Springs Mills, Inc. v. Ultracashmere House, Ltd.

• Decision Date: 21 January 1982
• Docket Number: No. 79 Civ. 4574 (DNE).,79 Civ. 4574 (DNE).
• Citation: 532 F. Supp. 1203
• Parties: SPRINGS MILLS, INC., Plaintiff, v. ULTRACASHMERE HOUSE, LTD., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

532 F. Supp. 1203

SPRINGS MILLS, INC., Plaintiff, v. ULTRACASHMERE HOUSE, LTD., et al., Defendants.

No. 79 Civ. 4574 (DNE).

United States District Court, S. D. New York.

January 21, 1982.

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Weiss, Dawid, Fross, Zelnick & Lehrman, New York City (Alan Zelnick, Lowry Wyman, New York City, of counsel), for plaintiff.

Hiram G. Shields and Leo Gitlin, New York City, for defendants.

OPINION, FINDINGS OF FACT AND CONCLUSIONS OF LAW

EDELSTEIN, District Judge:

This is an action for trademark infringement, false designation of origin and unfair competition brought under the Lanham Act, 15 U.S.C. § 1051 et seq., and the common law. The court has jurisdiction of the matter under 15 U.S.C. § 1121 and 28 U.S.C. § 1338.

Plaintiff, Springs Mills, Inc. ("Springs Mills"), is the owner of the registered trademark "ULTRASUEDE," which it has used in the sale of a suede-like fabric made from polyester fibers and polyurethane. Defendant, Ultracashmere House, Ltd. ("UHL"), manufactures and sells "ULTRACASHMERE," a synthetic rayon fabric, and garments made from ULTRACASHMERE. Individual defendant Bart Schwartz is the president of UHL.

FACTUAL BACKGROUND

For more than eighty years Springs Mills has manufactured, merchandised and sold fabrics and textiles. In 1971, the Skinner Fabrics division of Springs Mills selected the trademark ULTRASUEDE for use on a line of fabric imported from Japan. In 1974, Springs Mills obtained from the United States Patent and Trademark Office two registrations for this trademark, one for the word ULTRASUEDE and the other for a highly stylized version of the word.

ULTRASUEDE fabric is a man-made, suede-like product composed of polyester fibers and polyurethane. The polyester fibers are embedded into a sheet of non-fibrous polyurethane which binds the fibers and "molds" the fabric. ULTRASUEDE was originally made of 60% polyester and 40% polyurethane and is now composed of 70% polyester and 30% polyurethane. Although ULTRASUEDE looks and feels like suede, it is more durable and is machine washable.

Springs Mills sells ULTRASUEDE to fabric retailers and to garment and upholstery manufacturers.¹ Since 1971 domestic sales of ULTRASUEDE have totalled approximately $190,000,000. During this time Springs Mills has expended approximately $500,000 advertising and promoting the ULTRASUEDE trademark. In addition, garment manufacturers and retailers have, without solicitation from Springs Mills, extensively advertised and promoted the ULTRASUEDE trademark. Articles and books about ULTRASUEDE have further publicized the product.

Springs Mills also promotes ULTRASUEDE by providing hang tags displaying the mark to garment manufacturers and to retailers of ULTRASUEDE fabric. Springs Mills distributed three types of hang tags. The most widely distributed hang tag, reproduced below, is provided to garment manufacturers for attachment to garments:²

Springs Mills provided similar hang tags to retailers of yard goods and hang tags with dry cleaning instructions to manufacturers of non-washable garments.³

In 1980 Springs Mills modified its hang tags. On the front of the hang tags, Springs Mills changed the dominant color from yellow to silver and the ULTRASUEDE trademark to a single rather than split logo. On the back of the tag, Springs Mills changed the description of the product to "A non-leather product of 100% polyester fibers and non-fibrous polyurethane" and deleted the slogan "More like suede than suede itself."

Defendant UHL is a corporation organized in 1978 which manufactures women's apparel. In 1978 UHL filed an application to register the trademark ULTRACASHMERE for "woven, cashmere-like fabrics ... containing synthetic fibers impregnated with synthetic resins." The United States Patent and Trademark Office gave ULTRACASHMERE initial approval for registration. Defendant's application was passed to publication and was opposed by Springs Mills. This opposition is suspended pending determination of this action.

