LEWIS, Circuit Judge.
Plaintiff-appellee was successful in obtaining an injunction and recovering damages against defendant-appellant in a suit based on trademark infringement brought in the United States District Court for the District of Kansas.
The trial court found that the trademarks "Posturepedic" and "Golden Sleep" are both registered on the Principal Register in the United States Patent Office and have been used by the plaintiff since 1950 and 1938, respectively, on mattresses and box springs. The allegedly infringing marks, "Proper-Pedic" and "The Golden Fleece," also applied to mattresses and box springs, have not been registered but have been used by defendant since 1954. The court held that the defendant's use of the latter mark infringes upon plaintiff's rights in the former, stating:
The issues presented on appeal concern whether the court should have held the plaintiff's trademark "Golden Sleep" to have been abandoned, error alleged in the admission and consideration of certain plaintiff's evidence and the refusal to admit certain defendant's evidence, whether the court erred in holding that defendant's use of his marks infringed plaintiff's trademarks, and finally claimed error in the award of $7,500 damages.
In attacking the trial court's implied finding that the "Golden Sleep" trademark has not been abandoned by the appellee, appellant relies upon 15 U.S.C.A. § 1127:
The testimony of Sealy's president, Mr. Bergmann, indicates that the main current use of the term "Golden Sleep" is to designate a type of promotion, the summer sale of a number of the Sealy mattresses. It also appears that whereas before 1954 the "Golden Sleep" mattress was advertised extensively as Sealy's $59.50 line, the present emphasis is upon a creation called "Enchanted Night," but the witness further testified that some of the franchised plants are still selling "Golden Sleep" mattresses.
Appellant contends that Sealy's present use of the term is a non-trademark use which does not prevent the inference of abandonment of the trademark, Autoline Oil Co. v. Indian Refining Co., Inc., D.C.M.D., 3 F.2d 457, but the record indicates no need for reviewing the question as posed. Mr. Bergmann was explicit in his statement that "Golden Sleep" was a label presently used by the franchisees on a particular type of mattress. Appellant attacks this testimony as being unaccompanied by the extensive documentation that marked the presentation of plaintiff's case in chief, but the issue of abandonment is one of defense with its consequent burden devolving on him who asserts it. The Court of Customs and Patent Appeals has consistently held that the introduction of a trademark registration presents prima facie proof of continuing use of the mark as well as ownership, Gillette Company v. Kempel, 254 F.2d 402, 45 CCPA 920.
Under this status of the evidence and the conflicting inferences arising therefrom, the trial court's determination that the trademark "Golden Sleep" has not been abandond by its registered owner is not clearly erroneous as to require reversal, Fed.Rules Civ.Proc. rule 52(a), 28 U.S.C.A.
The use of the unregistered trademark, "Proper-Pedic" by the Wyandotte Mattress Company first came to the attention of the Sealy Company when a Sealy franchisee forwarded a tear sheet from Life magazine, upon which appeared a Wyandotte advertisement one column inch in size. In this ad, "Proper-Pedic" appeared with a small circled "R", designating a registered trademark. Sealy began correspondence with Wyandotte
Life magazine offers as an inducement to its advertising customers the right to use gum stickers and hang tags bearing the motto, "As Advertised in Life," on their merchandise. Plaintiff, Sealy, Inc., an extensive national advertiser, has used these point-of-sale techniques for some time and after the appearance of the Proper-Pedic advertisement, the defendant, as Wyandotte Company, also attached them to mattresses of that name.
The Sealy company likewise makes use of a streamer bearing the Good Housekeeping Seal of Approval, in accordance with that magazine's endorsement. Since the mattresses of the Wyandotte Company contain an approved material "Tufflex," appellant has also used the Good Housekeeping streamers.
