Sunbeam Lighting Co. v. Sunbeam Corporation, 12357.
| Decision Date | 06 September 1950 |
| Docket Number | No. 12357.,12357. |
| Citation | 183 F.2d 969 |
| Parties | SUNBEAM LIGHTING CO. et al. v. SUNBEAM CORPORATION. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Mitchell & Gold, Milton Mitchell, Seymour Gold, Mason & Graham, Collins Mason and William R. Graham, all of Los Angeles, Cal., for appellant.
Rogers & Woodson, William T. Woodson, Beverly W. Pattishall, Lewis S. Garner, John F. McCanna, all of Chicago, Ill., Lyon & Lyon, Reginald E. Caughey, Los Angeles, Cal., for appellee.
Before BIGGS, and STEPHENS, Circuit Judges, and DRIVER, District Judge.
The Sunbeam Corporation, an Illinois corporation situated in Chicago, a large and substantial manufacturer of electrically operated household utensils, secured a judgment against the Sunbeam Lighting Co., a California copartnership at Los Angeles, with Marcus Bodian, Herbert L. Krieger and Phil R. Friedman as copartners therein, extensive manufacturers of fluorescent electrical fixtures, in which the individuals mentioned are permanently enjoined from using the name "Sunbeam" in connection with their business. Those enjoined appeal.
The plaintiff assumed the name of Sunbeam Corporation in 1946, having theretofore conducted its business under the name of Chicago Flexible Shaft Company. In 1921 plaintiff took the word Sunbeam as a trade-mark and name for its electric flat irons and thereafter used that name in marketing other household electric utensils. In 1945 it first used that name on furnaces for fusing metals. Some time the name was used by the corporation in connection with heaters as "Stewart Sunbeam". In 1921 the plaintiff applied for the registration of Sunbeam as the trade-mark for "electric flatirons, machines and supplies." It has since applied the mark to many household appliances, sometimes adding the word "Master" after the name. Plaintiff has not entered the lighting field in any manner whatever. Prior to its use by plaintiff, "Sunbeam" had been registered as a trade-mark by others for electric headlights (not including lamps) and for coal furnaces and oil and gas stoves and for automobile heaters and for certain internal combustion engines, cutlery, machinery and tools. In fact, prior to the use of the trade-mark by the plaintiff, the word "Sunbeam", and many adaptations and combinations of the words "Sun" and "beam" had been and since have been favorite trade-names.
In 1944 defendants adopted the copartnership name and have built up a very substantial business in flourescent electric fixtures exclusively, and by far the most of them are sold for installation through recommendation of lighting engineers and architects and, in a large measure, through competitive tests. It has manufactured fluorescent bed and stand lamps under the name of "Sunlite Master". These constitute less than ½ of 1% of the firm's business.
Plaintiff-appellee in its opening brief makes the following statement:
From a study of the pleadings, the evidence and authorities, we think the issues are not exactly as plaintiff puts them. The pleadings do not plainly put in issue any question as to common-law rights. However, the trial court very properly directed the trial so as to cover both common-law and registered trade-mark issues. The two rights are not readily separable. It is not questioned but that plaintiff has valid registration and common-law rights in the trade-mark "Sunbeam". The extent of such rights is in issue. As to issue numbered "2." the case is not solved by the simple finding as to whether defendants' use of the word "Sunbeam" results "in confusion and likelihood of confusion." The answer to that question is material but circumstances not included in the framed statement must be taken into consideration.
Defendants-appellants have added the words "Sunlite Master" to the use of the words "Sunbeam Manufacturing Co., Los Angeles, California," to their portable fluorescent lamps. Portable lamps are sometimes sold as household utensils are sold and plaintiff has extensively used the word "Master" in connection with the word "Sunbeam" upon its products. We think the difference between electrical fluorescent lighting fixtures with the method of their marketing, and portable lamps and the way they are marketed puts the latter on sale in such a way as to cause confusion. The injunction should cover this item. The lamp business is less than ½ of 1% of defendants' business and does not amount to much or anything in effect upon the issues pertaining to the electrical fluorescent fixture business.
Defendants have used in a very limited manner and to a very limited extent, in their trade catalog, a broad black brush-like script print of the name Sunbeam with a streaming capital "S", the upper part of which sweeps over the remaining letters of the word. Laid in direct comparison with the word in script as used by plaintiff one could carry away an impression of similarity although upon analysis there is a marked difference. Plaintiff has copyrighted the word in several modifications of script though each bears similarity to every other. The evidence indicates that the script used by defendants was used later than the copyrights and use by plaintiff. We think the injunction should deny its use by defendants together with other similar scripts by defendants.
We recognize that a non-fanciful word may be used by one business enterprise as its trade-mark and as its trade-name in circumstances where its unqualified use by another may constitute infringement or unfair trade. Such principle comes into play in this case as against defendants in their use of the script form of the word Sunbeam and in the combination of the words Sunbeam and Master. We think, however, that this item deserves little consideration in relation to the main business of defendants.
It should be understood that defendants do not use the term or word Sunbeam or similar term, except as hereinbefore referred to, in any other manner than as the name of the firm which name "Sunbeam Lighting Company, Los Angeles, Cal." is placed upon the article in full or printed in full on advertising or cataloging the product.
It appears to us that the facts of this case move us to the area of law accurately and succinctly expressed by the Seventh Circuit in Philco Corp. v. F. & B. Mfg. Co., 1948, 170 F.2d 958 at page 961 as follows:
The trial court's conclusion goes to the extent that, because the plaintiff has a registered and common-law trade-mark of the word "Sunbeam" and use thereof in relation to its actual produce and because of its extensive business, that word is plaintiff's sole property...
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