WE Bassett Company v. Revlon, Inc.

• Decision Date: 26 November 1969
• Docket Number: 65 Civ. 1711.
• Citation: 305 F. Supp. 581
• Parties: The W. E. BASSETT COMPANY, Plaintiff, v. REVLON, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

305 F. Supp. 581

The W. E. BASSETT COMPANY, Plaintiff, v. REVLON, INC., Defendant.

65 Civ. 1711.

United States District Court S. D. New York.

October 30, 1969.

As Corrected November 26, 1969.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Beer, Richards, Haller & O'Neil, New York City, for plaintiff, Clifton Cooper, Stewart W. Richards, New York City, of counsel.

Blumberg, Singer, Ross, Gottesman, Diamond & Gordon, New York City, for defendant, Leon Singer, Alfred K. Kestenbaum, New York City, of counsel.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

FRANKEL, District Judge.

This is an action for trademark infringement and unfair competition in which plaintiff counts, respectively, upon the Trademark Act of 1946, 15 U.S.C. § 1051 et seq., and New York State law, which probably amounts for our purposes to the same thing, see Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 545 (2d Cir. 1956) (Clark, C. J., concurring). There is over $10,000 in controversy, diversity of citizenship and no question as to the court's jurisdiction. The case has been tried and is ready for announcement of the court's findings of fact and conclusions of law hereinafter stated in accordance with Fed.R.Civ.P. 52(a).

I.

Plaintiff, the W. E. Bassett Company, is a Connecticut corporation with its principal place of business in Derby, Connecticut. Since its incorporation in 1947, it has made and sold implements used in the clipping of fingernails and in some of the other operations subsumed under the term "manicuring." Among the tools Bassett makes, in a line which has been expanded over the years, are nail clippers, nail files, cuticle scissors and emery boards. In the marketing of these and other products plaintiff has made extensive use of the word TRIM as a trademark. In addition, it has also employed as trademarks various words or pseudo-words or combinations of words incorporating TRIM as a component, namely, TRIMCLIP, TRIMETTE, POCKET TRIM, TRIM-PAC, TRIM-TRIO, TRIMMIT, TRIMSTER and TRIM KURV. TRIM and the variants used by plaintiff over the years are the subjects of subsisting Patent Office registrations.

During the period from 1947 through 1965 plaintiff sold over 200,000,000 implements under its registered trademark TRIM. Unit sales for 1966 and 1967 were substantially higher than the annual average for that preceding period. To enhance its sales, and specifically for advertising and promotion of the TRIM mark, plaintiff spent sums ranging from about $88,000 in its fiscal year 1955-56 to over $140,000 in 1964-65.

Plaintiff markets its manicuring implements through a variety of outlets such as food stores, drug stores, supermarkets, military post exchanges and commissaries. One of plaintiff's common forms of merchandising—popular with defendant, too, as well as other purveyors of such wares—is the individual display card to which a single item (clipper, scissors, whatever) is attached and which is hung on the peg of a display rack for easy visibility and self-service by the customer. In these forms of display, as in its advertising and other forms of promotion, plaintiff has consistently and prominently featured its "TRIM" mark as well as the several combined forms in which the word-syllable appears.

The defendant, Revlon, Inc., a Delaware corporation with its principal place of business in New York City, came upon the business scene in 1933. It has grown large and prosperous over the intervening years in the manufacture and distribution of cosmetics, toiletries and beauty care products, including various implements designed for steps in the manicuring process. Although Revlon has substantial manufacturing facilities of its own, a considerable staff of trained personnel, a large complement of marketing personnel and widespread warehousing facilities, it made unsuccessful efforts before institution of this suit to acquire the business, including the trademarks, of the plaintiff.

Late in 1964 defendant commenced the marketing of an implement it designated as CUTI-TRIM, a tool designed as a cuticle trimmer, which is more or less apparent from the name defendant chose for it. According to the Revlon official responsible for the marketing of this thing, as his testimony is epitomized in defendant's post-trial memorandum, the name chosen for it was "the only suitable descriptive mark"—an assertion which reveals either an astonishingly impoverished imagination in a giant company for which advertising is so crucial or a departure from the path of absolute candor. When plaintiff objected to the name of the new implement, defendant offered to change to CUTITRIM or to CUTI-TRIM'R, or, finally, to CUTI-TRIMMER, although nobody in defendant's establishment appears to have been able to imagine or to accept anything like "cuticle trimmer," which presumably was deemed unsuitable in that it would have supplied, simply, an accurate description of what the object was supposed to be. When plaintiff refused its blessing for any of the proposed alternatives, defendant chose to adhere to its first choice, CUTI-TRIM. This lawsuit followed.

