Renofab Process Corp. v. Renotex Corp.

• Decision Date: 24 December 1956
• Citation: 158 N.Y.S.2d 70
• Parties: RENOFAB PROCESS CORP. and Paul Sertner and Murray Sertner, individually and as co-partners doing business as Renofab Products Co., Plaintiffs, v. RENOTEX CORPORATION, Defendant.
• Court: New York Supreme Court

Page 70

158 N.Y.S.2d 70

112 U.S.P.Q. 64

RENOFAB PROCESS CORP. and Paul Sertner and Murray Sertner,

individually and as co-partners doing business as

Renofab Products Co., Plaintiffs, v. RENOTEX CORPORATION, Defendant.

Supreme Court, Trial Term, New York County, Part V.

Dec. 24, 1956.

Sidney Schwamm, New York City, for plaintiffs.

Barron, Rice & Rockmore, New York City, for defendant.

GELLER, Judge.

This is an action is equity to enjoin alleged unfair competition on the part of defendant in its use of the trade name 'Renotex' and for other relief to implement the injunction. A claim for damages was abandoned on the trial. Thus, the sole issue is plaintiffs' right to injunctive relief.

During 1926, plaintiffs Paul and Murray Sertner entered in the business of cleaning and hanging household and office furnishings and drapes, and thereafter extended their business as hereinafter enumerated. They have done business in corporate and partnership form since then, using the names Sertners, Inc., and the coined word 'Renofab' by itself and in combination with the words 'Process' and 'Products'. The corporation and partnership served different functions, as hereinafter set forth. The certificate of incorporation of Sertners, Inc., was filed January 7, 1929.

A certificate of incorporation of The Renofab Process, Inc., was filed on January 3, 1931. This latter corporation registered 'Renofab' as a trade mark for a dry cleaning fluid in the U. S. Patent Office on July 19, 1932. It was dissolved by proclamation of the Secretary of State of the State of New York on December 16, 1935, because of failure to pay its taxes.

Paul and Murray Sertner filed a certificate of doing business as partners under the name of Renofab Products Co. on November 27, 1939 in New York County.

Defendant Renotex Corporation filed its certificate of incorporation on July 24, 1945.

Sertners, Inc., filed a certificate of change of name to Renofab Process Corp. on May 20, 1949.

The individual plaintiffs are presently partners doing business under the name of Renofab Products Co., and are also the officers and the managing personnel of the corporate plaintiff Renofab Process Corp. The partnership is a small business enterprise whose principal concern is the marketing of a cleaning fluid under the trade mark 'Renofab'. The partnership's gross annual sales volume, for each year, between 1935 and 1941, was in the low four figures,--(no figures having been furnished for the years 1942 to 1948, inclusive)--and for each year between 1949 and 1955, inclusive, was in higher four figures, except that for 1952 the gross volume was $10,232.

The corporate plaintiff is now in the business of cleaning interior furniture and drapes in homes, offices and industrial plants (principally in homes), upholstery work, storage of furniture and furnishings, and also 'off location' (not in customer's premises) carpet cleaning, and 'on location' (at customer's home or place of business) carpet cleaning. No carpet cleaning was done directly by the plaintiff entities, but such carpet cleaning was performed through subcontractors, except that commencing in the middle of 1955, plaintiff corporation commenced to do 'on location' carpet cleaning through a staff it then employed.

Defendant corporation specializes in 'on location' carpet cleaning principally for offices, showrooms, industrial concerns and the carpet trade--(home 'on location' carpet cleaning constituting only about one-third of its gross annual sales).

'On location' carpet cleaning was a relatively small part of plaintiff corporation's business, whereas it constituted almost all of defendant's business. Plaintiff corporation's 'on location' carpet cleaning represented approximately 10% of its gross volume of business from 1946 to 1954, inclusive, and increased to 15% of its gross volume of business, or about $72,000 for 1955. On the other hand, defendant's 'on location' carpet cleaning was more than 90% of its total sales between 1949 and 1954, inclusive, and was 90.5% of its total sales, or $96,435 in 1955. No figures have been furnished for the years between 1945, when defendant was formed, and 1948, inclusive.

Parenthetically, when plaintiff corporation, during 1955, commenced to do its own 'on location' carpet cleaning, it took from defendant's employment several of its specially trained men, without its consent.

