Avedis Zildjian Co. v. Fred Gretsch Mfg. Co., Civ. No. 13728.
| Decision Date | 26 December 1956 |
| Docket Number | Civ. No. 13728. |
| Citation | 147 F. Supp. 614 |
| Parties | AVEDIS ZILDJIAN CO., Plaintiff, v. The FRED GRETSCH MFG. CO., and Buegeleisen & Jacobson, Inc., Defendants. |
| Court | U.S. District Court — Eastern District of New York |
Harold E. Cole, Boston, Mass., for plaintiff.
Leo C. Krazinski, New York City, for defendants.
In this case the plaintiff seeks to review the action of the Commissioner of Patents in refusing to cancel two trade marks duly registered and owned by the defendant Gretsch, pursuant to Title 15 U.S.C.A. § 1071, wherein the practice is assimilated to the provisions of Title 35 U.S.C. §§ 145 and 146, having to do with patents.
The complaint also alleges unfair competition on the part of the defendant in respect of matters which flow from the conflicting claims of the parties to the right to the use of the family name "Zildjian" in the cymbal business.
The plaintiff is a Massachusetts corporation of Quincy, in that State, and the defendant Gretsch is a New York corporation having its principal office in this District; the co-defendant is likewise a New York corporation located in Manhattan, whose interest in the litigation has not been revealed.
The real controversy is between the plaintiff and Gretsch, and is the current manifestation of litigation between the parties which started in 1929.
Most of the material facts are set forth in a stipulation approved by the court on January 26, 1956.
Both parties are engaged in the sale of cymbals; the plaintiff manufactures and sells from its plant in Quincy, Massachusetts, while Gretsch imports them from Istanbul, formerly known as Constantinople, in Turkey. The plaintiff's business started in 1929, while Gretsch began importing these (K. Zildjian) Turkish cymbals in 1913-14; but its present status dates from 1928 when a contract in evidence was entered into between Gretsch and the K. Zildjian partnership of Constantinople.
The bone of contention is the use of the family name Zildjian, alone or with the respective initials "A" or "K", or the given name Avedis (formerly Armand), and the essence of the dispute is the question of whether one Aram, the uncle of Avedis (who is the president of the plaintiff), possessed complete knowledge of the secret formula and process for making cymbals which had been practiced by the Zildjian family for a great many years (perhaps 300), and if he did, whether in 1928 his knowledge was imparted by him to Avedis, and is now practiced by the plaintiff corporation of which he is the head.
The subject was gone into extensively on the trial of this case, and in the hearings in the Patent Office, but since a precise answer to the question depends upon what various persons say in 1956 concerning what was known in 1928 by persons now deceased, it must be obvious that more or less informed conjecture, rather than reasonable assurance, must govern the resolution of the controversy as herein undertaken.
Nor does the trial testimony reveal any substantial contribution to the history of the registrations; as to the antecedent events however there is corroboration of what is stated in the respective decisions rendered in the Patent Office, which are exhibits attached to the complaint.
No necessity is seen for rehearsing the factual recitals in those two opinions, nor is it believed that anything has been presented to the court on this trial which would justify a decision contrary to that announced by the Commissioner.
This complaint was filed in July of 1953 within thirty days after the final decision of the Patent Office, and some twenty-four years after a prior litigation between the parties in the District Court of the United States for the District of Massachusetts, had resulted in a consent decree. Many of the provisions of that decree and its effect, narrow the present controversy more than the briefs here on file would suggest.
In that case the partnership of which the corporate plaintiff is the successor, and its members individually, were the defendants, and Gretsch was the plaintiff.
The principal argument of the plaintiff here is that since Gretsch is not a manufacturer of these cymbals but only the agent of the Turkish producer, the two trade marks which the Patent Office refused to cancel should now in effect be denied registration by action of this court; but as pointed out in the opinion of the Examiner, those renewal registrations were applied for nearly twenty years after the consent decree had been entered and the original registrations were granted.
The first paragraph of the decree reads:
"Ordered, Adjudged and Decreed that plaintiff (Gretsch) is the sole and exclusive owner of the certificate of registration of trade marks issued to plaintiff on the 17th day of June, 1927, No. 228,592; on the 21st day of August, 1928, No. 245,846, and on the 2nd day of October, 1928, No. 247,623 and of the trade marks therein and thereby registered and each of them and of all the rights secured by the aforesaid certificates of registration."
Plaintiff seeks to avoid the Patent Office decision by referring to later Office holdings having to do with importers of trade mark articles. Decisions are cited in its brief to the effect that an importer of goods bearing a trade mark of a foreign manufacturer, is not the owner of the trade mark and therefore not eligible to register it in the United States Patent Office.
