231 F. Supp. 301 | W.D.N.C. | 1964
Having successfully prosecuted its action for trademark infringement and secured an injunction against the defendant’s further use of “Arewell”, plaintiff now moves the court to proceed with a determination of damages for the trademark infringement previously adjudged, or that the court appoint a Special Master to conduct an accounting for determining the damages.
It has been determined that there was no appreciable confusion of goods.
The burden is the infringer’s to prove that his infringement had no cash value in sales made by him. Mishawaka R. & W. Manufacturing Co. v. S. S. Kresge Co., 316 U.S. 203, 62 S.Ct. 1022, 86 L.Ed. 1381, 1385 (1942). But, if it can be shown that the infringement had no relation to profits made by the defendant and that purchasers bought goods bearing the infringing mark because of defendant’s recommendation or its reputation, or indeed for any reason other than a response to the diffused appeal of the plaintiff’s symbol, the plaintiff, is, of course, not entitled to defendant’s profits attributable to such factors. Here, as has been previously noted in the published opinion, swpra, there is no showing of palming off of merchandise. Plaintiff’s business was initially hurt by the truthful representation to customers that plaintiff’s key personnel had left the plaintiff to establish a new company and had the skill and know-how to recondition crankshafts. Defendants never represented that their shafts were those of the plaintiff, but simply that they were as good or better.
An accounting for profits is a form of equitable relief and it does not follow as a matter of course upon the mere showing of an infringement. Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co., 251 F.2d 924, 927 (3d Cir. 1958). Where there is no showing that the plaintiff’s business has been hurt (by a trademark infringement) or that the defendant has made-profit out of the infringement, there is no call for relief other than that given by injunction. Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 149 (3d Cir. 1953). In Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 67 S.Ct. 1136, 91 L.Ed. 1386 (1947), the Supreme Court specifically approved the denial of an accounting in a case where the likelihood of damage to plaintiff or profit to infringer due to trademark misrepresentation seemed “slight”. In the same opinion are collected numerous cases where an accounting had been denied and an injunction held sufficient to satisfy the equities of the case. Here, it seems extremely improbable that there would result any award of damages. Certainly it is most likely that if any damages were awarded they would amount to far less than the cost of taking such an accounting. Under these circumstances, it does not appear that the equities of the case require an accounting.
Moreover, the plaintiff is apparently barred by the doctrine of laches from recovering damages for the infringement of his trademark. Both plaintiff and defendant made application to the Patent Office for their respective marks at approximately the same time in 1951. Both parties filed the required five year affidavits to acquire incontestability. Never
Counsel may present an appropriate order in accordance with this memorandum opinion.
. Tile background of tlie controversy is set forth in the previous opinion. Plaintiff originally sued for patent and trademark infringement and unfair competition, and was successful only in establishing trademark infringement. Allen v. Standard Crankshaft & Hydraulic Co., 210 F.Supp. 844; aff’d. 323 F.2d 29 (4th Cir. 1963).
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