Robert Bruce, Inc. v. Sears, Roebuck & Co.

• Decision Date: 19 May 1972
• Docket Number: Civ. A. No. 71-2531.
• Parties: ROBERT BRUCE, INC., Plaintiff, v. SEARS, ROEBUCK & CO., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

343 F. Supp. 1333

ROBERT BRUCE, INC., Plaintiff, v. SEARS, ROEBUCK & CO., Defendant.

Civ. A. No. 71-2531.

United States District Court, E. D. Pennsylvania.

May 19, 1972.

Bruce W. Kauffman, Dilworth, Paxson, Kalish, Levy & Coleman, Arthur H. Seidel, Seidel, Gonda & Goldhammer, Philadelphia, Pa., for plaintiff.

Burton Y. Weitzenfeld, Arnstein, Gluck, Weitzenfeld & Minow, Chicago, Ill., Charles M. Allen, Howson & Howson, Philadelphia, Pa., for defendant.

OPINION AND ORDER

EDWARD R. BECKER, District Judge.

I. PRELIMINARY STATEMENT

This is a trademark infringement case.¹ The plaintiff, Robert Bruce, Inc. ("Robert Bruce"), manufactures and sells, inter alia, men's and boys' knit shirts, sweaters and swimwear, and owns a United States Trademark Registration, "Grubb", for such goods.² In November 1966, Robert Bruce launched a major promotional effort, supported by a large expenditure of funds, to market the "Grubb" line through the 5000 Robert Bruce retail customers throughout the United States. This effort, which has continued until this day, has been highly successful; virtually one-half of the Robert Bruce production and marketing effort is now devoted to the "Grubb" line of merchandise.

The defendant, Sears, Roebuck and Co. ("Sears"), is one of America's largest retail merchandising concerns, with department stores and catalogue outlets throughout the length and breadth of the land. In May 1971, Sears commenced offering jeans for sale under the mark "Neets n Grubs", and when it refused to accede to Robert Bruce's demand that it cease using that mark, this suit followed.

The principal questions before us are: (1) whether the "Grubb" mark is in actuality a mere descriptive mark which is not entitled to trademark protection; and (2) whether the "Neets n Grubs" mark is confusingly similar to the "Grubb" mark within the meaning of the Lanham Act and the caselaw. The final hearing has been held.³ As will be seen, we conclude: (1) that the "Grubb" mark is not merely descriptive, but is instead an arbitrary, fanciful and therefore strong mark which is entitled to protection; (2) that "Neets n Grubs" so closely resembles "Grubb" as to be likely to cause confusion or mistake; and (3) that the defendant's use of "Neets n Grubs" constitutes an infringement of the plaintiff's trademark "Grubb". We turn first, however, to a recitation of our findings of fact from which these conclusions stem. This Opinion constitutes our findings of fact and conclusions of law under Fed.R.Civ.P. 52(a).

II. FINDINGS OF FACT

A. Introduction

We make the following findings with the awareness that, while the bulk of them relate to statements of subsidiary fact, some of them (e. g., descriptiveness of the mark, likelihood of confusion) are findings of ultimate fact. The findings of ultimate fact have been stated with full cognizance of the legal principles governing such matters (see discussion infra).

B. Robert Bruce Goods And The Question Of Descriptiveness Of The "Grubb" Mark

For the past ten years, Robert Bruce has designed its wearing apparel with a twofold market objective: to appeal to the mature male and to youth.⁴ The approach to the former group has been through the so-called Arnold Palmer line; the approach to the latter has evolved through various stages culminating with the creation of the "Grubb" line. Since November 1966, Robert Bruce has continuously used the trademark "Grubb" in commerce on wearing apparel comprising sweaters, knit shirts, swim trunks, and swim tops. In addition, it has from time to time added various "Grubb" trademarked items of apparel which coordinate with its basic "Grubb" shirt and sweater. Such items of apparel include casual full length pants, walking shorts, jackets, scarfs, caps, socks, gloves, hats, beach towels, and (see infra) jeans.

From 1963 until it was phased out in 1967, Robert Bruce had used the trademark "TNT" for its youth line of wearing apparel. However, in 1966, Ronald Stevens ("Stevens"), Robert Bruce's Executive Vice President for Marketing, apprehended that the "TNT" trademark had no appeal to the youth market because of its close association with the word "teen" which had become passé. Since Robert Bruce considers appropriate trademarks to be a vital part of its business,⁵ Stevens sought another mark by which Robert Bruce could distinguish its youthful wearing apparel. The mark "Grubb" was arrived at and adopted as the Robert Bruce trademark for its basic line of wearing apparel fashioned for the youth market.

