Louis Rich, Inc. v. Horace W. Longacre, Inc.
| Decision Date | 17 December 1976 |
| Docket Number | Civ. A. No. 76-3211. |
| Parties | LOUIS RICH, INC. v. HORACE W. LONGACRE, INC. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
COPYRIGHT MATERIAL OMITTED
Robert C. Podwil, Philadelphia Pa., Joseph S. Littenberg, Westfield, N. J., for plaintiff.
Ronald E. Robinson, Lansdale, Pa., for defendant.
SUR PLEADINGS AND PROOF
"Gobble-gobble."
Those words identify the sound made by a male turkey. That fact and the desire of the contesting parties to profit from it furnish the stuff of this action for trademark infringement. Before me is plaintiff's motion pursuant to Fed.R.Civ.P. 65(a) seeking to enjoin defendant preliminarily from using the term "gobble-gobble" in its advertising of a processed turkey product. On the pleadings, and on the proof adduced at the hearing held on November 18, 1976, I make the following
1. Plaintiff, Louis Rich, Inc., a corporation of the State of Iowa, manufactures and sells processed turkey meat products.
2. Defendant, Horace W. Longacre, Inc., a Pennsylvania corporation, competes with plaintiff in the manufacture and sale of processed turkey meat products.
3. Until 1976 plaintiff had limited its sales to the institutional market (hospitals, restaurants, and food service organizations). Late in 1974, in preparation for entry into the retail market, primarily supermarkets, plaintiff asked its advertising agency to develop a campaign designed to foster retail sales.
4. Plaintiff's advertising agency conceived a series of presentations for television, radio and newspapers featuring the use of the term "gobble-gobble" in a manner designed to create identification of that term with plaintiff's name and its various turkey meat products, including specifically, turkey frankfurters, turkey sausage and fresh turkey parts.
5. Plaintiff's advertising campaign began on January 28, 1976 with television and newspaper presentations in the Quad-Cities area of Davenport and Betancourt, Iowa, and Rock Island and Moline, Illinois. The television commercials featured, in the closings, a picture of the product with plaintiff's name superimposed on the screen immediately followed by the unexpected utterance of the term "gobble-gobble" by the on-camera actor. The closing, which is regarded as the most important part of a commercial, was designed and intended to enhance identification of the catchphrase "gobble-gobble" with plaintiff's name and products. The newspaper advertisements, and the later used radio commercials, all used the term "gobble-gobble" in a similar manner.
6. Commencing in January 1976, plaintiff furnished point-of-purchase display material to all of its brokers for distribution to meat merchandisers, meat buyers, and advertising managers for placement alongside plaintiff's processed turkey products in supermarkets and grocery stores. The display cards featured the name "Rich's," the type of product and "Gobble-Gobble." The term "gobble-gobble" did not appear on the packages themselves.
7. As part of its advertising campaign, plaintiff also used lapel buttons featuring "Gobble-Gobble" in large lettering and in smaller surrounding lettering, the words "Rich's" and "West Liberty, Ia." Over 20,000 of these buttons were produced and distributed to brokers supermarkets, and consumers.
8. On March 3, 1976, plaintiff applied for trademark registration for "Gobble-Gobble" based upon plaintiff's first intrastate use and its first use of the term in interstate commerce on January 22, 1976. The United States Patent Office issued Certificate of Registration No. 1,051,408 for "Gobble-Gobble" on its Principal Register for "Processed Turkey in the Shape of a Frankfurter" on October 26, 1976.
9. From January 28, 1976 through September 15, 1976, plaintiff conducted an extensive advertising campaign in the media, in the markets, at the times and at the costs set forth herein:
(a) Television advertisements
Date Market Cost
Jan. 28 - Feb. 13 Quad-Cities $ 5,410.00
Mar. 24 - Apr. 11 St. Louis 13,935.00
Apr. 12 - 17 St. Louis 3,100.00
Apr. 28 - May 16 St. Louis 10,635.00
May 20 -28 Quad-Cities 2,760.00
May 20 - June 11 Miami 18,850.00
July 28 - Aug. 15 New York 39,825.00
Aug. 18 - Sept. 1 San Francisco 25,780.00
Aug. 25 - Sept. 12 New York 45,550.00 (est.)
