Salton Inc. v. Cornwall Corp.

• Decision Date: 17 August 1979
• Docket Number: Civ. No. 77-197.
• Citation: 477 F. Supp. 975
• Parties: SALTON INCORPORATED, Plaintiff, v. CORNWALL CORPORATION et al., Defendants.
• Court: U.S. District Court — District of New Jersey

477 F. Supp. 975

SALTON INCORPORATED, Plaintiff, v. CORNWALL CORPORATION et al., Defendants.

Civ. No. 77-197.

United States District Court, D. New Jersey.

August 17, 1979.

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Morris M. Schnitzer, Newark, N. J., for plaintiff.

John A. Baldino, Irvington, N. J., Michael J. Reimer, Newark, N. J., for defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

LACEY, District Judge.

INTRODUCTION

Plaintiff, a New York corporation, sues the defendants, New Jersey corporations, for trademark infringement and unfair competition.¹ Jurisdiction lies in this court under 15 U.S.C. § 1121 and 28 U.S.C. § 1332. The matter was tried to the court without a jury and, in addition to the evidence, the court has had the benefit of the parties' posttrial submissions.

My Findings of Fact and Conclusions of Law follow:

FINDINGS OF FACT

1. The plaintiff Salton, Incorporated (Salton), is a New York corporation, having its principal office at 1260 Zerega Avenue, Bronx, New York.

2. The defendant Hudson Standard Corporation (Hudson) is a New Jersey corporation, having its principal office at 90 South Street, Newark, New Jersey.

3. The defendant United Commercial Corporation (United) is a New Jersey corporation, having its principal office at 90 South Street, Newark, New Jersey.

4. The defendants were founded in 1970. Both are owned and managed by Theodore Pearlman and Calvin A. Giroux.

5. Hudson is a manufacturer and distributor of small electrical appliances. "Broil King" is a trademark owned by it.

6. United, in 1977, acquired tools and dies used by Cornwall Corporation (Cornwall),

then bankrupt, for the manufacture of electric food warming appliances. These tools and dies were leased to Hudson.

7. Salton is one of the leading, if not the leading, manufacturer and distributor throughout the United States, in interstate commerce, of electric food warming appliances. It and its predecessor companies have been engaged in that business continuously from 1949 to date. Plaintiff's line of electric food warming appliances is marketed by about 4,000 retailers; upwards of 10 million such food warmers have been sold during the plaintiff's thirty-year history under the trade name "Salton," coupled with the trademark "HOTRAY," both of which appeared on the product, the containers and all related printed material; during the same time span, upwards of $5,000,000 has been spent directly by the plaintiff and through cooperative advertising of its retail dealers, all of which featured Salton HOTRAY, and which reached many millions of readers of newspapers and magazines such as The New Yorker and the Sunday magazines of the New York Times, the Los Angeles Times and other publications.

8. The plaintiff adopted "HOTRAY" as its trademark for warming trays, tables and carts, from the very outset of its business in 1949 and has used "HOTRAY" continuously in interstate commerce since then by affixing such trademark to its goods and featuring such trademark in its advertising in interstate commerce.

9. The trademark, "HOTRAY," was registered to Salton under the Lanham Act upon the Principal Register of the United States Patent Office on September 10, 1963, as # 756,336. The affidavits under Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058, 1065, have been duly filed by Salton with the United States Patent Office. See Conclusion of Law 3.²

10. Theodore Pearlman, President, and a stockholder and director of Hudson, has been in the electric appliance business for many years. Before 1971, I find, he and his associate, Mr. Giroux, knew of the Salton food warmer line, marketed under the trademark "HOTRAY."

11. Retail Home Furnishings is a trade magazine which, in 1971, circulated in interstate commerce in the United States. The issues of January 10, 17, 18, and 31, 1977, carried Hudson advertisements, approved by the defendants, headlined "ELECTRIC HOT TRAYS" and, in illustration, two electric food warming appliances, one called "THERMO GLASS TRAY" and the other "ELECTRIC SERVER." Hudson placed this advertising with knowledge of Salton's trademark "HOTRAY."

12. Sales and promotional material, distributed by Hudson, in interstate commerce, on or about January 1977, referred to its electric food warming appliance as "hot tray."

13. The advertisements, sales and promotional material referred to were likely to cause confusion, or to cause mistake, or to deceive, and infringed the plaintiff's trademark "HOTRAY."

14. The said infringement was knowing and intentional; however, it appears that the advertisement was not disseminated to the consuming public, and that it was seen only by persons in the small appliance trade.

