EI DuPont de Nemours & Co. v. Yoshida Internat'l, Inc.

• Decision Date: 20 March 1975
• Docket Number: No. 71 C 119.,71 C 119.
• Citation: 393 F. Supp. 502
• Parties: E. I. DuPONT de NEMOURS AND COMPANY, Plaintiff, v. YOSHIDA INTERNATIONAL, INC., and Yoshida Kogyo K. K., Defendants.
• Court: U.S. District Court — Eastern District of New York

393 F. Supp. 502

E. I. DuPONT de NEMOURS AND COMPANY, Plaintiff, v. YOSHIDA INTERNATIONAL, INC., and Yoshida Kogyo K. K., Defendants.

No. 71 C 119.

United States District Court, E. D. New York.

March 20, 1975.

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COPYRIGHT MATERIAL OMITTED

Townley, Updike, Carter & Rodgers, by John R. Schoemer, Jr., Douglas C. Fairhurst, New York City, Howard J. Rudge, Wilmington, Del., for plaintiff.

Ryder, McAulay, Fields, Fisher & Goldstein, New York City, for Yoshida Kogyo K. K., by James E. Ryder, Paul Fields, New York City.

Miller, Montgomery, Spalding & Sogi, New York City, for YKK Zipper, U. S. A., Inc., by Mandeville Mullally, New York City.

NEAHER, District Judge.

This action for an injunction against alleged infringement of plaintiff's trademark "TEFLON" was tried by the court upon the facts. Jurisdiction is grounded upon 15 U.S.C. § 1121 and 28 U.S.C. §§ 1332 and 1338. The facts and legal discussion which follow constitute the court's findings and conclusions as required by Rule 52, F.R.Civ.P.

I.

Plaintiff, E. I. Du Pont de Nemours and Company ("DuPont") is a Delaware corporation having its principal place of business in Wilmington, Delaware. Since 1946 DuPont has been the registered owner of the trademark TEFLON and holder of eight United States registrations of that trademark¹ granted between 1946 and 1967. DuPont is also the owner and holder of seven registrations, granted between 1964 and 1970, for a number of certification marks of fanciful design embodying TEFLON, TEFLON-S or TEFLON II. All of these registrations are still in full force and effect and DuPont has given the required notice thereof to the trade and to the public. 15 U.S.C. § 1111.

Defendant Yoshida International, Inc., now known as YKK Zipper (U.S.A.), Inc., is a New York corporation having its principal place of business in Lyndhurst, New Jersey. It is a whollyowned subsidiary of defendant Yoshida Kogyo K.K., a Japanese corporation having its principal place of business in Tokyo, Japan. Both defendants will hereinafter be referred to collectively as "YKK", a designation used by them in their business of manufacturing, importing and selling zippers in the United States and other countries. YKK has manufactured zippers for many years and is believed to be the world's largest manufacturer of such products.

The controversy between the parties culminating in this litigation dates back to 1969. In that year, YKK first introduced to the American market a zipper made of nylon, which it called the "EFLON" zipper. When YKK thereafter sought to register the name EFLON in the United States Patent Office, DuPont promptly filed opposition proceedings, viewing EFLON as an infringement and a source of confusion with DuPont's TEFLON. Those proceedings were suspended, however, when the present suit was instituted in January 1971.

Origin and Use of TEFLON

The name TEFLON was created by DuPont prior to 1946. It is a coined or invented term having no meaning in the English language except as a trademark denoting DuPont resins made from a chemical substance known as polytetrafluoroethylene. That substance, a resinous solid material (hereinafter "TFE resin"), since its discovery by DuPont, has given rise to a family of chemical products. Continuously since 1944, DuPont has used TEFLON as a trademark in selling TFE dispersions and granular resins to a wide variety of industrial users and also within the DuPont Company for further processing and sale as non-stick TFE finishes for cookware and other products.

Since the end of World War II DuPont's accumulated sales of TEFLON products have amounted to approximately $800,000,000. Sales of TEFLON TFE resins to industrial users, the major portion of which are to buyers outside the company, account for more than 50% of the total TEFLON business. With one exception, DuPont itself does not sell products containing TEFLON directly to the consumer trade. That exception is "Lucite" paint containing TEFLON-E additives. DuPont has, however, in the various ways described below, exerted considerable effort to bring the TEFLON name and trademark to the attention of the consuming public as well as industrial users. Aside from TEFLON labeling on packaging and containers, DuPont's total advertising expenditures on its TEFLON products have been in excess of $32,000,000 over the past 25 years; and since 1965 have exceeded $3,000,000 annually in all but one year.

