McGregor-Doniger, Inc. v. Drizzle, Inc.

• Decision Date: 27 February 1978
• Docket Number: No. 75 Civ. 1151.,75 Civ. 1151.
• Citation: 446 F. Supp. 160
• Parties: McGREGOR-DONIGER, INC., Plaintiff, v. DRIZZLE, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

446 F. Supp. 160

McGREGOR-DONIGER, INC., Plaintiff, v. DRIZZLE, INC., Defendant.

No. 75 Civ. 1151.

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

February 27, 1978.

Shenier & O'Connor, New York City, for plaintiff; Henry L. Shenier, William A. Kinnaman, Jr., New York City, of counsel.

Robert W. Fiddler, New York City, for defendant.

LASKER, District Judge.

McGregor-Doniger, Inc. ("McGregor") is a manufacturer of sportswear and the owner of the trademark "DRIZZLER." Since 1947, it has sold golf jackets under that mark, and in March, 1965, it obtained registration of "DRIZZLER" for use in connection with its golf jackets (Plaintiff's Exhibits, "PX," 117, 117A). Drizzle, Inc. ("Drizzle"), incorporated in 1969, manufactures and sells women's overcoats, including raincoats. Its products are sold under the trademark "DRIZZLE."

McGregor alleges that in light of its own use of the mark "DRIZZLER" in connection with golf jackets, defendant's use of "DRIZZLE" in connection with its outerwear constitutes trademark infringement, false designation of origin and common law unfair competition. Accordingly, McGregor sues under 15 U.S.C. §§ 1114(1) and 1125(a), as well as under the "common law" (see Count III, Complaint). Jurisdiction is based on 15 U.S.C. § 1121, 28 U.S.C. § 1338(a) and (b) and, presumably, on the doctrine of pendent jurisdiction.

The central issue posed is whether McGregor is entitled to protection of its trademark against use on products other than golf jackets, which are the only products for which McGregor obtained the "DRIZZLER" registration.¹

The standards for resolving such an issue were set forth in Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492, 495 (2d Cir.) 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."

Accord, Scarves By Vera, Inc. v. Todo Imports Ltd. (Inc.), 544 F.2d 1167, 1173 (2d Cir. 1976); King Research, Inc. v. Shulton, Inc., 454 F.2d 66, 68 (2d Cir. 1972); Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097, 1099 (2d Cir. 1969), cert. denied, 396 U.S. 1054, 90 S.Ct. 707, 24 L.Ed.2d 698 (1970); Triumph Hosiery Mills, Inc. v. Triumph International Corporation, 308 F.2d 196, 198 (2d Cir. 1962). Application of the Polaroid test to the facts of this case establishes that McGregor has failed to demonstrate actionable trademark violation, false designation, or unfair competition.

Strength of Mark

It is difficult to locate a precise, analytical definition of "strength" as that term is used in connection with trademarks.

"In essence, the distinctiveness and popularity of the trademark will determine its relative strength or weakness and will, accordingly, define the scope of protection to be accorded the mark against the confusing similarity of others. A mark is strong if it is conspicuously distinctive; it is distinctive if the public has already been educated to accept it as the hallmark of a particular source. Then, too, a mark can be distinctive either because it is unique, that is, distinctive in itself, because it has been the subject of wide and intensive advertisement, or because of a combination of both." 3 Callmann, Unfair Competition, Trademarks and Monopolies, § 82.1(1) at 755-56 (3d ed. 1969) (footnotes omitted).

As is apparent from the quoted passage, strength may derive from the intrinsic quality of a mark or from its public history. However the quality develops, the characteristic of the strong mark is that it identifies the source of origin of the product. W. E. Bassett Company v. Revlon, Inc., 435 F.2d 656, 661 (2d Cir. 1970) ("Bassett II"); W. E. Bassett Company v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966) ("Bassett I").