A former employee of the local Sealy licensee was employed shortly before the trial of this case by the Wyandotte Company as a sales person contacting retail dealers. Also, there is some evidence that another employee of the Sealy firm offered some casual aid in either arranging Wyandotte's physical plant or in suggesting the proper design for box springs. This evidence was admitted upon plaintiff's counsel's statement that he was attempting to prove the claim of unfair competition joined in the complaint for trademark infringement, but the evidence does not rise to an inference of customer or trade-secret stealing by the first-mentioned employee and demonstrates that the help given by the other employee was with the sanction of his employer.
To all of the above outlined evidence, i. e. the wrongful use of the registration designation, the use of Life and Good Housekeeping promotional material, and the employment of Sealy's personnel, the defendant objected on the ground of relevancy. Dissecting the evidence, as appellant does, each item gives rise to equally-balanced and opposite considerations. Each action by the defendant is explicable as coincidence and innocent motive, but this does not render the evidence as a whole devoid of probative value. Counsel had ample opportunity to argue the value of the evidence as showing a pattern of imitation or as being merely a series of unrelated circumstances affording no basis for a reasonable inference of fact. The weight to be given this evidence was primarily for the trier of the fact and in instances where different inferences may be drawn from the established facts, it is not within the province of this court to substitute its judgment for that of the trial court as to which inference should be drawn.
Defendant sought to introduce two exhibits, documents marked Exhibits J and K, as admissions by the plaintiff of limitations on its trademark rights. Exhibit J was an order of dismissal in the case of Sealy, Inc. v. Serta Associates entered after rulings on motions for summary judgment, reported Sealy, Inc. v. Serta Associates, D.C.Ill., 134 F.Supp. 621. In pertinent part, the exhibit reads:
Defendant's Exhibit K is a Joint Motion to Dissolve Interference No. 5414 in the U. S. Patent Office executed jointly by Sealy, Inc. and the Simmons Company on November 10, 1950:
The trial court refused the exhibits and offers of proof for the record were made. Appellee defends the action of the trial court in that only a portion of the record of the case of Sealy, Inc. v. Serta Associates was offered and that "The reported Sealy v. Serta suit contains nothing that would aid either side in this case," and further that the evidence was irrelevant as involving a company not a party to the present suit. In these views, appellee apparently confuses the controlling issues in a plea of res judicata with the admissibility of an admission against interest.
Both documents were complete in themselves as a stipulation to avoid further litigation between Sealy, Inc. and its contestants. The report of the court's action upon the parties' motions for summary judgment has no bearing on what the parties finally agreed as to fact or future action. That these admissions were contained in pleadings entered in court records certainly does not make them less available as evidence than if they had been made extra-judicially, Rogers v. Edward L. Burton & Co., 10 Cir., 137 F.2d 284; IV Wigmore, Evidence, §§ 1061-2; nor is it significant that the representation was made in litigation with a third party, Frank R. Jelleff, Inc. v. Braden, 98 U.S.App.D.C. 180, 233 F.2d 671, 63 A.L.R.2d 400.
Thus we conclude that the evidence could have been considered by the trial court, but the limited scope of the admissions, the status of the evidence demonstrating that other companies were using marks similar to the Sealy marks, and the rule of law that an infringement cannot be justified by the wrongful acts of others, Standard Oil Co. v. Standard Oil Co., 10 Cir., 252 F.2d 65; National Lead Company v. Wolfe, 9 Cir., 223 F.2d 195; Bond Stores, Incorporated v. Bond Stores, Inc., 3 Cir., 104 F.2d 124; inescapably lead to the conclusion that the refusal to consider such evidence was mere harmless error not justifying a reversal, Fed.Rules Civ. Proc. rule 61, 28 U.S.C.A.