Although DuPont's TEFLON advertising aimed at the industrial market is confined to industrial trade magazines and publications, chemical journals and electronic magazines, most of the industrial buyers themselves advertise their products to consumers in association with the TEFLON trademark and have been doing so for years. From the standpoint of consumer recognition, TEFLON is most widely known in the cookware market in connection with nonstick coating on cooking utensils.

To promote consumer interest in nonstick cooking utensils, DuPont, in the early 1960's, inaugurated the first of its TEFLON certification programs, which included the development of technical standards for applying TFE coatings to cookware. Through extensive television advertising by DuPont, in which the TEFLON certification seal played an integral part, the consuming public was informed that the non-stick finish on cookware products was a "DuPont approved finish" which had been applied in accordance with DuPont standards. Although not required to do so, many cookware manufacturers have participated in the TEFLON certification program and have themselves advertised their TFE-coated products under the TEFLON mark. Since approximately 1963, shortly after the first TEFLON certification program, sales of TEFLON-coated cookware have accounted for between 35% and 50% of the total cookware market.

Beginning in 1965 DuPont began to expand the range of possible applications for TFE resins and finishes in industrial and consumer products. Its second TEFLON certification program, TEFLON II, followed upon improvements in the art of applying TFE to a metal surface so that the finished product became more scratch-resistant. A subsequent certification program featuring the TEFLON-S seal was based upon the application of TFE to produce a harder but less heat-resistant surface for use in the hardware field on such consumer items as saws, pruning shears, snow shovels and the like.

DuPont, of course, does not stand alone in the manufacture, promotion and sale of TFE resins and finishes. Two principal competitors in this field are ICI America and Allied Chemical, which also advertise and sell a broad range of TFE products under their own brand names. Like DuPont, each has its own trademark, ICI selling its products under the name "FLUON" and Allied under the trademark "HALON."

In order to maintain the recognition and value of its TEFLON trademarks and seals, DuPont has over the years conducted a vigilant trademark education and protection program. Since most of the industrial buyers of DuPont's TFE resins use the TEFLON mark in advertising their own products, such customers receive guidance on correct trademark usage, not only with respect to publication and display advertising, but also regarding references to TEFLON in general business correspondence. DuPont salesmen and others who deal with buyers of TEFLON resins, finishes and fibers are instructed concerning trademark matters; a DuPont publication (Pl.Exhs. 5 and 6) containing instructions on proper usage of the TEFLON trademark has been widely distributed among customers in connection with such efforts.

DuPont's trademark protection program also includes extensive surveillance efforts by its legal and advertising departments as well as the outside advertising agency responsible for advertising TEFLON products. Whenever misuse of the mark is detected, it is promptly called to the misuser's attention. In the cookware trade particularly, DuPont's advertising agency, N. W. Ayer & Son, Inc., has maintained continuous watch over TEFLON usage in cookware advertising and has from time to time inserted protective trademark advertising in retailer-oriented publications such as Women's Wear Daily, Home Furnishings Daily, Discount Store News and similar journals, aimed principally at buyers of houseware and home furnishings. The main thrust of these is to impart to the general public the understanding that TEFLON symbolizes DuPont's non-stick finish.

Origin and Use of EFLON

YKK advertises and sells four types of zippers in the United States: a zipper made from DuPont's DELRIN acetal resin; a polyester zipper called "CONCEAL"; a zipper designed for sports clothing called "ZIPLON"; and the nylon zipper called "EFLON", whose tradename is the subject of this action. The component parts of the EFLON zipper are manufactured at YKK's production facility in Japan, the construction having been licensed by YKK from West German companies. YKK has facilities here for assembling the component parts and has plans to manufacture the entire zipper in the United States.

The name EFLON is also a coined fanciful term having no meaning in the English language. It seems to have been conceived in a somewhat ambivalent manner. According to one explanation, the name was in part derived from YKK's manufacturing practice of designating each type of zipper produced by consecutive alphabetical letters. Thus the first YKK zipper, made of aluminum, was coded "A F" ("F" designating "fastener"). A subsequent brass zipper was designated "B F", and so on. The nylon zipper being the fifth in the YKK line was designated "E F".

Another explanation was that prior to commercial production, when a name was being sought which might indicate the nylon zipper's usefulness in women's garments, the name "Elegant Fastener" was suggested, which happened to coincide with the acronym "E F". Thereafter, at a meeting of YKK directors on July 4, 1967, one of them suggested the...