ALFRED DUNHILL, ETC. v. Kasser Dist. Prod. Corp.
| Decision Date | 26 October 1972 |
| Docket Number | Civ. A. No. 68-447. |
| Citation | 350 F. Supp. 1341 |
| Parties | ALFRED DUNHILL OF LONDON, INC. v. KASSER DISTILLERS PRODUCTS CORP. d/b/a Dunhill Distillers Products Co. et al. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
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Leslie D. Taggart, Watson, Leavonworth, Kelton & Taggart, New York City, H. Robert Fiebach, Wolf, Block, Schorr & Solis-Cohen, Philadelphia, Pa., for plaintiff.
Donald Brown, Fox, Rothschild, O'Brien & Frankel, E. Arthur Thompson, Paul & Paul, Philadelphia, Pa., for defendants.
This is an action for trademark infringement and unfair competition.1 It is also the latest in a long series of cases in which the plaintiff, Alfred Dunhill of London, Inc.,2 has sued to protect its Dunhill mark and name.3
As will appear in our findings of fact, the Dunhill name has been well and favorably known throughout the United States for many years. Plaintiff's Fifth Avenue store in New York City, for example, has, for decades, been a mecca for sophisticated shoppers. Plaintiff operates similar stores in Los Angeles, Chicago and San Francisco, and formerly operated a store in Philadelphia, a focal point of this litigation.4 Defendant has never disputed that plaintiff's pipes and tobacco are well known, not only throughout America, but internationally as well. Plaintiff merchandises a wide variety of wares. However, because plaintiff's preeminent identification has been with pipes and tobacco, and because Dunhill is a surname, and arguably a weak mark, defendant Kasser Distillers Products Corp., a Philadelphia based distilling firm, contends that its right to use "Dunhill" as a mark for scotch whiskey, a product not sold by plaintiff, cannot be assailed or enjoined by virtue of this lawsuit.5
There are two principal legal issues involved in the case. The first is that of infringement. Within that term we encompass the question of plaintiff's right to protection of its mark against its use as a mark for a product which plaintiff does not sell (and which is dissimilar to products which it does sell), and the concomitant question of likelihood of confusion of source. As will be seen, infra, we have no difficulty in concluding, as have many other courts, that the Dunhill mark, though a surname, is entitled to protection. As is customary in this type of case, plaintiff has sought to prove (and has proved) the strength of its mark by the offer of data and physical evidence demonstrating its continuous business in this country since 1921, the nature of that business and its extensive advertising and marketing of Dunhill goods.6
Plaintiff has introduced evidence that its wares include a variety of bar accessories. Plaintiff submits that bar accessories and tobacco are goods which are frequently used in conjunction with scotch whiskey and are therefore related in character to it and to other forms of alcohol. Plaintiff contends that there is a strong likelihood that the public will be confused as to the source of defendant's whiskey, and will think it to be the product of the plaintiff. Arguing thereupon from the well-established body of law affording exclusive protection to a distinctive mark as against related, though dissimilar, goods, plaintiff has made out a cogent case for protection. Plaintiff also contends that Kasser is a deliberate infringer who chose to pass off the Dunhill name for its economic advantage.
As will be seen from our discussion, we conclude that the goods of the parties are related and that there is indeed a likelihood of confusion of source. These factors, once established, would, in the ordinary course, and even in the absence of proof of deliberate infringement, entitle plaintiff to relief. There is, however, a second major legal issue involved in this case: the claims of laches and equitable estoppel interposed by the defendant. These defenses stem from plaintiff's delay of five years in instituting this lawsuit after it learned of defendant's appropriation of the Dunhill name for its scotch whiskey. Plaintiff offers a variety of reasons to explain and justify the delay, including defendant's posture in certain Patent Office opposition proceedings, instituted in response to defendant's application for registration of the Dunhill mark resulting in a default by defendant. Plaintiff has pointed out that during the period in question it was proceeding in the courts against four other infringers and has noted the established doctrine that it is not bound to take on more than one infringer at a time. Plaintiff also contends that defendant was not prejudiced by the delay and indeed that defendant's motivation in adopting the Dunhill mark deprives it of the clean hands requisite to assert equitable defenses.
