Londontown Manufacturing Co. v. Cable Raincoat Co.

• Decision Date: 05 March 1974
• Docket Number: No. 68 Civ. 2087 MIG.,68 Civ. 2087 MIG.
• Citation: 371 F. Supp. 1114
• Parties: The LONDONTOWN MANUFACTURING COMPANY, Plaintiff, v. CABLE RAINCOAT COMPANY, Defendant.
• Court: U.S. District Court — Southern District of New York

371 F. Supp. 1114

The LONDONTOWN MANUFACTURING COMPANY, Plaintiff, v. CABLE RAINCOAT COMPANY, Defendant.

No. 68 Civ. 2087 MIG.

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

March 5, 1974.

Nims, Howes, Collison & Isner, New York City, for plaintiff by Oliver P. Howes, and Kenneth R. Umans, New York City, of counsel.

Rosenman, Colin, Kaye Petschek, Freund & Emil, New York City, for defendant by Ambrose Doskow, New York City, and Owen F. Clarke, Jr., Boston, Mass., of counsel.

GURFEIN, District Judge:

This is a case that turns on a vowel. The plaintiff and the defendant are competitors in the manufacture of raincoats. The defendant uses the trademark "Smug." It would also like to use "Smog." The plaintiff does not object to the defendant's using "Smug" but has gone to the expense of a lawsuit to prevent it from using "Smog." Similarly the defendant has gone to expense to fight for its right to "Smog" rather than "Smug."

The plaintiff seeks to enjoin the defendant's use of the trademark "Smog" for raincoats. It claims that "Smog" infringes its registered trademark "London Fog" as well as the alleged unregistered marks "The Fog" and "Fog." No damages are claimed.

There is federal jurisdiction under the Lanham Act (15 U.S.C. § 1051 et seq.) as well as under 28 U.S.C. § 1332 by reason of diversity of citizenship. Pendent jurisdiction with respect to the alleged unregistered marks on the ground of unfair competition exists under 28 U.S.C. § 1338.

The defendant denies infringement and unfair competition. It contends that the words "The Fog" and "Fog" have not been used by the plaintiff as trademarks and have, in any event, not acquired a secondary meaning identifying them with the raincoats sold by the plaintiff. It contends further that there is no likelihood of confusion between the trademark "Smog" and either the registered trademark "London Fog" or the claimed designation "The Fog" or "Fog."

The parties have stipulated as follows: (1) The plaintiff's trademark "London Fog" was registered in the United States Patent Office on March 8, 1955, Reg. No. 603,047, is valid and in effect, and the plaintiff has advertised and sold raincoats under the trademark "London Fog" in interstate commerce since 1953. (2) The defendant began to advertise and sell raincoats under the trademark "Smog" in February 1968, applied for registration of that mark in 1968, and action thereon has been suspended because the plaintiff filed an opposition to the application. (3) When the defendant adopted "Smog" as its trademark, the defendant and its advertising agency were aware of the plaintiff's trademark and of its position as a major producer of raincoats. (4) The defendant has not advertised its coats to the public under the trademark "Smog." After its advertising of that mark appeared in a trade publication, the plaintiff protested its use and the defendant adopted the alternative trademark "Smug" under which its raincoats have been advertised to the public. The defendant has continued, however, to sell some coats under the trademark "Smog," and its use of the other trademark is not to be regarded as an admission of infringement or of abandonment of the trademark "Smog."

The evidence at the trial of the permanent injunction disclosed that, while the plaintiff has twenty-nine registrations and applications in the Patent Office, of which three are for "London Fog," the terms "The Fog" or "Fog" have never been the subject of an application for registration. The plaintiff has advertised goods bearing the trademark "London Fog" extensively over the years in various media.

The "London Fog" line is a higher-priced line than defendant's. The plaintiff also has a lesser-priced line of raincoats which it sells under the mark "Clipper Mist" (tr. 61). For a time the plaintiff engaged in an advertising campaign on behalf of its raincoats bearing the registered trademark "London Fog" by using the words "The Fog" in connection with the campaign. The words "The Fog" were used in several ways.

In the fall of 1966, an advertising campaign was launched by the distribution of a brochure to the trade which used as its theme the phrase "The Fearless Fogs." (tr. 27). In February 1967, the plaintiff distributed a film to retailers which included the phrase "I love the Fog," referring to the raincoat which bore the trademark "London Fog" (tr. 27-28; Ex. 2). In the summer of 1967, it distributed approximately 5,000 pins bearing the words "The Fog" to retailers to give to customers. (tr. 28-29). There is no evidence that the buttons were distributed to customers, but we may infer that some must have been in the ordinary course of business. From August to December, 1967, the plaintiff mounted an extensive advertising campaign to introduce its "The Fog" campaign which consisted of the adventures of a Superman or Batman character clothed in a London Fog raincoat, who was himself named "The Fog." (tr. 29-30; Exs. 6A & 6B).

