Cullman Ventures, Inc. v. Columbian Art Works, Inc., No. 89 Civ. 312 (KC).

CourtUnited States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
Writing for the CourtCONBOY
Citation717 F. Supp. 96
PartiesCULLMAN VENTURES, INC., Plaintiff, v. COLUMBIAN ART WORKS, INC., Defendant.
Docket NumberNo. 89 Civ. 312 (KC).
Decision Date26 June 1989

717 F. Supp. 96

CULLMAN VENTURES, INC., Plaintiff,
v.
COLUMBIAN ART WORKS, INC., Defendant.

No. 89 Civ. 312 (KC).

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

June 16, 1989.

As Corrected June 26, 1989.


717 F. Supp. 97
COPYRIGHT MATERIAL OMITTED
717 F. Supp. 98
COPYRIGHT MATERIAL OMITTED
717 F. Supp. 99
Paul, Weiss, Rifkind, Wharton & Garrison, New York City (Moses Silverman, John J. Sullivan and Maria Vullo, of counsel), for plaintiff

Robin, Blecker & Daley, New York City (Albert Robin, of counsel), and Cook & Egan, Chicago, Ill. (Donald E. Egan, of counsel), for defendant.

 TABLE OF CONTENTS
                 page
                 I. FINDINGS OF FACT .............................................................100
                 A. The Parties ...............................................................100
                 B. The Trademarks in Issue ...................................................101
                 C. CAW's Usage of the Term At-A-Glance .......................................104
                 1. The 2 in 1 Executive's Calendar ........................................105
                 2. The Success Weekly Calendar ............................................105
                 3. The Three Months at-a-Glance Wall Calendar .............................107
                 4. The Loose Leaf or Daily Date Wall Calendar .............................107
                 5. No. 85 Perpetucal ® Desk Calendar Refill ...............................107
                 6. No. 057-00 Calmanac ® Banking Calendar .................................108
                

717 F. Supp. 100
page II. LEGAL ANALYSIS ...............................................................111 A. The Right to the Trademarks ...............................................111 1. CAW Has Not Established Prior Use Under 15 U.S.C. § 1065 ...............112 a. No Prior Trademark Rights ...........................................113 b. Lack of Continuity ..................................................115 c. Wall Calendars vs. Appointment Books or Diaries .....................116 2. CAW Has Failed to Prove Prior Use Under 15 U.S.C. § 1115(b)(5) .........117 B. Liability of CAW for Trademark Infringement ...............................118 1. CAW Infringed The Incontestable At-A-Glance ® Trademarks On And With Respect To Appointment Books And Diaries ....................119 a. At-A-Glance ® is a Strong Mark ......................................121 (i). Recognition of Strength by Competitors ........................122 (ii). Consumer Recognition of At-A-Glance ® .........................122 (iii). Direct Competitors Have Refrained From Using At-A-Glance ® ....123 (iv). Sheaffer Eaton's Policing of its At-A-Glance ® Trademarks ......124 (v). Sales and Advertising .........................................127 b. CAW's Mark are Identical to the At-A-Glance ® Trademarks ............127 c. Competitive Proximity ...............................................129 d. Bridging the Gap ....................................................130 e. Actual Confusion ....................................................130 f. CAW's Bad Faith .....................................................131 g. Quality of the Products .............................................131 h. Sophistication of Relevant Buyers ...................................131 i. Equity ..............................................................131 2. CAW Has No Defense to Its Infringement On and With Respect to Appointment Books and Diaries ........................................132 a. CAW's Use of "At A Glance" is Not "Fair Use" ........................132 (i). The At-A-Glance ® Trademarks are Suggestive: CAW Has No "Fair Use" Defense .....................................133 (ii). CAW's Use of the At-A-Glance ® Trademarks In Connection with Appointment Books and Diaries is Trademark Use ...........................................................133 (iii). CAW's Use of the At-A-Glance ® Trademarks In Connection with Appointment Books and Diaries Is Not Good Faith "Fair Use" ..............................................133 (iv). There is No "Fair Use" Because Consumer Confusion is Likely .........................................................134 (v). CAW's Use of "At A Glance" in Its Catalogs .....................134 b. CAW has No Equitable Defense with Respect to Appointment Books and Diaries .................................................134 3. Cullman Is Not Entitled To Injunctive Relief Against CAW's Historic Use of the AT-A-GLANCE ® Trademarks on CAW's Products .................135 III. CONCLUSION ...................................................................136

