Valmor Products Company v. Standard Products Corporation

• Decision Date: 07 July 1972
• Docket Number: No. 72-1121.,72-1121.
• Citation: 464 F.2d 200
• Parties: VALMOR PRODUCTS COMPANY, Plaintiff-Appellee, v. STANDARD PRODUCTS CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — First Circuit

464 F.2d 200 (1972)

VALMOR PRODUCTS COMPANY, Plaintiff-Appellee, v. STANDARD PRODUCTS CORPORATION, Defendant-Appellant.

No. 72-1121.

United States Court of Appeals, First Circuit.

Heard June 5, 1972.

Decided July 7, 1972.

Harold E. Cole, Boston, Mass., for appellant.

Edward C. Threedy, Chicago, Ill., with whom Clarence E. Threedy, Threedy & Threedy, Chicago, Ill., and Richard P. Crowley, Boston, Mass., were on brief, for appellee.

Before ALDRICH, Chief Judge, and McENTEE and COFFIN, Circuit Judges.

COFFIN, Circuit Judge.

Defendant Standard Products Corporation ("Standard"), a Massachusetts corporation, appeals from an order of the district court enjoining it from further use of the trademark "VALMOR" in connection with its line of electrical "beauty aids", cancelling its registrations of that trademark, and referring the case to a master for an accounting of damages and profits. The action was brought under the Lanham Act, 15 U.S. C. §§ 1051 et seq., and under the Massachusetts law of unfair competition, M. G.L. c. 110, §§ 7A and 8, with jurisdiction based on 15 U.S.C. § 1121 and 28 U.S.C. § 1338. Appellant challenges the court's underlying finding that its use of the trademark infringes the right of Valmor Products Company ("Valmor"), an Illinois corporation, to the same trademark and constitutes unfair competition, arguing essentially that the court accorded undue scope to the trademark, which, as an elision of "value" and "more", is allegedly a weak, self-laudatory one deserving of, at most, narrow protection.

Preliminarily, it is not clear whether Standard contests the propriety of the trademark's being recognized at all. The claim would not in any event be persuasive, since the trademark is not descriptive or misdescriptive of any of the products of either corporation, 15 U.S.C. § 1052(e) (1), compare Devcon Corp. v. Woodhill Chemical Sales Corp., 455 F.2d 830 (1st Cir. 1972), but rather is suggestive of quality. More importantly, though, even if under some circumstances self-laudatory trademarks should not be registered or protected, cf. Supreme Wine Co. v. American Distilling Co., 310 F.2d 888, 890 (2d Cir. 1962), the district court here found that

"Plaintiff\'s use of the mark on its products and in its advertising over forty-five (45) years has . . . established a close connection between the trademark name and its products and business reputation."

We construe this as a finding that the mark "has become distinctive of Valmor's goods in commerce", 15 U.S.C. § 1052(f), and thus appropriate for registration, even though self-laudatory. See 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies, § 77.4(c), at 373-75 (3d ed. 1969).

The core issue, then, is not whether the trademark is a valid one but whether its scope is sufficient to make Standard's appropriation of the mark an infringement. Nor does appellant's reference to the notion of weak trademarks obviate the need for a detailed evaluation of the record. The strength or weakness of a distinctive mark is a matter of degree. See generally R. G. Barry Corp. v. A. Sandler Co., 406 F.2d 114 (1st Cir. 1969). Valmor first registered the trademark in 1926 for forty listed items, including face powder, talcum powder, hair pomade, liquid hair dressing and hair tonic, and having twice been renewed, the registration is current (No. 218,299). Valmor secured additional registrations in 1967 for wigs (No. 833,729) and for wig spray and wig oil (No. 833,795). Standard's registrations, cancelled by the district court, are for "combination electric hair brush and massager, and a cordless electric manicure set" (No. 795,343), registered in 1965, and for "electric callous erasers; electrical face patters; electrical facial vapor diffusers; electric hair curling iron; and electrical hair curling set, comprising hair rollers, electrical heating elements and thermostat" (No. 876,641), registered in 1969.

The federal statutory test of trademark infringement is whether use by the second party is "likely . . . to cause confusion", 15 U.S.C. § 1114(1) (a)¹ Esquire, Inc. v. Esquire Slipper Mfg. Co., 243 F.2d 540, 543 (1st Cir. 1957). The district court concluded that there is a "substantial likelihood of confusion in the minds of consumers as to the source of the various products sold under the VALMOR name", and its conclusion is based on specific findings that the products are closely related in function, appeal to the same class of consumers, and are advertised nationally in similar publications and sold nationally in the same type of store, and by its recognition that the trademarks themselves are spelled identically.

Standard takes exception to these supportive findings, insisting, first, on the dissimilarity of the products. While Standard points out that the products are not in direct competition, it recognizes that the inquiry does not end there. See Esquire, Inc. v. Esquire Slipper Mfg. Co., supra. Its brief specifically relies upon the fact that its products are electrically powered and "serve different purposes, such as massaging, erasing callouses, etc."² The district court, acknowledging the use of electrical power, nevertheless found the two sets of products to be closely related. As to some of those products, sheltered under appellant's "etc.", the court found:

"In some cases, products may be used in conjunction: defendant\'s compact with plaintiff\'s face powder or rouge, or defendant\'s hair dryers or curling sets in conjunction with plaintiff\'s hair care preparations."

The record, including advertisements and the testimonial statements of the presidents of both parties, support this commonsensical finding.³ The connection is somewhat less strong between Valmor's products and others of those sold by Standard. Standard's "Smoothaway" callous eraser, for example, as a contented foot with smiling toes on the packages suggests, is designed to be used primarily on the feet, while the evidence does not indicate that any of Valmor's products was intended for such use.

The court did, however, make a broader finding, that all of the products were "designed for the same end — the enhancement of personal appearance". Though Standard promoted throughout the trial a distinction between "personal care items", which it says it produces, and "beauty aids", which it says Valmor produces, there is ample evidence to support the court's finding the distinction illusory. The callous eraser was advertised by pamphlet as making feet and elbows "pretty", and its package characterized the product as giving "NEW COMFORT, NEW RELIEF, NEW BEAUTY";⁴ appellant's battery-powered manicurette was advertised "for her lovely hands" and "for his executive grooming"; and the facial toner was billed as an "amazing and inexpensive new beauty-care aid". In short, the district court's finding that the products were closely related was not "clearly erroneous". F.R.C.P. 52(a).

Additionally, appellant challenges the finding that the two lines of products...