OPINION FINDINGS OF FACT AND CONCLUSIONS OF LAW
WEINFELD, District Judge.
This trademark infringement action involves variations on the name “Upmann” as a mark used in the sale of cigars.
Plaintiff, owner of the mark “H. Upmann,” seeks declaratory and injunctive relief under the Lanham Act
and the common law: (a) cancelling defendant’s federal registration of the marks “Carl Upmann” and “Upmann’s Repeater” and (b) enjoining defendant’s further use of these marks, the name “Upmann” alone as a mark, and its recently
adopted corporate name, “Upmann, International, Inc.” Interposing various defenses such as laches, abandonment and the incontestability of its marks, defendant seeks to dismiss the complaint and requests a declaratory judgment permitting it to use its marks without interference. Defendant also counterclaims, alleging that plaintiff had committed various antitrust and United States tax law violations which require cancellation of plaintiff’s mark and an award of treble damages in its favor. The antitrust and tax law claims, for which defendant demanded a trial by jury, were severed from the trademark issues which were tried to the Court.
At the close of a two-day trial, the Court indicated that there was no question but that there was “likelihood of confusion” under the Lanham Act
and cases construing it.
Plaintiff was thus entitled to the injunctive relief sought, unless one of the defendant’s defenses could be sustained-— specifically, whether plaintiff was guilty of laches
and whether the defendant’s use of Upmann in its marks was in bad faith so as to preclude its asserting that defense. Answering the first question negatively and the second affirmatively, the Court grants plaintiff its requested relief.
I
A. The Parties, Individually Simply stated, H. Upmanns manufactured in pre-Castro Cuba were among the world’s finest cigars. First registered in this country on December 17, 1912 to H. Upmann & Co. of Havana, Cuba (Registration No. 89,518),
the mark and business were acquired by Menendez, Garcia y Compania (“Menendez Garcia”), a Cuban limited liability partnership,
on or about August 2, 1939. Although its reputation even then was that of a fine, expensive, hand-made cigar, its sales volume was not commensurate with its reputation, and Menendez Garcia sought to change that situation.
Their efforts met with great success. By 1959, H. Upmann had garnered nearly 80% of the premium cigar market in Cuba and by volume was the largest brand exported. Packaged in attractive cedar boxes, espe
daily for luxury store distribution, H. Upmanns were sold throughout the United States by leading dgar importers and distributors as a premium product. Menendez Garcia spent about $50,000-$70,000 per year on direct advertising which appeared in magazines such as the
New Yorker
and
Fortune
and in the financial press; the American importers also advertised in their catalogues and with the news media. In its last full year of business in Cuba, Menendez Garcia exported to this country more than five million cigars at a wholesale price in excess of one and one-half million dollars; the cigars were then sold for between 50$ and • $1.25 per cigar, according to grade.
In 1960, the Menendez Garcia organization was intervened (in effect, confiscated) by the Castro government.
The principals, joined by a number of their skilled employees, fled Cuba for Spain and, in Las Palmas, Canary Islands, formed Compañía Insular Tabacalera (“CIT”), along with investors including some of those previously interested in Menendez Garcia and a number of new, additional interests. For a while, they continued to manufacture cigars with Cuban-grown tobacco, but after the United States embargo on Cuban goods took effect,
CIT began to experiment with blends of Santo Domingo, Brazil, Cameroon, Sumatra and Connecticut tobacco. These cigars were sold under trademarks other than H. Upmann, in part because of ongoing litigation concerning ownership of the mark with various importers and the Cuban government,
which, following its intervention, continued to export cigars under the H. Upmann name. CIT, however, continued to test various blends, in an effort to market a non-Cuban tobacco cigar of equally high quality as the Cuban version under the name H. Upmann once the ownership issue was resolved. Although there were various shipments of non-Cuban H. Upmanns made prior to 1975, these were
de minimis
and were made for the sole purpose of testing various blends. In November 1975, however, having emerged victorious on the ownership issue, thus entitled to the exclusive right to use H. Upmann,
and having developed a satisfactory blend of non-Cuban H. Upmann cigars, CIT began shipments in earnest. The return of H. Upmann to the American market was greeted with great acclaim in the press and renewed consumer acceptance.
Plaintiff acquired the business, the H. Upmann mark, as well as another former Menendez Garcia brand in 1976, for which it paid $1,000,000, although CIT continues manufacturing. Since plaintiff’s acquisition, sales have been at the rate of approximately 300,000 per month; the retail prices are twice what they were in 1959. Plaintiff continues to advertise through television, magazines and newspapers, and distributors likewise continue to promote the product. Having successfully passed through rebirth, H. Upmann now enjoys the revival of its reputation as one of the premium cigars sold in this country.
