Case Briefs

Champion Spark Plug Co. v. Sanders

Case(s): Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947)

Facts: Champion Spark Plug Co. (“Petitioner” or “Champion”) is a manufacturer of spark plugs which it sells under the trademark “Champion.” Sanders (“Respondent” or “Sanders”) collects the used plugs, repairs and reconditions them, and resells them. Respondent retains the word “Champion” on the repaired or reconditioned plugs. The outside box or carton in which the plugs are packed has stamped on it the word “Champion,” together with the letter and figure denoting the particular style or type. They also have printed on them “Perfect Process Spark Plugs Guaranteed Dependable” and “Perfect Process Renewed Spark Plugs.” Each carton contains smaller boxes in which the plugs are individually packed. These inside boxes also carry legends indicating that the plug has been renewed. But Respondent’s business name or address is not printed on the cartons. It supplies customers with petitioner’s charts containing recommendations for the use of Champion plugs. On each individual plug is stamped in small letters, blue on black, the word “Renewed,” which at time is almost illegible.

District Court and Second Circuit Decisions

Champion Spark Plug filed suit against Sanders, alleging infringement of its trademark and unfair competition.  The U.S. District Court for the E. D. of New York found that Respondent had infringed the trademark. It enjoined Sanders from offering or selling any of Petitioner’s plugs which had been repaired or reconditioned unless (a) the trademark and type and style marks were removed, (b) the plugs were repainted with a durable grey, brown, orange, or green paint, (c) the word “Repaired” was stamped into the plug in letters of such size and depth as to retain enough white paint to display distinctly each letter of the word, (d) the cartons in which the plugs were packed carried a legend indicating that they contained used spark plugs originally made by petitioner and repaired and made fit for use up to 10,000 miles by respondent company. The District Court denied an accounting.

The Court of Appeals for the Second Circuit held that Respondent not only had infringed Petitioner’s trademark, but also was also liable for unfair competition. It likewise denied an accounting, but modified the decree in the following respects: (a) it eliminated the provision requiring the trademark and type and style marks to be removed from the repaired or reconditioned plugs; (b) it substituted for the requirement that the word “Repaired” be stamped into the plug, etc., a provision that the word “Repaired” or “Used” be stamped and baked on the plug by an electrical hot press in a contrasting color so as to be clearly and distinctly visible, the plug having been completely covered by permanent aluminum paint or other paint or lacquer, and (c) it eliminated the provision specifying the precise legend to be printed on the cartons, and substituted it for a more general one.

Supreme Court Decision

On appeal, SCOTUS found that adequate disclosure by the product’s restorer, such as through disclosures that label the second-hand good as “used” or “repaired,” can constitute full disclosure of the product’s origins, thereby making consumer confusion unlikely.