Friedman v. Sealy, Incorporated, 6053.

• Decision Date: 20 January 1960
• Docket Number: No. 6053.,6053.
• Citation: 274 F.2d 255
• Parties: Sidney J. FRIEDMAN, d.b.a. Wyandotte Mattress Company, Appellant, v. SEALY, INCORPORATED, Appellee.
• Court: U.S. Court of Appeals — Tenth Circuit

274 F.2d 255 (1959)

Sidney J. FRIEDMAN, d.b.a. Wyandotte Mattress Company, Appellant, v. SEALY, INCORPORATED, Appellee.

No. 6053.

United States Court of Appeals Tenth Circuit.

December 16, 1959.

Rehearing Denied January 20, 1960.

Bernard L. Balkin and Irving Achtenberg, Kansas City, Mo. (Achtenberg, Sandler & Balkin, Kansas City, Mo., of counsel, were with them on the brief), for appellant.

Gerrit P. Groen, Chicago, Ill. (William Marshall Lee, Dean A. Olds, Chicago, Ill., and Thomas E. Scofield, Kansas City, Mo., of counsel, were with him on the brief), for appellee.

Before BRATTON, LEWIS and BREITENSTEIN, Circuit Judges.

LEWIS, Circuit Judge.

Plaintiff-appellee was successful in obtaining an injunction and recovering damages against defendant-appellant in a suit based on trademark infringement brought in the United States District Court for the District of Kansas.

The trial court found that the trademarks "Posturepedic" and "Golden Sleep" are both registered on the Principal Register in the United States Patent Office and have been used by the plaintiff since 1950 and 1938, respectively, on mattresses and box springs. The allegedly infringing marks, "Proper-Pedic" and "The Golden Fleece," also applied to mattresses and box springs, have not been registered but have been used by defendant since 1954. The court held that the defendant's use of the latter mark infringes upon plaintiff's rights in the former, stating:

"Posturepedic as compared to Proper-Pedic and Golden Sleep as compared to Golden Fleece are confusingly similar in sound, appearance and somewhat in meaning.

"Plaintiff has adduced some evidence as to confusion. However, a showing of likelihood of confusion alone warrants relief where the respective marks are used on identical or similar products. And, in comparing marks as to similarities, such marks must be considered in their entireties including even common or suggestive terms used in the respective combinations."

Upon the defendant's making a motion to set aside or modify the judgment, the trial court made further findings concerning the defendant's intent:

"* * * I don\'t think that we would go so far as to say that there was malice or anything like that, but I do think, looking at the whole thing, generally, that there was a deliberate intention on the part of the defendant to infringe, and under this Standard Oil case in the Tenth Circuit, The Standard Oil Co. v. Standard Oil Co., 10 Cir., 252 F.2d 65 it says that the law as to trademark is but part of the broader law of unfair competition.

"I think that the similarity of these names, especially upon this particular subject, is such that the court thinks that it was deliberate.

"Just taking it as a whole, all of the testimony and everything that I have seen, I think as a whole it was intentional."

The issues presented on appeal concern whether the court should have held the plaintiff's trademark "Golden Sleep" to have been abandoned, error alleged in the admission and consideration of certain plaintiff's evidence and the refusal to admit certain defendant's evidence, whether the court erred in holding that defendant's use of his marks infringed plaintiff's trademarks, and finally claimed error in the award of $7,500 damages.

In attacking the trial court's implied finding that the "Golden Sleep" trademark has not been abandoned by the appellee, appellant relies upon 15 U.S.C.A. § 1127:

"A mark shall be deemed to be `abandoned\' —

"(a) When its use has been discontinued with intent not to resume. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment."

The testimony of Sealy's president, Mr. Bergmann, indicates that the main current use of the term "Golden Sleep" is to designate a type of promotion, the summer sale of a number of the Sealy mattresses. It also appears that whereas before 1954 the "Golden Sleep" mattress was advertised extensively as Sealy's $59.50 line, the present emphasis is upon a creation called "Enchanted Night," but the witness further testified that some of the franchised plants are still selling "Golden Sleep" mattresses.

Appellant contends that Sealy's present use of the term is a non-trademark use which does not prevent the inference of abandonment of the trademark, Autoline Oil Co. v. Indian Refining Co., Inc., D.C.M.D., 3 F.2d 457, but the record indicates no need for reviewing the question as posed. Mr. Bergmann was explicit in his statement that "Golden Sleep" was a label presently used by the franchisees on a particular type of mattress. Appellant attacks this testimony as being unaccompanied by the extensive documentation that marked the presentation of plaintiff's case in chief, but the issue of abandonment is one of defense with its consequent burden devolving on him who asserts it. The Court of Customs and Patent Appeals has consistently held that the introduction of a trademark registration presents prima facie proof of continuing use of the mark as well as ownership, Gillette Company v. Kempel, 254 F.2d 402, 45 CCPA 920.

