King Research, Inc. v. Shulton, Inc.

• Decision Date: 05 March 1971
• Docket Number: No. 67 Civ. 2474.,67 Civ. 2474.
• Citation: 324 F. Supp. 631
• Parties: KING RESEARCH, INC., Plaintiff, v. SHULTON, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

324 F. Supp. 631

KING RESEARCH, INC., Plaintiff, v. SHULTON, INC., Defendant.

No. 67 Civ. 2474.

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

March 5, 1971.

Nemeroff, Jelline, Danzig, Paley & Kaufman, New York City, for plaintiff; Mitchell Jelline, New York City, of counsel.

Leo C. Krazinski, Suffern, N. Y., for defendant.

OPINION, FINDINGS OF FACT and CONCLUSIONS OF LAW.

LEVET, District Judge.

This is a civil action for infringement of trademarks registered in the United States Patent Office, 15 U.S.C. § 1114, as amended, and for unfair competition, namely common law trademark infringement, and is joined with a substantial and related claim under the Act of July 5, 1946, 60 Statutes 437. This court has jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1338(a) and 1338(b).

For some years, plaintiff has been in the business of manufacturing and selling various products, principally in the nature of cleaning and abrasive materials.

Plaintiff registered the trademark "Ship-Shape" in 1946; in 1949 it began to use the term to denominate a comb and brush cleaner which it claims to have advertised and promoted extensively since 1949. In addition to "Ship-Shape" plaintiff manufactures "Stax," a hair grooming preparation, "Dandricide," a hair rinsing solution, "Barbicide," a disinfectant for combs, and "Dy-Zoff," a product for removing hair dye stains.

Shulton, Inc., defendant, is a corporation engaged in the manufacture and sale of various kinds of grooming aids, principally for men.

On September 28, 1966, defendant filed an application at the Patent Office to register "SHIP SHAPE" as a "hair spray for men." Defendant marks its product under the general title of "Old Spice" and for years has used a sailing vessel as an additional trade symbol.

It is plaintiff's contention that, without consent, defendant has used, and continues to use, a copy of plaintiff's registered mark in the sale and advertisement of a hair grooming product and that such conduct has caused, and is likely to continue to cause, "confusion" so as to deceive purchasers as to the source or origin of its comb and brush cleaner.

The complaint thus requests an injunction against further infringement and certain further relief, including the recovery of money damages.

It is the contention of defendant that the product sold by plaintiff under the trademark "Ship-Shape" is unrelated to defendant's hair spray for men, such that the relief demanded is not warranted. In substance, defendant denies that there has been or will be any likelihood of confusion and, therefore, the relief requested is unwarranted.

After hearing the testimony of the parties and examining the pleadings, the exhibits and the proposed findings of fact and conclusions of law submitted by counsel, this court makes the following Findings of Fact and Conclusions of Law:

FINDINGS OF FACT

1. Plaintiff is a corporation of the State of New York with its principal place of business in the Borough of Brooklyn, City of New York. (3)¹

2. Defendant is a corporation organized under the law of the State of New Jersey, doing business in the Borough of Manhattan, City of New York, and in the Southern District of New York. (3)

3. Plaintiff is the owner of a trademark "Ship-Shape" (fanciful rope design), registered in the United States Patent Office on November 4, 1947 under Registration No. 433,967, classified under the rubric of chemical detergents and soaps for cleaning walls, floors, metals, fabrics and the like. (Exs. 1 and H; 3)

4. Plaintiff is the owner of the trademark "SHIP SHAPE" (full caps) registered for detergents and soaps for hand dishwashing compound, machine dishwashing compound, comb and brush cleaner, egg cleaner used in hand cleaning of eggs and also used for machine cleaning of eggs and hatchery tray machine cleaning compound, the same registered in the United States Patent Office on June 14, 1955 under Reg. No. 607,415. (Exs. 2 and I; 4)² 5. Plaintiff is the owner of the trademark "SHIP-SHAPE" (hyphenated, full caps) for detergent compounds for cleaning eggs, dairy and poultry equipment, combs and brushes, dishes and industrial uses, and registered the same in the United States Patent Office on November 14, 1961 under Reg. No. 723,978. (Ex. 3; 3)

6. Plaintiff has displayed the required statutory notice with its trademark. (Exs. 7, 8, 9; 4)

7. Defendant is the owner of the trademark "OLD SPICE" (full caps) for saponaceous compounds for cleaning hands, shaving cream, shaving sticks, shaving powder, etc. and registered the same in the United States Patent Office on March 16, 1937 under Reg. No. 344,285. (Ex. A; 3)

8. Defendant is the owner of the trademark "OLD SPICE" (script and design) for a line of cosmetic and toilet articles including hair salves, hair elixirs, dandruff preparations, hair tonics, hair oils, shampoos, hair dyes, etc. and registered the same in the United States Patent Office on September 26, 1939 under Reg. No. 371,371. (Ex. B; 3)