Defendant’s tale is rather less illustrious. The earliest use for which any evidence was offered at trial was the early 1930’s, although the applications filed in 1954 for
what eventually became registrations numbered 648,113 and 648,144 for the marks Carl Upmann and Upmann’s Repeater respectively, claim use in interstate commerce dating back to 1871. As told by Antonio Suarez, registrant of the marks and defendant’s assignor and principal witness at trial, the history of the marks is as follows. In the early 1930’s, a Tampa, Florida firm employing Suarez received a contract to manufacture the Carl Upmann line from what was then Carl Upmann, Inc., headed by one Carl Julius Upmann who was said to be a descendant of the cigar’s namesake. Carl Upmann, Inc., a New York entity, was succeeded by another corporation, Upmann & Suarez, in 1941 which continued the sale (such as there was) of Carl Upmann cigars, using the same labels, bands, displays, etc. left over from Carl Upmann, Inc. Upmann & Suarez was dissolved in 1946 or 1947, however, and Suarez moved to Tampa where, according to his testimony, he continued the manufacturing and sale of Carl Upmann cigars and Upmann’s Repeaters under the name of Antonio Suarez y Compañía. Suarez applied to register the marks in 1954. After various difficulties were overcome,
the Patent Office accepted the registrations and published the marks in June of 1955. In 1962, Suarez filed a combined affidavit under Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058, 1065.
Suarez has no records of his business either with Upmann or alone, and consequently, there is lack of or insufficient evidence upon which accurately to determine the extent of business done by him under the marks. Indeed, the only documentary proof of any sales whatsoever during the entire time Suarez owned or worked with the marks consists of a handful of orders covering a limited period in 1947. The evidence does support a finding that Carl Upmann or Upmann’s Repeater never achieved acceptance by the smoking public that even came close to approaching the fame and financial success of H. Upmann. Whatever distribution of these cigars that may have been made was indeed sparse.
In 1963, Suarez sold his rights in the marks Carl Upmann and Upmann’s Repeater to Zelick Gimelstein, owner of Zelick’s Tobacco Corporation of Miami Beach, Florida. Gimelstein arranged shortly thereafter for the manufacture and sale of the cigars. When Zelick died in 1971, he was succeeded by his son Alex, chief executive of the defendant, who also testified at trial.
Defendant’s cigars are presently manufactured in and imported from Honduras; at the time defendant acquired the marks, however, it arranged for their manufacture by a Tampa, Florida firm. Intermittent advertising in trade journals began in 1972, and was expanded somewhat in 1974. No advertising was done in the general media. The only evidence of sales offered goes back to 1966.
From that point until 1974, sales of both brands combined never went above 222,000 annually and, in fact, averaged approximately 115,120. In 1974, however, they rose to 465,000; in 1975, approximately 587,000 and in 1976, approximately 1,007,700 were sold. The 1977 sales are placed at over 1,474,200.
But 1974 was significant to defendant for another reason. In that year, Alex Gimel
stein caused the incorporation of defendant under its present name, Upmann International, Inc. In July 1975, it applied to the Patent Office to register the mark of Upmann alone. Later, in September 1975, defendant commenced proceedings to cancel a number of former Cuban cigar marks, including H. Upmann, which had not yet resumed bulk sales in this country, claiming that the marks were abandoned, and with respect to H. Upmann, that it was confusingly similar to defendant’s own marks.
The proceeding against H. Upmann was dismissed when defendant failed to clarify internal inconsistencies in its application.
Proceedings on defendant’s application to register Upmann alone, to which H. Upmann objected, were suspended when this suit was commenced.
B. Prior Interaction of the Parties
Suarez admitted that basically from the time he began with the Carl Upmann and Upmann’s Repeater marks, he knew of the H. Upmann cigar. Whether the converse was also true — indeed, whether plaintiff knew of defendant’s marks at all — is less clear.
According to Suarez, he was approached in the early 1940’s by one Feuyo in New York City regarding a proposal for the sale of the Carl Upmann trademark and business to Menendez Garcia, but as the proposal did not include any job opportunity for his partner, Carl Julius Upmann, Suarez rejected it. Jose Garcia, plaintiff’s principal witness and Menendez Garcia’s principal, never heard of this alleged proposal.
