e. Knowledge of Pitt.
20. Prior to December, 1980 Pitt never objected to Champion's selling soft goods bearing Pitt insignia. In June, 1981 Pitt asked Champion to execute a license agreement requiring Champion to pay a $ 100 license fee and a 6% royalty on sales of soft goods bearing Pitt insignia. Champion refused.
21. It is inconceivable that persons in authority at Pitt did not know that Champion soft goods, marked with various Pitt insignia, were being sold at retail outlets other than the Pitt book store. During the 1960's (when these items were not on sale at the Pitt book store), the Pitt News, the campus newspaper, carried advertisements for Shea's Sporting Goods and other merchants offering soft goods for sale bearing Pitt insignia.
22. As noted earlier, Champion had begun selling its soft goods to Shea's almost immediately following World War II, in or about 1946. The soft goods were displayed in the windows and on the shelves of Shea's.
23. From 1950 to the present, Champion has printed catalogs which portrayed the full line of Champion products, including goods with the Pitt insignia. These catalogs were sent to the campus book store, as well as to university book stores and non-university affiliated stores across the country.
24. From the time Pitt began its sale of soft goods bearing the Pitt insignia, Pitt students were continuously wearing these T-shirts and other sports and leisure wear to classes and around the campus and local area generally. From 1960 onward, since Pitt knew these products were no longer being sold in its main book store, it was, or should have been, on notice that they were being sold elsewhere.
f. Reliance by Champion.
25. Champion has borne the risk of building the insignia soft goods business. Through the years, Champion's salesmen have called on and tried to enlist drugstores, men's wear stores, variety stores and book stores as outlets for its soft wear.
26. Champion maintains quality control on the goods that it manufactures and distributes, with respect to both the materials involved and the imprinting process.
27. Champion has an extensive creative art department for the development of graphics and designs that are used to respond to competitive pressures for new fashion requirements. Champion artists have developed the designs over the years and are constantly modifying them to meet consumer demands.
g. Lack of Evidence of Fraud.
28. Champion's labels and packaging clearly identify Champion as the source and origin of the goods. Champion's trademarks are well-known and the goodwill connected therewith has been built up over the years of Champion's existence.
29. For many years Champion's marketing of soft goods containing insignia or other identification of colleges or universities has been presented as a total line.
30. Champion has built up substantial goodwill in the business of selling soft goods bearing college or university insignia. Champion has a sales force of between 100 and 125 salesmen who serve more then 10,000 accounts.
31. Champion's products all conspicuously bear the Champion label on the neck.
32. Champion has for many years sold its product with the Pitt insignia through the Pitt book store (except for the period 1960-1970).
33. Champion has marketed its goods with the Pitt insignia openly and notoriously in the Pittsburgh area, and there is no evidence of intent to confuse the public as to source or origin.
34. Champion has marketed its goods at trade shows sponsored by the National Association College Stores, which the Director of Pitt's book store attended.
35. Pitt introduced some testimony at trial through Jay McKenzie, a Pittsburgh retailer, that some unidentified person, who answered the telephone at Champion, had advised him that Champion did, indeed, have a license to use Pitt insignia on its soft goods. Champion personnel denied this, and we find the testimony under these circumstances not to be relevant to the issue of fraudulent concealment by Champion.
h. Senior Usage.
36. Pitt had soft goods marked with the word "Pitt" prior to the establishment of Champion as a corporation in the nineteen twenties.
37. The impetus for the use and large scale selling of soft goods with Pitt insignia came with the patent of the silk screen process by Champion and the assignment of Mr. Friedland as Champion salesman in the Pittsburgh area.
Conclusions of Law
1. This Court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331(a), 1332(a)(1) and (c), 1338(a) and (b), and the principle of pendent jurisdiction.
2. In a trademark infringement action, the defense of laches is established, and a plaintiff is entitled to no relief where there has been: (1) a long period of unexcused inaction on the part of plaintiff, (2) open and notorious use by the defendant of the allegedly infringing trademarks, and awareness by the plaintiff of such use, (3) reliance by the defendant to its detriment on the inaction of plaintiff, and (4) lack of evidence that the initial use by defendant of the trademark was fraudulent. See Anheuser-Busch v. DuBois Brewing Co., 175 F.2d 370 (3d Cir. 1949), cert. denied, 339 U.S. 934, 70 S. Ct. 664, 94 L. Ed. 1353 (1950).
3. The principle of laches bars plaintiff's request for an injunction and for an accounting under the Lanham Trademark Act, 15 U.S.C. § 1125(a) (1946).
4. The principle of laches also bars plaintiff's claims under state law. See Artus Corp. v. Nordic Co., Inc., 512 F. Supp. 1184, 1187 (W.D.Pa.1981) ("Pennsylvania jurisprudence with respect to unfair competition and the Lanham Act, 15 U.S.C. § 1125(a), are identical except for the federal requirement of interstate commerce, an element not here in dispute."); Consolidated Home Specialties Co. v. Plotkin, 358 Pa. 14, 30, 55 A.2d 404, 412 (1947) ("If the owner of a tradename acquiesces so long in the use of that name or in a name strikingly similar thereto that the public has in general become aware of the other's appropriation of that name and is therefore not deceived, such owner may in a proper case be treated as having abandoned his one-time property right in that name.")
An appropriate order follows.
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