OPINION AND ORDER*

CONBOY, District Judge:

I. FINDINGS OF FACT

A. The Parties

Plaintiff Cullman Ventures, Inc. ("Cullman") is a New York corporation with its executive offices at 767 Third Avenue, New York, New York. Through its Keith Clark Division, it is engaged in the manufacture and sale in interstate commerce of a variety of diary and calendar products. See Stipulation of Undisputed Facts in Part 5 of Pretrial Order ("Undisputed Facts") ¶ 1.

Defendant Columbian Art Works, Inc., ("CAW") is a Delaware corporation that maintains its executive offices at 5700 West Bender Court, Milwaukee, Wisconsin. It is engaged in the manufacture and sale in interstate commerce of desk and wall calendars, diaries, appointment books, and other record-keeping products. CAW does

717 F. Supp. 101
business in New York and operates a distribution facility in Newburgh, New York, which is within the Southern District of New York. Undisputed Facts ¶ 2

In this action, plaintiff alleges that defendant: (a) has infringed and diluted plaintiff's At-A-Glance ® Trademarks; (b) falsely designated the origin of its products; and (c) engaged in unfair competition, intentional deception of the public and false and deceptive advertising and acts. This action involves claims arising under the Lanham Act, specifically, Sections 15, 32, 33 and 43, 15 U.S.C. §§ 1065, 1114, 1115 and 1125, Sections 133, 349, 350, 350-d, 368-d of the New York General Business Law, and the common law.

CAW defends upon the grounds that it is the prior user, that its use of the phrase "At A Glance" is not likely to cause confusion, that its use is a good faith descriptive use, and that although plaintiff's trademark registrations are valid, plaintiff has acquiesced in and is estopped to complain of defendant's use.

Plaintiff requests a judgment:

a. permanently enjoining defendant from
(i) using "At-A-Glance" or any variation of that phrase with a time designation (e.g., "Day-At-A-Glance", "Week-At-A-Glance", "A-Week-At-A-Glance", "Two-Weeks-At-A-Glance", "Month-At-A-Glance" or "Year-At-A-Glance") in any form or logo (e.g., with or without capitalization or hyphenation) on any product; and
(ii) using "At-A-Glance" or any variation of that phrase with a time designation (as described above) to advertise or promote any product;
b. ordering the destruction of all infringing articles in defendant's custody or control;
c. awarding plaintiff three times the profits realized by defendant from the sale of infringing products;
d. awarding plaintiff such damages, trebled, as it can show at trial;
e. awarding plaintiff its costs of bringing this action, including reasonable attorneys' fees; and
f. granting such other and further relief as is just and proper.

Defendant, by its answer, requests that the complaint be dismissed with costs, that the Court order cancellation of plaintiff's trademark registrations, pursuant to 15 U.S.C. § 1064(c), and that defendant have and recover of plaintiff its reasonable attorney fees.

By stipulation of the parties and order of the Court, dated March 7, 1989, the trial conducted on April 4, 5, 6, 10, 12, 13 and May 8 was limited to the issues of liability and entitlement to injunctive relief. It was agreed that if plaintiff prevailed, a separate trial on the issue of damages would be set for a later date.

B. The Trademarks in Issue

The "At-A-Glance ® business" was established by Nascon Service, Inc. ("Nascon") in New York. As the business exists today, it consists primarily of the manufacture and distribution of bound calendar books, which are appointment books, diaries, and the refills for those books. This line of bound calendar books is identified by the At-A-Glance ® trademark. Each dated product in the line is marked with the At-A-Glance ® trademark and a related trademark, such as Month-At-A-Glance ®, Week-At-A-Glance ® or Day-At-A-Glance ®. These trademarks are collectively referred to as the "At-A-Glance ® Trademarks." The At-A-Glance ® line also includes other related products such as address books, planners and wall calendars, which are identified by the At-A-Glance ® trademark. PX 201-37, 305.1

The first At-A-Glance ® product was introduced by Nascon in 1934. PX 289, at 7359, 7366, 7382; PX 292, at 7452, 7459, 7503. Eaton Paper Corporation ("Eaton") acquired Nascon in 1947 and the two At-A-Glance ® trademarks that had been registered

