Zippo Manufacturing Company v. Rogers Imports, Inc.

• Decision Date: 22 April 1963
• Citation: 216 F. Supp. 670
• Parties: ZIPPO MANUFACTURING COMPANY, Plaintiff, v. ROGERS IMPORTS, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

216 F. Supp. 670

ZIPPO MANUFACTURING COMPANY, Plaintiff, v. ROGERS IMPORTS, INC., Defendant.

United States District Court S. D. New York.

April 22, 1963.

Burgess, Ryan & Hicks, New York City, Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa., for plaintiff; John F. Ryan, New York City, William B. Ryan, New York City, Karl B. Lutz, Pittsburgh, Pa., of counsel.

Willkie, Farr, Gallagher, Walton & FitzGibbon, New York City, Karl W. Flocks, Washington, D. C., for defendant; William Sullivan, New York City, of counsel.

FEINBERG, District Judge.

This case involves the attempt of a manufacturer of a popular cigarette lighter to keep others from imitating the lighter's shape and appearance. Plaintiff Zippo Manufacturing Company ("Zippo"), a Pennsylvania corporation, alleges both trademark infringement and unfair competition on the part of defendant Rogers, Inc.¹ ("Rogers"), a New York corporation, by reason of Rogers' sale of pocket lighters closely resembling Zippo's. Plaintiff seeks injunctive relief, an accounting, and damages. Rogers counterclaims for a judgment declaring that plaintiff is unfairly competing with it and also seeks injunctive relief. Jurisdiction of the main action is based both on diversity of citizenship and a claim under the trademark laws joined with a related claim of unfair competition.² Defendant also relies for jurisdiction on the Declaratory Judgments Act, 28 U.S.C. §§ 2201-2202 (1952), as amended, 28 U.S.C. § 2201 (Supp. IV, 1957).

I

Plaintiff Zippo has been primarily engaged in the manufacture of pocket lighters since 1932,³ and it has grown spectacularly over the years. Its annual national sales of these lighters grew from about 27,000 units in 1934 to over 3,180,000 in 1958, the year just prior to suit, and well over 4,000,000 in 1961. Today, Zippo produces more units than any other domestic lighter manufacturer. Its pocket lighters are made in two models, the "standard" and the "slim-lighter." The latter accounts for slightly less than twenty-five per cent of the number of pocket lighters sold by Zippo.

Prior to World War II, Zippo sold only a standard model, the forerunner of its present standard lighter. This pre-war lighter was covered in part by a patent.⁴ This model had a two-member outside case with a snugly fitting insert containing the mechanical features of the lighter. The bottom member of the outside case had a matching flip-top member hinged to it; both were rectangular with square corners and straight lines. The user opened the top to activate the lighter by striking the flint wheel, and closed the top to snuff out the flame produced in the lighter's "chimney." To hold the flip-top in a fully opened or closed position, the lighter incorporated a spring and cam arrangement which enabled the user to operate the top with one hand. A most important feature of the lighter was an elliptical chimney or windscreen enclosing the wick, with round air holes punched into its sides in horizontal rows in a three-two-three formation. Attached to one side of the chimney were two square "ears" or lugs, which held the cam in position above a vertical coil spring located underneath the cam in a tube inside the lighter case. The flint wheel was pivotally mounted upon another set of lugs projecting from the other side of the chimney.

Until 1938, the appearance of the lighter was that shown in the illustrations of the Gimera patent. In that year, Zippo slightly altered the internal mechanical operation of its lighter and, for reasons of economy and efficiency, also changed the shape of its lighter in some respects.⁵ No change was made in this standard model until 1942, when Zippo began to devote its entire output of lighters to the production of its "war" model.⁶ This lighter, embodying the same mechanical features of the immediately pre-war standard model, was finished in a crackle paint. In June 1946, Zippo again returned to the production of its peace-time standard model and has continued to manufacture it without major change to the present time.⁷

A comparison of the present standard with the early Zippo standard model (1934-1938) indicates the following principal changes: the former model had severely square edges and corners and straight lines while the present lighter features slightly rounded edges and corners, a curvature in the shape of a slight arc in the top of the lighter, and a recess in the bottom of the case; in the early model, the leaves of the hinge attaching the top and bottom members of the lighter case were on the outside of the case, but they are now located inside the case; the ears or lugs holding the cam were previously square in shape, but now they are rounded; and while the cam and spring arrangement embodied a vertical coil spring in the old model, a horizontal flat "leaf" spring is now used.⁸

