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Dawn Donut Co. v. Hart's Food Stores, Inc - 267 F.2d 358 (2d Cir. 1959)

Rule:

15 U.S.C.S. § 1072 of the Lanham Act provides that registration of a trademark on the principal register is constructive notice of the registrant's claim of ownership. Thus, by eliminating the defense of good faith and lack of knowledge, § 1072 affords nationwide protection to registered marks, regardless of the areas in which the registrant actually uses the mark. 15 U.S.C.S. § 1114 of the Lanham Act sets out the standard for awarding a registrant relief against the unauthorized use of his mark by another. It provides that the registrant may enjoin only that concurrent use which creates a likelihood of public confusion as to the origin of the products in connection with which the marks are used. Therefore, if the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets, with no likelihood that the registrant will expand his use into defendant's market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user's use of the mark.

Facts:

Plaintiff, which was a wholesale distributor of doughnuts and other baked goods, filed a complaint for infringement of its federally registered trademarks under the Lanham Trade-Mark Act. Defendants filed a counterclaim to cancel plaintiff's federal registrations. Plaintiff had registered the mark "Dawn" and "Dawn Donut." Plaintiff sought to enjoin defendant from using the mark "Dawn" in connection with its retail sale of baked goods within a specified area of New York. The federal district court dismissed the complaints, and the parties appealed.

Issue:

Was plaintiff wholesale distributor of baked goods under its federally registered trademarks entitled to the protection of the Lanham Trade-Mark Act to enjoin defendant from using its concurrent use of the mark "Dawn" in connection with its retail sale of baked goods?

Answer:

No.

Conclusion:

The court of appeals affirmed the dismissal of plaintiff's complaint because there was no likelihood of public confusion from the concurrent use of the mark in connection with retail sales of doughnuts and other baked goods in separate trading areas, and because there was no present likelihood that plaintiff will expand its retail use of the mark into defendant's market area. Further, the court affirmed the dismissal of defendants' counterclaim and the denial of an injunction against defendants. Further, the court found that there was no present likelihood that plaintiff would expand its retail use of the mark into defendants' market area. With respect to defendants' counterclaim, the court concluded that plaintiff did not abandon its federal registration rights and that therefore, plaintiff was not estopped by reason of laches from enforcing its exclusive right to use its registered trademarks in defendants' trading area.

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