Champion Spark Plug Co. v. Sanders
| Decision Date | 15 June 1944 |
| Docket Number | No. 3767.,3767. |
| Citation | 56 F. Supp. 782 |
| Parties | CHAMPION SPARK PLUG CO. v. SANDERS et al. |
| Court | U.S. District Court — Eastern District of New York |
Owen & Owen, of Toledo, Ohio (by Wilbur Owen and Carl F. Schaffer, both of Toledo, Ohio), and Ward, Crosby & Neal, of New York City (by Joshua Ward, of New York City), for plaintiff.
John Wilson Hood, of New York City, for defendants.
Hearing on plaintiff's motion for a preliminary injunction.
The complaint sets forth two claims for relief, the first for infringement of trademark, and the second for unfair competition. The plaintiff is a Delaware corporation having its principal place of business in Toledo, Ohio, and two of the individual defendants reside in this district, where all three apparently conduct business under the same and style of "The Perfect Recondition Spark Plug Company". It therefore appears that the Court has jurisdiction of the cause and of the parties.
The pleadings, and the opposing affidavits disclose a very narrow controversy because with one exception the facts are not substantially in dispute.
The question for decision is whether the plaintiff is entitled to injunctive relief against the defendants in connection with their business of repairing and marketing used and discarded Champion spark plugs of the plaintiff's manufacture used in the operation of motor vehicles.
The controversy exists because the plaintiff asserts that the defendants sell such spark plugs under the original trade-mark, without sufficiently revealing that, when so repaired and put in condition for use, they are in fact second-hand or used plugs which during the process of repair and attempted rehabilitation have undergone certain structural modifications, and hence should not be marketed as Champion spark plugs.
The defendants' calling is not the subject of challenge, nor does the plaintiff assert that the repaired spark plugs are represented by the defendants as new and unused; nor are they marketed under a trade dress which closely simulates the original package as put out by the plaintiff, except in the basic color scheme of the individual container, and of that the plaintiff does not complain. The offense which the plaintiff attributes to the defendants consists in the following:
(a) Retaining on the exposed portion of the white porcelain insulator in red letters the word "Champion", together with the letter and figure denoting the particular style or type.
(b) Stamping on the box in which ten plugs are packed, upon a white background the name "Champion", together with letters and figures indicating the particular style and type.
Each separate plug is packed by both parties in a cardboard container or box, 3½ inches long as to the plaintiff's product, and 3 inches long as to the defendants'. These in turn are placed in a larger box, containing ten units.
Except that both boxes are blue, they bear no resemblance as to the wording, and concerning the defendants' larger container it is sufficient to say that on the top appears a statement that the spark plug is guaranteed for 10,000 miles. The front and rear elevations contain a pictorial representation of the plug, and the reading matter is: "Perfect Process Spark Plugs Guaranteed Dependable"; and on each end, the panel reads in conveniently large letters: "Perfect Process Renewed Spark Plugs"; beneath those words there is a white space in which is to be inserted (opposite the words in the left column)
Make "Champion" Type "14 M.M." } For example Size "H 10" }
The smaller box containing the individual plug, as sold by the defendants, repeats the wording on the top and the bottom of the larger box, and on the front panel appears the following in legible white letters on blue:
And on the rear panel the wording is:
"This Spark Plug is guaranteed to be a selected used Spark Plug, thoroughly renewed and in perfect mechanical condition and is guaranteed to give satisfactory service for 10,000 miles."
Since the plug has to be screwed into the cylinder of the motor, the lower end is threaded for that purpose; above the threaded section there is a steel body having a hexagonal collar near the top, wide enough on its faces to accept a wrench used in screwing the plug into place; and on one face of that collar there appears in the plug as sold by the defendants, in small letters, blue on black, the almost illegible word "Renewed". It appears from the affidavits that the word is not stamped into the metal but, when this section of the plug is repainted during the process of repair, the word "Renewed" is stamped so as to penetrate the paint; as to the samples in evidence that word has partly disappeared.
It appears that these parties have been before the Federal Trade Commission four or more years ago, and that the last-mentioned word "Renewed" was directed to be placed on the defendants' plug as the result of that proceeding—at least so much is asserted by the defendants and not denied by the plaintiff—but I am satisfied that, as applied, the word is inadequate to accomplish any real purpose.
