Lindy Pen Co., Inc. v. Bic Pen Corp.
| Decision Date | 27 October 1982 |
| Docket Number | No. CV 80-0010-CCH.,CV 80-0010-CCH. |
| Parties | LINDY PEN COMPANY, INC., and Blackfeet Plastics, Inc., Plaintiffs, v. BIC PEN CORPORATION, Defendant. |
| Court | U.S. District Court — Central District of California |
Marvin H. Kleinberg, Inc., Marvin H. Kleinberg, Thomas A. Turner, Jr., Beverly Hills, Cal., for plaintiffs.
Elwood S. Kendrick, Inc., Kendrick, Netter & Bennett, Frederick A. Lorig, Los Angeles, Cal., Pennie & Edmonds, Thomas F. Reddy, Jr., George F. Long, III, Rory J. Radding, New York City, for defendant Bic Pen Corp.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
This action came before the Court for trial June 22 through July 1, 1982. The Court, having considered the evidence and briefs of the parties, makes the following Findings of Fact and Conclusions of Law:
FINDINGS OF FACT
1. Plaintiff, Lindy Pen Company, Inc. (Lindy), a California corporation having its principal place of business in North Hollywood, California, manufactures and sells various types of ball point pens identified by the trademark and name LINDY.
2. On or about December 4, 1981, plaintiff Blackfeet Plastics, Inc. (Blackfeet) acquired substantially all of the assets of plaintiff Lindy, including the trademark and name LINDY. Blackfeet is a Montana corporation, having its principal place of business in Browning, Montana.
3. Defendant Bic Pen Corporation (Bic), formerly known as Waterman-BIC Pen Corporation, is a New York corporation having its principal place of business at Milford, Connecticut. Bic manufactures and sells various types of ball point pens throughout the United States (including the Central District of California), identified by the trademark and name BIC.
4. On September 20, 1966, United States Trademark Registration No. 815,488 was issued to Lindy for the word "Auditor's" in connection with ball point pens. Lindy perfected the registration by filing declarations under Sections 8 and 15 of the Lanham Trademark Act, 15 U.S.C. §§ 1058 and 1065. Lindy assigned this trademark to Blackfeet on December 2, 1981.
5. Lindy has been diligent in policing adoptions of the term "Auditor's" or variations thereof as marks for ball point pens. In some ten instances Lindy has notified various ball point pen manufacturers or distributors of its trademark, each of whom, including Bic, voluntarily stopped using the term "Auditor's."
6. In March, 1965, Bic published a catalog showing, and apparently sold, ball point pens having the mark "Auditor's" stamped on their barrels. On May 17, 1965, Mr. Sidney Linden, president of Lindy, wrote to Bic claiming trademark rights in the term "Auditor's" and requesting that Bic cease its use of that mark. Thereafter, correspondence ensued between outside counsel for Bic and counsel for Lindy. The "controversy" was resolved by Bic's agreeing to cease the use of the term "Auditor's" on its pens after the exhaustion of its then existing inventory.
7. In 1979 Bic began selling ball point pens with the legend "Auditor's Fine Point" stamped on the barrels. For 14 years prior to 1979, Bic did not use such a legend or term on any of its products.
8. Bic decided to adopt the legend "Auditor's Fine Point" in 1979 upon the suggestion of Joel Fishkin, Bic's national commercial sales manager. Mr. Fishkin proposed to take Bic's "Fine Point" pen and "dress it up" to justify a higher list price. The pen was to be sold in the commercial market at a price substantially reduced from the list price. Bic chose the term "Auditor's" to identify the pen as having an extra-fine point. Bic did not use its existing legend "Accountant Fine Point" because it did not want to interfere with sales of that pen, which is sold in the retail market.
9. Before Bic approved the use of the legend "Auditor's Fine Point," Bic's in-house counsel Alan Lipson made an inquiry into the propriety of using that legend. Mr. Fishkin showed Mr. Lipson three catalog sheets and a pen, all from different manufacturers, in which the term "Auditor's" or "Auditor" was used to describe a ball point pen. One of the catalog sheets was for Lindy pens. The catalog sheet made no reference to any claim of a proprietary interest, such as a trademark, for the term "Auditor's." After reviewing this information, Mr. Lipson concluded that the terms "Auditor" and "Auditor's" were commonly used descriptive terms in which no one was claiming registration rights. At the time Bic began using the legend "Auditor's Fine Point" in 1979, it was unaware of Lindy's registered trademark. All references to the earlier 1965 correspondence between Bic and Lindy were held by outside counsel and were unknown to in-house counsel.