As may be surmised from the foregoing, we find that the facts and the law require that the defendant be enjoined from its use of the mark Dunhill for scotch whiskey. However, before discussing the infringement issues, the equitable defenses, and the other issues raised by the case, we turn first to a recitation of our findings of fact. This Opinion constitutes our findings of fact and conclusions of law under Fed.R. Civ.P. 52(a).
The Dunhill mark is attributable to the surname of Alfred Dunhill of London, England, who, prior to September 1921, sold into the United States various Dunhill products. In 1921, plaintiff became, has continued to be, and now is the exclusive distributor in the United States of the Dunhill products of Alfred Dunhill and his successor, Alfred Dunhill, Ltd., a British corporation, also of London, England. Since 1967, plaintiff has been and now is a wholly owned subsidiary of Alfred Dunhill, Ltd. Alfred Dunhill, the son of the founder of Alfred Dunhill Limited, was President of Alfred Dunhill Limited until his death in 1971. Mary Dunhill, the daughter of the founder, is Chairman of Alfred Dunhill Limited and of Alfred Dunhill of London, Inc. Richard Dunhill, grandson of the founder, is Deputy Chairman of Alfred Dunhill Limited.
Plaintiff has sold a broad line of products at retail from its store located in New York City since it opened in 1922, from its Los Angeles store since it opened in 1951, from its Chicago store since it opened in 1960 and from its San Francisco store since it opened in 1961. From 1960 through July 1967, plaintiff also had a retail store at 1516 Chestnut Street, Philadelphia, which carried and sold the goods carried and sold by the other retail stores. Plaintiff has, since long prior to defendants' first use of the mark Dunhill, sold and now sells at its retail stores, inter alia, smokers' articles (cigars, pipes, tobacco, lighters and smokers' accessories), gift items (including leather goods, gold and silver accessories, bar accessories, office accessories, luggage and handbags), men's clothing, haberdashery and toiletries. The bar accessories include everything from the smallest accessory to the bar itself. Since 1921, plaintiff has also wholesaled throughout the United States a line of products similar to those sold at its retail stores, including smokers' articles and bar accessories.
All of the goods sold by plaintiff are sold under the tradename and trademark Dunhill. The trademark appears on the packaging and, where possible and practical, on the goods. Plaintiff's retail sales under the tradename and trademark Dunhill during the period 1922-1969 exceeded $70 million, ranging from about $300,000 in 1922 to over $4 million in more recent years. Plaintiff's wholesale sales under the tradename and trademark Dunhill during the period 1933-1969 exceeded $70 million ranging from about $250,000 in 1933 to over $3 million in more recent years.
During the period 1933-1969, plaintiff expended approximately $6,000,000 in advertising and promoting its Dunhill products. Plaintiff's advertising has appeared in newspapers and magazines having both regional and national circulation, e. g., Wall Street Journal, New York Times, New Yorker Magazine, Field and Stream, Harper's Bazaar, Esquire, Playboy, Sports Illustrated, Vogue and various trade journals. Plaintiff's advertising also appeared in Philadelphia publications during the period its Philadelphia store was open, including the Philadelphia Inquirer and Bulletin and Greater Philadelphia Magazine. Plaintiff's promotion has included "stuffers" sent to charge customers with their bills, and annual retail gift catalogs and wholesale catalogs. During the years 1959-62, plaintiff's gift catalogs also appeared as a supplement to a Sunday paper in each city in which plaintiff had retail stores.
Prior to 1963, Dunhill products were, and they have continued to be, sold throughout the world (see n. 4). Plaintiff is the exclusive or concurrent owner in the United States of the following registrations of the trademark Dunhill issued by the United States Patent Office to its parent Alfred Dunhill Limited:
Registration No. Issued
155,951 June 13, 1922
527,207 July 4, 1950
527,208 July 4, 1950
534,705 December 12, 1950
539,892 March 27, 1951
540,389 April 3, 1951
541,949 May 8, 1951
634,071 September 4, 1956
815,651 September 20, 1966
843,143 January 30, 1968
843,152 January 30, 1968
843,178 January 30, 1968
843,193 January 30, 1968
843,198 January 30, 1968
843,270 January 30, 1968
847,942 April 23, 1968
858,876 October 22, 1968
(concurrent use)
858,928 October 22, 1968
(concurrent use)
858,939 October 22, 1968
(concurrent use)
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Table of Cases
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