Victor Tool and Machine Corp. v. Sun Control Awnings, Inc.

• Citation: 299 F. Supp. 868
• Decision Date: 09 January 1968
• Docket Number: Civ. No. 28353.
• Parties: VICTOR TOOL AND MACHINE CORPORATION, a corporation, and Panama Awning Co., a corporation, Plaintiffs, v. SUN CONTROL AWNINGS, INC., a corporation, Sun Control Manufacturing and Distributing Co., a corporation, and Charles W. Suchner, jointly and severally, Defendants.
• Court: U.S. District Court — Western District of Michigan

299 F. Supp. 868

VICTOR TOOL AND MACHINE CORPORATION, a corporation, and Panama Awning Co., a corporation, Plaintiffs, v. SUN CONTROL AWNINGS, INC., a corporation, Sun Control Manufacturing and Distributing Co., a corporation, and Charles W. Suchner, jointly and severally, Defendants.

Civ. No. 28353.

United States District Court E. D. Michigan, S. D.

January 9, 1968.

Austin A. Webb, Kalamazoo, Mich., for plaintiff; Carey & Carey, Detroit, Mich., of counsel.

Hiram P. Settle, Jr., Southfield, Mich., for defendants.

OPINION

KAESS, District Judge.

The jurisdiction of this court is invoked under Title 28, Section 1338 of the United States Code.¹ The controversy in this litigation resides in the trademark "SUN CONTROL" as applied to metal awnings and canopies, as well as various other building components such as siding, storm windows and doors, screen doors, window screens, etc. The proofs in this matter have been submitted to the court without a jury. The issue of damages has been stipulated by the parties to be reserved until the determination, if any, of the infringement of the trademark use of the words "SUN CONTROL".

Plaintiff, Victor Tool and Machine Corporation, is a corporation of the State of Michigan having as a registered agent the Corporation Company Dime Building, Detroit, Michigan. Plaintiff, Panama Awning Co., is a corporation of the State of Michigan, having its principal place of business at 26801 West Seven-Mile Road, Detroit, Michigan.

Defendant, Sun Control Awnings, Inc., is a corporation of the State of Michigan, having its principal place of business at 26400 West Eight-Mile Road, Southfield, Michigan. Defendant, Sun Control Manufacturing and Distributing Co., is a Michigan corporation having its principal office at 26400 West Eight-Mile Road, Southfield, Michigan. Defendant, Charles W. Suchner, is an officer and director of both corporate defendants and resides at 4430 East Dowridge Drive, Keego Harbor, Michigan.

Plaintiff, Victor Tool and Machine Corporation, manufactures various building components, namely, folding aluminum awnings and canopies. The plaintiff, Victor, has manufactured such awnings since about 1950. Victor does not sell directly to the public, but rather sells its building components through various retail dealers and distributors. In the Detroit area the plaintiff, Panama, is the presently authorized exclusive agency for Victor folding aluminum awnings and has been so authorized since about June 1, 1964.²

Defendant, Sun Control Awnings, Inc., and its predecessor companies, Dye Home Improvement Company and Re-Build-O Supply Company, were the authorized sellers of awnings manufactured by the plaintiff, Victor, in the Detroit, Michigan, area from about 1951 to 1963, this arrangement being cancelled by the plaintiff by telegram dated February 22, 1963.³

Defendant, Sun Control Awnings, Inc., was incorporated in the State of Michigan on April 2, 1952⁴ and the first meeting of the stockholders and Board of Directors was held on March 27, 1952.⁵ From the testimony introduced at the trial, it is clear that defendant, Sun Control, was doing business under this name by the end of February, 1952, and plaintiff, Victor, had knowledge of such corporation prior to March 21, 1962.⁶

Both defendant, Sun Control, and plaintiff, Victor, claim rights under their respective trademark registrations. Defendant, Sun Control, first registered its trademark by an application filed December 13, 1952 and registered on June 15, 1954.⁷ This registration indicates a date of first use of February, 1952, and bears Registration No. 591,002, and this date of first use was not effectively challenged by plaintiffs at the trial. Defendant, Sun Control, has a second Supplemental Registration No. 780,759 registered on November 24, 1964 on an application filed February 18, 1963, and alleges a date of first use to be November, 1962.⁸ The plaintiff also has a trademark Registration No. 596,578 registered on October 12, 1954 and states the first date of use to be December 11, 1952.⁹

The trademark registrations all incorporate designs in addition to the words "Sun Control". Both of defendants' registrations incorporate a sunburst design in either a circular or oval pattern, while plaintiffs' registration incorporates the words "Sun Control" printed in contrasting type over a representation of a folding awning bearing the words "Victor Sun Control".