9. Defendant is owner of a number of trademarks of ship designs identified as SHIP GRAND TURK, SHIP FRIENDSHIP, SHIP RECOVERY, and SHIP MOUNT VERNON for a line of shaving creams, soaps, toilet and cosmetic articles, and registered the same in the United States Patent Office during the years 1939 and 1940 under Reg. Nos. 366,667, 372,770, 372,771, 374,559, 367,143, 372,967, 372,970, 374,868, 368,426, 372,968, 372,969, and 374,369. (Exs. C1, C2, C3, C4, D1, D2, D3, D4, E1, E2, E3, and E4; 3-4)

10. Defendant conducted a search of the trademark "SHIP SHAPE" as to its availability for use on a hair spray for men, which search revealed two of plaintiff's three registrations, namely, Reg. No. 433,967 (Ex. 1) and Reg. No. 607,415 (Ex. 2). Since defendant considered the goods in plaintiff's two registrations to be entirely different from defendant's proposed hair spray for men, defendant authorized an application to be filed in the United States Patent Office. (166-168)

11. On September 28, 1966, defendant filed application for registration of the trademark "SHIP SHAPE" (full caps) in the United States Patent Office for a hair spray for men under Serial No. 255,360, with a first date of use as September 13, 1966. (Ex. G; 169)

12. On June 12, 1967, defendant's application for "SHIP SHAPE" was passed for publication by the United States Patent Office with a publication date of July 4, 1967 in the OFFICIAL GAZETTE. None of plaintiff's "SHIP SHAPE" registrations was cited by the Examiner during prosecution of said application in the Patent Office. This application is still pending in the Patent Office, awaiting decision in the instant suit, in accordance with stipulation filed in the Patent Office. (Ex. G; 169-173)

13. On December 21, 1966, plaintiff's trademark counsel wrote a letter to defendant advising defendant of plaintiff's ownership of its three "Ship Shape" trademark registrations, presently in controversy. On January 12, 1967, defendant answered plaintiff's letter remarking that a search had been made and that two of its three registrations had been picked up but that, since the respective goods were entirely unrelated, confusion would be unlikely. (Exs. 5 and 6; 169-170)

14. On June 12, 1967, plaintiff commenced the prosecution of this suit, which included a motion for a temporary injunction. In an unreported memorandum decision filed August 2, 1967, Judge Tyler denied the motion upon a finding that there was no "substantial likelihood of public confusion" regarding the parties' respective goods. (J. Tyler memorandum decision, p. 4)

15. About August 1946, or in the fall of 1946, plaintiff's predecessor, Maurice King, doing business as King Products Company, sold a compound for cleaning decks of ships under the trademark "Ship-Shape." The product was sold in 300, 350 pound drums to the United States Government. (64-67)

16. King Products Company was first operated from a private home located at 275-93rd Street, Brooklyn; about January 1947, the operation of the business was transferred to a plant located at 124-57th Street, Brooklyn and in the early 1950s it moved to its present address at 114-12th Street, Brooklyn, New York. (73-74)

17. Plaintiff first utilized the appellatin "Ship-Shape" in 1947 on a detergent which cleaned dishes and eggs. Plaintiff first marketed its comb and brush cleaner in 1949 and from its inception was named "Ship-Shape." (13)³

18. Plaintiff's "Ship-Shape" comb and brush cleaner consists of granules which, according to the package, purport to clean "brushes and combs, paint brushes, plastic aprons, capes and upholstery, chrome furniture, and venetian blinds." (Ex. 7, front of panel; 79) The package directs the consumer to dissolve the powder in water and thereafter "to soak soiled combs and brushes in the solution." (Ex. 7, back panel) Varied strengths are recommended depending upon the article to be cleaned.

19. "Ship-Shape" comb and brush cleaner is distributed in three sizes. The largest, a two pound package (Ex. 7), is sold to beauty parlors and barber shops; it is used by beauticians and barbers in the facilitation of their business and also is sold to their customers for use at home. (19)

Plaintiff also sells at retail packages in both 12 ounce (Ex. 8) and 4 ounce (Ex. 9) sizes through barber and beauty dealers and shops, to drug wholesalers and retailers, to "rack jobbers," supermarkets and novelty stores. (18)

20. Plaintiff for over twenty years has used the trademark "Ship-Shape" for its detergent product directed to inanimate objects and has applied distinguishing trademarks to its toiletry field, such as "Stax" for a hair dressing, "Dandricide" for an anti-dandruff rinse, "Dy-Zoff" for a hair color stain remover, and "Love & Kisses" for a protective hand cream. (Ex. 22)

21. Defendant produces a variety of cosmetics and grooming aids for men, including "SHIP SHAPE" hair spray, sold in a 7-ounce aerosol can. These goods are marketed through wholesale and retail...