20th Century Wear, Inc. v. Sanmark-Stardust Inc.

During the energy crisis of 1973, the United States government encouraged energy savings and energy conservation. Part of the national campaign focused on the use of warm winter clothing to allow Americans to lower the temperatures in their homes and conserve energy. The US Patent & Trademark Office accepted for registration the trademark “Cozy Warm ENERGY-SAVERS” from a wholesaler of women’s pajamas and nightgowns, 20th Century Wear, Inc. (Twentieth Century) (plaintiff). Twentieth Century marketed its women’s pajamas with a tag insert that read “Cozy Warm ENERGY-SAVERS” and included the trademark notice. A clothing dealer, Sanmark-Stardust Inc. (Sanmark) (defendant) subsequently sold women’s pajamas and nightgowns with a tag insert that read “Cozy Warm CONSERVES-ENERGY.” The writing type used by Sanmark was virtually the same as Twentieth Century’s in size, style, and format and even used a hyphen that was grammatically unnecessary. Twentieth Century filed suit against Sanmark for trademark infringement in violation of the Lanham Trade-Mark Act, claiming that Sanmark imitated the registered trademark in a way that was likely to cause consumer confusion. The district court found that Twentieth Century’s trademark “Cozy Warm ENERGY-SAVERS” was a suggestive term that required imagination, thought, and perception to reach a conclusion as to the nature of the goods, rather than a descriptive term that immediately conveyed an idea of the goods’ characteristics. The district court determined that the trademark was entitled to protection without proof of a secondary meaning associated with the source of the product. The district court held Sanmark liable for trademark infringement under the Lanham Trade-Mark Act. Sanmark appealed.