ULTRACASHMERE, imported by UHL from Italy, is a cashmere-like fabric woven from 100% rayon fibers. ULTRACASHMERE differs from ULTRASUEDE in texture, appearance and manufacturing process. Most of UHL's business is the manufacture and sale of ULTRACASHMERE garments. UHL also distributes a small quantity of ULTRACASHMERE fabric to retailers for over-the-counter sales. ULTRACASHMERE sales since its introduction approximate $1,000,000.

UHL attaches hang tags to the garments it manufactures. UHL's original hang tag is reproduced below.

Notwithstanding the representation on the hang tag, ULTRACASHMERE fabric does not contain polyurethane. In addition, there is no industry recognized fiber termed "Multiple Fibre X-14." Further, ULTRACASHMERE fabric shrinks if washed according to the care instructions on this hang tag.

In 1980, after Springs Mills modified its ULTRASUEDE tags, UHL modified the ULTRACASHMERE hang tags. UHL changed the dominant color of the tags to silver, deleted the slogan "More like cashmere than cashmere itself," and replaced the washing instructions with dry cleaning care instructions. UHL has recently designed a new hang tag which it intends to distribute. The new tag is identical to the 1980 tag, except UHL inserted "superior spun raion" (sic) under the fiber content description.

On August 29, 1979, Springs Mills commenced this suit, alleging four causes of action: (1) that defendants have infringed Springs Mills' trademark in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), by adopting and using a confusingly similar trademark and logo; (2) that defendants have violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), by implying a false association with Springs Mills or its fabric and by falsely representing the fiber content, origin and processing of their fabric; (3) that defendants have unfairly competed with Springs Mills by suggesting a false association between their fabric and Springs Mills'; and (4) that defendants have infringed Springs Mills' common law trademark rights. On December 28, 1979, Springs Mills moved for a preliminary injunction, which was denied by Judge Mary Johnson Lowe of this court on the ground that Springs Mills failed to demonstrate probable "irreparable harm."⁴ The case was subsequently transferred to and tried before this court.⁵

DISCUSSION

A. Trademark Infringement⁶

The central inquiry in all cases of alleged trademark infringement and unfair competition is the likelihood of confusion, or the "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 (2 Cir. 1978), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979); McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2 Cir. 1979). In a case such as this, where the products are "`non-competing,' `different,' or `non-competitive,'" Vitarroz v. Borden, Inc., 644 F.2d 960, 965 (2 Cir. 1981) (citations omitted), the court determines whether there is infringement by analyzing the now classic factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2 Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961):⁷

The strength of the prior user's 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.

The Polaroid analysis calls for consideration of "the balance of equities," Vitarroz v. Borden, Inc., supra, 644 F.2d at 965, and "requires an evaluation of the legitimate interests of the senior user, the junior user, and the consuming public." American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 664 (2 Cir. 1979), cert. denied, 445 U.S. 951, 100 S.Ct. 1601, 63 L.Ed.2d 787 (1980).⁸,⁹

(1) Strength of the mark

The strength of a trademark determines "both the ease with which it may be established as a valid trademark and the degree of protection it will be accorded." McGregor-Doniger Inc. v. Drizzle Inc., supra, 599 F.2d at 1131. Strength is synonymous with the distinctiveness of the mark. As stated by the Second Circuit:

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.

Id. at 1131. This "origin-indicating" quality is viewed from the eyes of the purchasing public, id., and is thus determined by the cumulative effect of the uniqueness of the mark and the extent of its use and public recognition.

There are four categories into which marks are classified depending upon their nature. In ascending order of strength these categories are: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Id. A generic term¹⁰, which refers to the "genus of which the particular product is a species", cannot be registered or protected as a trademark. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2 Cir. 1976). A descriptive term¹¹ is one that "conveys an immediate idea of the ingredients, qualities or characteristics of the goods." Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968), cited approvingly in Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 11. A descriptive term can be registered and protected only if it has acquired a secondary meaning or has "become distinctive of the applicant's goods." 15...