Radio Corp. of America v. RCA Rubber Co.

• Decision Date: 03 June 1953
• Docket Number: Civ. No. 26232.
• Citation: 114 F. Supp. 162
• Parties: RADIO CORP. OF AMERICA v. R. C. A. RUBBER CO.
• Court: U.S. District Court — Northern District of Ohio

114 F. Supp. 162

RADIO CORP. OF AMERICA v. R. C. A. RUBBER CO.

Civ. No. 26232.

United States District Court, N. D. Ohio, E. D.

June 3, 1953.

Dwight Parsons, L. M. Buckingham, Akron, Ohio, for plaintiff.

Robert Guinther, Slabaugh, Guinther & Pflueger, Akron, Ohio, Bates, Teare & McBean, Cleveland, Ohio, for defendant.

JONES, Chief Judge.

The parties being familiar with the facts so recently heard, it will be sufficient to set down only my views, findings and conclusions in memorandum form.

Plaintiff seeks to enjoin defendant from using the name R. C. A. Rubber Company, or any other name so closely resembling plaintiff's trade mark, and trade name "RCA", that there is likelihood the public will be deceived or confused as to the origin, source or sponsorship of the defendant and its products; and prays for such other equitable relief as may be proper.

Defendant admits the use of the letters R. C. A. as a part of its corporate name and, as the proofs show, use otherwise, independent of the corporate name. Defendant denies that it has competed unfairly with the plaintiff or made any use of the letters R. C. A. not relating to rubber products, and only in such manner as it was entitled. Defendant further asserts estoppel against the plaintiff for its failure to make timely and effective objection to the defendant's use of the letters and by its long inaction has permitted defendant to enjoy increasing and profitable business, acquired by large expenditures in plant, equipment, extension and advertising; that now to enjoin the use of its corporate name and the letters R. C. A. in the manner in which it has been using them would result in irreparable injury.

There is no doubt that, beginning in 1922, the plaintiff has spent extensive and increasing concerted effort and vast sums of money in publicizing and popularizing its name and products, by the use of the letters RCA and its trade mark consisting of those letters in a circle. I think, and find, that the prior consistent nationwide use made of the letters RCA independent of its full corporate name, gave it a secondary meaning to that extent and in that respect. To appraise the full extent of the relief sought by the plaintiff, we are required to determine whether any corporate body may adopt a distinctive name or a group of letters, which may be permitted to pre-empt the use of such name or letters against use by others, regardless of the product sought to be made or distributed in the avenues of trade; whether such name or letters may be retained exclusively for whatever use, now or in the future, the first user may decide upon. Modern legal thought and judicial trends are definitely opposed to such monopolistic claims. It is my judgment that the plaintiff cannot thus pre-empt the use of the letters RCA forever, for all purposes, on the theory that it may some day, under the broad terms of its Delaware charter, engage in the manufacture, sale or distribution of rubber goods like the defendant's, or those of any other producer.

These parties are engaged in wholly unrelated enterprises, — one is somewhat international in its scope, the other not yet widely engaged beyond the borders of the States east of the Mississippi. They are in wholly different fields; they come into competition at no point; there does not seem to be any instance of the defendant's articles of manufacture being taken or mistaken for those of the plaintiff, as such.

Strictly speaking, we are not dealing with unfair competition, in the usual sense of that term; it is a question of an unfair business or trade practice by which the plaintiff's trade name is asserted to be subjected to use by the defendant in such a way as to create in the mind of the public, the probability that the plaintiff in some way sponsors, or is connected with the defendant company, or supplies the products manufactured and distributed by the defendant.

While reasonable probability of injury or detriment generally is required as an element of offending use, current well-reasoned authorities frown upon the apparent effort to reap some benefit from the well-known trade name and good reputation of an established business, that is, obtaining a sort of "free ride", even where the products are unrelated and no specific injury or detriment is shown.

Although it does not appear that as of today the goods and articles manufactured and sold by the defendant, have been or could be in competition with any goods or articles offered to the public by Radio Corporation, or that any of defendant's articles manufactured and sold by it have been or could be mistaken for those of the plaintiff, yet there are other factors entering into the inquiry as to whether the use of an established trade name by another not engaged in a related business, may be found to be engaged in unfair business trade or competition to the probable detriment of the owner of the trade name.

It is not the mere use of the letters by the defendant which establishes the unfair practice; it is the manner in which the letters are consistently used that condemns the practice as unfair. One cannot fail to be influenced with the character of defendant's advertising as an ingenious means of creating the impression that defendant's products in some way relate to the plaintiff company. The potential injury to the trade of another, or the likelihood of confusion or mistake in the products of two unrelated manufacturers, is not the only equitable consideration. The larger and determining factor or issue is whether the use made of the other's established trade name is calculated to, and probably will, create in the public mind the belief that the two are related and in that regard carry potential injury. This, in my view, could and would be unfair business trade, or practice, or competition (if you adhere to the fetish of a term) which would call for suppression by injunctive relief.

Despite the defendant's protestation and oral testimony to the effect that there was no concern for, and no intention of, capitalizing on plaintiff's established trade name, nevertheless, the use made of the letters R. C. A. by the defendant, without the name of the Company, or without the corporate name in a prominent position, and with the letters R. C. A. contained within a diamond-shaped figure, lends considerable support to the plaintiff's charge that the defendant's use of the letters was designed to convey the impression to the public that the plaintiff was in some way sponsoring, or connected with, the defendant and its products.

The fact that the defendant's advertising and public were in a comparatively limited field or area compared to those of the plaintiff, is not of controlling force.

In the sense that the defendant's use of the letters R. C. A. is designed to promote its products, the public well could be misled into believing that the plaintiff was back of the defendant's products or in some way responsible for them.

While I find no fraudulent intention to deceive the plaintiff or the public in the original use of the letters R. C. A. in its corporate name, and while I think it may have been a coincidence, as Mr. Crisp testified, that the first letter of the names of the three important members of the organization, in the order of their importance, were thought by him to be desirable to be used for the corporate...