Field Enterprises Educational Corp. v. Cove Industries, Inc.

• Decision Date: 20 March 1969
• Docket Number: No. 66-C-742.,66-C-742.
• Citation: 297 F. Supp. 989
• Parties: FIELD ENTERPRISES EDUCATIONAL CORPORATION, Plaintiff, v. COVE INDUSTRIES, INCORPORATED, Defendant.
• Court: U.S. District Court — Eastern District of New York

297 F. Supp. 989

FIELD ENTERPRISES EDUCATIONAL CORPORATION, Plaintiff, v. COVE INDUSTRIES, INCORPORATED, Defendant.

No. 66-C-742.

United States District Court E. D. New York.

March 20, 1969.

COPYRIGHT MATERIAL OMITTED

Paul, Weiss, Goldberg, Rifkind, Wharton & Garrison, New York City, for plaintiff, Jay H. Topkis, Neale M. Albert, George P. Felleman, New York City, of counsel.

Jerome Bauer, Mineola, for defendant, Herbert H. Goodman, New York City, of counsel.

MEMORANDUM AND ORDER

WEINSTEIN, District Judge.

Field Enterprises Educational Corp. (Field), publisher of the "World Book Encyclopedia," seeks an injunction, damages and an accounting in this action for trademark infringement and unfair competition against Cove Industries, Inc. (Cove), publisher of the "Illustrated World Encyclopedia." Cove attacks the trademark's validity, asserts laches, and claims lack of infringement; it counterclaims for a declaration that Field's Trademark Registrations are void. For the reasons indicated below, the trademark is valid but affirmative relief for infringement or unfair competition is not warranted.

I. FACTS

Field or its predecessors have published a "World Book Encyclopedia" uninterruptedly since 1917. "Illustrated World Encyclopedia" has been published by defendant or its predecessors since 1959.

Field's trademark, "World Book," was entered on the Principal Register of the United States Patent Office as a mark for books on December 17, 1963, with Registration Number 761,657. The same phrase was entered as a trademark for books and publications on August 24, 1965, with Registration Number 794,812.

There have been at least eight other encyclopedias in which the word "World" appears as part of the title (the dates during which these reference works were published, or are being published, are given in parentheses): "New World Cultural Library" (1962-1964); "New Wonder World Encyclopedia" (1959-1962); "Our Wonder World" (1914-1930); "Our Wonderful World" (1955-present); "Universal World Reference Encyclopedia" (1963-present); "World Educator Encyclopedia" (1963-present); "World Scope Encyclopedia" (1945-1963); "World Wide Encyclopedia" (unknown-present); "World Wide Illustrated Encyclopedia" (1935-1939); and "World University Encyclopedia" (1963-present). See Reference Books Research Publications, Inc., General Encyclopedias in Print, 1965, at 42 and passim. (1965). "New World Cultural Library," "New Wonder World Encyclopedia" and "Our Wonder World" appear to be separate titles for the same work which was also published under the title "New Wonder World." Id. at 46.

All told, at the time of the first registration by Field, there were at least five other encyclopedias then being published which incorporated the word "World" in their titles. "World Book" appears to have acquiesced in the use of the word "World" by other publishers throughout its publishing history. In addition, disclaimers of trademark rights to the exclusive use of the word "World" were made at trial.

Prior to first use by plaintiff in 1917, the "World Book Company" of Yonkers, New York used the term. But this prior use, it is fair to infer from the evidence, was abandoned many years before Field applied for registration.

"World Book Encyclopedia" presently sells at prices ranging between one hundred eighty and two hundred dollars; within the past ten years, it has not sold at a price lower than one hundred forty dollars. It is sold on a "door-to-door" basis by salesmen dealing with individual purchasers. Field controls the distribution of its product until it reaches the ultimate consumer.

At the present time, the price of Cove's "Illustrated World Encyclopedia" is approximately forty dollars. It is sold in department stores and other retail outlets. Before 1964 it was sold from house-to-house at approximately one hundred ten dollars. For a short period in 1964 and 1965, after the selling price was reduced from $109.90 to $34.95, Cove's publication was advertised in "publisher's sensational closeout sales" as the same "famous, highly rated Illustrated World Encyclopedia" formerly "Sold Door to Door."

"Illustrated World" is published in at least one edition that is very similar to the "Aristocrat" edition published by "World Book." Both are bound in yellow parchment fabric with a green and gold spine. Both are heavily illustrated. "World Book" is published in twenty volumes, "Illustrated World" in twenty-one. Both utilize contributors with scholarly backgrounds, and both print the names of these contributors on the title pages of their publications. Both are arranged alphabetically. Physically, the only significant difference lies in the size of the volumes: "World Book" is substantially thicker, and slightly taller.