Appellant urges that the two chief questions involved on appeal are (1) Is there confusion or similarity likely to cause confusion as to the products represented by the marks? and (2) Are damages or an accounting of profits proper? As to both of these issues, he contends that the findings made by the trial court are not entitled to the weight generally accorded the trier's findings under Rule 52(a), Fed.Rules Civ.Proc., citing particularly the language of the
However, in many facets, the evidence before this court is based upon the conflicting testimony of witnesses and creates a situation falling within the concluding words of the paragraph above cited:
The inferences to be drawn in the present case, in addition to certain direct testimony, are in conflict and it has long been held that where there is evidence from which reasonable men might draw different inferences, appellate courts may not substitute their judgment for that of the trial court, Colby v. Cities Service Oil Company, 10 Cir., 254 F.2d 665. Such doctrine is particularly applicable in cases of this type since the circumstances relating to the determination of whether or not there exists unfair competition is a cogent factor in the consideration of the likelihood of confusing similarity. As stated in comment f. to Section 729, Factors in Confusing Similarity, A.L.I. Restatement of the Law, Torts:
Indeed, defendant presented evidence that his buying the smallest possible space in Life magazine was not to cash in on anticipated results of the regular full-page ads run by Sealy, but rather the inception of an unrelated advertising campaign. When quizzed about why an essentially local concern would devote almost its entire advertising budget to a small, expensive, national ad, his reply was "You have to start somewhere." Since this approach is contrary to universal business logic, the trial court was justified in concluding contrary to his testimony that this demonstrated an intention to divert conditioned customers from Sealy.
Other evidences of an attempt to imitate and to delude customers are shown by the use of the Good Housekeeping endorsement and the wrongful indicia of registration. The trial court was presented with the justification and explanation of these items but deemed them part
The practice of printing a price on the merchandise higher than the known retail selling price also indicates a continuation of the same plan.
Posturepedic and Proper-pedic create similar impact upon the eye and the ear and carry similar connotations to the brain. Although Golden Sleep and The Golden Fleece may upon considered analysis present different meanings, the concepts are hazy and when linked to the promoted product, sleep equipment, are designed to impress the buyer with the notion of luxury rest. There is confusing similarity if prospective purchasers are likely to regard the offending designation as indicating the source identified by the trademark or trade name, Standard Oil Co. v. Standard Oil Co., supra.
The test stated in A.L.I. Restatement of Torts, Sec. 729:
Quite naturally, appellant has emphasized the differences in appearance of the labels and appellee has emphasized the similarities. Suffice it to say, that the similarities are sufficient to afford grounds for the trial court's determination that the public is likely to be confused, considering all the elements of imitation.
The present case involves parties engaged in identical enterprises, drawing their customers from the same sources, and using similar publicity methods to appeal to the habits of the ordinary customer. Such, too, was the situation in Standard Oil Co. v. Standard Oil Co., supra [252 F.2d 73], wherein it was said:
Appellant protests that since a mattress or box spring requires an investment of $30 to $100, the degree of care which a customer might be expected to exercise is somewhat greater than if he were buying 5-cent candies. This argument has its alternate side in that the construction of sleep equipment is not a
Appellant protests that there is no evidence of actual damage resulting to Sealy, Inc., from confusion of goods by the consuming public. Plaintiff-appellee, after proving that defendant-appellant's net sales from 1954 to time of trial have been approximately $20,000, prayed for an award of $60,000 on the basis of 15 U.S.C.A. § 1117:
The trial court awarded $7,500 and denied recovery of attorney's fees and appellee requests this court to reconsider the equities involved, increase the award, and give judgment for attorney's fees. Appellant urges that since he had no notice of the registration of the trademark "Golden Sleep," the award must fail under 15 U.S.C.A. § 1111:
The theory of damages in trademark infringement cases was fully explored by this court in Blue Bell Co. v. Frontier Refining Co., 10 Cir., 213 F.2d 354, 362:
In view of the fact that the evidence shows an intentional effort to palm off goods as those of the plaintiff, the trial court awarded damages, but in view of the relative positions of the parties, refused to allocate all of defendant's profits as profits which would have accrued to plaintiff were it not for the wrongful acts of infringement and unfair competition. The award is justified as proper under the infringement of the trademark Posturepedic alone and appellant cannot be heard to complain that he received the advantage of an adjudication with respect to Golden Sleep also. Even had appellee perfected a cross-appeal as to the damages, we conceive no reason for disturbing the considered discretion of the trial judge.