Tefal, S. A. v. Products Intern. Co.
| Decision Date | 26 January 1976 |
| Docket Number | 75--1772,Nos. 75--1771,s. 75--1771 |
| Citation | 529 F.2d 495 |
| Parties | TEFAL, S.A. and Royal Chambord, Inc. v. PRODUCTS INTERNATIONAL COMPANY, a partnership also known as Picam Products and as Prescott Adams & Nolan, et al., Appellants. |
| Court | U.S. Court of Appeals — Third Circuit |
David R. Simon, Simon & Allen, Newark, N.J., for appellants.
Roger M. Milgrim, Milgrim, Thomajan & Jacobs, New York City, for appellees.
Before SEITZ, Chief Judge, and GIBBONS and ROSENN, Circuit Judges.
Plaintiffs are Tefal, S.A., a French corporation and Royal Chambord, a New Jersey corporation with its corporate headquarters in that state. Tefal is the registered owner of the United States trademark 'T-FAL' for kitchen and cooking utensils. Plaintiff, Royal Chambord, is the sole United States distributor of Tefal products. The defendants are Products International Company (Picam), a partnership of two California corporations, the individual corporations comprising the partnership and Bernard Lavitch, the General Manager of Picam. Plaintiffs sued for alleged trademark infringement and unfair competition in connection with defendants' New Jersey 1 sales of competing cookware under the trademark 'TEPAL-WARE by PICAM'.
The district court denied defendants' motion to dismiss for improper venue and, after hearing, granted plaintiffs' motion for a preliminary injunction enjoining defendants from using both their own 'TEPAL-WARE' trademark and plaintiff Tefal's U.S. registered trademark, 'T-FAL'. The district court's venue order was properly certified to this court, and defendants have timely appealed the order granting a preliminary injunction. 2
The district court found that New Jersey sales by Picam under the contested trademark accounted for about 5 per cent of Picam's total national sales. It also found that defendants offered their products for sale in New Jersey through live sale demonstrations. Based on these findings the district court concluded that defendants' activities in New Jersey were sufficiently substantial to satisfy the venue requirement of 28 U.S.C. § 1391(b) that the claim arise in the judicial district where the action is brought.
Defendants do not challenge the accuracy of the facts relied on by the district court or the controlling importance of § 1391(b). Rather, they contend the showing made was too insubstantial to warrant the conclusion that, for purposes of the statute, plaintiffs' claim arose in the district of New Jersey. They emphasize that a far greater percentage of Picam's business in the relevant articles was conducted in California than in New Jersey during the pertinent period.
While refusing to concede that substantial sales activity must be shown within the district where a trademark infringement suit is brought in order to withstand a venue challenge, plaintiffs assert that, assuming the applicability of this standard, the trial record is still sufficient to overcome defendants' attack.
The record made on the venue issue is scanty indeed. While the value of sales of the critical products in New Jersey and California is given by defendants in relative terms as a percentage of national sales, there is no evidence of the actual dollar value of the sales in each state. However, we think it not unreasonable to infer that Picam sold substantial dollar amounts of the allegedly infringing products in New Jersey. In addition, defendants offered their products for sale in New Jersey through live sale demonstrations by their agents.
Given the nature of the claim--the extent of the infringing sales in New Jersey--we think the record amply supports the conclusion of the district court that the claim did arise within the district of New Jersey for venue purposes. Furthermore, keeping in mind the purposes of the venue requirement--the convenience of the parties--we do not deem it unfair on this record to require the defendants to stand trial in a district where they did substantial business in products which allegedly infringe plaintiff Tefal's products and in which it is fair to infer substantial dollar sales of defendants' products took place. If we assume the applicability and soundness of the 'more than miniscule' test of Honda Associates, Inc. v. Nozawa Trading, Inc., 374 F.Supp. 886 (S.D.N.Y.1974), a fortiori, that test has been more than satisfied on this record.
We therefore need not decide plaintiffs' alternative contention that in a trademark infringement case and passing off in a district establishes venue in that district. See Scott Paper Co. v. Scott's Liquid Gold, Inc., 374 F.Supp. 184 (D.Del.1974). Nor, in view of our conclusion, need we consider the consequence for venue purposes of plaintiffs' proposed intention, apparently raised for the first time on appeal, to drop all defendants except Picam so as to attempt to establish venue under 28 U.S.C. § 1391(c).
Defendants contend that the district...
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...625 F.2d 1055 (3rd Cir. 1980). See Tefal, S.A. v. Products International Co., 186 U.S.P.Q. 545, 547-48 (D.N.J.1975), aff'd, 529 F.2d 495, 497 (3rd Cir. 1976); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. 693, 701 (D.N.J.1977); McNeil Laboratories, supra. These elements will be evalu......
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