The differences between the two, beyond superficial physical appearance, are striking. "Illustrated World Encyclopedia" is written for readers at the elementary or junior high school levels. "World Book," by contrast, attempts to appeal to all age groups above the grade school level; it is not recommended for use by children in lower elementary grades. Reference Books Research Publications, Inc., General Encyclopedias in Print, 1965, at 15 (1965). Field conducts an extensive and continuous revision program, and publishes an updated supplement annually. In addition, the entire work is reprinted semiannually, with current changes incorporated in the text. This is not the case with "Illustrated World," although changes are made in later editions.

In short, it may be said that as to content, format and accuracy, the "World Book" is obviously superior to the "Illustrated World Encyclopedia" for those who have successfully completed grade school. In this connection, "World Book" is:

"RECOMMENDED by the Subscription Books Committee of the American Library Association both as a children's and young people's encyclopedia for use in the home and in school and public libraries, and as a general encyclopedia for home use serving adults for ready reference. RECOMMENDED FOR FIRST PURCHASE in the Standard Catalog for High School Libraries and the Children's Catalog. ON THE APPROVED LIST OF EVERY STATE AND PROVINCE maintaining such lists." Reference Books Research Publications, Inc., General Encyclopedias in Print, 1965, at 16 (1965).

The "Illustrated World" was much less highly thought of in educational circles. Id. at 54.

Field has expended an estimated $17,000,000 over the last ten years for advertising products bearing the "World Book" trademark; it has sold three and a half to four million sets during this period. Although Cove has also advertised, its expenditures and sales have not approached those of Field.

Prior to 1965 there would have been some danger of confusion of the two works on the part of an unwary purchaser. With the reduction in price and change in marketing methods of Cove's product, the possibility of confusion has become remote. Reference has already been made to the "closeout" advertising in 1964 and 1965. During this transitional period it was not unlikely that at least some of Field's customers concluded that the superior product they had bought, or were contemplating buying, was the same as the one being "closed out" at some one hundred dollars less than the "World Book" price. There has been no evidence that this source of confusion existed after 1965.

Field was aware of Cove's use of the title "Illustrated World" and a similar format at some time prior to 1960, possibly in 1958 or 1959. Without protest, Field permitted Cove to continue on its course for over five years before bringing suit. No explanation has been offered for this delay. Since it is likely that defendant was aware of the extensive use by other publishers of the word "World," it is reasonable to conclude that Cove considered itself justified in the use of its title "Illustrated World Encyclopedia." There has been no evidence of bad faith or intent to defraud on the part of Cove.

II. PRESUMPTION OF TRADEMARK VALIDITY

Use of a registered trademark for a continuous five-year period after registration and while "there is no proceeding involving said rights pending," is required before the mark becomes incontestable and before there is a conclusive presumption of a registrant's exclusive right to use a registered trademark. 15 U.S.C. §§ 1065, 1115(b). Since "World Book" was registered less than five years before this action was commenced, registration is merely prima facie evidence of Field's exclusive right. Cove is not precluded from proving "any legal or equitable defense"—including prior use, use of non-protectable descriptive words and lack of similarity— "which might have been asserted if such mark had not been registered." 15 U.S.C. § 1115(a).

III. TRADEMARK INFRINGEMENT

A. Prior Use

Unless abandoned, prior use of a word or phrase vitiates any claim to exclusive rights by a later user. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14 S.Ct. 151, 37 L.Ed. 1144 (1893).

In light of the extensive use of the word in other encyclopedias, prior use prevents a successful claim of exclusive rights to "World." Assertion of rights in the phrase "World Book" is not precluded for this reason, however, unless there was earlier continued use of this specific combination of words. Since the phrase "World Book" has not been used for many years by any other company in a related field, use by anyone rather than Field has been abandoned for purposes of the trademark statutes. Gruelle v. Molly-'Es Doll Outfitters, 94 F.2d 172, 175 (3d Cir. 1937), cert. denied, 304 U.S. 561, 58 S.Ct. 943, 82 L.Ed. 1528 (1938). Prior use does not invalidate plaintiff's trademark.

B. Use of Descriptive Words

A fundamental concept in the law of trademarks and trade names is that known as "hierarchy of trademarks." Farmers' Educational & Coop. Union of America v. Farmers' Educational & Coop. Union of America, Iowa Div'n, 141 F.Supp. 820, 824 (S.D.Iowa 1956), aff'd, 247...