Baker v. Simmons Company

• Decision Date: 20 July 1962
• Docket Number: No. 5962.,5962.
• Citation: 307 F.2d 458
• Parties: Abraham (Abe) BAKER as an Individual and also d/b/a Simmonds Upholstering Company, Simmonds Upholstering Co., Inc., Simmonds Sales System, Inc., and New England Upholstering Co., Inc., Defendants, Appellants, v. SIMMONS COMPANY, Plaintiff, Appellee.
• Court: U.S. Court of Appeals — First Circuit

307 F.2d 458 (1962)

Abraham (Abe) BAKER as an Individual and also d/b/a Simmonds Upholstering Company, Simmonds Upholstering Co., Inc., Simmonds Sales System, Inc., and New England Upholstering Co., Inc., Defendants, Appellants, v.SIMMONS COMPANY, Plaintiff, Appellee.

No. 5962.

United States Court of Appeals First Circuit.

Heard May 2, 1962.

Decided July 20, 1962.

C. Keefe Hurley, Boston, Mass., with whom Earle C. Cooley, Boston, Mass., was on brief, for appellants.

Francis A. Even, Chicago, Ill., with whom William E. Anderson, Chicago, Ill., Michael S. Dukakis, Boston, Mass., Soans, Anderson, Luedeka & Fitch, Chicago, Ill., and Hill, Barlow, Goodale & Adams, Boston, Mass., were on brief, for appellee.

Before HARTIGAN and ALDRICH, Circuit Judges, and GIGNOUX, District Judge.

HARTIGAN, Circuit Judge.

This is an appeal from an injunction issued by the District Court of the United States for the District of Massachusetts on November 16, 1961 in an action involving trademark infringement and unfair competition.

Plaintiff, appellee — the Simmons Company — is one of the nation's leading manufacturers of mattresses and box springs.Plaintiff's predecessor company first began manufacturing beds and bed springs for the public under the name Simmons in 1899.In 1959plaintiff had a business volume of $132,600,000.It now sells approximately twenty per cent of all the mattresses sold in the United States.Simmons average annual advertising expenditures is about $2,000,000.While it manufactures furniture for a variety of purposes and rooms, the overwhelming majority of its productive efforts and advertising are directed towards the marketing of products possessing a "sleep feature."¹

Every product leaving the plaintiff's plants bears the name "Simmons."On objective record evidence, it was demonstrated that the Simmons name is well known to the American public, and its reputation is good.

The individual defendant's name is Abraham Baker.Baker is the sole owner of two of the corporate defendants, Simmonds Upholstering Co., Inc., and New England Upholstering Co., Inc.He also held the controlling shares in the Simmonds Sales System, Inc.All corporate defendants were organized under the laws of Massachusetts.Defendants are in the reupholstering business and their history is as follows:

In 1935 Baker opened a retail furniture business in Lawrence, Massachusetts, under the name "Baker Furniture Co."This venture, under the Baker name, apparently continued as a small retail outlet until 1945.Some time around 1940, Baker started a reupholstering operation as an adjunct to and in the same building as his furniture business.This new venture was styled the "Simmonds Upholstering Company."At the time that the "Simmonds" name was selected, the Baker Furniture store was solvent and according to Baker's testimony enjoyed a good reputation in the community.

Baker operated the "Simmonds Upholstering Company" as a sole proprietorship until 1952.In that year, defendantSimmonds Upholstering Co., Inc., which had been incorporated in 1950, became active in the reupholstering business.This corporation serves as the vehicle for selling reupholstering service to the public, purchasing fabrics, delivering the finished product, and financing the entire reupholstering operation.Defendant, New England Upholstering Company, is the manufacturing branch of Baker's corporate group and does the actual reupholstering.Defendant, Simmonds Sales System, Inc., now defunct, was organized in 1950 for the purpose of granting franchises to individual established reupholsterers so that they might operate under the name "Simmonds Upholstering Company."Franchises were granted in New York City and Albany, New York, New Jersey and in Pittsburgh and Detroit.

The advent of World War II, with its restrictions on the production of new living room sets possessing springs, proved a great boon to the reupholstering business.Baker's operations expanded significantly during this period and have continued to prosper through the years.In 1959the defendants' annual volume from reupholstering services was $2,486,546.80.

