General Controls Co. v. Hi-G, Inc.

• Decision Date: 29 December 1962
• Docket Number: Civ. No. 7987.
• Court: U.S. District Court — District of Connecticut
• Parties: GENERAL CONTROLS CO. v. HI-G, INC.

212 F. Supp. 152

GENERAL CONTROLS CO. v. HI-G, INC.

Civ. No. 7987.

United States District Court D. Connecticut.

December 29, 1962.

R. Douglas Lyon, Los Angeles, Cal., Roger McCormick, Hartford, Conn., for plaintiff.

John M. Prutzman, Donald Hayes, Hartford, Conn., for defendant.

BLUMENFELD, District Judge.

This is an action for trademark infringement and unfair competition because of such infringement seeking an injunction against use by the defendant HI-G, Inc. of its corporate name in association with the sale of electric relays or associated products and in connection with advertising or sale of such products. Plaintiff General Controls Co. is a California corporation with its principal office in Glendale, California. Defendant has its principal place of business in Connecticut, under whose laws it is incorporated. Since the plaintiff's trademark is registered under the Trademark Laws of the United States, jurisdiction is founded upon both 28 U.S.C. § 1332 and § 1338(b). Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F. 2d 755, 757 (2 Cir., 1960).

Over the past 32 years, General Controls Co. has manufactured and sold a wide variety of automatic controls and regulating systems. Its first product was a combustion control for boilers. Later, it added gas valves and room thermostats to its line. In 1942, the plaintiff adopted the trademark "hi-g" for valves and control systems which it sells for use on mobile ground equipment and aircraft.

On October 10, 1950, the plaintiff obtained the grant of U. S. Registration No. 531,662 in Class 21 for the term "hi-g" for:

"Valves operated by electric power for controlling the flow of any fluid and adapted to control fluid, fuel, lubricating media, or liquid used in hydraulic control systems." (Caps omitted)

On December 25, 1951, it obtained a further U. S. Registration No. 552,415 in Class 26 on the term "hi-g" for:

"Temperature control and regulating systems for liquid cooled or air cooled internal combustion engines — namely, thermostatically operated valves controlling the flow of cooling liquid or cooling air." (Caps omitted)

On these same respective dates, the plaintiff also obtained the grant of U. S. Registration Nos. 531,663 and 522,415 reciting the same identical goods, but showing the form of trademark as actually used by the plaintiff on such goods, which trademark comprises a wing and shield device as the dominant feature of the mark. On the specimen of the trademark attached to the registration, the letters "hi-g" stand on the crest of a red shield design in the center of a yellow winged configuration, similar to that used by the United States Air Force as its insignia. "GENERAL" is superimposed on the left wing, and "CONTROLS" is superimposed on the right wing. On the shield itself, "G", at the upper left, and "C" at the lower right, are balanced by a pointer at the upper right and a wheel at the lower left, connected by a diagonal lightening mark. The name plates attached to the products intended for mobile installations always display the composite mark.

The plaintiff's trademark was subsequently republished in both Classes under the Lanham Act, 15 U.S.C. § 1062 (c). No question is raised concerning the plaintiff's compliance with statutory steps relating to registration.

There is little force in the mechanical argument that merely because "hi-g" was accepted for registration, the plaintiff may preclude all others from making any use of that mark in commerce. John Morrell & Co. v. Reliable Packing Co., 295 F.2d 314, p. 316 (7 Cir., 1961); S. C. Johnson & Son v. Johnson, 175 F.2d 176 (2 Cir., 1949) cert. denied 338 U.S. 860, 70 S.Ct. 103 (1949). The courts themselves have acknowledged that descriptive words which they have refused to protect have been accepted for registration as trademarks. E.g. Lanolin Plus Cosmetics, Inc. v. Marzall, 90 U.S.App.D.C. 349, 196 F.2d 591, 592 (1952) cert. denied 344 U.S. 823, 73 S. Ct. 22, 97 L.Ed. 640 (1952); See Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 148 (3 Cir., 1953) cert. denied 346 U.S. 867, 74 S.Ct. 106, 98 L.Ed. 377 (1953).¹ When the interests of parties in the right to use a mark do not clash head-on² because the products on which the mark is used are not the same, that the use of the mark by a defendant on its products and labels and in its advertising may be "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods", 15 U.S.C. § 1114 (1) (a) is not in itself decisive. Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607, 612, 613 through fn. 7 (2 Cir., 1960) cert. denied 364 U.S. 909, 81 S.Ct. 271, 5 L.Ed.2d 224 (1960). It is only one of several value-tinged criteria which Triumph Hosiery Mills, Inc. v. Triumph International Corp., 308 F.2d 196, 198 (2 Cir., 1962) requires the court to employ in "balancing the conflicting interests both parties have in the unimpaired continuation of their trademark use." Avon Shoe Co. v. David Crystal, Inc. (supra), 279 F.2d at p. 613. The criteria to be resorted to in applying this balancing operation are stated in Polaroid Corporation v. Polarad Electronics Corp., 287 F.2d 492 at p. 495 (2 Cir., 1961) cert. denied 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (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 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."³