In June 1956, Zippo introduced its slim-lighter, a new model designed to appeal to women.⁹ This model included the same mechanical features as the standard, but it was noticeably narrower and, therefore, less square and more rectangular in shape. Its dimensions were approximately 2 1/8 " × 1 1/8 " × 3/8 ", compared to 2 1/8 " × 1½" × ½" for the standard.¹⁰

Over the years, Zippo's sales techniques have included extensive advertising, unconditional guarantees, and free repair service. Since 1949, the company has spent at least $500,000 each year in advertising its products. In 1958, it spent over $700,000, and in two of the next three years, over $1,000,000 per year.¹¹ Its advertising has appeared in magazines and periodicals of both national and specialized appeal.¹² Zippo's advertisements of the standard model have featured, among other things, the word "windproof";¹³ the mark "Slim-lighter" has been emphasized in advertising its slim-lighter.¹⁴ Zippo's unconditional guarantee and free repair service have also been highlighted.¹⁵ Throughout its history, Zippo has consistently promised to repair any Zippo lighter free of charge, regardless of its age or condition,¹⁶ and many purchasers have availed themselves of this service. For example, in 1961, almost 460,000 lighters were sent to the company for free repairs.¹⁷

Zippo markets eighty to ninety per cent of its standard and slim-lighters in individual cardboard boxes.¹⁸ These boxes are distinctively designed, and feature the name "Zippo."¹⁹ Its lighters are primarily sold to the individual consumer in retail marketing channels, although approximately thirty-eight per cent of Zippo lighters are sold to commercial organizations which use the lighters for advertising or public relations purposes.²⁰ Zippo also markets a very small percentage of its lighters through the use of display cards, which are changed to some extent each year.²¹ Two of plaintiff's display cards introduced in evidence featured the name "Zippo" imposed in red letters upon a blue background.²² On one, the word "Windproof" appears in white letters; on the other, the words "Slim Lighter" appear in white lettering.

Defendant Rogers or its predecessor has been in business since the first decade of this century. It offers nationally to the public a full line of smoking accessories, including pipes, tobacco pouches, and lighters. Rogers does not manufacture its lighters or pipes, but does produce its own tobacco pouches, which, according to the company's president, account for seventy per cent of sales of pouches in the United States.²³ The company has grown consistently over the years. In 1932, its gross sales approximated $13,000; in 1958, $1,570,000; and since then, according to its president, gross sales have been in the area of $2,000,000 yearly.²⁴

Rogers, on a much more limited basis than Zippo, has advertised its products nationally in a variety of publications.²⁵ From 1932 to 1958, Rogers spent over $1,335,000 on advertising on a gross sales figure of approximately $18,160,000; in 1958, it spent about $72,000 for advertising on sales of approximately $1,570,000.²⁶

In the fall of 1957, Rogers began to sell imported Japanese lighters²⁷ with full knowledge that they closely resembled the Zippo lighters.²⁸ Rogers has marketed these lighters with apparent success. In 1958, it sold between 240,000 and 360,000 lighters of this type; in 1959, approximately 720,000; in 1960, approximately 500,000; in 1961, approximately 380,000; and in 1962, approximately 360,000.²⁹ Dollar volume from sales of these lighters accounted for about fifteen to eighteen per cent of Rogers' total gross sales in 1959; in 1962, it accounted for about seven per cent of gross sales.³⁰

A comparison of these imported "720" lighters³¹ with the Zippo models reveals a striking similarity in shape and appearance. Thus, referring to Zippo and Rogers standard models,³² the dimensions, the configuration, and the finish of the outside case of the lighters are almost the same; the windscreens, even with respect to the three-two-three arrangement of the airholes, are almost identical; the shape of the ears supporting the cam and flint wheel and the shape of the cam itself are the same; and the manner in which the lighters open and close is the same. In short, the Rogers standard is a Chinese copy of the Zippo, except for the inscriptions on the bottom of the lighters' outside cases. Comparison of the Zippo and Rogers slim-lighters³³ compels the same conclusion.

Rogers markets these lighters exclusively by the use of display cards which carry the Rogers name.³⁴ For example, on a 1958 display card,³⁵ exhibiting the Rogers' lighter resembling Zippo's slim-lighter, the name "Rogers" appears in the upper left hand corner in large black logotype on a circular yellow background about 2¾ inches in diameter. The word "Slim" appears at the top of the card in tall black letters, and underneath, the word "Lighters." A picture of a "thin" man dressed in evening wear appears on the right hand side of the display card extending from the top to the bottom of the card. In the lower right hand...