Exquisite Form Indus., Inc. v. Exquisite Fabrics of London

• Decision Date: 24 July 1974
• Docket Number: No. 72 Civ. 3151.,72 Civ. 3151.
• Citation: 378 F. Supp. 403
• Parties: EXQUISITE FORM INDUSTRIES, INC., Plaintiff, v. EXQUISITE FABRICS OF LONDON and Hamilton Adams Imports, Ltd., Defendants.
• Court: U.S. District Court — Southern District of New York

378 F. Supp. 403

EXQUISITE FORM INDUSTRIES, INC., Plaintiff, v. EXQUISITE FABRICS OF LONDON and Hamilton Adams Imports, Ltd., Defendants.

No. 72 Civ. 3151.

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

July 24, 1974.

COPYRIGHT MATERIAL OMITTED

Lackenbach & Lackenbach, Mamaroneck (Armand E. Lackenbach, Mamaroneck, N. Y., of counsel), for plaintiff.

Burns, Kennedy, Schilling & O'Shea, New York City (Edward D. Burns, New York City, of counsel), for defendant Hamilton Adams Imports, Ltd.

OPINION

BAUMAN, District Judge.

This is an action for trademark infringement and unfair competition, brought pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq., § 368-d of the General Business Law of New York, McKinney's Consol.Laws, c. 25, and the common law of unfair competition. Jurisdiction is properly vested in this court pursuant to 15 U.S.C. § 1121¹ and 28 U.S.C. § 1338.² The case was tried before this court, sitting without a jury, and what follows constitutes my findings of fact and conclusions of law pursuant to Rule 52(a) of the Federal Rules of Civil Procedure.

Exquisite Form Industries (hereafter "Exquisite Form") is a New York corporation with its principal place of business in New York City. Since approximately 1945 it has been engaged in the manufacture and sale of women's underwear, principally brassieres, garter belts and girdles; in more recent years it has also marketed swim trunks, women's body shirts, and men's hosiery.³ Over the past twenty-five years its sales have totalled approximately $375,000,000, and it has expended over $30,000,000 for advertising. Its products are publicized widely: on television and radio, in newspapers and magazines, and in department store displays.

Exquisite Form is the owner of two trademarks, both duly filed with the United States Patent Office. The first, No. 592,771, was registered on July 20, 1954. The mark is "Exquisite Form", written in script with only the "E" and "F" capitalized and particularly prominent. Many of the Exquisite Form labels submitted in evidence closely approximate this mark. The registration form notes that the mark is to be used for brassieres, garter belts, and girdles. The other trademark, No. 642,681, was registered on March 12, 1957. It is simply the word "Exquisite", in block capital letters. This, too, is specified for use with brassieres, garter belts, and girdles. An affidavit of continued use and incontestability, pursuant to §§ 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, was filed for No. 642,681 on April 2, 1962. The record does not disclose whether such an affidavit was filed for No. 592,771.

Hamilton Adams Imports, Ltd. (hereafter "HAIL"), the only defendant to have appeared in the action,⁴ is a Delaware corporation with offices in New York City. It is engaged in the importation of fabrics from various European countries, principally Ireland, England and France, and their distribution in the United States. Its principal customers are fabric departments of stores and manufacturers of women's outer garments. HAIL is now a subdivision of Moygashel Linens, an Irish corporation, which is in turn owned by Courtaulds, Ltd., a British corporation. Among the manufacturers from whom HAIL makes purchases is Exquisite Knitwear, Ltd., a British corporation, also a subsidiary of Courtaulds. Since 1969 it has purchased acrylic double knits from Exquisite Knitwear; such purchases account for perhaps 10% of HAIL's imports. The knits are purchased as "piecegoods"; that is, in 60 yard rolls. The fabric weighs between 14 and 16 ounces per square yard and is considered rather "heavy". It is sold to women's garment manufacturers for use in women's slacks, skirts, dresses and coats. Because of its weight, it is not used in the manufacture of women's undergarments. Although both HAIL and Exquisite Knitwear are subsidiaries of Courtaulds, the president of HAIL testified, without contradiction, that their dealings are at arm's length.

