King-Seeley Thermos v. Aladdin Industries (1963)

KING-SEELEX THERMOS CO., Plaintift-Appellant, ALADDIN INDUSTRIES, INCORPO- RATED, Defendant-Appellee. No. 284, Docket 27965. United States Court of Appeals Second Circult. Argued April 22, 1963, Decided July 11, 1963. 1. The action was instituted by The Ameri- can Thermos Products Company, a pred- ecessor of apellant. The corporate his- tory ot King Seoley Thermos Co. is set out in detail in the district court opinion and will not be repeated here. For con- LEONARD P. MOORE, Circuit Judge. This action by brought by appellant King-Seeley Thermos Co. (King-Seeley) 1 to enjoin the defendant, Aladdin Indus- tries, Incorporated from threatened in- fringement of eight trademark registra- tions for the word "Thermos" owned by appellant. Defendant answered, acknowl- edging its intention to sell its vacuum- insulated containers as "thermos bottles", asserted that the term "thermos" or "thermos bottle" is a generic term in the English language, asked that plaintiff's registrations of its trademark "Thermos" be cancelled and that it be adjudicated that plaintiff have no trademark rights in the word "thermos" on its vacuum bottles. The trial court held that plain- tiff's registrations were valid but that the word "thermos" had become "a generic descriptive word in the English language as a synonym for 'vacuum in- sulated' container." 207 F.Supp. 9. The facts are set out at great length in the comprehensive and well-reasoned opinion of the district court and will not be detailed here. In that opinion, the court reviewed King-Seeley's corporate history and its use of the trademark "Thermos". He found that from 1907 to 1923, King-Seeley undertook advertising and educational campaigns that tended to make "thermos" a generic term descrip- tive of the product rather than of its origin. This consequence flowed from the corporation's attempt to popularize "Thermos bottle" as the name of that product without including any of the generic terms then used, such as "Ther- mos vacuum-insulated bottle". The court found that by 1923 the word "thermos" had aquired firm roots as a descriptive or generic word. At about 1923, because of the sugges- tion in an opinion of a district court* that "Thermos" might be a descriptive word, King-Seeley adopted the use of venience, King Seeley will be used in this opinion to designate the appellant and its predecessors. 2. American Thermos Bottle Co. v. W. T. Grant Co., 1 Cir., 279 F. 151 (Mass. 1022). the word "vacuum" or "vacuum bottle" with the word "Thermos". Although "Thermos" was generally recognized in the trade as a trademark, the corporation did police the trade and notified those using "thermos" in a descriptive sense that it was a trademark. It failed, how- ever, to take affirmative action to seek out generic uses by non-trade publications and protested only those which happened to come to its. attention. Between 1923 and the early 1950's the generic o? " her mos" had gron to a marked ex tent in non-trade publications and by the end of this period there was wide-spread use by the unorganized public of "ther- mos" as a synonym for "vacuum insu- lated." The court concluded that King- Seeley had failed to use due diligence to rescue "Thermos" from becoming a de- scriptive or generic term. Between 1954 and 1957, plaintiff show- ed awareness of the widespread generic use of "thermos" and of the need to edu- cate the public to the word's trademark significance. It diversified its products to include those not directly related to containers designed to keep their con- terits hot or cold. It changed its name from the American Thermos Bottle Com- pany to The American Thermos Products Company and intensified its policing ac- tivities of trade and non-trade publica- tions. The court found, however, that the generic use of "thermos" had become so firmly impressed as a part of the everyday language of the American pub- lic that plaintiff's extraordinary efforts commencing in the mid-1950's came too late to keep "thermos" from falling into the public domain. The court also held that appellant's trademarks are valid and because there is an appreciable, though minority, segment of the consumer public which knows and recognizes plaintiff's trademarks, it imposed certain restric- tions and limitations on the use of the word "thermos" by defendant. We affirm the district court's decision that the major significance of the word "thermos" is generic. No use- ful purpose would be served by repeating here what is fully documented in the opinion of the court below. Appellant's primary protest on appeal is directed at the district court's finding that "The word 'thermos' became a part of the public domain because of the plaintiff's wide dissemination of the word 'thermos' used as a synonym for 'vacuum-insulated' and as an ad- jectival-noun, 'thermos', through its educational and advertising cam- paigns and because of the plaintiff's lack of reasonable diligence in assert- ing. and protecting its trademark rights in the word "Thermos' among the members of the unorganized pub- lic, exclusive of those in the trade, from 1907 to the date of this action." 