J. R. WOOD AND SONS, INC. v. REESE JEWELRY CORPORATION No. 209, Docket 25883.
278 F.2d 157 (1960)
J. R. WOOD AND SONS, INC., Plaintiff-Appellee, v. REESE JEWELRY CORPORATION, Defendant-Appellant.
United States Court of Appeals Second Circuit.
Decided May 5, 1960.
Kennard N. Ware, Philadelphia, Pa. (Margaret W. Smith and Howson & Howson, New York City, on the brief), for appellee.
Before CLARK, MOORE and FRIENDLY, Circuit Judges.
MOORE, Circuit Judge.
Plaintiff, J. R. Wood & Sons Inc., a manufacturer of wedding, engagement and other diamond rings, commenced a trademark infringement suit against Reese Jewelry Corporation, a manufacturer of the same type of rings, claiming that plaintiff's trademark "Artcarved" was infringed by defendant's mark "Art ♦ Crest." Although the trial court found that there was "no substantial evidence of actual confusion or of damage to plaintiff's business"; that "there is no evidence that defendant's breach was wilful or intentional"; and that "defendant in good faith thought its mark was not infringing"; nevertheless the court permanently enjoined defendant from using "Art ♦ Crest." The court decreed, however, that "damages are not warranted and plaintiff shall not
The statute (15 U.S.C.A. § 1114(1), in substance, imposes liability thereunder if any person uses a colorable imitation of any registered mark, which use "is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods * * *"
Plaintiff since 1941 has used the registered trademark "Artcarved" in advertising its wedding, engagement and diamond rings. This name is also stamped on the inside of each ring. Defendant in 1948 commenced using a mark "Wedding Bells" on its rings. Later and in 1955 it used a mark "Art ♦ Crest by Wedding Bells" and stamped the words "Art UKC; Crest by W. B." on the inside of the ring. The infringement action was instituted in 1956. The trial court directed itself to the basic issue of "whether the ordinarily prudent purchaser is likely to mistake defendant's mark for plaintiff's mark." Although unfair competition was charged there was no evidence of customer confusion or palming off practices, and no judgment was entered with respect thereto.
The issue here can be narrowed further by rejecting for purposes of this appeal appellant's argument that its trademark is really "Art ♦ Crest by Wedding Bells" instead of "Art ♦ Crest." Therefore, the marks to be compared for likelihood of confusion are "Artcarved" and "Art ♦ Crest."
At the outset both appellant and appellee seek to set the scope of appellate review. Appellant argues that the Court of Appeals is in as good a position as the trial judge to determine likelihood of confusion (Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 2 Cir., 1952,
The decision as to infringement must, of necessity, be based primarily upon a comparison of the marks. In the absence of other determinative evidence, a question of law or at best a mixed question of law and fact is presented as to which appellate review is not foreclosed. A far more difficult problem is posed in seeking any standard for evaluating "likelihood of confusion." The large number of decisions, some decreeing infringement,
Of the fields for inquiry there mentioned, intent to palm off, difference in geographic sales area, and actual confusion can be eliminated. There remain for consideration the degree of similarity in appearance, the nature of the words of syllables used and the degree of care which a prospective purchaser might be expected to exercise in purchasing the merchandise to which the marks apply.
"Artcarved" and "Art ♦ Crest" both use as a first syllable a word in common usage, i. e., "art." Trademarks containing a word in the public domain are said to be less "confusingly similar if they resemble each other only by the inclusion of a word which is in the public domain." See Goldring, Inc. v. Town-Moor, Inc., 1954,
Appellee then dissects each mark by pointing out that the next letter of its word is "c" and that "C" is likewise the first letter of "Crest." Close similarity of the number of letters in "carved" and "Crest" is also stressed. Such analysis is too strained. Visually and phonetically the two marks should not be susceptible of confusion. To grant to appellee the protection sought would bestow upon it a virtual monopoly of any word commencing with "art." See Warner Bros. Co. v. Jantzen Inc., 2 Cir., 1957,
The district court properly selected the "ordinarily prudent purchaser" as the subject for protection against deception or confusion. But a prudent purchaser of what? Obviously, of wedding and diamond rings and not of general merchandise. The purchaser of a diamond ring, particularly of a wedding or engagement ring, will be most discriminating in his purchase, and make it carefully and deliberately. See Sleepmaster Products Co. v. American Auto-Felt Corp., 1957,
Considering the various relevant factors in addition to the lack of similarity of the trademarks, the likelihood of confusion is insufficient to sustain a finding of infringement.
Reversed in part.
FRIENDLY, Circuit Judge (dissenting).
When middle-aged judges are obliged to determine the "likelihood of confusion" in the purchase of engagement and wedding rings by youthful swains not enjoying our advantage of knowing the answer in advance, I should suppose the most resolute mind must entertain some doubts. I prefer to resolve mine in favor of a plaintiff who has spent money and effort in exploiting its mark for nearly a score of years rather than of a defendant who, with the world of possible names before him, has chosen to inch as close to the plaintiff's mark as he believes he safely can, even if he has done this in a "good faith" belief that he has succeeded.
The plaintiff here has been selling engagement and wedding rings since 1850. It commenced using "Artcarved" on rings in 1941, registered that mark in 1942, and has used the mark widely, continuously and successfully ever since. "Artcarved" is the first or second most widely advertised trademark for wedding and engagement rings in the country. In November 1949 plaintiff began to use the mark "Woodcrest" on a secondary line. In 1950 it registered "Woodcrest" and commenced to use the combined mark "Artcarved Woodcrest." Between 1954 and 1957 plaintiff discontinued manufacturing or advertising rings marked "Artcarved Woodcrest" or "Woodcrest" but made sales of products so marked from stock. In 1957 plaintiff resumed manufacturing and advertising rings under the mark "Woodcrest." From 1941 through 1958 plaintiff expended $5,659,000 in advertising its marks.
Appellant began to use "Art ♦ Crest" in 1955. When this action was begun, appellant stamped on the inside of its rings these words and no others. The addition of "by W. B." came three months later.
Judge Goodrich said in Q-Tips, Inc. v. Johnson & Johnson, 3 Cir.,
Until recently this court has been at least in pace with the advance, if not, indeed, in the van. See, e. g., Industrial Rayon Corp. v. Dutchess Underwear Corp., 2 Cir., 1937,
I would affirm.
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