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CUISINARTS, INC. v. JOHN BOOS & CO.

July 30, 1985

CUISINARTS, INC., Plaintiff,
v.
JOHN BOOS & CO., Defendant



The opinion of the court was delivered by: GAGLIARDI

MEMORANDUM DECISION

LEE P. GAGLIARDI, SENIOR UNITED STATES DISTRICT JUDGE

 Plaintiff Cuisinarts, Inc., a Connecticut corporation, commenced this action seeking an injunction against defendant's continued use of the name "Cuisi Cart" as a trademark in sale and distribution of one of its products, a wooden kitchen cart designed for use by gourmet home cooking enthusiasts. Plaintiff claims that use of the name "Cuisi Cart" infringes on its valid trademark registrations. Defendant John Boos & Co. ("Boos"), an Illinois corporation, claims that there is no infringement, maintaining that use of the name does not cause and is not likely to cause confusion in the mind of consumers. Boos also raises a defense of laches.

 The parties have submitted a joint stipulation of facts. *fn1" Trial of the remaining factual questions was held before the court on June 6, 1985. *fn2" The court now makes the following findings of fact and conclusions of law pursuant to Rule 52(a), Fed. R. Civ. P.

 Background

 Plaintiff owns a number of trademark registrations for use of the terms "Cuisinart" and "Cuisinarts" in connection with food preparation equipment, aprons, and foodstuffs. Defendant Boos uses the term "Cuisi Cart" on a kitchen cart usable with a number of kitchen appliances, including food processors and related accessories. *fn3" The cart, which is wooden and has an electrical outlet strip on one side of the working surface, has the name "Cuisi Cart" branded on the front of the single drawer. No other trademark or name is used on the cart; nowhere does the name of "John Boos & Co." appear. *fn4"

 Boos has produced and sold the "Cuisi Cart" in interstate commerce since on or before 1982. *fn5" Cuisinarts became aware of the cart's production in 1981. An exchange of letters followed. In September, 1981, Cuisinarts advised Boos that it considered use of the "Cuisi Cart" mark to infringe two of its trademark registrations. By letter dated December, 1981, Cuisinarts rejected a proposal by Boos to rename the cart "Cuisine Cart," and reiterated its demand that use of the mark "Cuisi Cart" be stopped. Neither Boos nor its attorneys responded to the December letter.

 During the years 1982 and 1983, Cuisinarts received no reports that use of the mark continued; no further communications were sent. In 1984, Cuisinarts learned that Boos's use of the mark had continued unchanged during 1982, 1983, and 1984. Cuisinarts then commenced this action.

 Discussion

 I. Likelihood of Confusion

 In deciding a claim of infringement of a valid trademark registration, the court must determine whether the allegedly infringing use is such that "an appreciable number of ordinarily prudent purchasers [will] be misled, or indeed simply confused, as to the source of the goods in question." McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979), quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert. denied, 439 U.S. 1116, 59 L. Ed. 2d 75, 99 S. Ct. 1022 (1979). In analyzing whether appreciable confusion is likely, the court must examine a number of factors, including the strength of the mark, the similarity of the marks, the proximity of the products, the likelihood that the trademark owner will "bridge the gap" between the products, actual confusion, sophistication of the buyers, defendant's good faith in adopting the mark, and the quality of defendant's product. Additional factors to be considered will be determined by the nature of the particular case. See Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961); Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208 (2d Cir. 1985); C.L.A.S.S. Promotions v. D.S. Magazines, Inc., 753 F.2d 14, 17 (2d Cir. 1985).

 Upon consideration of the factors outlined in Polaroid, the court finds it likely that use of the "Cuisi Cart" mark will mislead or confuse an appreciable number of consumers.

 A. Strength of the Cuisinarts and Cuisinart Trademarks

 "The term 'strength' as applied to trademarks refers to the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source." McGregor-Doniger, Inc. v. Drizzle, Inc., supra, 599 F.2d at 1131. Cuisinarts received the first of its seven trademark registrations in 1973. Where the Patent and Trademark Office has registered a mark without proof of secondary meaning, a presumption arises that a trademark is more than simply "descriptive," and thus is "strong." See id., 599 F.2d at 1132; Del Laboratories, Inc. v. Alleghany Pharmacal Corp., 516 F. Supp. 777 (S.D.N.Y. 1981). Other indicators of trademark strength are sales figures and advertising expenditures. See, e.g., Mushroom Makers, Inc. v. R.G. Barry Corp., 441 F. Supp. 1220, 1224 (S.D.N.Y. 1977), aff'd, 580 F.2d 44 (2d Cir. 1978), cert. denied, 439 U.S. 1116, 59 L. Ed. 2d 75, 99 S. Ct. 1022 (1979); Del Laboratories, Inc. v. Alleghany Pharmacal Corp., supra. In this case, Cuisinarts presented unchallenged ...


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