Garcia had heard, however, that in the mid-1950’s, Suarez approached Menendez Garcia through his partner, Alonso Menendez, concerning a proposal for the sale of the marks of Carl Upmann and Upmann’s Repeater. Suarez admitted there were never any negotiations, and Garcia testified that the company rejected the offer, “because we had never seen any of those cigars in the market.”
Suarez thereafter applied to register the marks. Despite knowledge of the H. Upmann mark, Suarez falsely swore that “no other person, firm, corporation or association . . . has the right to use such trademark . . . or in such near resemblance thereto as might be calculated to deceive.” Registration was initially refused in part because of the H. Upmann mark. Responding to that rejection, Suarez disclaimed any designs on “the surname ‘Upmann’ apart from” its use with either Carl or Repeater and further suggested that “[bjoth H. Upmann and Carl Upmann are distinctively different and no confusion can arise.” Despite what appears to be a patent case of confusion, the Office apparently agreed with Suarez and passed the two marks for publication in May 1955.
Acting through its authorized trademark agent, Menendez Garcia filed oppositions in 1957 against the registrations of Carl Upmann and Upmann’s Repeater. For reasons unknown, however, these oppositions were not perfected and were dismissed for the opposer’s failure to respond. Garcia testified that he personally did not know of either the registration or of Menendez Garica’s opposition. And, as noted above, Garcia knew of no sales with these marks.
In 1966, in connection with still another Patent Office proceeding,
Menendez Garcia’s successor CIT deposed Suarez. Although wholly unrelated to the marks there at issue, Suarez did describe some of his past use with the Carl Upmann mark and his sale of the mark to Zelick Gimelstein in 1962 or 1963.
In'1975, when defendant sought registration of the mark “Upmann” alone, plaintiff objected and filed its notice of opposition in the Patent Office. As noted above, this
suit was then commenced suspending the Patent Office proceedings.
II
Defendant’s proof in its laches defense
must show that plaintiff had knowledge of defendant’s use of its marks, that plaintiff inexcusably delayed in taking action with respect thereto, and that defendant will be prejudiced by permitting plaintiff inequitably to assert its rights at this time.
Obviously, whether the claim is sufficient to bar relief, “ ‘depends upon a consideration of the circumstances of each particular case and a balancing of the interests and equities of the parties.’ ”
Relying primarily on language in early Supreme Court cases, however, plaintiff argues that laches is never a defense to an action seeking an injunction — only to a claim for an accounting.
The Supreme Court itself, however, has repeatedly upheld the defense in an injunctive action
and the lower courts, explicitly and implicitly, have rejected the position urged by plaintiff.
Thus, “[wjhere a person entitled to exclusive use of a trademark is guilty of unreasonable delay in asserting his rights against an infringer or junior user, ... a court of equity has the discretionary power, after weighing the respective interests of the parties, to deny injunctive relief or an accounting.”
But it is equally true that “the courts will more readily deny the dilatory plaintiff an accounting than an injunction.”
A. Knowledge
Little need be said about the Feuyo approach to Suarez in the early 1940’s. Whether or not the offer was in fact made, which itself is questionable, there has been no showing that Menendez Garcia had any knowledge of Suarez or Carl Upmann at that time, much less that they authorized anyone to offer to purchase the latter from the former.
Suarez’s approach to Menendez and Menendez Garcia’s filing of opposition proceedings at most can be said to indicate that Menendez Garcia may have been aware that someone was attempting to claim rights to the marks Carl Upmann and Upmann’s Repeater. But they do not demonstrate that there was any awareness on plaintiff’s assignor’s part of any sales with either mark which would justify the seeking of injunctive relief.
Indeed, Garcia’s testimony was to the contrary and, as noted above, defendant offered no evidence other than Suarez’s testimony to establish that there were any sales of which to be aware. Similarly, in the 1966 deposition of Suarez, although he recounted his entire history in the cigar business, including his involvement with Upmann & Suarez and his own business, Suarez also testified that he stopped manufacturing either brand in 1962 or 1963 when he sold whatever stock he had on hand to Zelick Gimelstein. There was no showing that there were then any sales with the marks or that plaintiff knew or should have known of any. Indeed, after observing Suarez’s demeanor and considering the totality of testimony, I am persuaded that, aware of the valuable good will which attached to the trade name and mark H. Upmann, Suarez deliberately engaged in a program to simulate the H. Upmann name and then to get the owning interest to buy him off — a variant of the strike suit — failing which he then sold his interest in Carl Upmann and Upmann’s Repeater to the defendant’s predecessor.