The instant controversy originated with the appearance of an advertisement in the May 20, 1970 issue of Women's Wear Daily, a publication with an extensive readership in the garment industry. In it, HAIL announced "a new line of knitted fabrics for Spring 1971", which was further identified as "the most extraordinary collection of new knits from one of the finest fabric houses, Exquisite Knitwear Ltd., of England." The advertisement prompted a letter from Exquisite Form's counsel to HAIL, stating that Exquisite Form believed that HAIL was infringing its rights in the use of the name "Exquisite", and demanding that HAIL desist from such use. HAIL's counsel replied, also by letter, that he believed that Exquisite Form's mark was in no way infringed by HAIL's advertisement, and that HAIL would not refrain from the use of the name "Exquisite". The matter apparently remained dormant thereafter until the appearance of two more ads for Exquisite Knitwear in Women's Wear Daily, on June 7 and June 21, 1972. The advertisements, one of which is reproduced in full in the margin,⁵ refer repeatedly to HAIL's product as "Exquisite", without the inclusion of any noun which the adjective modifies. One of them begins by saying, "We're Exquisite. The largest double-knitters in Europe."; the other states, for example, that "Exquisite will give your range a different, unique look in a crowded market." The full name is given only in the lower right hand corner of each advertisement. One, that of June 7, identifies the advertiser as Exquisite Knitwear Limited; the other, that of June 21, as Exquisite Fabrics of London. In each ad, furthermore, the word Exquisite—and Exquisite only—appears in the lower right hand corner in bold face script, in what plaintiff contends is a copy of Exquisite Form's logo. The instant action was commenced shortly after the appearance of these advertisements.

The complaint alleges four causes of action. The first charges the defendants with infringing plaintiff's "Exquisite" trademark (No. 642,681) in violation of 15 U.S.C. § 1114(1).⁶, ⁷ The second, presumably invoking common law doctrines of unfair competition, charges defendants with counterfeiting, copying, and colorably imitating plaintiff's "Exquisite" trademark and its logo. The third alleges that defendants employed false descriptions and false designations of origin in connection with its products in violation of 15 U.S. C. § 1125(a).⁸ Finally, the fourth count alleges that defendants have injured plaintiff's business reputation and diluted the quality of its trademark in violation of § 368—d of the General Business Law of New York.⁹ HAIL denies all of the material allegations of the complaint and argues that Exquisite Form's two year delay in commencing suit following the initial advertisement in May, 1970 constitutes laches and must preclude the maintenance of the action.

I.

I turn first to Count 1, which would appear to have been the focus of plaintiff's concern in his written presentations to this court and at the trial. The standard for determining trademark infringement under § 1114(1) is now a familiar one, embodied in the very language of the statute: is the designation or mark on defendants' product likely to cause confusion with plaintiff's trademark? S. C. Johnson & Son v. Johnson, 175 F.2d 176 (2nd Cir.), cert. denied, 338 U.S. 860, 70 S.Ct. 103, 94 L. Ed. 527 (1949); Telechron, Inc. v. Telicon Corp., 198 F.2d 903 (3rd Cir. 1952); Villager, Inc. v. Dial Shoe Company, 256 F.Supp. 694 (E.D.Pa.1966). As has already been pointed out in the statement of facts, plaintiff's products do not compete with those of the defendants; nevertheless, it is now well established that a plaintiff may still prevail in an infringement action if defendant's product is "sufficiently similar to make confusion likely." Admiral Corp. v. Penco, Inc., 203 F.2d 517 (2nd Cir. 1953); G. B. Kent & Sons v. P. Lorillard Co., 114 F.Supp. 621 (S.D.N.Y.1953), affd., 210 F.2d 953 (2nd Cir. 1954). The determination of "likelihood of confusion" has an inescapable element of subjectivity. The court, it has been often said, must seek to approximate the perceptions of an ordinary purchaser in arriving at its determination. Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609 (7th Cir. 1965); Vitarroz Corp. v. River Brand Rice Mills Inc., 266 F.Supp. 981 (S.D.N.Y.1967). The process of decision, however, necessarily involves more than a simple visual comparison of plaintiff's and defendant's marks in vacuo. We have been frequently reminded by our Court of Appeals that the determination involves a careful weighing of various factors which can give context to the immediate controversy. These factors were set forth by that court in Polaroid Corporation v. Polarad Electronics Corp., 287 F.2d 492 (2nd Cir. 1961):

"Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of the defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities—the court may have to take still other variables into account. American Law Institute, Restatement of Torts, §§ 729, 730, 731." 287 F.2d at 495.

See also, Triumph Hosiery Mills, Inc. v. Triumph International Corp., 308 F.2d 196 (2nd Cir. 1962); Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 315 F.Supp. 45 (S.D.N.Y.1970). The Polaroid analysis of the relevant variables will serve as a point of departure for my determination of the likelihood of confusion here.

The first to be considered is the "strength" of plaintiff's mark. The concept of strength and weakness, as one commentator has noted, "is, at best, amorphous and not susceptible of easy definition."¹⁰...