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

• Court: United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
• Writing for the Court: CONBOY
• Citation: 717 F. Supp. 96
• Parties: CULLMAN VENTURES, INC., Plaintiff, v. COLUMBIAN ART WORKS, INC., Defendant.
• Docket Number: No. 89 Civ. 312 (KC).
• Decision Date: 26 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.

The following trademarks...