Telechron, Inc. v. Telicon Corp.

Decision Date08 March 1951
PartiesTELECHRON, Inc. v. TELICON CORP.
CourtU.S. District Court — District of Delaware

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James F. Hoge, Lenore B. Stoughton and George M. Chapman, of Rogers, Hoge & Hills, all of New York City, Hector M. Holmes, of Fish, Richardson & Neave, of Boston, Mass., and Hugh M. Morris and Alexander L. Nichols, of Morris, Steel, Nichols & Arsht, of Wilmington, Del., for plaintiff.

Philip Handelman, Elliot A. Wysor and Walter H. Schulman, of Handelman & Ives, all of New York City, for defendant.

LEAHY, Chief Judge.

I adopt most, if not all, of the original findings on the basis of which the preliminary injunction issued where I suspected infringement; unfair competition; prospective potential confusion; and actual confusion.1

Trade-Mark Infringement and Unfair Competition Issues

1. The first question is whether the factual burden of proof has been assumed by plaintiff. Plaintiff began to use its mark Telechron in December 1919. It registered on November 13, 1923 (No. 175,808) for clocks and on August 5, 1924 (No. 187,400) for electric motors; both registrations have been renewed.2 Plaintiff's use of its mark has been continuous. Mr. Kokins, who had been with plaintiff since 1926, testified to his personal knowledge of continuous use of the mark since that date and before,3 and PX. 1 was identified showing gross sales, as to number of units and money value, and general advertising expense for various Telechron products from 1923 through the first ten months of 1948.4 The figures of PX. 1 show extensive and long-continued use of Telechron and the large amount of national advertising. These figures do not include extensive dealer advertising.5

In addition to its name-use on electric clocks and motors it has been used in the radio field. PX. 1 lists various Telechron products including electric clocks, master clocks, motors, preselectors, radios, switch alarms, and timers. Kokins6 discussed the Telechron electric clocks for household and commerical uses, motors and instruments for timing purposes such as time switches and other devices; preselectors, switch timers, radios, master clocks, range signal timers and other switch timers; and the world time clock, chiefly for radio users. The last war caused a limitation of plaintiff's manufacture of articles to which it applied its mark, but the use throughout the period of the war was continuous. Mr. Mitchell7 testified that during three years beginning in 1943, "because of governmental regulations, we were limited in the production of clocks to alarms, so that we were unable at that time to make the preselectors"; but PX. 1 shows continuous sales of other Telechron products, and an interval of only three war years with preselectors.

Plaintiff has used Telechron as part of its corporate name since April 1926. Plaintiff was organized in May 1914 under the name of Warren Clock Company. From 1926 until May 1, 1946 its name was Warren Telechron Company. From May 1, 1946 its name has been Telechron, Inc. A certified copy of the charter with certificates of amendments of the changes of name in 1926 and 1946, is in evidence;8 Kokins testified with respect to the successive names;9 and Mitchell testified that the change to Telechron, Inc. was discussed with approval by plaintiff's Board of Directors on October 22, 1945, with action taken at a meeting on April 1, 1946.10 The change of corporate name was made because wide advertising of plaintiff's mark Telechron had caused it to become familiar to the public. Kokins11 so testified and explained that for some years, and before the appellation Warren was dropped from the corporate name, plaintiff had inserted an advertisement in the Manhattan (N. Y.) telephone directory on the "Tel" page because the public was looking for plaintiff's name under Telechron rather than under Warren — to the extent that plaintiff had tried in about 1940 to 1942 to get listed under the name Telechron.12 Mr. Bigelow testified before Warren was discontinued in the corporate name letters were frequently received, addressed to Telechron Clock Company, or Telechron Company, or some similar designation without the word Warren.13 Letters so addressed were commonly received and for a substantial period of time, and specimens are in evidence.14

Defendant on June 1, 1942 changed its name from Telectron Corporation to Telicon Corporation. It was organized on May 21, 1942 under the former name. Thereafter, defendant began the manufacture of piezo electric crystals which are devices for controlling frequency in radios, types of radio transmission and clocks. Such crystals are used in connection with radio and television transmitters and receivers, and clocks.15 Defendant has been in the radio field since November 1945 although its advertisements since 1944 show its prime purpose is to operate in the radio and television fields. DX. 25 and 26 are Telicon advertisements which appeared in "Electronics" for October 1944 and January 1945.16 Its earliest marketing of a Telicon radio was in the Spring of 1946 and the earliest consumer advertising of defendant's radios was in March 1946. The earliest such advertisement in the record is DX. 22, published by R. H. Macy Department Store on March 14, 1946.17 DX. 23 and 24 are advertisements published by other concerns in June and July 1946.18 It would appear the Telicon television receivers were first shown to the public in October 1946.19

