Damn I'm Good, Inc. v. Sakowitz, Inc.

• Citation: 514 F. Supp. 1357
• Decision Date: 04 June 1981
• Docket Number: No. 80 Civ. 1935,80 Civ. 2369.,80 Civ. 1935
• Parties: DAMN I'M GOOD INC., Plaintiff, v. SAKOWITZ, INC., Defendant. DAMN I'M GOOD INC., Plaintiff, v. HANOVER HOUSE INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

514 F. Supp. 1357

DAMN I'M GOOD INC., Plaintiff, v. SAKOWITZ, INC., Defendant.

DAMN I'M GOOD INC., Plaintiff, v. HANOVER HOUSE INDUSTRIES, INC., Defendant.

Nos. 80 Civ. 1935, 80 Civ. 2369.

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

June 4, 1981.

Yuter, Rosen & Dainow, New York City, for plaintiff; S. C. Yuter, New York City, of counsel.

Nims, Howes, Collison & Isner, New York City, for defendant Sakowitz, Inc.; Ralph Henkle, New York City, of counsel.

Schupak, Rosenfeld, Fischbein, Bernstein & Tannenhauser, New York City, for defendant Hanover House Industries, Inc.

Ira H. Zuckerman, New York and Cushman, Darby & Cushman, Washington, D. C., for Damn I'm Good Inc.; Edward M. Prince, Washington, D. C., of counsel.

OPINION

EDWARD WEINFELD, District Judge.

Plaintiff, alleging it is the owner of the common law trademark DAMN I'M GOOD for jewelry and other items, brought this action charging the defendants with trademark infringement under § 43(a) of the Lanham Act¹ and the common law, unfair competition, and dilution of trademark under § 368-d of the New York General Business Law. The defendants, Sakowitz, Inc. and Hanover House Industries, Inc., move for summary judgment solely on the issue of the validity of plaintiff's alleged trademark. Plaintiff cross-moves for partial summary judgment on the ground that it has a valid trademark and to enjoin the defendants from infringing this mark by advertising, distributing or selling their goods under the mark DAMN I'M GOOD. The parties agree that the record is ripe for summary resolution of the validity issue, although defendants contend that in the event plaintiff's alleged mark should be found valid, then material, disputed issues of fact prevent summary resolution of the infringement issues. Because the Court finds that plaintiff's mark is not valid, defendants' motion is granted and plaintiff's cross-motion is denied.

Plaintiff, Damn I'm Good Inc., has for the past five years been in the mail order business selling bracelets inscribed across their face in large capital letters with the phrase DAMN I'M GOOD, or with up to 48 other messages, including GOSH I'M GREAT, I'M EXPENSIVE and I'M THE BOSS.² The bracelets are smooth-surfaced with a high-gloss finish, approximately ¾ inches in width, flexible to fit all sized wrists, and may be purchased in brass or copper, and at one time in sterling silver or 14-karat gold. As of May 1980, plaintiff also sells pendants, umbrellas and gold ball markers inscribed with the DAMN I'M GOOD phrase. Plaintiff was established by Dionne Cole, the designer of the bracelet and plaintiff's president, who has assigned all rights in the alleged trademark to plaintiff. Beginning in December 1978, defendant Sakowitz, Inc., a former major retailer of plaintiff's bracelets, sold money clips, ties, bath towels and bath rugs of its own manufacture bearing the phrase DAMN I'M GOOD. Beginning in its Christmas 1979 catalog, defendant Hanover House Industries, Inc. sold bracelets that appear similar to those of plaintiff which also bear the DAMN I'M GOOD inscription.

The threshold, and in this case determinative, issue is whether plaintiff possesses a valid trademark in the phrase DAMN I'M GOOD. In contending that it holds a valid trademark, plaintiff stresses primarily that an application to the United States Patent and Trademark Office for registration of its mark DAMN I'M GOOD on the principal register was allowed for jewelry.³ The determination was published for opposition on September 30, 1980 and both defendants have filed oppositions. The matter is still pending before the Trademark Appeals Board.

However, this allowance was preceded in January 1979 by the rejection of a prior application to the Patent and Trademark Office for registration of this same mark. The rationale advanced by the Trademark Examiner at the time was that plaintiff's mark "appears to be in the nature of an ornamental design and, as such, does not serve the purpose of indicating origin of the goods in plaintiff." One year later, in response to a communication from plaintiff's attorney, the Examiner elaborated on his ruling that the phrase DAMN I'M GOOD was ornamental. Citing two Trademark Appeals Board decisions, In re Expo⁴ and In re Olin,⁵ the Examiner explained that "a mark which induces the purchaser to buy because it is aesthetically pleasing rather than being primarily a source indicator is ornamental in nature and is refused registration on the Principal Register." (emphasis added)

Since April 1980, at the Examiner's suggestion, plaintiff has attached to its bracelets small cardboard tags bearing its name, Damn I'm Good Inc. One side of these tags contains the words

DAMN I'M GOOD

by Dionne Cole

and the other side reads

Creative Products

Div. of Damn I'm Good Inc.