Turning to the concept of "intrinsic strength," it is not clear precisely what sort of quality is denoted by "strength." Court pronouncements on this point are often conclusory and terse and not always illuminating. See, e. g., King Research, Inc. v. Shulton, Inc., supra, 454 F.2d at 68 (on the issue of strength, the court remarked only that "the strength of the mark . . . is only moderate"); Polaroid Corporation v. Polarad Electronics Corporation, supra, 287 F.2d at 495 ("Here plaintiff's mark is a strong one . . ."). Nevertheless, it appears that the distinction between "strong" and "weak" may be analogized to the distinction between "descriptive" and "arbitrary and fanciful." This relation between the two sets of terms is implicit in courts' conclusions that descriptive terms and proper names are intrinsically weak,² while arbitrary and fanciful words/phrases are strong.³ It simplifies matters if the overcrowded adjectival population of trademark law is thinned out, Abercrombie & Fitch v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir. 1976), and in light of the long judicial history of associating "weak/strong" with "descriptive/fanciful," we will measure plaintiff's mark by the second, more readily understood standard.

In this case, although we do not find that the "DRIZZLER" mark is descriptive, we do find that it inhabits that part of the spectrum running from "merely descriptive" to "suggestive" (see, Abercrombie & Fitch v. Hunting World, Inc., supra, 537 F.2d at 9), rather than the sector bounded by "fanciful and arbitrary." The finding that "DRIZZLER" lives in the descriptive/suggestive zone is based on the following definition:

"A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods." Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968) (footnote omitted).

The mind surely does not jump instinctively from contemplation of the term "DRIZZLER" to knowledge of the qualities of a jacket.⁴ That is, DRIZZLER seems suggestive as applied to jackets. We need not decide whether "DRIZZLER" is descriptive (this result might be indicated by the above cited decisions of the Court of Appeals for the Second Circuit, supra at n. 4) or suggestive (as measured by the definition in Stix, quoted above) since it is either descriptive or suggestive, but not arbitrary or fanciful.

This determination does not end the matter, however, because a descriptive or suggestive mark (one lacking inherent strength) may "evolve" to a stage where it deserves protection from use by non-competitors. Such a transformation requires that the mark acquire a secondary meaning. Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, supra, 378 F.Supp. at 410; see, Scarves By Vera, Inc. v. Todo Imports Ltd. (Inc.), supra, 544 F.2d at 1173. That is, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73 (1938); Bassett II, supra, 435 F.2d at 661; Ralston Purina Company v. Thomas J. Lipton, Inc., 341 F.Supp. 129, 133 (S.D.N.Y. 1972). In the instant case, McGregor has not established that "DRIZZLER" has acquired a secondary meaning. The only evidence offered on the issue are the figures as to the volume of sales of DRIZZLER jackets from 1964 through 1975 (approximately $37 million (PX 108B)) and the amount spent on advertisement of the product during that period ($650,000 (PX 108C)). Nothing on the record indicates whether these sums did, as a matter of fact, create public renown, and as a matter of law, proof of sales and advertising expenses are alone insufficient to show secondary meaning.⁵ In sum, plaintiff has not established by a preponderance of evidence that "DRIZZLER" has transcended its suggestive descriptive nature by acquiring a secondary meaning.⁶

Similarity of the Marks

The typewritten and aural similarity between "DRIZZLER" and "DRIZZLE" needs no comment; it approaches identity. However, it must be noted that "the Drizzler mark . . . is always used in combination with McGregor." (Testimony of David Aaron, salesman for McGregor for 35 years, Tr. at 58). That is, the label used in the "DRIZZLER" jacket prominently features the McGregor logo (which consists of the word McGregor printed in striking, Scotch plaid capital letters), so that the two words "DRIZZLER" and "McGREGOR" are naturally read together (PX 115A, 115B). Furthermore, the print and television advertisements also emphasize the McGregor name (PX 7, 12, 19A, 19D, 41, 43A, 43C, 47, 53, 70, 75). In light of this conjunction, defendant's use of the single word "DRIZZLE" mark, either on its label — which is, visually, strikingly different from McGregor's (see, PX 106B, 106C) — or in its print advertising (PX 107A, B, C, E, G, H, I, L, N, O, R, S, U, W), reduces the similarity that is shared by the two marks when they are compared out of context. See, King Research, Inc. v. Shulton, Inc., supra, 454 F.2d at 68.

Competitive Proximity of the Products/Quality of Defendant's Product

Beyond the fact that they might both be crudely classified as outerwear, the "DRIZZLER" and defendant's products have nothing in common. McGregor's garment is a relatively inexpensive,⁷ lightweight, waistlength jacket — a windbreaker (see PX 1, 11D). As is apparent from advertisements for the jacket, it is intended for casual wear, particularly in connection with...