But even assuming that plaintiff’s predecessor did have sufficient knowledge of the Carl Upmann or Upmann’s Repeater marks in 1957 when an agent, in the name of Menendez Garcia, filed opposition proceedings to defendant’s marks,
it cannot be said that its failure to act further at that time was inexcusable. Not long after that proceeding was commenced, the Castro takeover drove the Menendez Garcia organization to the Canary Islands. The expenditure of time and capital required to rebuild the business necessarily caused attention and energy to be focused there and away from any alleged infringing activities in this country. Moreover, it was only in 1973, after prevailing at trial and on appeal in the bitterly contested and extended litigation with the Cuban government and others,
that plaintiff was even assured it still had a mark to protect.
Indeed, that very litigation, which extended over a period of more than ten years, establishes that plaintiff was a vigilant defender of its rights. Under the circumstances, whatever delay may be charged to plaintiff in asserting its rights was certainly excusable. Moreover, mere delay does not alone constitute laches;
to interpose a successful defense, an alleged infringer must show more.
B. Prejudice
Defendant’s sales, even in that portion of time for which evidence was introduced, were never extensive. That, of course, does not mean that plaintiff was free to disregard defendant with impunity until such time as defendant’s efforts made the threat sufficiently immediate to warrant action.
But until 1972, defendant did no advertising; after that date and until 1974, it advertised only intermittently in trade journals. And until 1974, defendant did virtually the same amount of annual business.
Obviously, the defense of laches requires more by way of showing prejudice than the simple fact that the business continued during the period of delay.
The year 1974 marks the first real rise in defendant’s sales and a slight increase in its advertising, which, however, was still limited to the trade journals. But even were the Court to accept defendant’s apparent suggestion that the period from 1974 to 1977 would constitute sufficient delay for laches and that the rise in sales would demonstrate sufficient prejudice for laches,
defendant’s other activities in that period and earlier, to which the increase in sales is more properly attributable than to added advertising, preclude defendant’s assertion of that defense.
C. Good Faith
“Estoppel by laches is not available as a defense to a defendant who intended the unfair competition,”
and thus “[i]n asserting the defense of estoppel the defendant should be required to establish his own good faith.”
While an infringer claiming laches need not be in total igno
ranee of another’s mark,
it must be able to demonstrate the absence of any intent to confuse and deceive the public;
there must be' a lack of evidence showing a scheme to “foist upon the public the [products] of the defendant as those of” the plaintiff.
Defendant has not met its burden. Indeed, the evidence points to the opposite conclusion: defendant stopped just this side of actually claiming to be the prior manufacturer of plaintiff’s cigar.
A 1972 brochure for the Carl Upmann and Upmann’s Repeater cigars contained, as described by Gimelstein, a “little story,” which began with the following: “Fine Havana cigars are not really gone, they have just moved to Honduras for the Duration.” It goes on to describe the cigars as being made by “Cuban expatriates experts” and assures that they will “please the most discriminating smoker and relieve the disappointed consumer who longs for fine Havana cigars.” Carl Upmann cigars were never manufactured in Havana; their manufacturing was moved from Tampa to Honduras, and the move had nothing to do with the “Duration.” This “little story” could only be designed to suggest to those familiar with Menendez Garcia and its products, that Carl Upmann, “hand-made by Cuban expatriates experts,” was, “for the Duration” the authorized substitute for the H. Upmann cigar. In 1974, although changing the brochure somewhat, the legend still began, “Fine Havana cigars are alive and well in Honduras.”
The year 1974, with the corporate name changed to Upmann International, Inc., also marked the beginning of defendant’s more active encroachment on plaintiff’s preserve. First, rather than perpetuating the slight distinction existing between the two companies’ marks, defendant sought to blur them completely by removing the only distinctive features of its own — the Carl preceding or the Repeater following — and then use the word Upmann alone. Second, even more egregious and demonstrative of lack of good faith, is defendant’s effort to have cancelled — on precisely the same ground which had been rejected in the litigation with the Cuban government and others,
that the marks were abandoned — H. Upmann and two other marks. Obviously, if the marks had been abandoned there would be no bar to defendant’s use, providing, of course, it did not attempt to pass the cigars as coming from their original Cuban manufacturers. Equally obvious, however, is that the owners could have been discovered and the vitality of the marks ascertained by simply checking the Patent Office file and writing to the owner listed therein; there was no call for defendant to file cancellation proceedings.
That the proceedings were filed along with defendant’s other actions in this case, indicates an attempt, in effect, to corner the market on the Cuban cigar names. Gimelstein testified that these “names mean a lot in this industry.” Gimelstein also knew that the public tended to confuse his cigars with plaintiff’s — in fact, he had so sworn in defendant’s petition to cancel the H. Upmann mark.