15. Hudson intends to advertise and to market its electric food warming appliances in interstate commerce, as "hot trays," and as "Broil King Hot Tray," unless enjoined by the court.

16. In January 1977 Salton filed a complaint in the United States District Court for the District of New Jersey alleging that "electric hot tray" infringed its trademark "HOTRAY" and that use of the phrase "electric hot tray" constituted unfair competition under the laws of New Jersey.

17. Hudson sent to its manufacturer's representatives catalog pages containing the term "hot tray" in the advertisement's text.

18. Upon receiving Salton's complaint, Hudson notified the manufacturer's representatives to destroy those catalog pages and replace them with substitutes.

19. Hudson has not used the words "hot tray" since plaintiff filed suit.

20. The aforesaid Cornwall used the term "hot trays" in connection with the advertising and sale of its line of electric food warmers. Salton sued Cornwall for infringement in the United States District Court in the District of Massachusetts, Docket # 59-969-SCA. The case was settled by an agreement, dated March 28, 1960, under which Cornwall was prohibited from using the words "hot tray" in advertising, promotion, literature labels or the like, but allowed the use of the term "Hot Electric Tray."

21. The defendants contend the terms "Hot Tray" and "hot tray" are the generic name and the "common descriptive name," as that term is used in 15 U.S.C. § 1065(4),³ of electric food warming appliances, and thus their use of "Hot Tray" and "hot tray" to describe their food warmer is not an infringement of plaintiff's "HOTRAY."

22. I find that the plaintiff has proved by a preponderance of the credible evidence that the generic or common descriptive name for products of the type made and marketed both by Salton and Hudson is not "Hot Tray" or "hot tray" but rather "food warmers" or "electric food warmers."

In this respect, while mindful of his obvious interest in the outcome of the case, I find credible and accept the testimony of Mr. Salton, and its support in the form of the long and continued use of the term "food warmer" by plaintiff. Also persuasive on this issue is the evidence consisting of the Best Products catalog and the Hammacher-Schlemmer catalog reference. Thus, Hammacher-Schlemmer advertises the Salton product as "Salton HOTRAY Food Warmer."

To support its claim that "hot tray" and not "food warmer" is the generic or common descriptive term for the appliance involved, defendants called certain witnesses who testified they had heard consumers ask for "hot trays." This testimony is highly suspect and is rejected, upon the basis of the following analysis:

1. Lawrence Sanders: he testified that people in the trade used the term "hot tray" when referring to food warmers. However, it is not what those in the trade think or say; it is the consuming public to which we look in such matters. Moreover, given the widespread advertising of "HOTRAY" by Salton and its association with food warmers, the public, I find, will be led to ask for Salton food warmers by using the "HOTRAY" designation.⁴ It might well be asked: If the consuming public did not pick up the designation from Salton, where could it have come from? Sanders conceded that no manufacturer other than Salton is using "HOTRAY" or "hot tray." Indeed, the defendants themselves have not used the latter designation in any sales, advertising or promotional material going to consumers, and, as has been found, only briefly used the term "hot tray" in such materials which went to wholesalers and distributors. Aside from the foregoing analysis, moreover, I did not find Sanders to be a credible witness. His testimony reflected an obvious bias in favor of the defendants. As a salesman for G. A. Etlinger, a distributor of the Hudson Broil King products, including electric food warmers, this witness had an interest in the outcome of the case. Based upon these factors and his demeanor responses to questions, particularly upon cross-examination, I must conclude that his testimony is rejected. Additionally, even if I had accepted it, I would have given it no weight.

2. James Solex: this witness, now employed as a small appliance buyer by Macy's, and formerly by Gimbels, testified that Gimbels carried the Salton and Hudson Broil King electric food warming appliances, the Salton line for many years and the defendants' food warmer only recently. He testified that customers asked for "hot trays." He confirmed that the Salton product had been stocked and advertised by Gimbels under the trademark "HOTRAY," which sounds exactly like "hot tray," and which is what the customers may have been seeking. I give this testimony no weight to the extent it was offered by the defendants to show that customers asked for a "hot tray" when what they wanted was a device that merely kept food warm and did not cook food. What I stated as to the Sanders testimony is equally applicable here: a customer asking for "HOTRAY" would have come to that by reason of Salton's millions of dollars of promotion of that mark. Not one consumer had been exposed to the term "hot tray" by the defendants' advertising and promotion. Ins

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