In 1931 plaintiff sold Telechron electric clocks to RCA to be used with radio sets which RCA was manufacturing. Approximately, between 5600 and 5700 clock assemblies were sold in 1931 to that company.20 Also in 1931 plaintiff sold 3000 of its electric clocks to Grigsby-Grunow Company to be placed into the Majestic radios of that company.21 The dials of these radio clocks all had the trade-mark Telechron. Mr. Fisher so testified; he produced a sample of the dials; and a photostat of the Majestic dial is in evidence.22 In 1934, 5000 of plaintiff's clocks bearing the same trade-mark were sold to Atwater-Kent Company. Kokins stated clocks were sold to Atwater-Kent prior to 1940.23 Fisher testified to the sale in 1934 of approximately 2600 to 2700 clock movements to Atwater-Kent for use in their radios, and produced a sample of the Atwater-Kent preselector clock unit with a Telechron nameplate on the back casing.24

In 1935 plaintiff offered for sale under its mark a preselector to be plugged into a radio and adjusted to turn the radio on and off at pre-set intervals. This pre selector enables the radio to be used as an alarm clock as it may be set to turn on the radio at whatever hour one desires to awake. Kokins discussed the Telechron preselectors or switching devices and their use in turning on radios and other appliances25 and the very similar Telechron switchalarm, also used in connection with radios. He stated the original Telechron preselector unit was started in 1935 and is still being sold. The figures showing substantial use appear in evidence;26 the manner of use by the radio user appears in advertisements.27 Kokins' testimony shows plaintiff was "interested in thinking about the possibility of using Telechron synchronizing devices, apparatus for controlling television."28 Plaintiff sells a large proportion of its preselectors to radio manufacturers for incorporation in their radio sets.29

These preselectors were advertised and sold from 1935 to 1942, at which time production was stopped. Mitchell testified that for three years beginning with 1943, governmental regulations limited plaintiff's production of clocks to alarms, so that plaintiff was unable to make the preselectors.30 The sales figures from 1935 to 1943 and from 1945 to November 1948 are set forth in PX. 1. After war production had been resumed, sales figures for 1946 and on through the first ten months of 1948 show more than 125,000 preselectors were sold during the whole period from 1935 on and they are still being sold.31

In 1937 plaintiff offered the Telechron world time clock. This item put out in 1937 sold up to 1940, but dropped in 1941 when the war came on. It was then adapted for use with radio communication. It shows the time throughout the world and is used with short wave radio receiving sets.32

During the war, plaintiff produced a clock for the armed services for timing radio signals and radio communications. These were sold to the Army, Navy, Maritime Commission and Signal Corps and became known to thousands of radiomen in the armed services. This clock was produced at the request of the Army and Navy chiefly for use in communication centers. PX. 39 lists its many uses, and "quite a few thousand" of these clocks were sold to the armed services during the war.33

In 1940 plaintiff began plans for a Telechron radio with a built-in preselector. The idea was to put out a radio with an alarm combination, so that by means of the selector mechanism the radio could be set to come on when desired. (This was the radio which was subsequently marketed as the Telechron Musalarm.34) In 1941 these plans were set aside because of the war, although a sample was made, and plans had to be dropped because plaintiff was then concerned more with war work than the development of new devices.35 In 1944, as war demands relaxed, work on this project was resumed. The plan was revived as soon as plaintiff had time to concern itself with new devices; the plans were made and the production of a chassis was authorized in 1944.36 Plaintiff's sales representatives were notified of the new line in April 1945. Plaintiff's district managers were requested to estimate what the demand would be. PX. 42 is a copy of a notice dated April 2, 1945 and sent to all district managers, announcing the products intended to be put out in 1945, including the radio;37 PX. 59 is an order received in August 1945 for 5,000 of such radios.38 It had intended to bring the...

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