Arrow Fastener Co., Inc. v. Stanley Works

• Decision Date: 14 September 1994
• Docket Number: Civ. No. 2:91CV00981 (PCD).
• Citation: 870 F. Supp. 427,33 USPQ 2d 1312
• Parties: ARROW FASTENER CO., INC. v. The STANLEY WORKS.
• Court: U.S. District Court — District of Connecticut

870 F. Supp. 427

33 USPQ 2d 1312

ARROW FASTENER CO., INC. v. The STANLEY WORKS.

Civ. No. 2:91CV00981 (PCD).

United States District Court, D. Connecticut.

September 14, 1994.

William H. Bright, Jr., Cummings & Lockwood, Hartford, CT, John J. Cotter, Cotter, Cotter & Sohon, Bridgeport, CT, Pasquale A. Razzano, Fitzpatrick, Cella, Harper & Scinto, New York City, for plaintiff.

Benjamin A. Solnit, Noble Francis Allen, Tyler, Cooper & Alcorn, New Haven, CT, Siegrun Kane, David H.T. Kane, Kane, Dalsimer, Sullivan, Kurucz, Levy, Eisele & Richard, New York City, Carter LaPrade, Madison, CT, Richard F. Orr, Office of the Speaker, Hartford, CT, for defendant.

MEMORANDUM OF DECISION

DORSEY, Chief Judge.

Arrow claims a registered trademark in "T-50" after November 14, 1989 and a common law trademark therein from the 1950's. It alleges Stanley's violation of its statutory, 15 U.S.C. § 1114 and 1125(a), and common law right in T-50 and unfair trade practices under Conn.Gen.Stat. §§ 42-110a et seq. Stanley claims that T-50 is a model number in which Arrow has no rights, that there is no likelihood of confusion, that its use fairly describes characteristics of its products and its use precludes Arrow on grounds of laches, estoppel and acquiescence. Stanley counterclaims seeking judgment that it does not infringe and that for want of recognition the registration should be cancelled.

I. FACTS

In 1929, Morris Abrams started Arrow, a manufacturer of stapling machines. Sales increased steadily, new products were added and the company grew to become a dominant force in the market for devices used to attach materials to one another. A range of uses was fostered to create a broad market for staplers, from attaching papers to joining construction material. Hand staplers led to mechanical staplers, which led to electrical powered units. The next step, to pneumatic staplers, gives rise to the dispute.

Arrow used its name extensively as a trademark to identify its products. In the early 1950's, it marketed a heavier duty hand operated stapler identified as T-50. The appellation came to be applied to staples and other staplers. T-50 was used in promoting and advertising Arrow products. In a broad market, T-50 is recognized as identifying quality staplers for the home, in commercial usages, for do-it-yourselfers of light work and in the building industry. The name Arrow was associated with plaintiff's products also. Both signified to users a quality product. By itself, T-50 was recognized by a substantial number of consumers. Due to Arrow's product promotion, use of T-50 and the number of staplers (over 40,000,000) and staples (over 500,000,000 boxes) sold, more than any other stapler or staple, consumers, distributors and merchandisers associate the mark with the product and in turn with Arrow. T-50 has acquired a strong secondary meaning as a mark of a quality Arrow product. It is extremely important and valuable to Arrow, as 80% of its sales are generated by T-50 staplers and staples and the T-50 series of stapling products. The mark is prominent on Arrow's packaging and in its extensive advertising. A substantial amount of Arrow's advertising appears in the same publications as does defendant's.

In 1989 Arrow obtained a trademark registration for T-50. It has substantially, but not universally, noted registration by use of the circled "R" in advertising and labeling. Registration remains in effect. Registration added to the quality of the mark as identifying Arrow's product line and adds the presumption, albeit rebuttable, of validity. 15 U.S.C. §§ 1057(b), 1115(a). Arrow has not used a "TM" notice of a common law trademark, a matter of no negative significance. To expand its market and to meet competition from other staplers, Arrow has extensively advertised to exploit the T-50 mark in the do-it-yourself, construction and remodeling markets. It has used the mark to identify other stapler models, combined to differentiate their characteristics, Ex. 105, enhancing their identification as Arrow products.