© 1976 Damn I'm Good Inc.

The Examiner's allowance of plaintiff's reapplication was based on this use of tags. Even the actual registration of a trademark on the principal register, however, which this case does not present, is only prima facie evidence of a trademark's validity that may be rebutted in a collateral enforcement proceeding.⁶

Plaintiff contends that a mark should be registrable as a trademark whether or not it is primarily aesthetically pleasing, unless it is without any meaning as a source indicator and is "mere ornamentation."⁷ It argues that, despite the Examiner's citation of Expo and Olin, there is no basis in either of these opinions for the test of registrability he articulated that the mark serve "primarily" as a source indicator. Defendants, on the other hand, contend that the Examiner's allowance of plaintiff's application for the phrase DAMN I'M GOOD was erroneous because the phrase is an important component of the commercial success of the bracelets and thus is a functional item that is inappropriate for trademark protection. Defendants also contend that plaintiff never promoted the phrase DAMN I'M GOOD as an indicator of source but only as a message on its bracelets.

To prevail on its trademark infringement or unfair competition claim, plaintiff must show, among other things, that the features allegedly copied by defendants are nonfunctional.⁸ When the features sought to be protected are functional there is normally no right to relief.⁹ A particular feature is functional if it connotes other than a trademark purpose, that is, if it is an important ingredient in the commercial success of the product.¹⁰ In the absence of a patent or copyright, the interest in free competition permits imitation of a feature that contributes directly to the general sale of that product.¹¹ On the other hand, when the feature is a "mere arbitrary embellishment ... primarily adopted for purposes of identification and individuality and, hence, unrelated to basic consumer demands in connection with the product," and when the requisite showing of secondary meaning is made, then imitation can be forbidden without hindering effective competition and trademark protection can be extended.¹² Thus, if a potential buyer is motivated by the inscription of DAMN I'M GOOD primarily as an aesthetic feature rather than as an indicator of the bracelet's source, then this feature is functional and may be freely appropriated by others.¹³

At least until April 1980 when plaintiff began affixing tags to its bracelets, the phrase DAMN I'M GOOD served no role in identifying the source of the bracelet. An advertisement appearing in The New Yorker magazine beginning in October 1977,¹⁴ which also was used as a retail display card, attached to order blanks, and inserted in boxes with the bracelets, bore no mention of Damn I'm Good Inc. as the source of the bracelet. The bottom of the ad indicated that the bracelet was "by Dionne Cole," and the company listed to which mail orders were to be sent was Creative Products, Inc. The ad contained the words DAMN I'M GOOD only as engraved on the bracelet, which was pictured in a photograph, and thus promoted the phrase as a message on the bracelet rather than as the bracelet's source. While plaintiff now contends that Creative Products, Inc. is a division of Damn I'm Good Inc., the ad gave no indication of this and thus failed to present Damn I'm Good Inc. to the public as the source of the bracelets. Moreover, although plaintiff claims that Dionne Cole assigned to it all her rights in the phrase DAMN I'M GOOD, this assignment cannot confer trademark status to the phrase when, as noted, it was never presented publicly as the source of the bracelets.

A second version of this ad, which first appeared in early 1978, had written vertically in small letters along the lower left border the copyright symbol "© 1978 by Damn I'm Good, Inc." However, plaintiff concedes that DAMN I'M GOOD is not copyrightable because it is lacking in sculptural authorship when applied to an unadorned bracelet and because it is a short phrase.¹⁵ Moreover, even if plaintiff were assumed to hold a copyright in the phrase DAMN I'M GOOD, its use of the phrase accompanied by a copyright symbol does not indicate to the public that the bracelets originated with plaintiff.

Ads placed in newspapers around the country throughout 1977 that were submitted to the Court indicate a similar failure to employ the phrase DAMN I'M GOOD as a source of origin. Each ad announced that the bracelets were created by Dionne Cole and pictured a bracelet inscribed with DAMN I'M GOOD, although in some a bracelet inscribed with I'M EXPENSIVE was also shown. In no place other than its location on the bracelets in these photographs did the phrase DAMN I'M GOOD appear in these ads. Again, the phrase is presented as a message rather than as the name of a source.

Indeed, even the order forms sent by plaintiff to retail stores never mention DAMN I'M GOOD as the source of the bracelets. One order form is printed on the letterhead stationery of Dionne Cole Inc., and mentions DAMN I'M GOOD only as a message: the phrase is...