No one disputes that the defendants' enterprise is entirely legitimate and that there is a market for discarded and worn-out spark plugs which have been cleaned and repainted, and in which interior spent parts are replaced, so that such an article has a useful life of some thousands of miles in ordinary use.
It also seems reasonably apparent that a purchaser of such repaired spark plugs may well wish to know what the original product was, which he is acquiring in this repaired and somewhat reconditioned state; it is also reasonable to say that the defendants' conduct of such an enterprise is not to be criticised, provided that they inform their customer adequately concerning the nature and character of the article in question; and also provided that there has been no alteration or modification of the original assembly, so that the plug in its repaired state is not something essentially different from the original product of the plaintiff; and provided further, that they avoid misleading a user into thinking that defendants are selling the original spark plug as manufactured by the plaintiff.
The plaintiff has conducted previous litigation involving this question against one Reich engaged in the same activity as these defendants, and it relies mainly upon the decision of the Circuit Court of Appeals for the Eighth Circuit in that case, Champion Spark Plug Co. v. Reich, 8 Cir., 121 F.2d 769, as an authority which this Court should follow in deciding this motion. See also Champion Spark Plug Co. v. Emener, D.C., 16 F.Supp. 816.
In the former case, the District Court had found that the defendant did not restore these spark plugs to their original condition and that they could not truthfully be referred to as "reconditioned" plugs nor as "Champion" plugs of a given type number; and that the repaired plugs had been so changed in functional features that they ceased to possess several of their original distinctive mechanical and functional features, and were no longer Champion spark plugs as the term was used by the plaintiff and known to the motoring public.
The District Court permitted the defendant to use the plaintiff's trade-mark collaterally for the purpose of identification; in commenting upon that aspect of the case, the Circuit Court of Appeals said that, under the said findings, the disposition made by the District Court was in error; the pertinent language is 121 F.2d 774:
It was stated on the argument of this motion, that the decree in the Reich case had resulted in putting that defendant out of business, and I therefore asked counsel to ascertain the true facts in that connection, and they have done so, as appears from supplemental affidavits pro and con; I am satisfied, after reading the affidavits of Reich, verified May 26, 1944, the defendant in that action, and of Wilber Owen, attorney for the plaintiff in this cause, verified May 31, 1944, that the former Reich business is being continued by McFall Engineering Co., 3031 Main Street, Kansas City, Mo., which sells spark plugs originally manufactured by the plaintiff, in boxes containing the following on the top thereof:
"`The Best Rebuilt Spark Plugs' "These repaired spark plugs were originally manufactured by The Champion Spark Plug Co. "They have been thoroughly renovated and repaired. New negative electrodes installed when necessary. All metal parts refinished and bronze plated. "A highly efficient product. "By "McFall Engineering Co. "3031 Main St. Kansas City, Mo."
Further, that the figures and letters devised by the plaintiff to indicate a given type of plug are not duplicated by the McFall Co., which has prepared a chart of its own to show which plugs are...
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Champion Spark Plug Co v. Sanders
...by petitioner and repaired and made fit for use up to 10,000 miles by respondent company.2 The District Court denied an accounting. See 56 F.Supp. 782, 61 F.Supp. The Circuit Court of Appeals held that respondents not only had infringed petitioner's trade mark but also were guilty of unfair......
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Champion Spark Plug Co. v. Sanders, Civ. A. No. 3767.
...brought to light which would justify a repetition of what was said in connection with the application for preliminary injunction. 56 F.Supp. 782 and 787. The cause is not essentially different from the cases of Champion Spark Plug Co. v. Emener, D.C., 16 F.Supp. 816, and Champion Spark Plug......
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Champion Spark Plug Co. v. Sanders, Civil Action No. 3767.
...for plaintiff. John Wilson Hood, of New York City, for defendants. BYERS, District Judge. After the filing of the decision of June 15, 1944, 56 F.Supp. 782, a motion was made by the plaintiff, the object of which was to file affidavits of four persons in the employ of the plaintiff: Brace H......