Isolated instances of other advertisements by retail stores before 1966, showing a slogan "join our Fog-of-the-Month Club" and another showing "when it pours — it reigns — Come Spring every Fog has its day" were introduced into evidence. (Exs. 7 & 8). In conjunction with the carefree punning allowed department store copywriters, there was also a reference to "London Fog."

The defendant, in the Spring of 1968, advertised to the trade in Women's Wear Daily (Ex. 14D) that it would advertise its "Smog" raincoats in Seventeen, Mademoiselle and the New York Times Magazine, media which are also used by the plaintiff. With a kind of oxymoron effect, the defendant's copywriters typed out the heading: "A final and conclusive reason why you should be fighting rain with Smog." The advertisement was signed "A Division of the Cable Raincoat Company" with addresses and telephone numbers.

The plaintiff immediately protested the use of "Smog" by the defendant. As a result, the defendant did not go through with its advertising campaign and notified its customers by double page advertisements that it would use "Smug" instead in the promised campaign. The advertisement expressed the defendant's position in the following manner: "How important is a name? Not very. Or so we thought. But someone doesn't agree with us. They say our name sounds something like theirs. And they're fogging¹ up the issue by taking us to court about it. We're not afraid though. We're going to fight them. In Court. But because we don't want our raincoats to get lost in the legal shuffle, from now on we're calling ourselves Smug." (Ex. 14F). The interference proceeding in the Patent Office is in suspense pending the decision in the case at bar.

Smog is a fog made heavier and darker by the smoke of a city. (Webster's New International Dictionary, 2d ed.). In Roget's Thesaurus "smog" is classified with "fog." "Smog" and "fog" are also similar in sound, and they rhyme. The word "smog," itself is an American neologism from two words, "smoke" and "fog." On the other hand, the registered trademark is not "Fog" but "London Fog" made by The Londontown Manufacturing Company. There is no doubt that if the defendant had chosen as its mark "London Smog" that would have been intolerably confusing. See Hancock v. American Steel & Wire Co., 203 F.2d 737, 40 CCPA 931 (1953).

But the defendant, on the one hand, did not include "London" in its trademark, and the plaintiff, on the other hand, did not register "The Fog." So far as the registered trademark is concerned, what we have in juxtaposition is "Smog" against "London Fog."

The plaintiff contends, however, that its trademark protection should be broader than "London Fog" because it has used "The Fog" and "Fog" as descriptive of the trademarked article itself, as a nickname accepted by consumers, and also because it has used "The Fog" and "Fog" as marks which on their own have attained a secondary meaning.

A "trademark" is any word used by a manufacturer to identify his goods and distinguish them from those manufactured or sold by others. 15 U.S.C. § 1127. But the plaintiff argues that although "The Fog" was never affixed to goods, a mark may be deemed used in commerce on goods when it is placed on "displays associated therewith." Id. The use of a phrase in advertisements is not sufficient, however, to make out a trademark use. Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 492 (8 Cir. 1971); Victor Tool & Machine Corp. v. Sun Control Awnings, Inc., 299 F.Supp. 868, 874-875 (E.D.Mich.1968), affd., 411 F.2d 792 (6 Cir. 1969); Consumers Petroleum Co. v. Consumers Co. of Illinois, 169 F.2d 153, 161 (7 Cir. 1948). See generally 3 Callmann, Unfair Competition Trademarks and Monopolies, § 76.2(e) (3d ed. 1969). While a mark may be deemed used on services when it is used in advertising such services, there is no similar reference to advertising when the section refers to trademarks on goods. 15 U.S.C. § 1052. Nor is the use of "The Fog" as a Homeric epithet to describe the Superman character in the advertisements a trademark use.

The plaintiff claims its entitlement to protection of the mark "The Fog," because it is a nickname used by the consuming public. That may be so, but there has been inadequate proof for an explicit finding, which is not surprising in the circumstances. The defendant's advertising man conceded that the trade calls the plaintiff's raincoat "The Fog" (Ex. B, tr. 74), and that some retailers may call the plaintiff's line "the Fog line" (Swain, tr. 10, 11; Getz, tr. 66). Retailers are not consumers. They know whom they buy from and the source of the goods. There is no such direct evidence in this case as there was in the case that held "Koke" an infringement of Coca-Cola's nickname. Coca-Cola Co. v. Koke Co., 235 F. 408, 414 (D.Ariz.1916), aff'd, 254 U.S. 143, 41 S.Ct. 113, 65 L.Ed. 189 (1920). Compare similarly Guinness v. Bernuth, 14 F.Supp. 210 (S.D.N.Y.1923) ("Dublin Stout").

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