With the demise of its franchise system the defendants' market for reupholstering service is concentrated primarily in the New England states and in the area of Albany, New York.Defendants advertise extensively throughout this area through the media of newspaper, radio, television and direct mail.Defendants do not maintain retail outlets for their reupholstering services but rely on home calls by the Simmonds sales force.In defendants' words, the thrust of the Simmonds advertising is to offer "such an attractive combination of low price, extra value and premiums, that the prospective customer will pick up the telephone and call a branch office to request a visit from a salesman."

On October 10, 1958plaintiff initiated the present action alleging unfair competition and trademark infringement and seeking to enjoin the defendants from using the name "Simmonds" and for other relief.Defendants denied infringement, asserted the affirmative defenses of laches and estoppel, that the defendants and their predecessors had been doing business under the name Simmonds since 1899, and thus had rights in the name "Simmonds" paramount to any which the plaintiff might have in "Simmons."Defendants further alleged that they neither sold nor manufactured goods of the kind manufactured by the plaintiff.Subsequently defendants amended their answer to assert the additional defense that plaintiff's "Beautyrest" Sign Program for motels was violative of certain provisions of the Sherman and Clayton Anti-trust Acts.

In September 1960the defendants moved for summary judgment on the basis of their affirmative defenses, supported by affidavits, interrogatories and answers, together with pre-trial depositions.Plaintiff countered with deposition testimony bearing directly on the affirmative defenses as well as revealing substantial issues of fact.The court denied the motion for summary judgment.

In a motion by the defendants for reconsideration of the court's action relative to summary judgment, the defendants admitted for the sake of the motion, all of the facts asserted by the plaintiff in any and all of the pleadings and papers filed by the plaintiff.The court, thereafter, reaffirmed its denial of summary judgment as a matter of law.

Trial began on September 21, 1960.On the fifth day of trial the defendants moved again to further amend their answer to plead as a further defense an alleged violation by the plaintiff of Section 2(d) of the Clayton Act,15 U.S.C.A. § 13(d)as amended by the Robinson-Patman Act.The trial lasting fifty days ended on March 3, 1961.

On November 15, 1961the trial court entered its findings of fact and conclusions of law and on the following day enjoined the defendants"from using the name `Simmonds' and from using any other name or representation which would lead the public to believe that defendants are associated with the Plaintiff."

In issuing the instant injunction the district court made the following crucial finding of fact:

"E.CONFUSION

"21.I find on all the evidence that the name `Simmonds\' as it has been used in the conduct of the DEFENDANT\'S business is indistinguishable when spoken from `Simmons\', has been of a most confusing character, and that its use by the Defendants has not only in the past, but is likely in the future to cause confusion among the purchasing public in New England and elsewhere."

This finding and the ramifications thereof are central to the present action.

In an action for infringement of a protected trademark or name the test is that of confusing similarity.Thus under the Lanham Act it is incumbent upon a court to determine whether a defendant's use of the contested mark is "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of the plaintiff's such goods or services."§ 32(1),15 U.S.C.A. § 1114 (1).Moreover, "What has been said respecting infringement applies as well to the cause of action for unfair competition, which is but a somewhat broader phase of the same wrong.The gist of this action is the likelihood that the goods of the defendant will be passed off as those of the plaintiff. citing cases."Standard Brands v. Smidler, 151 F.2d 34, 37(2 Cir.1945).In sum, both actions, i. e., trademark infringement as well as unfair competition, in addition to according legal protection to the property right which has been established in a given name, seek to insure that the public is not misled into purchasing or utilizing goods or services different from those sought by the pull and lure of a subtly devised parody of a familiar name or symbol.To put it more directly, one cannot ride on the coattails of another's reputation where the indicia of that reputation is legally protected.As was stated in LaTouraine Coffee Co. v. Lorraine Coffee Co., 157 F.2d 115, 118(2 Cir.1946), cert. den.329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663:

"The Supreme Court has pointed out the law\'s recognition of `the psychological function of symbols\' in protecting trademarks, adding that once the owner has impregnated `the atmosphere of the market with the drawing power of a congenial symbol\' then the owner can obtain redress `if another poaches upon the commercial magnetism of the symbol he has created.\'Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381."

Plaintiff's trademark "Simmons" is registered in the United States Patent Office under RegistrationNo. 137,699 dated November 30, 1920, Renewed November 30, 1940;RegistrationNo. 532,319 dated October 24, 1950 and RegistrationNo. 548,280, dated September 18, 1951.²

With the "Simmons" name in the market place since 1899 trademarked since 1920, and enjoying a good reputation for quality sleep and allied products, the question is whether the...