In other words, the decision in this case rendered in 1953 is said to have become obsolete in view of the later departmental holdings upon which the plaintiff relies.
Here Gretsch was very much more than a mere importer, and as can be seen from a reference to its 1928 contract with K. Zildjian & Co., was commissioned to develop and expand business in the United States and Canada of the Turkish producer; the good will of the business of the latter in these two countries was assigned to Gretsch for the purpose of effectuating its right to register the trade marks in question.
The terms of the contract are discussed and explained in the Patent Office opinions, and nothing need here be said in elaboration of that branch of the case.
This subject will be referred to below in a recapitulation of the legal questions to be embraced in this decision.
The matters in controversy pro and con, concerning the mutual charges of unfair competition, will be briefly discussed in their proper order, to the extent deemed necessary.
In an attempt at brevity, the contentions deemed important will be separately listed and commented upon:
(1) Gretsch's right to register the trade mark as agent even though it doesn't manufacture the cymbals. It was in terms commissioned so to do by the K. Zildjian partnership in Turkey in connection with the assignment of the good will of K. Zildjian in the United States, for the evident purpose of building up the distribution in this country of their Turkish product. The law on this subject must be deemed to have been established in Scandinavia Belting v. Asbestos, etc., 2 Cir., 257 F. 937; see pages 955 et seq. That case was cited with approval in G. H. Mumm Champagne v. Eastern Wine Corporation, 2 Cir., 142 F.2d 499, at page 502.
The Patent Office decisions, cited by plaintiff, which are later than that here sought to be reversed, have been examined and are not understood to change the law as declared in the Scandinavia case. It is reasonable to assume that if the plaintiff had deemed that such was their effect, some kind of application would have been timely made to the Commission for a rehearing of this petition, in light of the later holdings. No such attempt seems to have been made.
The plaintiff contends that fraud was practiced by Gretsch in obtaining the original registrations. That question was presented to the Patent Office as appears from the opinions, and was resolved in favor of Gretsch, and thus becomes in effect a finding which this court accepts; see Esso Standard Oil Co. v. Sun Oil Co., 97 U.S.App.D.C. 154, 229 F.2d 37.
The same comment applies to the plaintiff's assertions concerning the alleged abandonment by Gretsch, in respect of a certain non-essential element of the drawing showing the trade mark as registered.
The consent decree has its place in connection with this branch of the case. That decree is in full force and effect as against the plaintiff which is the corporate successor of the partnership composed of the defendants named in that case. The trade mark status as between the parties was thereby fixed and therefore is not open to question in this litigation. This means that the renewals of the registration of the two respective marks which plaintiff here seeks to cancel, are not deemed to present an issue which this court should adjudicate, apart from its function to review the Patent Office proceedings.
It is therefore concluded that this contention should be resolved in accord with the decision of the Patent Office and in favor of the defendant Gretsch, both on the questions of abandonment and alleged fraud.
(2) Plaintiff argues that the secret formula and process practiced by Kerope Zildjian became the property of this plaintiff.
Since the court is dealing with a secret, the details of which are closely guarded by both parties, nothing can be stated in connection with this argument by way of scientific testimony touching either the elements of the formula or the necessary steps in the process; this lack of testimony suggests the only approach to decision which is open to the court.
The record is deemed to show that the source, for present purposes, of the formula and process for making the Zildjian cymbals in Turkey was Kerope Zildjian who was the survivor of two brothers who conducted the business (in Constantinople) following the death of their own father, under the style of A. Zildjian & Cie, which was the name used by him. This was in about 1866.
Kerope changed the name to K. Zildjian & Cie and continued the business until his death in...
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- Avedis Zildjian Co. v. Fred Gretsch Mfg. Co., 96
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Application of Avedis Zildjian Co.
...the mark which, with a minor modification, is sought to be registered here. 97 USPQ 41 (Patent Office Examiner-in-Chief 1953); 147 F.Supp. 614 (E.D. N.Y.1956); 251 F.2d 530 (2d Cir. An application by appellant to register the cancelled mark was similarly rejected by the Trademark Trial and ......
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Royal Crown Cola Co. v. Crown Beverage Corporation, 60-C-567.
...under section 1071. See Consolidated Cosmetics v. Neilson Chemical Co., D.C.Mich.1952, 109 F.Supp. 300; Avedis Zildjian Co. v. Fred Gretsch Mfg. Co., D.C.N.Y.1956, 147 F.Supp. 614, affirmed 2 Cir., 251 F.2d The conclusion follows that the motions for summary judgment must be denied. Plainti......