207 F.Supp. at 14. We are not convinced that the trade- mark's loss of distinctiveness was the re- sult of some failure on plaintiff's part. Substantial efforts to preserve the trade- mark significance of the word were made by plaintiff, especially with respect to members of the trade. However, there was little they could do to prevent the publie from using "thermos" in a generic rather than a trademark sense. And whether the appropriation by the public was due to highly successful educational and advertising campaigns or to lack of diligence in policing or not is of no con- sequence; the fact is that the word "thermos" had entered the public domain beyond recall. Even as early as 1910 plaintiff itself asserted that. "Thermos had become a household word." Judge Anderson found that al- though a substantial majority of the pub- lic knows and uses; the word "thermos", only a small minority of the public knows that this word has trademark signif- cance. He wrote at 207 F.Supp. 21-22: "The results of the survey [con- ducted at the behest of the defend- ant] were that about 75% of adults in the United States who were fa- miliar with containers that keep the contents hot or cold, call such a con- tainer a 'thermos'; about 12% of the adult American public know that 'thermos' has a trade-mark signifi- cance, and about 11% use the term "vacuum bottle'. This is generally corroborative of the court's conclu- sions drawn from the other evidence, except that such other evidence in- dicated that a somewhat larger mi- nority than 12% was aware of the trade-mark meaning of 'thermos'; and a somewhat larger minority than 11% used the descriptive term 'vac- uum' bottle or other container." The record amply supports these find- ings. Appellant argues that the court below misapplied the doctrine of the Aspirin a and Cellophane * cases. Its primary con- tention is that in those cases, there was no generic name, such as vacuum bottle, that was suitable for use by the general public. As a result, to protect the use of the only word that identified the prod- uct in the mind of the public would give the owners of the trademark an unfair competitive advantage. The rule of those cases, however, does not rest on this fac- tor. Judge Learned Hand stated the sole issue in Aspirin to be: "What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more." 272 F. at 509. Of course, it is obvious that the fact that there was no suitable descriptive word for either aspirin or cellophane made it difficult, if not impos- sible, for the original manufacturers to prevent their trademark from becoming generic. But the test is not what is avail- able as an alternative to the public, but what the public's understanding is of the word that it uses. What has happened here is that the public had become ac- customed to calling vacuum bottles by the word "thermos". If a buyer walked into a retail store asking for a thermos bottle, meaning any vacuum bottle and not spe- 3. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921)- cifically plaintift's product, the fact that the appellation "vacuum bottle" was available to him is of no significance. The two terms had become synonymous; in fact, defendant's survey showed that the public was far more inclined to use the word "thermos" to describe a con- tainer that keeps its contents hot or cold than the phrase "vacuum bottle". Appellant asserts that the courts in a number of cases have upheld the con- tinued exclusive use of a dual functioning trademark, which both identifies the class of product as well as its source. See, e. 8., Standard Brands v. Smidler, 151 F.2d 34 (2 Cir. 1945) ("V-8"): Wal- green v. Obear-Nester, 113 F.2d 956 (8 Cir.), cert. denied, 311 U.S. 708, 61 S.Ct. 174, 85 L.Ed. 459 (1940) "Pyrex"): Marks v. Polaroid Corp., 129 F.Supp. 243 (D.Mass. 1955), aff'd 237 F.2d 428 (1 Cir. 1956) ("Polaroid"); Q-Tips v. John- son & Johnson, 108 F.Supp. 845 (D.N.J. 1952), aff'd 206 F.2d 144 (3 Cir.), cert. denied, 346 U.S. 867, 74 S.Ct. 106, 98 L.Ed. 377 (1953) ("Q-Tips"): Keebler Weyl Baking