Elgin Nat. Watch Co. v. Elgin Razor Corporation
| Decision Date | 29 November 1938 |
| Docket Number | No. 16175.,16175. |
| Parties | ELGIN NAT. WATCH CO. v. ELGIN RAZOR CORPORATION et al. |
| Court | U.S. District Court — Northern District of Illinois |
Rogers, Woodson & Rogers, of Chicago, Ill., for plaintiff.
James R. McKnight, of Chicago, Ill., for defendants.
Plaintiff has applied for a temporary injunction. Defendants have answered the bill and both sides have filed affidavits.
Plaintiff has a trade-mark "Elgin" which was registered in the United States Patent Office on November 7, 1905, No. 47,470 (renewed). Plaintiff has used this trade-mark in interstate commerce on a diversified line of mechanical products, chiefly time-keeping instruments. But defendant also has a trade-mark "Elgin" for electric razors sold in interstate commerce, which trade-mark was registered in the United States Patent Office on July 19, 1938, Registration No. 35,870. The name "Elgin" has been used for many years by the plaintiff in its business, but the name "Elgin" is also used as a trade-mark by many persons and companies in many different businesses. It is a geographic name which may be made a trade-mark only under the ten-year proviso of the Trade-Mark Act of 1905, Tit. 15 U.S.C., sec. 85, 15 U.S. C.A. § 85.
Under such circumstances, before a preliminary injunction will issue, the proof should be clear. Plaintiff in its brief (p. 26) says that at the final hearing competent testimony will be introduced to establish that the name "Elgin" has acquired a secondary meaning.
The main inquiry is as to whether defendants' manufacture and sale of electrical razors are in any way related to plaintiff's business. Plaintiff's business is not entirely confined to watches. Its business was established in 1864. It is one of the largest concerns in the United States engaged in the manufacture and sale of time-keeping instruments, under the trade-mark "Elgin". Plaintiff was incorporated not only for the business relating to watches and clocks, but also jewelry and mechanical instruments and devices and parts. For many years plaintiff has been engaged in the manufacture and sale of automotive, aircraft, railroad and motor boat instruments, such as tachometers, altimeters, compasses, air speed indicators, ships' chronometers, time fuse gear train mechanisms, chart boards, revolution indicator transmitters, shaft rotation direction indicators and various other mechanical devices. These products are likewise sold under the trade-mark "Elgin".
Plaintiff's annual sales of products bearing the trade-mark "Elgin" are in excess of $10,000,000, and plaintiff has spent in excess of $20,000,000 in advertising its products.
A number of instances are given of manufacturers who have expanded their operations into the manufacture of electric clocks. The business of manufacturing electric clocks seems to be reasonably related to the business of manufacturing electric razors. Whether a business such as plaintiff's may be related to a business such as defendants' must depend largely upon the facts and circumstances of each case. In the present case the evidence tends to show that there is at least more than a mere possibility of confusion in the minds of the public and in the minds of dealers. Plaintiff has established a good will and reputation for many years for the excellence and precision of its watches and other delicately adjusted and balanced instruments. Defendants advertise that their razor has a "precision" motor, and in one instance at least, as shown by the advertisement in the Boston Herald of August 25, 1938, they advertise that the Elgin electric razor is "Precision built, like a watch". Defendants also advertised in the National Jeweler in May, 1938, in the name of Elgin Laboratories (Pl. Ex. 8, second affidavit of Lampa). An advertisement in a jewelry magazine of a razor made by Elgin Laboratories is not unlikely to lead readers to believe that the Elgin National Watch Company is now putting out electric razors and advertising them to the jewelry trade. Plaintiff's affidavits show a number of instances of department store salesmen actually stating in substance (whether mistakenly or not is...
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...(Italics supplied) See also Dixi-Cola Laboratories, Inc., v. Coca-Cola Co., 4 Cir., 117 F.2d 352, 354, and Elgin Nat. Watch Co. v. Elgin Razor Corp., D.C. Ill., 25 F.Supp. 886. Cf. Derenberg on Trade-Marks, p. 325 et Although I am personally inclined to the view that by the better legal rea......
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