10. Mr. Lipson first became aware of Lindy's registered trademark when Lindy filed its complaint. Lindy made no attempt to contact Bic to discuss Bic's use of the legend "Auditor's Fine Point" prior to filing the complaint.
11. The term "Auditor's" was selected by Lindy and has been used by it to inform purchasers that these fine point pens were designed for or would appeal to auditors, accountants and others requiring a fine-point pen.
12. Lindy's customers, when ordering pens of the type in suit, primarily refer to them as "460-F", a model number used by Lindy.
13. Bic's legend "Auditor's Fine Point" was intended as a grade or style designation, as distinguished from other writing instruments manufactured by Bic and bearing such legends as Medium Point, Deluxe Medium Point, Fine Point and Accountant Fine Point. All of these pens were also identified by defendant's trademark and name BIC.
Bic chose the term "Auditor's" to identify the pen as having a fine point, and to be able to list the pen at a higher price than its "Fine Point" pen. In addition, Bic did not want to interfere with sales of its "Accountant's Fine Point" sold in the retail market.
14. The pens in suit are distinguishable. In addition, the packaging and collateral display materials used by the parties in connection with the sale of the respective pens are dissimilar in graphics and textual content.
15. The trademarks and names BIC and LINDY are prominently and repeatedly displayed on the parties' respective packaging and collateral promotional materials so as to avoid any likelihood of confusion, mistake or deception as to source, sponsorship or origin.
16. The term "Auditor's" signifies a class of end users as well as a specific type or model of fine point pen manufactured by plaintiffs and defendant.
17. While Lindy advertised its pens, it has failed to establish that it spent significant sums advertising its "Auditor's" pens as opposed to its other pens or Lindy pens in general.
18. Sales of Lindy's pens have been decreasing for several years. The decreasing sales of the "Auditor's" pen is consistent with the overall decline in Lindy's business.
19. Strength of Plaintiffs' Trademark. Plaintiffs' mark is weak. "Auditor's" is a meaningful word in common usage and, when used in the present context, denotes a type or model of pen distinguishable from broad point pens, laundry and dry cleaning pens, chain-type pens, steno pens, desk pens and other models or types of pens manufactured and sold by plaintiffs and identified by the trademark and name LINDY.
20. Similarity of the Marks. Although Bic uses the term "Auditor's," it is used in conjunction with other words ("Fine Point") and defendant's trademark and name ("BIC"). Considering the marks and names in their entirety and as they appear in the marketplace, the marks are not confusingly similar.
21. Evidence of Actual Confusion. There has been no showing of actual confusion.
22. Proximity of the Goods and Marketing Channels Used. Bic sells the "Auditor's Fine Point" in the mail order and telephone solicitation markets for resale to commercial and industrial users. Some of these pens have been distributed for sale in the retail market by third parties. While the exact percentage of "Auditor's Fine Point" pens produced that reaches the retail market is unknown, it is only a small percentage. Plaintiffs sell the "Auditor's" pen to wholesalers for resale in the retail market. Although some of Bic's "Auditor's Fine Point" pens reach the retail market, on balance it is not significant enough to put the two companies in the same channel of trade.
23. Defendant's Intent in Selecting the Mark. There is no indication in the record that defendant sought to capitalize on plaintiffs' mark. Defendant's use of its trademark and name "BIC" rebuts such an inference. As set forth above, Bic chose the term to identify its pen as having an extra-fine point.
24. Likelihood of Expansion. There is no indication that Bic intends to introduce the "Auditor's Fine Point" pen into the retail market. To do so could damage the sales of its "Accountant Fine Point" pen. At this time it is only speculative whether Blackfeet will distribute Lindy products in the commercial market. In fact, the record indicates that one of Blackfeet's reasons for purchasing Lindy was to enter in the retail market.
25. Type of Goods and the Degree of Care Likely to be Exercised by the Purchaser. Plaintiffs and defendant sell ball point pens of a variety fairly described as relatively inexpensive, throw-away ball point pens having non-replaceable ink cartridges so that when the ink supply is exhausted it is expected that the customer will discard the pen and purchase a new one. There is no indication that purchasers of plaintiffs' and defendant's ball point pens do not exercise ordinary caution.
26. To the extent that any Conclusions of Law are deemed Findings of Fact, they are incorporated herein.
1. To the extent that any Findings of Fact are deemed Conclusions of Law, they are incorporated herein.
2. This Court has jurisdiction over this case pursuant to 28 U.S.C. §§ 1331(a) and 1338(a). Venue is proper under 28 U.S.C. § 1391(c).
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