Co. v. J. S. Ivins' Son, 7 F.Supp. 211 (B.D.Pa.1934) ("Club Crackers"): Barnes v. Pierce, 164 F. 213 (S.D.N.X.1908) ("Argyrol"'). As this court recently indicated: "a mark is not generic mercly be- cause it has some significance to the public as an indication of the nature or class of an articie. In order to become generic the principal significance of the word must be its indication of the nature or class of an article, rather than an its origin." indication of Feathercombs, Ine. v. Solo Products Corp., 306 P.2d 251, 256 (2 Cir.), cert. denied, 371 U.S. 910, 83 S.Ct. 253, 9 L.Ed.2d 170 (1962). But see Marks v. Polaroid Corp., supra, 129 F.Supp. at 270 ("a defendant alleging invalidity of a trademark for genericness must show that to the consuming public as a whole the word has lost all its trademark sig- nificance"). 4. DuPont Cellophane Co, 7. Waxed Prod- ucts Co., 85 F.28 75 (2 Cir. 1930). Since in this case, the primary signifi- cance to the public of the word "thermos" is its indication of the nature and class of an article rather than as an indication of its source, whatever duality of mean- ing the word still holds for a minority of the public is of little consequence ex- cept as a consideration in the framing of a decree. Since the great majority of those members of the public who use the word "thermos" are not aware of any trademark significance, there is not enough dual use to support King-Séeley's claims to monopoly of the word as a trade- mark. No doubt, the Aspirin and Cellophane doctrine can be a harsh one for it places a penalty on the manufacturer who has made skillful use of advertising and has popularized his product. See 3 Callman, Unfair Competition and Trademarks 1149-50 (2d ed. 1950). However, King- Seeley has enjoyed a commercial monop- oly of the word "thermos" for over fifty years. During that period, despite its efforts to protect the trademark, the pub- lic has virtually expropriated it as its own. The word having become part of the public domain, it would be unfair to unduly restrict the right of a competitor of King-Seeley to use the word. The court below, mindful of the fact that some members of the public and a substantial portion of the trade still recognize and use the word "thermos" as a trademark, framed an eminently fair decree designed to afford King-Seeley as much future protection as was pos- sible. The decree provides that defend- ant must invariably precede the use of the word "thermos" by the possessive of the name "Aladdin"; that the defendant must confine its use of "thermos" to the lower-case "*"; and that it may never use the words "original" or "genuine" in describing its product. See Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921); DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2 Cir, 1936). In addition, plaintiff is entitled to retain the exclusive right to all of its present forms of the trademark "Thermos" with- out change. These conditions provide a sound and proper balancing of the com- petitive disadvantage to defendants aris- ing out of plaintiff's exclusive use of the word "thermos" and the risk that those who recognize "Thermos" as a trademark will be deceived. The courts should be ever alert, as the district court said, "to eliminate confusion and the possibility of deceit." The purchasing public is entitled to know the source of the article it desires to pur- chase. It is not within our province to speculate whether the dire predictions made by appellant in forceful appellate argument will come to pass. Certain it is that the district court made every endeavor in its judgment to give as much protection to plaintiff as possible. The use by defendant of the now generic word "thermos" was substantially curtailed. Plaintiff's trademark "thermos" was pro- tected in every style of printing except the lower case "thermos" and then the use of the word must be preceded by the possessive of defendant's name "Aladdin" or the possessive of "Aladdin" plus one of defendant's brand names. Any doubt about plaintiff's position in the field is removed by the prohibition against the use by defendant in labeling, advertising or publiention of the words "genuine" "original" in referring to the word "ther- mos". Furthermore, the district court has given both parties the opportunity to apply to it for such orders and direc- tions as may be warranted in the light of changed circumstances and for the enforcement of compliance or for the punishment of violations. In our opin- ion the trial court has reached a most equitable solution which gives appro- priate consideration to the law and the facts. Affirmed.