McGregor-Doniger Inc. v. Drizzle Inc.

• Citation: 599 F.2d 1126,202 USPQ 81
• Decision Date: 11 April 1979
• Docket Number: D,No. 10,GREGOR-DONIGER,10
• Parties: , 5 Fed. R. Evid. Serv. 521 McINC., Plaintiff-Appellant, v. DRIZZLE INC., Defendant-Appellee. ocket 78-7132.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Page 1126

599 F.2d 1126

202 U.S.P.Q. 81, 5 Fed. R. Evid. Serv. 521

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

No. 10, Docket 78-7132.

United States Court of Appeals Second Circuit.

Argued Nov. 6, 1978.

Decided April 11, 1979.

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

Robert W. Fiddler, New York City (Fiddler & Levine, New York City, of counsel), for defendant-appellee.

Before FRIENDLY, MANSFIELD and MESKILL, Circuit Judges.

MESKILL, Circuit Judge:

McGregor-Doniger Inc. ("McGregor"), a New York corporation founded in 1921, is a manufacturer of apparel for both men and women. Since 1947 McGregor has sold golf jackets under the trademark DRIZZLER, and in 1965 the company registered this mark for use in connection with golf jackets. Although McGregor had in the past used the word DRIZZLER in connection with other types of apparel, by 1965 the company had ceased using the mark in connection with any goods other than golf jackets. McGregor owns a variety of other trademarks, such as BROLLY DOLLY and BERNHARD ALTMANN, which have been used in connection with goods other than golf jackets. DRIZZLER jackets sell for about $25 to $50.

Drizzle Inc. ("Drizzle"), a New York corporation established in 1969, sells only women's coats. Drizzle's coats, which are manufactured for Drizzle by various contractors, have been sold under the unregistered trademark DRIZZLE since the founding of the company. It appears from the record that Drizzle has to date employed no other trademark. DRIZZLE coats range in price from about $100 to $900.

In 1974 McGregor's management first became aware of the Drizzle company and of its use of the DRIZZLE mark in connection with the sale of women's coats. In January of 1975 McGregor notified Drizzle that if use of the DRIZZLE trademark on Drizzle's goods continued, legal proceedings would be instituted. The warning went unheeded and in March of 1975 McGregor brought suit against Drizzle in the United States District Court for the Southern District of New York, alleging trademark infringement, 15 U.S.C. § 1114, ¹ false designation of origin, 15 U.S.C. § 1125(a), ² and, in a pendent claim, common law unfair competition. ³ McGregor sought an injunction barring Drizzle's further use of DRIZZLE as a trademark, an accounting for profits, damages, and other relief.

After a two-day bench trial, Judge Morris E. Lasker dismissed McGregor's complaint. 446 F.Supp. 160 (S.D.N.Y.1978). On appeal, McGregor challenges both the factual findings of the trial court and the trial court's interpretation of the legal significance of the facts found. Although the trial court's statement of the applicable principles needs modification, we conclude that reversal is not warranted.

DISCUSSION

We are once again called upon to decide when a trademark owner will be protected against the use of its mark, or one very similar, on products other than those to which the owner has applied it. See, e. g., Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1169 (2d Cir. 1976). As we have observed before, the question "does not become easier of solution with the years." Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), Cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961).

The crucial issue in these cases is "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), Cert. denied, --- U.S. ----, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979); 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 84, at 929 (3d ed. 1969) (hereinafter Callman); Restatement of Torts § 717 and Comment b at 567 (1938). In assessing the likelihood of such confusion we consider the factors laid out in the now classic Polaroid formula:

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.

Polaroid Corp. v. Polarad Electronics Corp., supra, 287 F.2d at 495, Citing Restatement of Torts §§ 729, 730, 731. Accord, Mushroom Makers, Inc. v. R. G. Barry Corp., supra, 580 F.2d at 47; Scarves by Vera, Inc v. Todo Imports Ltd., supra, 544 F.2d at 1173; 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. dismissed, 396 U.S. 1054, 90 S.Ct. 707, 24 L.Ed.2d 698 (1970); Triumph Hosiery Mills, Inc. v. Triumph Internat'l Corp., 308 F.2d 196, 198 (2d Cir. 1962); Cf. Callman § 80.5, at 556-57. The parties agree that Judge Lasker was correct in giving consideration to each of the factors mentioned in Polaroid before reaching a decision on the ultimate question of likelihood of confusion.

(1) Strength of the Mark

The most complex issue raised by McGregor concerns the trial court's attempt to gauge the strength of the DRIZZLER mark. Our prior opinions and those of the district courts of this Circuit have left litigants and judges uncertain as to the appropriate way to demonstrate and determine the strength of a mark. In the hope of providing some guidance to bench and bar, we set out in some detail our view of this issue.

The term "strength" as applied to trademarks refers to the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source. E. I. DuPont de Nemours & Co. v. Yoshida Internat'l, Inc.,393 F.Supp. 502, 512 (E.D.N.Y.1975); Callman § 82.1(1), at 755. The Restatement of Torts uses the term "distinctiveness" in place of the term " strength." § 731(f) and Comment e at 602. The strength or distinctiveness of a mark determines both the ease with which it may be established as a valid trademark and the degree of protection it will be accorded.

In an effort to liberate this aspect of trademark law from the "welter of adjectives" which had tended to obscure its contours, we recently reviewed the four categories into which terms are classified for trademark purposes. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Arranged in ascending order of strength, these categories are: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. A generic term can never become a valid trademark and cannot be registered. A descriptive term can be registered as a mark only if it has "become distinctive of the applicant's goods in commerce," 15 U.S.C. § 1052(f), that is, in the unfortunate parlance of the cases, only if it has acquired "secondary meaning." Suggestive marks, falling between the merely descriptive and the arbitrary or fanciful, are entitled to registration without proof of secondary meaning, as are fully arbitrary or fanciful terms. 537 F.2d at 9-11. The boundaries between these categories are not fixed.

(A) term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product.

Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 9 (footnotes omitted).

Thus, while these categories can be useful for analytical purposes, the strength of a mark depends ultimately on its distinctiveness, or its "origin-indicating" quality, in the eyes of the purchasing public. Two familiar examples suffice to illustrate this principle. A coined term, initially suggestive or even fanciful, can lose its full trademark status if it comes to signify to the public the generic name of an article rather than the source of a particular brand of that article. See, e. g., King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963) ("thermos"); Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. (BNA) 80 (Dec.Com.Pat.1950) ("escalator"). In contrast, a descriptive mark that is not distinctive on its face may acquire secondary meaning so as to identify the source of the goods and thus claim status as a valid mark deserving of registration and protection against infringement. See, e. g., W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970) ("Trim" manicure implements). In Judge Lasker's words, "strength may derive from the intrinsic quality of a mark or from its public history." 446 F.Supp. at 162.

The many cases announcing that a mark found to be suggestive, arbitrary or fanciful (I. e., more than merely descriptive) is entitled to protection without proof of secondary meaning are correct as far as they go, for any term that is more than descriptive can be established as a valid mark which others may not infringe. Where the products involved are competitive and the marks quite similar, for example, the senior user of a more-than-descriptive mark need not prove secondary meaning. See, e. g., American Home Products Corp. v. Johnson Chemical Co., 589 F.2d 103, 106 (2d Cir. 1978) (fanciful mark for insect traps; "Roach Inn" held to infringe "Roach Motel"). And where the marks involved are virtually identical, even if the products are non-competitive, a senior user of a more-than-descriptive mark can carry its burden on...