Emerson Electric Mfg. Co. v. Emerson Radio & P. Corp.
| Decision Date | 05 August 1938 |
| Parties | EMERSON ELECTRIC MFG. CO. v. EMERSON RADIO & PHONOGRAPH CORPORATION et al. |
| Court | U.S. District Court — Southern District of New York |
Lawrence C. Kingsland and Edmond C. Rogers, both of St. Louis, Mo., for plaintiff.
Pennie, Davis, Marvin & Edmonds, of New York City (Estill E. Ezell, of St. Louis, Mo., of counsel), for plaintiff.
Darby & Darby, of New York City (Samuel E. Darby, Jr., Louis D. Fletcher, and David Williams, all of New York City, of counsel), for defendant.
This is a suit for alleged trade mark infringement and for unfair competition, specifically infringement of trade mark registration No. 111,931 of August 10, 1916, and No. 199,433 of June 9, 1925; also under the common law of trade marks.
The Emerson Electric Manufacturing Company is a manufacturing company located in St. Louis, Missouri, where it has its principal office, although it has branch offices in several cities in the United States including New York City. The two corporate defendants, the Emerson Radio & Phonograph Corporation and the Emerson Television-Radio, Inc., are New York corporations and have their offices in New York City; the individual defendant, Benjamin Abrams, is President of both of the corporate defendants.
and the plaintiff states the present suit is founded essentially on this trade mark of August 15, 1916.
From its earliest days the plaintiff manufactured "Emerson" electric fans, which continues to be its chief product, but its products include motors, electric generators, electrically operated washing machines, coffee mills, and the like. In 1926 plaintiff's engineering department constructed either two or three radio sets as an experiment, but they were not put on the market. With this exception plaintiff has never manufactured or sold any radio sets or phonographs. The plaintiff has for years advertised extensively and its products have been sold generally throughout the United States and in foreign countries.
The Emerson Radio & Phonograph Corporation sells Emerson radios procured from the Emerson Television-Radio, Inc. Emerson Television-Radio, Inc., manufactures all the radios for Emerson Radio & Phonograph Corporation. The corporate defendants, Emerson Radio & Phonograph Corporation and the Emerson Television-Radio, Inc., are so closely related that for practical purposes in this suit they will be referred to as the defendants, manufacture and sell the "Emerson" radio and combination radio and phonograph, and are the successors to the Emerson Phonograph Company which was started by Victor A. Emerson in 1915 which, at that time, made the Emerson phonograph records and accessories, for which registration of his name as a trade mark was effected June 25, 1916, No. 108,287. This mark consisted of the words "Victor H. Emerson" in script which was used continuously since July 1, 1915 in connection with phonographic machines and sound records. Additional marks were adopted and used. These were No. 130,063, registered April 6, 1920—a mark consisting of a representation of a shield in black and white with the word "Emerson" across the top used in connection with the sale of phonograph records continuously since May, 1918. No. 131,902 registered May 25, 1920—a mark consisting of a treble clef used since July 1918. No. 155,412 registered May 30, 1922—a mark consisting of a treble clef superimposed upon a phonograph record and the words "Emerson Records" used in connection with the sale of phonographs and phonograph records since June 3, 1918. No. 225,976 registered March 29, 1927—a mark consisting of a treble clef with the words "Emerson Phonoradio" and a scroll underneath, used since March 14, 1924 in connection with the sale of complete radio receiving sets adapted to combination with phonographs. This mark was registered by the Wasmuth-Goodrich Company, furniture manufacturers, who made the cabinets for the defendant on which the name "Emerson" as part of the manufacturing process was placed and who, for this reason, filed the application. But defendant acquired on September 20, 1928 by assignment, all rights to this mark.
In 1921 the Emerson Company became involved in financial difficulties, which resulted in an equity receivership. Mr. Abrams, who had been a large distributor with the Emerson Phonograph Company, purchased the assets and has uninterruptedly continued this business since that time.
In 1923 the defendant commenced producing combined radios and phonographs which were sold under its trade mark. It also began the manufacture and sale of radio receiving sets which it also sold under its trade mark and since then has been actively engaged in manufacturing and selling both of them. The defendant held licenses from the Radio Corporation of America under which it was licensed to manufacture television apparatus as well as radios under the patents of that company and its associated companies. With the probable advent of television, the defendant on September 12, 1933 applied for registration of its well known trade mark for television and combined radio and television equipment, which it alleged it had been continuously using since July 1, 1927, consisting of a treble clef, under which were the words "Emerson Radio and Television". The application was allowed and published by the Patent Office, although plaintiff opposed on two grounds—(1) that the products of the plaintiff and of the defendant were legally similar; (2) that confusion had occurred or was likely to occur between the products of the respective parties if the same name "Emerson" was used, as plaintiff had marketed its goods with the name "Emerson" displayed on them since about 1890 and was the owner of the trade marks registrations No. 111,931, dated August 15, 1916; No. 112,418 dated September 5, 1916, and No. 199,433 date June 9, 1925. Testimony was taken by both sides and the opposition proceeding was carried to the Court of Customs and Patent Appeals, which held in favor of the defendant and trade mark registration No. 349,887 was issued on September 15, 1937 to the defendant for its old trade mark as applied to radio-television. On April 4, 1936, while the opposition proceedings were pending in the Court of Customs and Patent Appeals, the plaintiff filed the bill of complaint in the suit at bar, which was the first protest against the defendant's use of its old trade mark on radio or phonographs, or assertion that such use constituted infringement of any rights of the plaintiff.
In the period from 1922 to April 30th of the present year (1938) the defendant has sold throughout the United States upwards of 2,000,000 radio receiving sets and "phonoradios", representing a total sales value of $30,344,082 and has expended $2,560,950 in advertising and sales promotion. The advertising was carried on in the public press, nationally known magazines, trade journals, bill posters, radio broadcast, etc. The yearly figures indicate a gradual and fairly constant growth in reputation and amounts of sales are as follows:
Advertisement
and
Year Sales Sales Promotion
1923 $ 304,604 $ 40,483
1923-1924 581,042 59,204
1924-1925 428,322 52,911
1925-1926 335,231 25,493
1926-1927 541,300 44,529
1927-1928 946,144 44,991
1928-1929 1,202,892 91,452
1929-1930 1,518,169 83,785
1930-1931 1,636,160 91,682
1931-1932 1,410,496 96,319
1932-1933 1,961,111 158,525
1933-1934 2,552,651 219,624
1934-1935 3,555,239 255,017
1935-1936 4,546,328 416,131
1936-1937 6,101,206 633,663
1937 to April
30, 1938 2,923,187 247,143
___________ __________
$30,344,082 $2,560,952
Thirty per cent of these sales were in the City of New York and about thirty per cent of defendant's advertising was in New York City. The rest of the sales and advertising were general throughout the United States. From 1923 to the present time approximately 60,000 of the defendant's Emerson radios had been sold in St. Louis where the plaintiff's principal place of business has been located since its formation, and approximately 100,000 of its Emerson radios have been sold in Chicago. During this period defendant spent for advertising $25,000 in St. Louis and $76,000 in Chicago. Since 1931 defendant has held licenses under various patents from the Radio Corporation of America, the American Telephone & Telegraph Company, Western Electric Company, General Electric Company, and the Westinghouse Electric Manufacturing Company. According to the figures of the Radio Manufacturing Association, defendant has sold twenty five per cent of all the radio sets sold by licensees of the Radio Corporation of America, representing virtually one hundred per cent of the radio receivers manufactured in the United States. The defendant has, through the years, established itself as the largest manufacturer in...
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