II.

Shortly after bringing the action, plaintiff moved for a preliminary injunction upon extensive affidavits, exhibits, answers to interrogatories and depositions. In his decision upon the motion Judge Palmieri found, inter alia, that plaintiff had had continuous and exclusive use of its trademark TRIM for over 18 years; that the mark had become distinctive of plaintiff and its manicure implements; that plaintiff's trademark registrations were valid and subsisting; that plaintiff and defendant had for some time been in direct competition in the marketing of manicuring implements; that the two companies sold their implements in the same channels of trade; that defendant had offered no reasonable explanation for its choice of the mark CUTI-TRIM in light of defendant's history of non-use of the syllable TRIM in any of its other, earlier manicuring implements; that defendant had made this (for it) novel choice of designation in full awareness of plaintiff's practices and rights; that CUTI-TRIM "sounds like and closely resembles" TRIM and "plaintiff's family of trademarks" building upon that word; and that the use of CUTI-TRIM "is likely to cause confusion or mistake as to source with plaintiff's TRIM implements, and is likely to deceive purchasers as to source." In addition, Judge Palmieri recorded that the Patent Office had rejected defendant's application to register CUTI-TRIM because of the likelihood of confusion with plaintiff's TRIM.¹ Concluding that plaintiff would probably prevail after trial and that the requisite showing of need was amply made, Judge Palmieri enjoined defendant pendente lite "from any further use of `CUTI-TRIM' or any other mark similar thereto, or to plaintiff's trademark `TRIM' in the advertising or sale of manicuring implements."

Defendant appealed. With a modification which gives rise to grave problems hereinafter treated (see VI, infra), the Court of Appeals affirmed. 354 F.2d 868 (January 3, 1966). The Court agreed with defendant's contention that TRIM is a "weak mark"—being "primarily a term that is descriptive of the function performed by the products so marked rather than the origin of those products." Id. at 871. It went on to rule, however, that "Judge Palmieri had ample grounds for concluding that Bassett's `Trim' mark has in all probability acquired secondary meaning." Id. It found, contrary to defendant's assertions, "no evidence that Bassett has permitted competitors to dilute its exclusive use of `Trim' in the manicure implement field." Id. In light of the parties' "direct competition in the manicure field," the appellate Court found it at best indecisive that Bassett was not marketing, or imminently planning to market, a cuticle trimmer. "If Revlon markets a new manicure implement," the Court concluded, "it is required to choose a mark that will not hinder Bassett in later competing under its `Trim' mark and that will not confuse the public as to the source of Revlon's own innovation." Id. at 872. The Court endorsed Judge Palmieri's view that Revlon had probably violated that standard. Id. Briefly dismissing certain affirmative defenses that have been renewed with equal futility at this final stage (see IV, infra), the Court of Appeals affirmed as modified.

III.

While the trial generated a substantial record, the result is a set of ultimate findings largely similar to those made by Judge Palmieri on the motion for preliminary relief.

Recalling that the common law and the statute prescribe the test as "likelihood of confusion" rather than the demonstrated fact of actual confusion, 15 U.S.C. § 1114(1); Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2d Cir. 1969); Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 542 (2d Cir. 1956), I find, if only by a narrow preponderance, that plaintiff has established this aspect of its case. Bassett has pursued a course of steady promotion over the years calculated to produce a noticeable measure of secondary meaning for TRIM. The goal of such activities is an effect not always plainly rational or readily identifiable; as Mr. Justice Frankfurter put it, the effort of the trademark owner is to "impregnate the atmosphere of the market with the drawing power of a congenial symbol." Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381 (1942). Considering that, and all the circumstances of the case, it is more likely than not that Bassett's persistent endeavors for so long a period have produced some substantial effect of the kind intended upon the consciousness (or unconsciousness) of consumers. Cf. Miss Universe, Inc. v. Patricelli, supra, 408 F.2d at 509; Spice Islands Co. v. Spice Land Prods. Inc., 262 F.2d 356, 357 (2d Cir. 1959); Maternally Yours, Inc. v. Your Maternity Shop, Inc., supra, 234 F.2d at 544; Beef/Eater...