Robert Bruce's "Grubb" trademarked apparel is in the medium to high price category. The firm carefully controls and maintains the quality of its apparel. There was no change in the quality or style of the "Grubb" wearing apparel from that of the "TNT", except as necessitated by the vagaries of fashion in the youth market; yet sales of youthful apparel have markedly increased steadily every year since the mark "Grubb" was adopted—from in excess of three million, four hundred thousand dollars in 1967 to over twelve million dollars in 1971. Total sales of wearing apparel under the "Grubb" trademark are now well in excess of thirty-six million dollars. In addition, sales of apparel under the "Grubb" trademark amount to between forty-five and fifty percent of Robert Bruce's present total annual sales which are in excess of twenty-five million dollars and have been continually growing.

The youth market to which Robert Bruce sells its "Grubb" trademarked wearing apparel is fashion conscious and there is a tendency toward uniformity of style among peers within that market. The youthful wearer of plaintiff's "Grubb" apparel is also brand conscious. These factors have made the Robert Bruce brand name identification policy (see n. 5) peculiarly apposite, and in pursuit of this policy Robert Bruce has aggressively promoted "Grubb" for its youth line of wearing apparel.⁶

Robert Bruce promotes the sale of its "Grubb" wearing apparel on two levels —one directed to retail customers⁷ and the other directed to the consuming public. Promotion of the sale of goods to Robert Bruce retail customers consists of seeking publicity through editorial comment in trade journals and through the extensive publication of attractive multicolor brochures in which the "Grubb" wearing apparel is shown. The brochures prominently feature the "Grubb" mark and the "Grubb" line. The brochures are created with the assistance of an advertising agency at various scenic locations. They are published twice a year (approximately six months before the time when the goods will appear on retailers' shelves). Each brochure is published in a trade magazine having a circulation of between thirty and forty thousand and in addition brochures are sent to eight thousand current and prospective retail customers. Still another five thousand brochures are distributed by plaintiff's sales force.

Advertising and promotion directed toward the ultimate consumer consists of packaging (labels, tags, boxes, plastic bags), point of sale pieces, and consumer advertising through radio, television and newspapers as well as advertising mats for use by a retailer in placing an advertisement in a local newspaper. Over and above the cost of preparing the various advertising items which it makes available to its retail customers free of charge or at cost, Robert Bruce also contributes to its retail customers' purchase of newspaper space or TV and radio time. Robert Bruce's contribution is fifty percent of the cost of the space or time up to two percent of the volume of Robert Bruce goods sold by the retailer. In the Spring of 1971, over three hundred retailers played Robert Bruce's radio advertisement featuring "Grubb" and its television advertisement featuring "Grubb" in some nineteen major cities throughout the United States including New Orleans, St. Louis and Philadelphia between fifteen and thirty times over a ten day period.

During 1971, Robert Bruce spent three hundred and eighty-five thousand dollars in promoting the "Grubb" trademark. Since 1967, Robert Bruce has spent one million, four hundred and one thousand dollars promoting its "Grubb" mark. Over forty-percent of the total advertising costs since 1967 (which includes trade, consumer and packaging advertising) has been spent on consumer advertising. We find that by reason of its substantial advertising and promotional efforts, the quality and appeal of the apparel, and extensive sales, Robert Bruce's "Grubb" trademark has become well and favorably known to both plaintiff's retailers and to the purchasing public.⁸ Robert Bruce's trademark "Grubb" therefore represents substantial good will and is an asset of great value.

Robert Bruce has incorporated the concept of coordination into its "Grubb" wearing apparel. "Coordination" is the matching of different items of clothing in color and style so that they can be worn together. Its commercial purpose is to stimulate sales by inducing customers to make simultaneous purchases of coordinated items of clothing. Since 1969, Robert Bruce has sold casual pants as a coordinated part of its line of "Grubb" trademarked wearing apparel. In 1970 Robert Bruce became even more aware of the strong market for coordinated tops and bottoms and it therefore commenced looking for a manufacturer which it could acquire so that its entire line of Robert Bruce goods could be coordinated between tops and bottoms.

As the result of the coordination trend, at sometime prior to June 1971, Robert Bruce entered into a contractual arrangement with Casual Slacks, Incorporated and Toby Manufacturing Company relating to the acquisition of a pants manufacturing company known as Shelby. Robert Bruce is now conducting its pants business through Shelby even though final approval of the proxy statement for the acquisition agreement by the Securities and Exchange Commission has been delayed. Since June of 1971, Robert Bruce has worked closely with the...