(b) Radio advertisements
May 10 - 30 St. Louis 8,526.00
May 10 - 30 San Francisco 14,091.00
June 16 - July 3 Miami 7,794.00
July 13 - 31 San Francisco 1,290.00
July 28 - Aug. 11 New York 11,824.00
Aug. 18 - Sept. 1 San Francisco 2,100.00
(c) Newspaper advertisements
Jan. 28 Quad-Cities 2,773.92
Mar. 3 Pittsburgh 8,380.00
Mar. 24 St. Louis 9,465.00
Apr. 21, May 5 St. Louis 5,622.80
May 5 San Francisco 11,259.76
May 20 Miami 6,860.61
June 16 San Jose 2,161.00
June 16, 17 Ft. Lauderdale 1,276.50
Sept. 15 Seattle/Tacoma 3,074.00
10. Up to the date of hearing (November 18, 1976) plaintiff spent a total of $494,000 in 1976 on advertising using the term "gobble-gobble," as contrasted to a total expenditure of $35,000 for all advertising for the entire year 1975.
11. As set forth in No. 9 above, plaintiff advertised in the New York metropolitan area on television from July 28 to August 15, and from August 25 to September 12, 1976, and on radio from July 28 to August 11, 1976, at a total cost of approximately $95,000.
12. Among the products produced and marketed by defendant, Longacre, are frankfurters made out of chicken and ham made out of turkey.
13. To promote the sale of its products, defendant employed the advertising agency of Warren Pfaff, Inc. Pfaff produced, for defendant's chicken frankfurters, a commercial with a Bicentennial theme. It featured a little boy eating a frankfurter and speaking a catchphrase at the outset of the commercial, "What this country needs is a chicken in every frankfurter!" At the end of the commercial the little boy repeated the catchphrase. That commercial was aired from March or April to November 1976 at a total air time cost of approximately $375,000.
14. On July 7, 1976 representatives of defendant and Pfaff met to discuss a commercial to promote defendant's turkey ham product. Because of the success of the chicken frankfurter commercial, Pfaff decided to follow the same format. Between August 7 and 11 it developed a commercial which it presented to defendant for approval on August 11, and which it produced on film in Long Island City, New York, on August 25, 1976. The turkey ham commercial also featured a little boy who, at the outset of the commercial is asked, in the nature of a riddle, "What do you say to a ham that is made out of turkey?", to which he replies, hesitantly, "Gobble-gobble?" The boy is then shown eating the "ham" in a sandwich while an off-camera voice describes the product. There follows a picture of the package with the name "Longacre Family" and the product "Baked Turkey Ham" prominently displayed, as the off-camera voice announces defendant's name and product. The commercial closes with the little boy repeating the catchphrase, "gobble-gobble," in a more positive manner.
A radio commercial using the same wording was also produced.
15. On Friday, August 27, 1976, one of the members of the Pfaff agency saw and heard in Pfaff's offices, on a television set which played constantly, but was viewed only intermittently, the end of plaintiff's turkey frankfurter commercial featuring the term "gobble-gobble." Recognizing a potential conflict with defendant's commercial, Pfaff's personnel made inquiry to ascertain the identity of the sponsor and the content of that commercial. On Monday, August 30, after notifying defendant that the problem existed, Pfaff obtained a kinescope copy of plaintiff's commercial from the American Broadcasting Company, on whose station it had been aired.
16. As of August 30, 1976 defendant had spent a total of approximately $23,000 in the preparation of commercials using the phrase "gobble-gobble." As of that date, defendant had not shown on any of the media, any advertisements using the term "gobble-gobble."
17. Representatives of defendant and Pfaff met on September 2, 1976, to discuss the problems created by the conflict in commercials. They played the kinescope copy of plaintiff's commercial. They considered the possibility of changing defendant's commercial, but rejected that course of action because:
(a) they concluded that no words could be substituted by "lip synchronization" for "gobble-gobble" in defendant's commercial and therefore changes would require refilming of the portions of the commercial using that term;
(b) since the commercial had been shot on film (a more expensive process) rather than videotape, the cost to refilm the "gobble-gobble" portions would be approximately $15,000;
(c) it would take from two to five weeks to make the alterations and refilm the commercial, thereby making it impossible for defendant to meet its air time commitments for the commercial;
(d) they concluded that plaintiff and defendant had used the term "gobble-gobble" in different...
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