In its carpet cleaning operations, the defendant uses a cleaning detergent known as 'Karpet-Kare', manufactured by Bigelow Sanford Carpet Co. The defendant also has been selling a small volume of two other cleaning fluids, known as 'Drisorbene' and 'Sprinkle Kleen' (which are likewise manufactured by the Bigelow Sanford Carpet Co.), to customers for whom it has done 'on location' carpet cleaning. Such cleaning fluids thereafter were used on upholstery and for moth spraying of rugs and carpets. The defendant in no way advertises or sells any cleaning fluid or detergent under the name of 'Renotex'.

While the plaintiffs' total expenditure for advertising for all phases of its business, for the twenty years 1936 to 1955, inclusive, has been considerable, the amounts spent each year in advertising 'Renofab' cleaning fluid were generally small, except in two very recent of the twenty years. No breakdown has been supplied regarding plaintiff corporation's expenditures in connection with the advertising of 'Renofab' services, or particularly as to its 'on location' carpet cleaning.

The words 'Renofab Process' have been listed for many years in the classified telephone books under 'Cleaners and Dyers' or 'Dry Cleaning', and the aforementioned partnership name was listed under 'Chemicals' and 'Cleaning Compounds'. Neither of plaintiffs' names 'Renofab' or 'Renofab Process' was ever listed under 'Carpet and Rug Cleaning', which represents defendant's specialty and virtually its sole business. However, the defendant's corporate listing of Renotex' in the phone books has, throughout its existence, been under 'Carpet and Rug Cleaners' or 'Carpet Cleaning'.

Paul Sertner learned of the existence of defendant and its use of the name 'Renotex' when he passed defendant's store at 997 First Avenue, some time before April 1949, when defendant moved from that location, and he also saw defendant's advertisements of 'on location' carpet cleaning, with 'Karpet-Kare', in the New Yorker Magazine prior to April 1953.

The first and only communication by plaintiffs, through its attorney, to defendant on the subject of possibility of confusion of trade names was in April 1953. Several conferences were held following this letter, which dealt with the possibility of a merger between plaintiffs and defendant, or defendant becoming a division or part of plaintiffs' business. Paul Sertner, who was present at the conferences, testified that at the first conference he referred to the possible confusion in names which might make such affiliation or consolidation expedient, but he admitted he raised no question of defendant's right to do business under the name 'Renotex'.

It is eminently clear from the evidence that plaintiff corporation, which was not then doing its own 'on location' carpet cleaning but subcontracting the same, was looking for an entity to be associated with it, which specialized in 'on location' carpet cleaning. In fact, during December 1953, Mr. Sertner, on behalf of the plaintiff, requested the defendant to perform an 'on location' carpet cleaning job for one of its dissatisfied customers, who had called to plaintiff's attention two other carpet cleaning organizations, one of which was the defendant. Sertner testified that knowing the character of defendant's 'on location' cleaning, he retained it on behalf of plaintiff to re-do the said carpet cleaning job. Defendant's bill was rendered directly to the plaintiff, who paid the same. Plaintiff, on this occasion also, raised no question as to defendant's right to use the name 'Renotex'.

There was no further communication between plaintiffs and defendant after December 1953, except by the commencement of this action on January 16, 1956. Then, for the first time, did plaintiffs claim that defendant had no right to use the name 'Renotex'.

Paul and Murray Sertner, while named as individual plaintiffs in this action, have not established any claim as individuals. Their claims, if any, arise from their interests as partners in Renofab Process Co. and as managers of Renofab Process Corp.

The partnership's business is solely the manufacture and sale of the cleaning fluid 'Renofab' and, as above indicated, its annual volume of such business is indeed small. Defendant does not manufacture a cleaning fluid. It merely sells a small amount of two cleaning fluids manufactured by Bigelow Sanford Carpet Co. to customers for whom it does 'on location' carpet and rug cleaning, when such customers desire to buy same. The names of these cleaning fluids, 'Drisorbene' and 'Sprinkle Kleen' do not even remotely resemble 'Renofab'. As stated above, its 'on location' carpet and rug cleaning service is done with 'Karpet Kare'.

The court concludes that there is no likelihood of confusion or mistake between the 'Renofab' cleaning fluid of the plaintiff partnership and the 'on location' carpet and rug cleaning services rendered by the defendant. There is, therefore, no basis for any unfair competition claim by the plaintiff partnership. The basic question remaining in the case, is whether the defendant, by its use of the trade name 'Renotex', is competing unfairly with plaintiff corporation.

In trade mark infringement and unfair competition cases 'even more than in other litigation, precedent must be studied in the light of the facts of the particular case. The ascertainment of probability of confusion because of similarity of trade names presents a problem not solvable by a precise rule or measure. Rather is it a matter of varying human reactions to situations...