Polyglycoat Corp. v. Environmental Chemicals, Inc.

509 F. Supp. 36, 214 U.S.P.Q. (BNA) 52, 1980 U.S. Dist. LEXIS 15795
CourtDistrict Court, S.D. New York
DecidedDecember 22, 1980
Docket80 Civ. 6435 (RWS)
StatusPublished
Cited by3 cases

This text of 509 F. Supp. 36 (Polyglycoat Corp. v. Environmental Chemicals, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Polyglycoat Corp. v. Environmental Chemicals, Inc., 509 F. Supp. 36, 214 U.S.P.Q. (BNA) 52, 1980 U.S. Dist. LEXIS 15795 (S.D.N.Y. 1980).

Opinion

OPINION

SWEET, District Judge.

This is an action for alleged trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114,1125, as well as trademark dilution under state law, 1 arising out of the marketing and advertisement by defendant Environmental Chemicals, Inc. of an automotive silicone paint finish remover called POLYCRACKER. Plaintiff Polyglycoat Corporation manufactures and sells, among other things, the leading polymer silicone paint finish trademarked POLYGLYCOAT. On this motion for a preliminary injunction pursuant to Fed.R.Civ.P. 65 plaintiff challenges only the appropriation of the POLYGLYCOAT mark on the POLYCRACKER label and in advertisements therefor. The motion came on for argument on November 14, 1980. On the basis of the findings of fact and conclusions of law which follow, the motion is granted in part and denied in part. 2

Plaintiff is in the business of manufacturing and selling a protective paint finish sealant for automobiles, a variety of other automotive car products, a textile protection product and a vinyl protection product, all under the tradename POLYGLYCOAT. The trademark POLYGLYCOAT is registered with the United States Patent Office by plaintiff for “protective coating and sealant for automotive finishes.” 3 In 1979, sales of POLYGLYCOAT paint finish sealant were approximately $50 million, about half of the company’s total sales. POLYGLYCOAT, is carried, for the most part, by new car dealers and is applied to new cars by the dealer as an extra at the request of the customer. The product is advertised extensively in all media both to dealers and car consumers, with most advertising aimed at the latter group. The company’s advertising budget for 1979 was approximately $7 million. POLYGLYCOAT is said to be the pioneer auto paint finish sealant and the leader among the 40-50 “poly” sealants on the market, with a reputation for high quality. It is guaranteed as a protective coating against weather-induced deterioration and reportedly can be removed at auto body repair shops only with difficulty.

Defendant recently developed POLY-CRACKER, allegedly to fill a need for a product that can easily remove POLYGLYCOAT and similar sealants in preparation for auto body repair and refinishing work. Defendant inaugurated its marketing campaign with a two-page advertisement (appended to the opinion) in the October, 1980 edition of Auto Body Repair News, a trade journal. POLYCRACKER has since been distributed to auto body repair shops throughout the country. The words “Polyglycoat ™ Remover” appear conspiciously on the POLYCRACKER label, one page of the ad consists solely of the bold-lettered statement “WIPE AWAY POLYGLYCOAT ™”, and the body of the ad contains such statements as “There’s nothing more troublesome for auto body shops than silicone finishes like Polyglycoat” and “Take off Polyglycoat with the wipe of a cloth.” As of the date of argument defendant claims to have manufactured $180,000 worth of POLYCRACKER and sold $35,000 worth (valued at defendant’s own cost). POLY-CRACKER is being manufactured and sold without license from or the consent of plaintiff. Plaintiff does not at present manufacture an auto paint finish sealant remover.

Plaintiff alleges that defendant’s use of the POLYGLYCOAT mark in the POLY- *38 CRACKER label and advertisements is likely to “confuse the consumer public into believing that said consumers are purchasing and/or obtaining a product marketed and sold by plaintiff and associated with plaintiffs POLYGLYCOAT trademark” and to “dilute the ... strength of the POLYGLYCOAT trademark which has been extensively advertised worldwide and which has become associated with plaintiff’s high quality automotive care products.” 4 Defendant claims that the promotion of POLYCRACKER causes no confusion since it is a complementary, not a competing, product, and since it is being marketed for use exclusively in the auto body repair business and advertised in an appropriate trade journal. Additionally defendant asserts that despite the existence of the POLYGLYCOAT trademark, the word has become the generic term in auto body repair circles for all polymer silicone paint finish sealants.

The standard governing motions for a preliminary injunction in this circuit was restated in Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206-07 (2d Cir. 1979) (“Cheerleaders?’):

A preliminary injunction is proper where the plaintiff establishes his possible irreparable harm and either (1) probable success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in movant’s favor.

See also Carey v. Klutznik, 637 F.2d 834, at 838 (2d Cir. 1980); Playboy Enterprises v. Chuckleberry Publishing, Inc., 486 F.Supp. 414 (S.D.N.Y.1980) (“Playboy”).

Likelihood of success on the merits of a claim such as plaintiff’s here depends on “the likelihood that the plaintiff’s mark is valid, is worthy of protection, and is being infringed by the defendant.” W. E. Bassett Co. v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966). There is no dispute as to the valid registration of the mark. See note 3, supra, and Playboy, supra, at 419. The likelihood of public confusion within the meaning of 15 U.S.C. §§ 1114 and 1125 then determines whether the POLYGLYCOAT mark is worthy of protection and is being infringed. Confusion would occur if consumers were led to believe that plaintiff actually manufactured POLYCRACKER or otherwise sponsored or approved it, or if defendant gained unfair economic advantage from use of the mark. See Cheerleaders, supra, 204-05; Playboy, supra.

A variety of factors is to be considered in determining whether such confusion is likely to result from defendant’s conduct, including the strength of plaintiff’s mark, the degree of similarity between plaintiff’s mark and the allegedly infringing usage, the degree of similarity between the products, the purpose of defendant in using the mark, and evidence of confusion. See Scarves by Vera, Inc. v. Todo Imports Ltd. (Inc.), 544 F.2d 1167, 1173 (2d Cir. 1976); Playboy, supra.

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509 F. Supp. 36, 214 U.S.P.Q. (BNA) 52, 1980 U.S. Dist. LEXIS 15795, Counsel Stack Legal Research, https://law.counselstack.com/opinion/polyglycoat-corp-v-environmental-chemicals-inc-nysd-1980.