The primary controversy regards the ownership and dates of first use of the words "Sun Control". Plaintiffs allege that an advertisement in the January, February and March, 1950, issues of Building Specialties magazine constitutes its first use of the trademark "Sun Control".¹⁰ Giving plaintiffs the benefit of the doubt, and assuming that such advertisements were published on this date, this supposed first use utilizes the phrase "Sell Year-Round Sun Control with Victor Folding Aluminum Awnings". It appears from the phrase of the advertisement (1) that the products being sold were Victor folding aluminum awnings and (2) that the phrase "Sun Control" was used only in a descriptive or advertising sense.

Plaintiffs also introduced and relied upon various early sales brochures and other literature which it distributed to its retailers for their use. From the brochures themselves and the testimony in connection therewith, all such literature which is dated prior to about December, 1952, constitutes utilization of the term "Sun Control" in an advertising or descriptive sense only. The advertised products were sold as the "Victor folding aluminum awnings" until after the name "Sun Control" was adopted by defendant as its Company name and its trademark.

Since the controversy regarding the first use of the trademark "Sun Control" is critical to this decision and since the evidence surrounding the adoption of the words "Sun Control" as a trademark occurred some 15 years ago, it is necessary to review the documentary evidence which is roughly contemporaneous with the first utilization of the term "Sun Control" as applied to the products themselves.

The court notes that plaintiff, Victor, at the time of filing its trademark application (January 19, 1953) claimed a date of first use of the trademark, as applied to the goods, of December, 1952. Victor in its originally filed application incorporated this statement "the words `Sun Control' were first used on or about January 1949," but this allegation was deleted from the trademark application after filing.¹¹ Thus the first date of use was December, 1952.

Defendant in its trademark Registration No. 591,002 filed in December of 1952, claimed a date of first use of February, 1952.¹² This appears to be contemporaneous with the actual incorporation of the defendant, Sun Control Awnings, Inc., the corporation being in existence and operating as a de facto corporation during the last part of February, 1952.

Thus, the contemporaneous statements of the parties themselves made 15 years ago indicate that defendants are clearly entitled to priority in the utilization of the name in a proper trademark sense and in connection with the goods, while any alleged use by plaintiff, Victor, earlier than December, 1952, was done only in advertising and/or descriptive use. The plaintiff, Victor, has not overcome the presumption of ownership resulting from the registration of defendant, Sun Control Awnings, Inc. Plaintiffs introduced no evidence showing that defendants' use of its trademark or the words "SUN CONTROL" was for the benefit of plaintiffs.

So far as the plaintiff, Panama, is concerned, Panama was appointed the sales agent for the plaintiff, Victor, on June 1, 1964.¹³ Even then, Panama was merely appointed the authorized distributor for "Victor Sun Control Awnings".

After the adoption of the trademark "Sun Control" by the defendant, Sun Control Awnings, Inc., the defendant, Sun Control Awnings, Inc., became the largest single retailer of the plaintiff, Victor Tool and Machine Corporation.¹⁴

The history of the relationship between the plaintiff, Victor, and the defendants included various financial arrangements whereby defendant, Sun Control, would finance its inventory by bank loans with repurchase agreements by plaintiff, Victor, the proceeds from these loans being utilized by Victor to finance its manufacturing. Such arrangements are normal commercial operational procedures and do not effect the trademark rights between the parties.

The evidence shows that defendant, Sun Control, and defendant, Charles W. Suchner, requested additional products from the plaintiff, Victor, but such products were not forthcoming and eventually the defendants, Sun Control and Suchner, decided that Sun Control would manufacture its own variety of awnings and other similar products.¹⁵ By this time, the winter of 1963, Sun Control Awnings, Inc., had been selling under the trademark "Sun Control" for some 11 years and had built up a substantial business in folding aluminum awnings and similar products and had expended ever increasing amounts in the advertising of its products under the words "Sun Control" and under its corporate name of "Sun Control Awnings, Inc."

Plaintiff, Victor, gradually began to utilize the term "Sun Control" in connection with folding aluminum awnings and canopies which they manufactured, but such use was condoned by the defendants, Sun Control and Suchner, in order to promote and advance the sale of awnings by the plaintiff, Victor. In fact, at one time the defendant, Suchner, and one Frank Taormina, one of the cofounders of the defendant, Sun Control, entered into an agreement with the plaintiff, Victor, to sell folding aluminum awnings on the West Coast under the name "Sun Control", such awnings to be supplied by the plaintiff, Victor. However, this contract was never consummated and was, in fact, cancelled without ever actually going into effect. The contract is of no effect in this controversy.

On February 22,...