Sun Products Group, Inc. v. B & E Sales Co., Inc.
| Decision Date | 09 November 1988 |
| Docket Number | No. 86-CV-73317-DT.,86-CV-73317-DT. |
| Citation | 700 F. Supp. 366 |
| Parties | SUN PRODUCTS GROUP, INC., a Washington corporation, Plaintiff, v. B & E SALES COMPANY, INC., a Michigan corporation, and Perry Drug Stores, Inc., a Michigan corporation, Defendants. |
| Court | U.S. District Court — Western District of Michigan |
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Allan M. Krass, Marshall McFarlane, Troy, Mich., for plaintiff.
Don R. Mollick, Bellevue, Wash., Jerome E. Galante, Detroit, Mich., for defendants.
This is an action for patent and trademark infringement under federal law.This Court has jurisdiction over the subject matter of the instant case pursuant to 28 U.S.C. §§ 1338(a)and1338(b),35U.S.C. § 271, and28 U.S.C. §§ 2201and2202.Venue is proper in this district under 28 U.S.C. § 1400(b).
The trial in this matter began on January 7, 1988, and concluded on January 19, 1988.The parties have supplemented their proofs with post-trial briefs, and the matter is now ready for a decision.
The following are the findings of fact and conclusions of law of this Court pursuant to Fed.R.Civ.P. 52(a).
Steven K. Younger and Rudolph A. Fiedelak are the inventors of a foldable headrest which was given the tradename "Headchair" by them.1In 1983, Younger and Fiedelak formed Sun Global, Inc., a Washington corporation whose primary business activity was the manufacture and sale of the "Headchair."2
Beginning on December 20, 1983, Sun conducted a "test market," or a limited sales experiment, with the "Headchair."Sun first marketed the "Headchair" in earnest in June 1984, at the Los Angeles International Gift Fair.3The inventors of the "Headchair" were aware of no other foldable headrest product on the American market at that time.
On October 11, 1984, Younger and Fiedelak applied, as joint inventors, for a patent of the "Headchair" as a foldable headrest.The application was rejected without prejudice by the United States Patent and Trademark Office(PTO) on the ground that the original claims were "unpatentable for obviousness under 35 U.S.C. § 103 over RichardsU.S. Pat. No. 2,502,752 in view of MeyerU.S. Pat. No. 4,295,571."Report of Examiner's Action, April 24, 1985, at 2.4
On February 14, 1985, Sun petitioned the PTO for accelerated consideration of its pending patent application because it suspected infringement.5Petition to Make Special, February 14, 1985, Defendants' Exhibit 40.
An amended application was filed by Sun on June 4, 1985.On October 1, 1985, the amended application was granted, and Sun Global was issued United States PatentNo. 4,544,203("the '203 patent") for its "foldable headrest."Plaintiff's Exhibit A.
The claimed invention of the '203 patent is described in claim 1 of that patent as follows:
Claim 2 of the '203 patent provides as follows:
Said keys of said first frame include means allowing disengagement of said keys from said respective openings of said second frame only when said headrest is in said folded position and preventing disengagement at all other times.
The principal difference between the rejected original application and the allowed amended application was the addition of an explicit reference in the latter to (a) the "resiliently flexible" property of the one-piece headrest frames, an attribute without which the frames would be impossible to assemble, and (b) the integral key arrangement, which "eliminates the need and expense of providing separate rivets, hinge connectors or the like" for connecting the frame members to each other.Amended Applicationat 4.6
All Sun headrests, which were manufactured between October 1984 until October 1, 1985(the date of issue of the '203 patent), bore the marking, "U.S. Patent Applied For."All Sun headrests, which were manufactured after October 1, 1985, bore the notice, "U.S. Pat. No. 4,544,203."
On March 19, 1985, Sun received U.S. Trademark RegistrationNo. 1,325,869 on its trademark "Headchair."This registration recorded the date (December 20, 1983) when the trademark was first used, and initially entered commerce.Plaintiff's exhibit B.Sun has used the trademark "Headchair" continuously on its product since December 20, 1983.
Sun designed an advertising, trade dress and display program for the "Headchair" which included (a) the "slug line," or slogan, "The heads up way to take it easy,"(b) a 24-unit shipping container which doubled as a display carton, (c) a flapless, wrapperless display package for each unit which allowed shoppers to see, touch and handle the product directly, and (d) a distinctive graphic design on the package and shipping carton, which superimposed the product's name and associated "slug line" upon a photograph of a reclining female model in a swimsuit using a "Headchair."
Sun purchased very little commercial advertising for the "Headchair."However, the product was publicized widely by virtue of considerable exposure in the print and broadcast media.The "Headchair" was identified as one of the "Hot New Products of 1985" by People Magazine.Steven K. Younger was a guest on the national network television program "Good Morning America" on May 28, 1985.In addition, this product was the subject of feature stories in the New York Times and other newspapers.Plaintiff's Exhibit AA.
Sun sold 30,666 units of the "Headchair" between July 1984 and December 1984, and an additional 158,366 units between January 1985 and June 1985.Thus, Sun experienced a growth in "Headchair" sales of 416% between the first and second half-years of the product's presence on the market.
B & E Sales Company, Inc., is a Michigan corporation whose primary business activity is the importation and sale of merchandise, and the creation and sale of advertising, to retail drugstores throughout the United States.Perry Drug Stores, Inc., is a Michigan corporation whose primary business activity is the operation of a chain of retail drug stores in Michigan.
In July 1985, when the "Headchair" had been on the market for more than a year, B & E Sales began marketing a headrest whose design included each element, or the equivalent of each element, of claim 1 of the frames when in either open or closed positions (claim 1, clauses "o" and "p"), and (d) the "resiliently flexible" property of the frames which permits one-piece assembly (claim 1, clause "k").
B & E Sales adopted the term "Heads-Up" as a tradename, but did not register that name with the PTO.It placed a slogan, "A Great Lift to Comfort,"...
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