Chips 'N Twigs, Inc. v. Chip-Chip, Ltd.

414 F. Supp. 1003, 190 U.S.P.Q. (BNA) 361, 1976 U.S. Dist. LEXIS 15025
CourtDistrict Court, E.D. Pennsylvania
DecidedMay 19, 1976
DocketCiv. A. 75-3295
StatusPublished
Cited by31 cases

This text of 414 F. Supp. 1003 (Chips 'N Twigs, Inc. v. Chip-Chip, Ltd.) is published on Counsel Stack Legal Research, covering District Court, E.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Chips 'N Twigs, Inc. v. Chip-Chip, Ltd., 414 F. Supp. 1003, 190 U.S.P.Q. (BNA) 361, 1976 U.S. Dist. LEXIS 15025 (E.D. Pa. 1976).

Opinion

OPINION

DITTER, District Judge.

Plaintiff, Chips ’N Twigs, Inc., instituted this suit against defendant Chip-Chip, Ltd., charging the latter with statutory trademark infringement and false designation of origin of goods in violation of sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a), and common law unfair competition. Presently before the court is the plaintiff’s motion for a preliminary injunction. 1 After careful consideration of the briefs and affidavits of the parties and the evidence adduced at the hearing, I make the following:

FINDINGS OF FACT

1. Plaintiff, Chips ’N Twigs, Inc., (hereafter “Chips”) is a Pennsylvania corporation having a principal place of business at *1006 Broad and Wallace Streets, Philadelphia, Pennsylvania 19130.

2. Defendant, Chip-Chip, Ltd., (hereafter “Chip-Chip”) is a New York corporation having a principal place of business at 1441 Broadway, New York, New York 10018.

3. In 1916, Chips’ predecessor in title, B. Schwartz & Co., commenced operations as a manufacturer of juvenile clothing. In 1951 B. Schwartz & Co. merged with Wm. Schwartz & Co., Inc., a corporation which had been organized in 1946. On May 7, 1956, by appropriate corporate action and statutory procedures Wm. Schwartz & Co., Inc., became Chips ’N Twigs, Inc. Chips ’N Twigs, Inc., is known in the trade as “Chips.”

4. On July 20, 1944, Chips’ predecessor B. Schwartz & Co., adopted the trademark “CHIPS OFF THE OLD BLOCK,” and on March 13, 1945, received Registration No. 412.572 for the application of this mark to juvenile and boys’ suits, sport coats and outer wearing apparel. This registration was republished under section 12(c) of the Lanham Act, 15 U.S.C. § 1062, on July 22, 1952, by Wm. Schwartz & Co., Inc., and became incontestable on May 19, 1958, when affidavits were filed and accepted pursuant to sections 8 and 15 of the Act, 15 U.S.C. §§ 1058, 1065. Registration No. 412.572 was assigned to Chips and was renewed for 20 years under section 9 of the Act, 15 U.S.C. § 1059, on March 13, 1965.

5. On July 20, 1944, B. Schwartz & Co. adopted the trademark “CHIPS.” The United States Patent Office issued Registration No. 414,492 to B. Schwartz & Co. on June 12, 1945, for this trademark for juvenile and boys’ suits, sport coats and outer wearing apparel. This registration was republished under section 12(c) of the Act on July 1, 1952, by Wm. Schwartz & Co., Inc., becoming incontestable on May 19, 1958, when affidavits were filed and accepted pursuant to sections 8 and 15 of the Act. Registration No. 414,492 was assigned to Chips and was renewed for 20 years under section 9 of the Act on June 12, 1965.

6. On October 5, 1955, Wm. Schwartz & Co., Inc., adopted the trademark “MR. CHIPS.” The Patent Office issued Registration No. 637,481 on November 20, 1956, for this trademark for men’s and boys’ suits, jackets, coats, sport coats, topcoats, overcoats, snowsuits, pants, shorts, swimsuits, robes, beachwear and shirts. This registration became incontestable on May 17, 1962, when affidavits were filed and accepted pursuant to sections 8 and 15 of the Act. Registration No. 637,481 has also been assigned to Chips.

7. On August 1, 1955, Wm. Schwartz & Co., Inc., adopted the trademark “CHIPS ’N TWIGS.” The Patent Office issued Registration No. 652,100 to plaintiff on September 24, 1957, for this trademark for young men’s, boys’ and children’s suits, jackets, coats, sportcoats, topcoats, overcoats, snowsuits, pants, shorts, swimsuits, robes, beachwear and shirts. The registration became incontestable on August 6, 1963, when affidavits were filed and accepted pursuant to sections 8 and 15 of the Act.

8. On November 15,1966, Chips adopted the trademark “BLUE CHIP.” The Patent Office issued Registration No. 836,788 to plaintiff on October 10, 1967, for this trademark for men’s and boys’ suits, jackets, coats, sportcoats, topcoats, overcoats, pants, shorts, shirts, hats, and beachwear. This registration became incontestable when affidavits were filed and accepted pursuant to sections 8 and 15 of the Act.

9. Prior to November 1971, Chips adopted the trademark “CHIP KNITS” for young men’s clothing made of knit fabric.

10. The registered trademarks “CHIPS OFF THE OLD BLOCK,” “CHIPS,” “MR. CHIPS,” “CHIPS ’N TWIGS,” and “BLUE CHIPS” and the unregistered trademark “CHIP KNITS” constitute the plaintiff’s “CHIPS” family of trademarks.

11. Chips’ trademarks have been used in commerce for suits, sportcoats, blazers, leisure suits, slacks, leatherware, overcoats, outerwear, and rainwear from the time of their adoption through the present time. However, there was no evidence that the “CHIPS” family of trademarks have been used in commerce for shorts, swimsuits, robes, beachwear, shirts or hats.

*1007 12. Chips has a conservative policy with respect to trademarks and has adopted no new marks since 1971. While the styles of wearing apparel sold by plaintiff have changed over the years, its trademarks have remained the same.

13. Most of plaintiffs labels and advertisements bear the “CHIPS” family of trademarks in a vine and woodsmen motif and some depict the figure of a man chopping wood. However, there are some other labels and advertisements that feature these marks in ordinary print or block lettering. The dominant portion of each of plaintiff’s trademarks is the name it carries and the dominant portion of most of these names is the word “CHIP.”

14. The apparel manufactured by Chips under its trademarks is intended for boys between the approximate ages of 6 to 16 who wear sizes 8 to 20. Chips’ garments are purchased both by these young people themselves and on their behalf by adults.

15. The apparel manufactured by Chips is not intended for, but is in fact worn by slim or small men.

16. Chips manufactures and sells wearing apparel for young men in sizes 36-44 under the trademark “ACADEMY CLOTHES.” The labels on these garments do not contain any of plaintiff’s “CHIPS” family of trademarks or plaintiff’s trade name, “CHIPS ’N TWIGS, INC.” However, plaintiff does advertise its Academy line of clothing simultaneously with clothing sold under its “CHIPS” family of trademarks and in conjunction with its trade name, “CHIPS ’N TWIGS, INC.”

17. The term “junior” is often used in connection with wearing apparel for boys to indicate the smaller size range. Plaintiff manufactures and sells, inter alia, boys’ junior sportswear.

18. Chips has used its trademark since 1944 to identify its products and to distinguish them from those made and sold by others.

19.

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Bluebook (online)
414 F. Supp. 1003, 190 U.S.P.Q. (BNA) 361, 1976 U.S. Dist. LEXIS 15025, Counsel Stack Legal Research, https://law.counselstack.com/opinion/chips-n-twigs-inc-v-chip-chip-ltd-paed-1976.