Under this status of the evidence and the conflicting inferences arising therefrom, the trial court's determination that the trademark "Golden Sleep" has not been abandond by its registered owner is not clearly erroneous as to require reversal, Fed.Rules Civ.Proc. rule 52(a), 28 U.S.C.A.

The use of the unregistered trademark, "Proper-Pedic" by the Wyandotte Mattress Company first came to the attention of the Sealy Company when a Sealy franchisee forwarded a tear sheet from Life magazine, upon which appeared a Wyandotte advertisement one column inch in size. In this ad, "Proper-Pedic" appeared with a small circled "R", designating a registered trademark. Sealy began correspondence with Wyandotte requesting the registration number; Wyandotte was advised by legal counsel that the use of the insignia was incorrect and eliminated it from its advertising material.

Life magazine offers as an inducement to its advertising customers the right to use gum stickers and hang tags bearing the motto, "As Advertised in Life," on their merchandise. Plaintiff, Sealy, Inc., an extensive national advertiser, has used these point-of-sale techniques for some time and after the appearance of the Proper-Pedic advertisement, the defendant, as Wyandotte Company, also attached them to mattresses of that name.

The Sealy company likewise makes use of a streamer bearing the Good Housekeeping Seal of Approval, in accordance with that magazine's endorsement. Since the mattresses of the Wyandotte Company contain an approved material "Tufflex," appellant has also used the Good Housekeeping streamers.

A former employee of the local Sealy licensee was employed shortly before the trial of this case by the Wyandotte Company as a sales person contacting retail dealers. Also, there is some evidence that another employee of the Sealy firm offered some casual aid in either arranging Wyandotte's physical plant or in suggesting the proper design for box springs. This evidence was admitted upon plaintiff's counsel's statement that he was attempting to prove the claim of unfair competition joined in the complaint for trademark infringement, but the evidence does not rise to an inference of customer or trade-secret stealing by the first-mentioned employee and demonstrates that the help given by the other employee was with the sanction of his employer.

To all of the above outlined evidence, i. e. the wrongful use of the registration designation, the use of Life and Good Housekeeping promotional material, and the employment of Sealy's personnel, the defendant objected on the ground of relevancy. Dissecting the evidence, as appellant does, each item gives rise to equally-balanced and opposite considerations. Each action by the defendant is explicable as coincidence and innocent motive, but this does not render the evidence as a whole devoid of probative value. Counsel had ample opportunity to argue the value of the evidence as showing a pattern of imitation or as being merely a series of unrelated circumstances affording no basis for a reasonable inference of fact. The weight to be given this evidence was primarily for the trier of the fact and in instances where different inferences may be drawn from the established facts, it is not within the province of this court to substitute its judgment for that of the trial court as to which inference should be drawn.

Defendant sought to introduce two exhibits, documents marked Exhibits J and K, as admissions by the plaintiff of limitations on its trademark rights. Exhibit J was an order of dismissal in the case of Sealy, Inc. v. Serta Associates entered after rulings on motions for summary judgment, reported Sealy, Inc. v. Serta Associates, D.C.Ill., 134 F.Supp. 621. In pertinent part, the exhibit reads:

"This matter came on to be heard upon the joint motion of the parties, and it appearing that the parties have settled their differences and the Court being fully advised in the premises, the Complaint and the Counterclaim are hereby dismissed without prejudice on the following conditions:

"1. Serta, without admitting that `Posture-Ease\' as a trademark infringes the trademark `Posture-pedic\' will discontinue the use of the trademark `Posture-Ease\' but Serta has the right to use such other `Posture\' marks non-conflicting with `Posturepedic\' as it may be advised.

"2. Neither Sealy nor any of its licensees shall use `Posture-Ease\' as a trademark.

"3. Serta is free to continue to use the trademark `Sertapedic.\'

"4. Serta will withdraw its opposition to Sealy\'s application for registration of `Posturepedic,\' Serial No. 663,524, published September 14, 1954, Opposition No. 34,072 in the United States Patent Office."

* * * * * *

"10. Sealy will not use the phrase `Posture Perfect Sleep\' or `Perfect Sleep\' as an emphasized feature of its advertising or as a trademark."

Defendant's Exhibit K is a Joint...