Corning Glass Works v. Jeannette Glass Company

• Decision Date: 22 January 1970
• Docket Number: No. 69 Civ. 4566.,69 Civ. 4566.
• Citation: 308 F. Supp. 1321
• Parties: CORNING GLASS WORKS, Plaintiff, v. The JEANNETTE GLASS COMPANY, Morton Springer & Co., Inc., and Sydco Industries, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

308 F. Supp. 1321

CORNING GLASS WORKS, Plaintiff, v. The JEANNETTE GLASS COMPANY, Morton Springer & Co., Inc., and Sydco Industries, Inc., Defendants.

No. 69 Civ. 4566.

United States District Court S. D. New York.

January 22, 1970.

COPYRIGHT MATERIAL OMITTED

Rogers, Hoge & Hills, New York City, Alfred P. O'Hara and Marie V. Driscoll, New York City, of counsel, for plaintiff.

Parker Chapin & Flattau, New York City, for Jeannette Glass.

OPINION

EDELSTEIN, District Judge.

This action, brought by Corning Glass Works, raises claims of trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq., and related claims of unfair competition. Jurisdiction over the matter rests upon 28 U.S.C. § 1338 (a) and (b) (1964). Plaintiff has moved for a preliminary injunction and a hearing was held on this motion.

Plaintiff, a corporation organized and existing under the laws of the State of New York with an office and principal place of business in Corning, New York, is, and for many years prior to the acts complained of herein, has been a leading manufacturer and distributor of products made of glass and other materials for industrial, scientific and household use. These products long have been identified by plaintiff by its registered trademark CORNING.

Throughout the years plaintiff has expended considerable sums developing improved glass compositions and creating new uses for those compositions, and, in 1956, it developed a unique glass-ceramic material which it patented and identified by the trademark PYROCERAM. This material is highly resistant to breakage and temperature extremes and vessels manufactured from it may be used as freezing containers as well as cooking pans. First used in the nosecones of guided missiles, plaintiff subsequently adapted the PYROCERAM material for use in a line of commercial cooking and serving vessels which was introduced to the public in 1958. This line of products was well received by consumers, and since its introduction the line has been expanded greatly to include saucepans, skillets, baking dishes, pie plates, chicken fryers, loaf dishes, roasting platters, Dutch ovens, percolators, and teapots. The vessels are opaque, generally have a creamy white color, and are shaped in a distinctive manner. These items are sold individually and in sets and are now distributed throughout the United States and other countries. Factory sales since 1958 have exceeded $250,000,000.

The commercial products made from PYROCERAM have been sold by plaintiff from the start under another registered trademark, CORNING WARE. In addition, since 1958, the plaintiff has affixed a blue stylized cornflower design to the visible surface of its CORNING WARE products. Plaintiff has filed application to register this design as a trademark, and, in connection with two opposition proceedings, the Trademark Trial and Appeal Board of the United States Patent Office has held that the design signifies origin in plaintiff and is registrable as a trademark.¹ Presently, however, the cornflower design does not have the status of a registered trademark.

Since 1959 plaintiff has expended over one million dollars annually for the advertisement and promotion of its CORNING WARE products. Various forms of visual advertising media, including television and magazines with national circulation, are involved in this campaign, and, in addition, direct mailings and cooking demonstrations given in stores by plaintiff's sales promotion representatives are utilized. In all of these efforts emphasis is consistently given to the unique qualities of CORNING WARE.

Plaintiff's allegations of trademark infringement and unfair competition stem from the sale of glass ovenware products sold under the name of Lady Cornellia and distributed by a company called Lady Cornellia, Inc., which is located in Michigan. Lady Cornellia ovenware is sold in sets containing serving and cooking vessels such as casserole dishes, oven bakers, divided vegetable dishes, and custard cup sets. These vessels are translucent, have a milky white color, and generally are styled in a manner which approaches the shape of CORNING WARE. The ovenware bears on its visible surfaces a stylized blue flower design which, though not precisely like plaintiff's either in the details of the design or the number of flowers used, appears to this court to be sufficiently similar to plaintiff's design so as to create the same general overall impression. The sets are sold in cartons which display pictures of the ovenware bearing the blue flower design and also a prominent separate representation of a flower design. Neither the ovenware itself nor the cartons in which it is sold bear the name of any manufacturer or distributor. While Lady Cornellia ovenware is described on its packages as being a "Cook-in-Serve Ensemble," it is not made of PYROCERAM and does not share the qualities possessed by CORNING WARE.

