Inc. v. Triumph International Corp., 308 F.2d 196 (2d Cir. 1962).

On the question of secondary meaning, Judge Frankel was persuaded by the fact that Bassett had pursued a course of steady promotion of its mark and by Mr. Justice Frankfurter's statement that the effect of such activities is often "to impregnate the atmosphere of the market with the drawing power of a congenial symbol." Mishawaka Rubber and Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381 (1942). He therefore concluded that it was more likely than not that Bassett's endeavors had enough effect — even if subconscious — on consumers to give "Trim" secondary meaning. We agree.

Revlon argues that this "more likely than not" inference was not enough at trial, though it may have been enough for purposes of the preliminary injunction, and that Bassett failed to show at trial, as was necessary, that its attempt to establish secondary meaning had succeeded. In support of this contention, Revlon relies on Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938); DuPont Cellophane Co. v. Waxed Products Co., 85 F. 2d 75 (2d Cir.), cert. denied, E. I. DuPont De Nemours & Co. v. Waxed Products Co., 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936); Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965); General Time Instr. Corp. v. U. S. Time Corp., 165 F.2d 853 (2d Cir.), cert. denied 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770 (1948); and similar cases. But those cases can be distinguished from the instant case because they dealt with terms like "Shredded Wheat" or "Cellophane," which are generic, whereas "Trim," while descriptive, is not generic. Since generic marks are the actual names of the products themselves, it is necessary for the producer to show that he actually succeeded in associating the term with the source in the public's mind. But when the term is not generic but merely descriptive, an inference of secondary meaning, properly supported, seems to be enough. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195 (1938); Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538 (2d Cir. 1956); Spice Islands Co. v. Spice Land Products, Inc., 262 F.2d 356 (2d Cir. 1959); Miss Universe, Inc. v. Patricelli, 408 F.2d 506 (2d Cir. 1969).

Revlon also argues that third-party uses of "Trim" and related marks diluted Bassett's exclusive use and impaired the demonstration of secondary meaning. However, the third-party products cited by Revlon range from very different to slightly different products from Bassett's, most of the third-party...

To continue reading

Request your trial
184 cases
  • USM Corp. v. Marson Fastener Corp.
    • United States
    • United States State Supreme Judicial Court of Massachusetts Supreme Court
    • June 28, 1984
    ...F.2d 978, 985 (6th Cir.1937), dismissed on motion of counsel, 306 U.S. 665 (1939) (patent infringement). Contra W.E. Bassett Co. v. Revlon, Inc. 435 F.2d 656, 665 (2d Cir.1970) (trademark infringement, no discussion of the issue, no The reasoning in the Larson opinion in support of denying ......
  • Burndy Corp. v. Teledyne Industries, Inc.
    • United States
    • U.S. District Court — District of Connecticut
    • April 10, 1984
    ...willful or, in the instance of attorney's fees, the conduct of the lawsuit is obstructive and not in good faith. W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970); Vuitton Et Fils S.A. v. Crown Handbags, 492 F.Supp. 1071 (S.D.N.Y. 1979), aff'd, 622 F.2d 577 (2d Cir.1980); Cutler......
  • Joy Mfg. Co. v. CGM Valve & Gauge Co., Inc.
    • United States
    • U.S. District Court — Southern District of Texas
    • November 15, 1989
    ...mark was a causal factor in the sale. See Truck Equip. Serv. Co. v. Freuhauf Corp., 536 F.2d 1210 (8th Cir.1976); W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir.1970); Stuart v. Collins, 489 F.Supp. 827 (S.D.N.Y.1980). Furthermore, in light of CGM's continuing history of the kind of......
  • John Wright, Inc. v. Casper Corp.
    • United States
    • U.S. District Court — Eastern District of Pennsylvania
    • June 25, 1976
    ...of buyer association, for secondary meaning can be, and often is, inferred without any such direct proof.9 See W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 661 (2d Cir. 1970); Roux Laboratories, Inc. v. Clairol, 427 F.2d 823, 831 (CCPA 1970) (a trademark case using a standard of "distin......
  • Request a trial to view additional results
3 books & journal articles
  • Confusion Evidence and the State-of-mind Exception in Unfair Competition Litigation
    • United States
    • Colorado Bar Association Colorado Lawyer No. 04-1989, April 1989
    • Invalid date
    ...Technology, Inc., 515 F.Supp. 915, 926-27 (S.D.N.Y. 1981). 7. Mushroom Makers, supra, note 4 at 48; W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 662 (2d Cir. 1970); Lambda Electronics, supra, note 6 at 927. 8. United States v. Jackson, 588 F.2d 1046, 1049, n.4 (5th Cir. 1979). 9. Id. See......
  • Where There's a Will, There's a Way: Reconciling Theories of Willful Infringement and Disgorgement Damages in Trademark Law
    • United States
    • University of Georgia School of Law Journal of Intellectual Property Law (FC Access) No. 22-2, 2015
    • Invalid date
    ...8, at 1926.249. Conway-Jones, supra note 3, at 883.250. Id.251. Otake, supra note 119, at 241 (quoting W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir 1970)).252. Corgill, supra note 8, at 1929.253. Id.254. Otake, supra note 119, at 245.255. See Quick Technologies, Inc. v. Sage Group......
  • CHAPTER 10 - § 10.03
    • United States
    • Full Court Press Trade Dress: Evolution, Strategy, and Practice
    • Invalid date
    ...Inc. v. Craftex, Inc., 816 F.2d 145 (4th Cir. 1987).[93] Restatement third, Unfair Comp. § 37.[94] W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970).[95] MCCARTHY, supra chap. 1, note 2, at § 30:59 citing Frisch's Restaurants v. Elby's Big Boy, 661 F.Supp. 971 (S.D. Ohio 1987).......

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