Cullman Ventures, Inc. v. Columbian Art Works, Inc.
Decision Date | 26 June 1989 |
Docket Number | No. 89 Civ. 312 (KC).,89 Civ. 312 (KC). |
Citation | 717 F. Supp. 96 |
Parties | CULLMAN VENTURES, INC., Plaintiff, v. COLUMBIAN ART WORKS, INC., Defendant. |
Court | U.S. District Court — Southern District of New York |
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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.
I. FINDINGS OF FACT
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 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, , 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:
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.
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 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...
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Table of Cases
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