717 F. Supp. 102
by that time were assigned to Eaton, which later registered additional At-A-Glance ® trademarks. PX 290, at 74; PX 292, at 7483. In 1968, Textron, Inc. ("Textron") acquired Eaton, and later merged Eaton with its Sheaffer pen business to form the Sheaffer Eaton Division of Textron ("Sheaffer Eaton"). Frantz 276-77.2 The At-A-Glance ® Trademarks were assigned to Textron in 1968 which later registered the balance of the At-A-Glance ® Trademarks. Undisputed Facts ¶ 4.

In August 1987, Textron sold its Sheaffer Eaton Division to Gefinor, Inc., which incorporated this business as a wholly owned subsidiary, Sheaffer Eaton, Inc. The At-A-Glance ® Trademarks were assigned by Textron to the newly formed Sheaffer Eaton, Inc. Undisputed Facts ¶ 4; Frantz 276-77. In February 1988, Cullman purchased the At-A-Glance ® business from Sheaffer Eaton, Inc. and the At-A-Glance ® Trademarks were assigned to Cullman. PX 288; Undisputed Facts ¶ 4; Frantz 276-77; Hargrove 127-32.

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52 practice notes
  • Pebble Beach Co. v. Tour 18 I, Ltd., Civil Action No. 93-3875.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • September 10, 1996
    ...use defense is available. Hypertherm, 832 F.2d at 700; Zatarains, 698 F.2d at 791; Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 134 Tour 18's comparative advertising defense fails. First, the Court held above that Tour 18's prominent use of plaintiffs' exact service ......
  • Buti v. Impressa Perosa, SRL, No. 95 Civ. 3525 (AGS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • August 9, 1996
    ...v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 50, 63 L.Ed. 141 (1918)); Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 112 (S.D.N.Y.1989) ("Mere advertisement of a product by use of a mark would not constitute common law trademark use. Common law trademark ri......
  • Dial-A-Mattress v. Mattress Madness, No. 92-CV-3670 (TCP).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • January 27, 1994
    ...that user accrued superior common law rights in the mark prior to registration. See Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 112-13 1. Cancellation of Dial-A-Mattress Mark Defendants contend that plaintiff's registration is contestable and subject to cancellation......
  • Emmpresa Cubana Del Tabaco v. Culbro Corp., No. 97 CIV. 8399(RWS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • June 26, 2002
    ...very similar labels on the same product must invariably cause consumer confusion"); Cullman Ventures Inc. v. Columbian Art Works Inc., 717 F.Supp. 96, 127 (S.D.N.Y. 1989) ("the products are more than confusingly similar—they are virtually identical —and thus consumer confusion is inevitable......
  • Request a trial to view additional results
52 cases
  • Pebble Beach Co. v. Tour 18 I, Ltd., Civil Action No. 93-3875.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • September 10, 1996
    ...use defense is available. Hypertherm, 832 F.2d at 700; Zatarains, 698 F.2d at 791; Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 134 Tour 18's comparative advertising defense fails. First, the Court held above that Tour 18's prominent use of plaintiffs' exact service ......
  • Buti v. Impressa Perosa, SRL, No. 95 Civ. 3525 (AGS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • August 9, 1996
    ...v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 50, 63 L.Ed. 141 (1918)); Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 112 (S.D.N.Y.1989) ("Mere advertisement of a product by use of a mark would not constitute common law trademark use. Common law tradema......
  • Dial-A-Mattress v. Mattress Madness, No. 92-CV-3670 (TCP).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • January 27, 1994
    ...that user accrued superior common law rights in the mark prior to registration. See Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 112-13 1. Cancellation of Dial-A-Mattress Mark Defendants contend that plaintiff's registration is contestable and subject to cancellation......
  • Emmpresa Cubana Del Tabaco v. Culbro Corp., No. 97 CIV. 8399(RWS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • June 26, 2002
    ...similar labels on the same product must invariably cause consumer confusion"); Cullman Ventures Inc. v. Columbian Art Works Inc., 717 F.Supp. 96, 127 (S.D.N.Y. 1989) ("the products are more than confusingly similar—they are virtually identical —and thus consumer confusion is inevi......
  • Request a trial to view additional results

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