If it succeeded in getting H. Upmann out of the way, defendant would be the one and only Upmann left, and would be free to trade on the good will that H. Upmann had enjoyed — a calculated effort to appropriate the prior user’s mark and good will. Defendant has tried to move its name and mark as close as possible to what it perceived to be the legal line, rather than keeping its mark and use distinct and separate; its misperception of where that line lies, evidencing as it does an intent to confuse and to deceive the public,
prevents it from asserting laches in this case,
even if it could prove the defense, which as indicated above, it cannot. But defendant argues that its use cannot be enjoined for its marks are incontestable.
Ill
Having filed the prescribed affidavits under Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058, 1065, defendant contends that its marks Carl Upmann and Upmann’s Repeater are incontestable and their use cannot be enjoined. This argument, however, presumes that defendant purchased a mark which did not infringe upon any existing prior to its registration and that it used its mark in good faith. Neither presumption is correct.
Section 15 of the Lanham Act, 15 U.S.C. § 1065, provides in pertinent part that a mark registered and supported by the proper affidavits is incontestable
except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use'of a mark or trade name continuing from a date prior to the date of the publication under this chapter of such registered mark.
Plaintiff’s mark was used nationwide prior to 1954 when defendant’s marks were registered. As such, defendant’s marks are not incontestable as against that of plaintiff for, since defendant’s use infringes plaintiff’s valid common law rights obtained long prior to defendant’s registration,
it has no shield of incontestability in a suit by plaintiff to enforce that mark.
That defendant’s use may be enjoined by plaintiff, however, does not alone mean that the marks may be cancelled.
But even a so-called “incontestable” mark may be cancelled and its use enjoined when the provisions of Section 14(c), 15 U.S.C. § 1064(c) are satisfied.
Under that section a mark is subject to cancellation “at any time ... if the registered mark is
being used by . the registrant so as to misrepresent the source of the goods in connection with which the mark is used.”
As stated above, the defendant here has blatantly misused these marks, attempting, via its brochures and efforts to procure the use of Upmann alone and to prevent plaintiff’s continued use, to blur whatever distinctions exist between the parties’ products, and trade upon the renown and reputation of plaintiff. Indeed, this effort to confuse the public extends to the packaging of the cigars themselves: while defendant’s mark for Carl Upmann as registered is written in all capitals arranged horizontally, as used on its cigar boxes, the word Carl is in script and the word Upmann, emphasized in bold capital letters, is in an arc similar to that used by plaintiff. Defendant, by misusing its marks and encouraging the public to recognize its products as those of plaintiff, cannot claim that the marks are incontestable or protect them from cancellation.
IY
There remain but a few incidental issues to be decided and the appropriate relief to be granted. Defendant’s plea that the Court cancel plaintiff’s mark is denied. As our Court of Appeals has held, the fact that plaintiff was intervened by the Cuban government and thus prevented from exporting H. Upmanns to this country until recently does not constitute an abandonment of the mark.
Similarly, defendant’s argument that plaintiff misrepresents the source of their product must be rejected. Each box of cigars made by CIT contains a brochure explaining the Menendez Garcia company’s leaving Cuba and establishing itself in Las Palmas, Canary Islands. Moreover, given the wide publicity attending the Cuban boycott and the return of the non-Cuban H. Upmann, it is doubtful whether “the discriminating smokers who bought cigars bearing these trademarks, were not fully aware that Cuban cigars and Cuban tobacco were no longer obtainable in this country and that the cigars they bought . were not made of Cuban tobacco.”
Finally, defendant’s charge that plaintiff has debased the quality of its goods is spurious. It is sufficient to note: (1) the management of the Canary Islands company is in large measure made up of former Cuban employees or those trained by them; (2) plaintiff’s quality control is impressive as is its fifteen-year effort to develop a cigar worthy of bearing the H. Upmann name; and (3) as our Court of Appeals has stated with respect to this mark, it cannot be assumed that “the American public would be deceived if the marks were now used on a high-quality non-Cuban tobacco.”
In sum, defendant is enjoined from continued use of the marks Carl Upmann or Upmann’s Repeater, and the use of Upmann alone as a trademark or as part of its corporate name. Registrations numbered 648,113 and 648,144 for the marks Carl Upmann and Upmann’s Repeater, respectively, are ordered cancelled.
The foregoing shall constitute the Court’s Findings of Fact and Conclusions of Law. Judgment upon notice may be entered accordingly.