to safeguard the consumer by helping him get what he thinks he wants. The method starts, therefore, with placing oneself in the position of a purchaser. One should look at the plaintiff's trade mark to obtain a general impression, the impression that would be carried in the memory, and then to observe, still as a buyer, the defendant's mark to determine if it is likely to be mistaken for this 'memory trade mark' of the plaintiff.
"Under such a test we conclude that the defendant's title 'American Aviation' will not, in all probability, be confused with the plaintiff's trade mark, 'AVIATION'."
The court went on to state the differences in the appearance of the two names, in support of its conclusion that confusion between them would probably not result. The court continued on page 295 of 117 F.2d:
"The plaintiff in addition, has followed the other, more reliable method of showing probable confusion by submitting evidence that purports to reveal disorder in the mind of the purchasing public. Upon examination this evidence proves to be spotty, and for the most part manifests the mistaking of personnel in the two publishing companies. Some of it reveals errors in addressing letters. Both types of mistakes are often made even in connection with old, well established concerns. It would be well within our everyday experience to find a person rather conversant with periodicals who forgot whether 'John Jones' was associated with 'The Saturday Evening Post' or with 'Collier's' and whether the home office of the latter was New York or Philadelphia. A publisher though he has a registered trade mark cannot be protected from all of the inadequacies of human thought and memory. We believe that the record shows only one instance of a person who ordered the defendant's magazine while meaning to place a subscription with the plaintiff. And this was a renewal subscription by a clerk of an Embassy in a foreign country. Probable confusion cannot be shown by pointing out that at some place, at some time, someone made a false identification. The plaintiff did not show one instance of a newsstand purchaser receiving the magazine he did not intend to buy. Under both methods of determination, we conclude, without hesitation, that the defendant's title does not infringe the plaintiff's registered trade mark."
Although the court in the cited case also held that the plaintiff's trademark was not arbitrary or fanciful, but descriptive, nevertheless the foregoing was one of the bases of its decision. The language has been cited because it bears upon the case sub judice, especially in its discussion of the testimony of the instances of confusion, and the court's use of both methods to determine possibility of confusion, comparison of the names and consideration of testimony.
Upon the other cause of action in the McGraw-Hill case, the charge of unfair competition, the court went on to say (page 296 of 117 F.2d): "Another cause of action is alleged by the complaint. It is the charge of unfair competition. Unfair competition in the trade name field is not concerned with intent or plan; it is enough if the acts of the defendant in light of the plaintiff's reputation result in an unfair benefit to the former. To constitute unfair competition in respect to a trade name, two elements must be present. The name must have acquired a secondary meaning or significance that identifies the plaintiff; the defendant must have unfairly used the name or a simulation of it against the plaintiff."
After deciding that it was "dubious" whether it could be found that the plaintiff has acquired a secondary meaning or significance for its title "Aviation", the court held that, even assuming that the term "Aviation" had acquired a secondary meaning for the plaintiff, nevertheless the difference in the appearance of the two magazines was such as to negative the charge of unfair competition, and said specifically (page 297 of 117 F.2d) that no "palming off" by the defendant had been shown nor had any unfair practices on the part of the defendant been disclosed.
I have discussed rather extensively the Mc-Graw Hill case, supra, because it is very similar to the case at bar. The evidence in the latter is absolutely barren of any testimony that the defendant has attempted to "palm off" its whiskies as those of the plaintiff. The labels of the contending parties are so different that no one could possibly mistake one for the other. There is nothing in the record which points to any unfair practice on the defendant's part, such as is necessary to sustain the charge of unfair competition or show that the defendant has "used the name [i.e., plaintiff's trade name] or a simulation of it against the plaintiff". And finally, as I have already indicated, I do not consider that the two names, Y.P.M. and PM, are so confusingly similar or apt to cause such confusion among the trade or public as to sustain the plaintiff's charge of trademark infringement.
It may be mentioned that Mr. Margulis, a witness for the plaintiff, testified that in his opinion the drop in sale in plaintiff's whiskey, occurring subsequent to the use of PM by the defendant, was caused by the extensive advertising of the defendant's brands; but this is opinion merely from an interested witness, and no cogent grounds for the opinion are disclosed by the testimony. Moreover, the testimony shows that the defendant's sales also dropped after its adoption of the enlarged initials PM.
According to plaintiff's testimony it sold 102,329 cases of Y.P.M. whiskey from April, 1935, to June 30, 1940, of which 93 per cent was sold in Pennsylvania, approximately 4 per cent in New Jersey, 2 per cent in New York, and one-half of one per cent in Delaware, the balance being sold in the District of Columbia, and half a dozen other States.
The 93 per cent sold in Pennsylvania of the plaintiff's total sales, as stated by the plaintiff, would amount to 95,248 cases. However, the Pennsylvania Liquor Control Board (the only legal outlet in Pennsylvania) showed that it sold less than 61,000 cases of Y.P.M. liquor during the July, 1935 to June 30, 1940 period.
Total sales of the defendant's brands by the Pennsylvania Liquor Control Board during the comparable 5-year period were 69,487 cases. The defendant's sales throughout the United States from December, 1934, to July, 1940, totaled 975,000 cases.
Apropos of the plaintiff's contention that its sales showed a sharp decline after the defendant launched its advertising campaign of PM brands at the close of 1938, an analysis of its sales in Pennsylvania (since that is its principal market) in comparison with the defendant's PM DeLuxe for the comparative period is most interesting. (There were no sales of any of the defendant's other brands in Pennsylvania after 1936.)
Pennsylvania sales Y.P.M.
1938 20,783 cases
1939 12,466 cases
1940 (to June 30) 5,277 cases
Pennsylvania sales PM DeLuxe
1938 10,658 cases
1939 7,220 cases
1940 (to July 30) 4,500 cases
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