Creme Lure Company v. Schwartztrauber, Civ. No. 6-1638-C-2.
| Court | United States District Courts. 8th Circuit. United States State District Court of Southern District of Iowa |
| Writing for the Court | HANSON |
| Citation | 257 F. Supp. 53 |
| Decision Date | 29 August 1966 |
| Docket Number | Civ. No. 6-1638-C-2. |
| Parties | CREME LURE COMPANY, Plaintiff, v. George H. SCHWARTZTRAUBER and Georgia A. Schwartztrauber, d.b.a. Du-Dad Lure Company, Defendants. |
257 F. Supp. 53
CREME LURE COMPANY, Plaintiff,
v.
George H. SCHWARTZTRAUBER and Georgia A. Schwartztrauber, d.b.a. Du-Dad Lure Company, Defendants.
Civ. No. 6-1638-C-2.
United States District Court S. D. Iowa, Central Division.
August 29, 1966.
Low & Low, Washington, D. C., Donald H. Zarley, Des Moines, Iowa, for plaintiff.
Robert B. Harmon, Washington, D. C., Rudolph L. Lowell, Des Moines, Iowa, for defendants.
MEMORANDUM AND ORDER
HANSON, District Judge.
This is a ruling on an action to set aside the decisions of the Trademark and Appeal Board in Interference No. 6,056 and Opposition No. 42,428 wherein registration of the trademark "Du-Dad" was denied to the plaintiff and granted to the defendants. This is also a ruling on the counterclaim.
The plaintiff makes the following legal contentions:
1. Plaintiff has adopted and used the marks "Du-Dad" and "Mad-Dad" in interstate commerce within the meaning of 15 U.S.C. § 45 as early as August 1961.
2. Prior to August 1961 Defendants have not, within the meaning of 15 U.S.C. § 45, used the words "Du-Dad" in commerce.
3. Defendants have not established a "family of marks" within a trademark sense as a result of their sporadic and inconsequential sales of items bearing a "Dad" suffix during the years 1959 through 1963.
4. Plaintiff has superior trademark rights with regard to the trademarks "Du-Dad" and "Mad-Dad" and should have been awarded priority in the Patent Office Interference proceeding brought and further that the Patent Office should have dismissed Defendants' Opposition against the Plaintiff's "Mad-Dad" trademark application.
To prove that plaintiff had adopted the trademark "Du-Dad" by August 1961, the defendants rely on the fact that over $18,000.00 worth of "Mad-Dad" lures and over $29,000.00 worth of "Du-Dad" lures were sold in the fiscal year ending August 25, 1962. The Patent Office found that the plaintiff had marketed "Du-Dad" and "Mad-Dad" lures since some indefinite date subsequent to August 21, 1961. There is no evidence which contradicts or at least does not conclusively contradict that finding. The plaintiff has not proven that it made use of the trademark prior to the notice of infringement of November 13, 1961.
The plaintiff contends that the defendants had not used the trademark within the meaning of Title 15 U.S.C., Sections 1051-1127, such as to give the defendants a prior use over the plaintiff. The defendants had used the name "Du-Dad" as early as 1956 but the plaintiff claims that use was so limited as to not constitute a use under the statute. It is also claimed that the sporadic use constituted an abandonment.
Title 15 U.S.C., Section 1127, states in part:
"A mark shall be deemed to be `abandoned'—(a) When its use has been discontinued with intent not to resume. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment."
The burden of proving abandonment is upon the party asserting it and abandonment requires intention not to resume its use. R. C. W. Supervisor, Inc. v. Cuban Tobacco Co., 220 F.Supp. 453. Section 1127 also states:
"For the purposes of this chapter a mark shall be deemed to be used in commerce (a) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and the goods are sold or transported in commerce * * *." (Emphasis added.)
It is sufficient if the junior party (here defendants) was (1) actually making trademark use in commerce as required by the Lanham Act and in a position to register the mark if it chose to, and (2) at or shortly prior thereto, the time when the senior party (here plaintiff) commenced to use it and was not thereafter abandoned. West Disinfecting Company v. Onorato, 242 F.2d
The defendants argue that evidence that the product was transported in commerce is sufficient to affirm the Patent Office in that regard. This position is supported by the statute, Title 15, U.S.C., Section 1127, which states: "sold or transported in commerce." It is also supported by New England Duplicating Co. v. Mendes, 1 Cir., 190 F.2d 415 (1951) and In re Aircraft-Marine Products, Inc., 120 U.S.P.Q. 340 (1950). The Patent Office Interference proceeding No. 6056 states that:
"The record in this case clearly establishes that the junior party, the Du-Dad Lure Co. (defendants) had been using the term Du-Dad both as a trademark and as part of its trade name for several years at the time Creme entered the field with its mark Du-Dad. * * *"
The record supports the position that there was prior use and transportation by the defendants within the meaning of Title 15, U.S.C., Section 1127.
The plaintiff argues that the defendants never put the mark on the product but only on the display...
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Stockdale v. Agrico Chemical Co., Div. of Con. Oil Co., Civ. No. 69-C-2010-C.
...claim for punitive damages must also fail. This Court discussed the above rule of law in Creme Lure Company v. Schwartz-trauber, 257 F.Supp. 53, at page 55 (1966) when it "While there is some split of authority on this question, it is clear that in Iowa there can be no punitive damages......
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Stockdale v. Agrico Chemical Co., Div. of Con. Oil Co., Civ. No. 69-C-2010-C.
...claim for punitive damages must also fail. This Court discussed the above rule of law in Creme Lure Company v. Schwartz-trauber, 257 F.Supp. 53, at page 55 (1966) when it "While there is some split of authority on this question, it is clear that in Iowa there can be no punitive damages......