The Difference in the Products

The plaintiff has not manufactured or sold any electrical relays particularly adapted for use on aircraft bearing the trademark "hi-g" for the past 20 years. The defendant manufactures and sells hermetically sealed miniature and electronic time relays, voltage censors and phase censors. There is no product of the defendants which is specifically in competition or is used interchangeably with any manufactured or sold by the plaintiff. The claim for damages and an accounting of profits was waived by the plaintiff at the outset of the trial. While this does not necessarily constitute an admission, it confirms the absence of any basis for finding that anyone ever purchased goods upon which the defendant used its corporate name HI-G, Inc. believing that they were made by the plaintiff. The products are different.

The Strength of the Mark

A trademark which reflects a certain originality with respect to the goods it identifies, e. g. a fanciful word without independent meaning such as "Kodak", or a common word that is arbitrary as applied, as in the case of "Camel" cigarettes, is regarded as a strong mark because it serves the function of distinguishing goods and of indicating that they come from a common source. Telechron, Inc. v. Telicon Corp., 198 F.2d 903 (3 Cir., 1952); see Columbia Mill Co. v. Alcorn, 150 U.S. 460, 463, 14 S.Ct. 151, 37 L.Ed. 1144 (1893); Stork Restaurant v. Sahati, 166 F.2d 348, 355 (9 Cir., 1948).

To the extent that a mark becomes more descriptive of a product, it becomes progressively weaker in identifying the manufacturer of that product, for a word that describes a product does not as readily identify its manufacturer or seller as a word not normally associated with it. John Morrell & Co. v. Reliable Packing Co. (supra); Durable Toy & Novelty Corp. v. J. Chien & Co., 133 F.2d 853, 855 (2 Cir., 1943) cert. denied 320 U.S. 211, 63 S.Ct. 1447, 87 L.Ed. 1849 (1943); France Milling Co. v. Washburn-Crosby Co., 7 F.2d 304 (2 Cir., 1925) cert. denied 268 U.S. 706, 45 S.Ct. 640, 69 L.Ed. 1168 (1925); see Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495 (2 Cir., 1962). Why words, merely descriptive of the goods sold, receive no protection was cogently stated by Judge Learned Hand in Oakland Chemical Co. v. Bookman, 22 F.2d 930 (2 Cir., 1927), at p. 931:

"As to validity, the question is whether the mark was `descriptive,' or only `suggestive,' of the goods sold. A `descriptive' mark is bad for two reasons: First, because it does not in fact advise the public that the goods come from a `single source' (Coca-Cola v. Koke Co., 254 U.S. 143, 146, 41 S.Ct. 113, 65 L.Ed. 189); second, because, if it did, since the word describes the goods, the protection of the mark would trench upon common speech which should do the same." (Citations omitted)

Judge Hand's rationale extends to a concept of "goods" which embraces "their quality, properties, functions or uses," 3 Rest.Torts § 721 (emphasis added) all of which relate to the needs and desires of the consumer as distinguished from their source of origin. Proxite Products, Inc. v. Bonnie Brite Products Corp., 206 F.Supp. 511 (S.D.N.Y.1962); In re W. A. Shaeffer Pen Co., 158 F.2d 390 (C.C.P.A.1946).

The exposure to the forces of shock and acceleration of gravity upon operational products used in the complex machines in the rapidly enlarging aerospace industry, and the necessity that such products should function accurately when subjected to more than normal gravitational force, has brought an awareness which has extended far beyond those who are engaged in the technical developments in that industry that "g" is used to express acceleration of gravity. The parties agree that the letter "g" is a well-known abbreviation or symbol for the forces of gravity and acceleration. "Hi-g" is commonly used to express a high multiple of gravitational force which may range from a fraction of a "g" up into the hundreds. The abbreviation of "high" to "hi" when hyphenated to "g" is a combination so widely associated with high gravity as to be...