Lady Cornellia ovenware is sold throughout the United States both directly to the public and to retail stores by itinerant salesmen. Although the cartons in which the ovenware is packed and the accompanying promotional material indicate that the price of a set of Lady Cornellia is $89.50, the ovenware, nevertheless, generally is sold for between ten and fifteen dollars a set. More significantly, Lady Cornellia is represented as being Corning ovenware. Indeed, some of the promotional material and the written guarantees which are distributed to purchasers state that Lady Cornellia ovenware is Corning ovenware. Further, the evidence indicates that the public has, in fact, been deceived, even to the extent that plaintiff has received letters from purchasers of Lady Cornellia complaining about defects in the Lady Cornellia sets and asking that adjustments be made.

The Jeannette Glass Company Jeannette, a Pennsylvania corporation with its principal place of business in Pennsylvania, manufactures the Lady Cornellia sets to the order of Lady Cornellia, Inc. Morton Springer & Co., Inc., a New York corporation with its principal place of business in New Jersey, and Sydco Industries, Inc., also a New York corporation with its principal place of business in New York, sell and distribute this ovenware. Plaintiff has alleged that these defendants, through their use of the name Lady Cornellia and a flower design on the Lady Cornellia ovenware, have infringed plaintiff's trademark and engaged in unfair competition. By its motion for a preliminary injunction plaintiff seeks an order enjoining the defendants, pending this suit, from using in connection with the manufacture, sale, offering for sale, or advertisement of ovenware and other goods and services, the term Lady Cornellia, the flower design now depicted on Lady Cornellia ovenware, and any other term, name, mark or design that includes or resembles plaintiff's trademarks. Defendants Morton Springer & Co. Inc. and Sydco Industries, Inc. have consented to the entry of a preliminary injunction against them. Jeannette opposes plaintiff's motion.

Plaintiff's application for the extraordinary remedy of a preliminary injunction has raised all of the relevant factors which the court must consider in the exercise of its sound discretion. Those factors are the probability that plaintiff will eventually succeed at trial, the presence of some irreparable injury to the plaintiff, the possible injury to the defendant, and the public interest. Citizens Committee for the Hudson Valley v. Volpe and Village of Tarrytown, 297 F.Supp. 804, 806 (S.D.N.Y.1969); I. T. S. Industria Tessuti Speciali v. Aerfab Corp., 280 F.Supp. 581, 585 (S.D.N.Y. 1967); 7 Moore, Federal Practice, ¶ 65.04.

Plaintiff has demonstrated the probability that it will ultimately prevail against Jeannette.

Generally speaking, plaintiff complains of interference with its exclusive right to use its trademarks and predicates its prayer for relief upon claims of trademark infringement and unfair competition. The law of trademark infringement is really just a part of the law of unfair competition. The former relates to the narrow question of the use of a name or device to distinguish a product and the latter relates to the broader issue of the effect on the consumer of the general impressions created upon him by competing products, each product viewed as a whole. The purpose in either event is to prevent the passing off of one's goods as those of another. American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317 (1926); Jean Patou, Inc. v. Jacqueline Cochran, Inc., 201 F.Supp. 861, 863 (S.D.N.Y.1962), aff'd. 312 F.2d 125 (2d Cir. 1963). The basic test for determining complaints of trademark infringement and unfair competition is the same, namely, whether or not any appreciable number of ordinary purchasers are likely to be confused as to the source of the products which they are buying. Atlantic Monthly Co. v. Frederick Ungar Publishing Co., 197 F.Supp. 524, 529 (S.D. N.Y.1961). The name Lady Cornellia employed to denote sets of white ovenware similar in appearance to CORNING WARE, to which has been affixed a blue flower design similar to plaintiff's design, together with the misrepresentations that have been made by individual distributors of this ovenware and the resulting confusion, persuades this court of the likelihood that plaintiff will be able to demonstrate at trial that it is the victim of both trademark infringement and unfair competition.

Jeannette maintains, however, that plaintiff is not entitled to a preliminary injunction against it because plaintiff has not demonstrated the likelihood of the ultimate success of the case against Jeannette. The major thrust of Jeannette's argument is that plaintiff has not shown that Jeannette is responsible for any of the harm which plaintiff claims to have suffered. Jeannette simply is a manufacturer. In this posture its sole function has been to manufacture the ovenware, affix to it the flower design,...