Car-Freshner Corp. v. Auto Aid Mfg. Corp.

• Decision Date: 05 December 1978
• Docket Number: No. 76-CV-501.,76-CV-501.
• Citation: 461 F. Supp. 1055
• Parties: CAR-FRESHNER CORPORATION and Julius Samann, Plaintiffs, v. AUTO AID MANUFACTURING CORPORATION, Original Auto Parts Distributors, Inc. and Harvey Stevens, Defendants.
• Court: U.S. District Court — Northern District of New York

461 F. Supp. 1055

CAR-FRESHNER CORPORATION and Julius Samann, Plaintiffs, v. AUTO AID MANUFACTURING CORPORATION, Original Auto Parts Distributors, Inc. and Harvey Stevens, Defendants.

No. 76-CV-501.

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

December 5, 1978.

Mackenzie Smith, Lewis, Michell & Hughes, Syracuse, N. Y., for plaintiffs; Watson, Cole, Grindle & Watson, Washington, D. C., Kevin M. Reilly, Syracuse, N. Y., F. M. deRosa, Walter D. Ames, Bernard L. Sweeney, Washington, D. C., of counsel.

Stuart R. Shaw, New York City, for defendants.

MUNSON, District Judge.

MEMORANDUM-DECISION AND ORDER

This is an action for declaratory and injunctive relief, an accounting of profits, and treble damages for alleged trademark infringement and unfair competition. Primarily in issue are two trademarks registered by the plaintiffs, one for the term "Car-Freshner," and the other for the shape of a pine tree. The following may be considered as the Court's findings of fact and conclusions of law, as required by Rules 52(a) and 65 of the Federal Rules of Civil Procedure.

I.

The plaintiffs' "Car-Freshner" and pine tree shape trademarks are registered with the Principal Register for Trademarks, maintained by the United States Patent Office. Both relate to air deodorizers manufactured and marketed by plaintiff Car-Freshner Corporation, which deodorizers are comprised of absorbent bodies impregnated with a perfumed air deodorant. The "Car-Freshner" trademark was registered on March 24, 1959, and assigned Trademark Number 675,796. The pine tree shape was registered on August 8, 1961, as Trademark Number 719,498.¹

The two trademarks in issue are owned by plaintiff Julius Samann, a Canadian citizen currently residing in Switzerland. Plaintiff Samann has granted exclusive licenses with respect to the two marks to plaintiff Car-Freshner Corporation, a New York corporation with its principal place of business in Watertown, New York. Car-Freshner Corporation manufactures and sells air deodorizers, insect removers, chrome polishes, window cleaners, and other car care products.

Defendant Harry Stevens, a New York resident, is the copyright owner² of logos and designs known as "Smilers," which logos appear inter alia upon hanging cardboard air deodorizers, bearing the shapes of mushrooms, grapes, plums, pears, bananas, and, most notably, pine trees, designed primarily for use in the home, office, or automobile. Defendant Stevens has assigned his rights in the "Smilers" to H. Stevens Enterprises, Inc., a New York corporation, which in turn has granted a license to defendant Auto Aid Manufacturing Corporation (Auto Aid) to manufacture the entire line of "Smilers."

Defendant Original Auto Parts Distributors, Inc. (Original), also a New York Corporation, distributes approximately 10,000 automobile-related products to wholesalers and retailers throughout the United States. Among the products distributed by Original, at least in the past, have been plaintiffs' automobile deodorizers.

Plaintiffs' Complaint contains four related causes of action. The first two allege trademark infringement, under both common law and the Lanham Trademark Act, 15 U.S.C. §§ 1051 et seq.,³ by the defendants of plaintiffs' "Car-Freshner" and pine tree shape trademarks. The third count alleges unfair competition on the part of the defendants. The fourth claim is one for wrongful dilution of plaintiffs' trademarks under New York General Business Law § 368-d (McKinney's 1968).⁴ Jurisdiction over the first two causes of action is alleged under Title 28 U.S.C. § 1338(a), see also 15 U.S.C. § 1121, the remaining two having been properly asserted as pendent claims. See Armstrong Co. v. NU-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195 (1938).

Contained within the defendants' Answer are two counterclaims, through which they seek to have this Court cancel plaintiffs' trademark registrations for the term "Car-Freshner" and the pine tree shape.⁵ The plaintiffs' Reply to those counterclaims was timely filed, but through inadvertence was not served upon the defendants until some time thereafter. Despite defendants' request for Default Judgment upon those counterclaims, the Court will overlook any possible technical default and consider all of the claims upon their merits.

Presently pending before this Court are cross-motions brought on by the parties. The plaintiffs have moved for an Order granting Summary Judgment upon their claims or, in the alternative, for an Order granting a Preliminary Injunction. The defendants have opposed those motions, and have separately moved for an Order granting them Summary Judgment upon their counterclaims. Defendants also seek an Order compelling the plaintiffs to proceed with discovery as requested by the defendants.