The origin of T-50 is unknown. It was apparently arbitrarily selected. It is not generic. Defendant argues that "T" stands for tacker, an alternative description of the function of a stapler, and the "50" describes the metric diameter of the wire used for the staples. There was no showing that such was an accepted or recognized description of Arrow's product. A tacker is not a synonym for a stapler. Further the wire size is not consistently reflected in Arrow's or the industry's identification of models nor is it recognized by consumers as such. It is not used by Arrow solely as a model number nor is it restricted to the stapling device. T-50 has no descriptive function. It has some suggestive quality but is essentially arbitrary. It has gathered secondary meaning. It has substantial recognition, associated with the Arrow name as the source of a number of different products marketed under the T-50 mark. As a registered mark, it is presumed to be arbitrary or suggestive, not descriptive. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir.1976). It commands consumer and industry recognition and acceptance.

Defendant, a late comer to the staple market, has begun to market pneumatic staple guns under a label which prominently features the identification T50. This is alleged to describe a tacker and its maximum metric length staple. Defendant has neither advertised, nor sought to educate its customers to such effect. This claim is not credited in the face of the evidence, or from defendant's personnel, See depositions of Blythe and Amey. It is claimed that a number used with the T, e.g., T-26, 29, 31, 36, among others, did not universally signify the maximum usable staple length, either in the industry, to the public nor in defendant's own product line. The 2-inch maximum length staple used is closer to 51 mm. than it is to 50 mm. Further, the greater volume of defendant's business is selling staples, not staplers, which are the mechanical means of affixing staples. Some of the numbers used to identify the staplers were arbitrary selections. Defendant was on notice of the trademark status of T-50. Prior to introduction of the T50/55 products it conducted an investigation of all aspects of Arrow's business in relation to a possible bid to purchase Arrow. It is held to have known of the T-50 registration. Prior to any significant use of T50/55, defendant was informed of plaintiff's infringement claim by letter dated March 5, 1991. Exs. 55-60. It failed to respond, See Exs. 57, 58, 59 and 60. Ignoring the letters smacks at least of indifference, if not an arrogant disregard of a claim that was, on its surface, not without a degree of merit. It is also not without significance that Stanley did not respond by contesting the validity of the claimed mark. It has recognized plaintiff's trademark rights. See Exs. AR, 51. Defendant uses T50/55 with other lettering to identify models of pneumatic staplers. The boxes in which such are shipped and displayed for sale prominently display the T50 in print twice the size of the other letters/numbers and are separated therefrom. Ex. B-2. Defendant claims that by checking one of six added parts of a model number (S2-1, S2-2, S4-1, S4-2, S5-1 and S5-2), the same box can be used for the six models which differ slightly in performing characteristics. It used the same labeling for its T40, T55 and T60 lines, Exs. AP, AQ and B-1, but on the side panel of the box. On the top of the T50 box, in the same bold, enlarged print, T50 appears by itself, as it does on the stapler itself. The maker of the product is less prominently identified. The T50 identification was intended to attract buyers attention and to communicate to them with respect to the product. Exhibits AP, AQ and B-1 are no longer in use but the boxes now used, Exs. AZ-1 and AZ-4, do not feature T50. Staple packages are marked T50.

Stanley pneumatic staplers have considerably greater force than hand or electrically driven staplers. Arrow does not market a pneumatic stapler. It has an electrically driven stapler in development, Ex. 262, possibly also to be used to drive nails. Its force is planned to compare with pneumatic staplers. Such heavy duty tools are not purchased by buyers of Arrow's T-50 stapler. They are sold in the same sections as T-50 labelled products in many stores. Staplers range from small, low power, inexpensive models, using small staples for paper, to large, high power, expensive models, using large, long staples in building construction. The T-50 is close to the low end in size, driving power, size of staple and cost. Homeowners do not use pneumatic staplers. Contractors do not use lightweight small staplers in construction. There is an overlap among products. The full range of products is not carried at all stores but the largest sellers, lumber yards, hardware stores, home centers and the like, carry a full range of staplers. Arrow's products are the most universally carried and are almost always found where Stanley's line is found. The T-50 products do not directly compete with pneumatic staplers but they have a common purpose and use within the same fields, although not used in precisely the same circumstances. They are not used with precisely the same materials. Large, long staples are used to provide greater holding force. All staplers drive staples of different sizes. The T-50's maximum length staple, 9/16" is only slightly smaller that the T50's smallest usable staple, ¾". Though Stanley's T50 products are not identical to Arrow's T-50 products, they are close enough in function in the market in which they are sold to permit the finding of confusion made here. Consumer recognition of T-50 is likely to lead to the presumption that the source of products marked T50 is the same as those marked T-50. See Ex. 103. This is especially true as the use of T50 is not linked or placed with defendant's...