II.

A trademark, both at common law and under the Lanham Trademark Act, is generally thought of as any word, name, symbol, device, or any combination thereof adopted and used by a person or entity to identify his product. 15 U.S.C. § 1127; Callmann, Unfair Competition Trademarks and Monopolies § 65 (3d Ed. 1969) (hereinafter, simply Callmann). Registration of a trademark under the Lanham Act is prima facie evidence of the registrant's right to exclusive use of that mark. Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312 (U.S. Court of Customs and Patent Appeals 1976); Nature's Bounty, Inc. v. Basic Organics, 432 F.Supp. 546 (E.D.N.Y.1977); Callmann §§ 66.3, 97.3(b). Mere registration, however, does not foreclose attack upon the validity of a trademark. On the other hand, a trademark which has become incontestable through five consecutive years of continuous use following registration, in accordance with section 15 of the Lanham Act, as amended 15 U.S.C. § 1065, may only be impeached upon the narrow grounds set forth in section 33(b) of the Act, 15 U.S.C. § 1115(b). Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976), cert. den. 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). The Court will decide the present motions based upon the assumption that neither of the trademarks in issue have become incontestable, inasmuch as the plaintiffs have neither proven nor alleged the filing of an affidavit of incontestability, as required by section 15(3) of the Lanham Act, as amended, 15 U.S.C. § 1065(3), as a prerequisite to incontestability.⁶

Courts in this and other circuits have generally classified trademarks as being in one of four categories, viz.: 1) generic, or commonly descriptive; 2) merely descriptive; 3) suggestive; or 4) arbitrary or fanciful. Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert. den. 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978); Abercrombie & Fitch Co. v. Hunting World, Inc. (II), 537 F.2d 4 (2d Cir. 1976).

Generic trademarks have generally been described as naming the product itself, or being the genus of which the product is a species. Miller Brewing Co. v. G. Heileman Brewing Co., supra ("lite beer"); Abercrombie & Fitch Co. v. Hunting World, Inc. (II), supra; CES Pub. Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (2d Cir. 1975) ("consumer electronics"). Generic trademarks are not registerable under any circumstances, regardless of how successful efforts have been in developing secondary meaning.⁷Id.; see also Callmann § 77.2. The reason for this is not difficult to fathom. To allow exclusive use by one producer or marketer of the generic name of a product would be equivalent to creating a monopoly in that particular product, something never intended by Congress when it enacted the Lanham Act. Abercrombie & Fitch Co. v. Hunting World, Inc. (II), supra; CES Pub. Corp. v. St. Regis Publications, Inc., supra.

The distinction between descriptive and suggestive trademarks is not easily stated, and is even less easily applied. A descriptive trademark, while not generic, conveys to the consumer an immediate idea of one or more of the ingredients, qualities or characteristics of the product to which it is applied. Miller Brewing Co. v. G. Heileman Brewing Co., supra; Abercrombie & Fitch Co. v. Hunting World, Inc. (II), supra; Nature's Bounty v. Basic Organics, supra ("B-100" vitamins); Callmann § 71.1. A suggestive mark requires imagination, thought and perception in order for a consumer to associate it with a particular product. Id. A descriptive mark is registerable only upon a showing of secondary meaning, whereas a suggestive mark may be registered even absent such a showing. Miller Brewing Co. v. G. Heileman Brewing Co., supra; Abercrombie & Fitch Co. v. Hunting World, Inc. (II), supra.

A mark which is arbitrary or fanciful is one bearing little or no relation with the product with which it is associated. Kampgrounds of Amer. v. N. Del. A-OK Campground, 415 F.Supp. 1288 (D.Del.1976), aff'd. 556 F.2d 566 (3d Cir. 1977). ("KOA"); Callmann § 71.1. No showing of secondary meaning is required in order to register an arbitrary or fanciful trademark. Id.

The validity of each of the trademarks now in issue has been considered in at least one previous action. In Car-Freshner Corporation v. Marlenn Products Company, 183 F.Supp. 20 (D.Md.1960) plaintiffs' original registration of the pine tree shape as a trademark was cancelled, the court there finding that the shape, though non-functional, was "clearly descriptive of the ingredients, properties and function" of the product, air deodorizers, and that secondary meaning was not established as of the time of registration, which came a mere month after the trademark was first used by plaintiffs in the marketplace. Id. at 27-28. The court went on to state, in ruling upon plaintiffs' claim for unfair competition, that in its estimation the mark had acquired secondary meaning by 1958, the time when Marlenn Products Company entered the market. Id. at 42.

The validity of plaintiffs' "Car-Freshner" trademark came under attack in Car-Freshner Corporation v. Turtle Wax, Inc., 268 F.Supp. 162 (S....