Full opinion text
TABLE OF CONTENTS page I.FINDINGS OF FACT. ..100 A. The Parties. ..100 B. The Trademarks in Issue. ..101 C. CAW’s Usage of the Term At-A-Glance. ..104 1. The 2 in 1 Executive’s Calendar. ..105 2. The Success Weekly Calendar. ..105 3. The Three Months at-a-Glance Wall Calendar ..107 4. The Loose Leaf or Daily Date Wall Calendar ..107 5. No. 85 Perpetucal ® Desk Calendar Refill ... ..107 6. No. 057-00 Calmanac® Banking Calendar-..108 page II. LEGAL ANALYSIS.Ill A. The Right to the Trademarks.Ill 1. CAW Has Not Established Prior Use Under 15 U.S.C. § 1065.112 a. No Prior Trademark Rights.113 b. Lack of Continuity .115 c. Wall Calendars vs. Appointment Books or Diaries.116 2. CAW Has Failed to Prove Prior Use Under 15 U.S.C. § 1115(b)(5)... .117 B. Liability of CAW for Trademark Infringement.118 1. CAW Infringed The Incontestable At-A-Glanee ® Trademarks On And With Respect To Appointment Books And Diaries.119 a. At-A-Glance ® is a Strong Mark.121 (i). Recognition of Strength by Competitors.122 (ii). Consumer Recognition of At-A-Glance ®.122 (iii). Direct Competitors Have Refrained From Using At-A-Glance®.123 (iv). Sheaffer Eaton’s Policing of its At-A-Glance® Trademarks .124 (v). Sales and Advertising.127 b. CAW’s Mark are Identical to the At-A-Glance ® Trademarks_127 c. Competitive Proximity.129 d. Bridging the Gap.130 e. Actual Confusion.130 f. CAW’s Bad Faith.131 g. Quality of the Products.131 h. Sophistication of Relevant Buyers.131 i. Equity.131 2. CAW Has No Defense to Its Infringement On and With Respect to Appointment Books and Diaries. 132 a. CAW’s Use of “At A Glance” is Not “Fair Use”.132 (i). The At-A-Glance® Trademarks are Suggestive: CAW Has No “Fair Use” Defense.133 (ii). CAW’s Use of the At-A-Glance ® Trademarks In Connection with Appointment Books and Diaries is Trademark Use.133 (iii). CAW’s Use of the At-A-Glance ® Trademarks In Connection with Appointment Books and Diaries Is Not Good Faith “Fair Use”.133 (iv). There is No “Fair Use” Because Consumer Confusion is Likely.134 (v). CAW’s Use of “At A Glance” in Its Catalogs.134 b. CAW has No Equitable Defense with Respect to Appointment Books and Diaries.134 3. Cullman Is Not Entitled To Injunctive Relief Against CAW’s Historic Use of the AT-A-GLANCE ® Trademarks on CAW’s Products_135 III. CONCLUSION.136 OPINION AND ORDER CONBOY, District Judge: I. FINDINGS OF FACT A. The Parties Plaintiff Cullman Ventures, Inc. (“Cull-man”) is a New York corporation with its executive offices at 767 Third Avenue, New York, New York. Through its Keith Clark Division, it is engaged in the manufacture and sale in interstate commerce of a variety of diary and calendar products. See Stipulation of Undisputed Facts in Part 5 of Pretrial Order (“Undisputed Facts”) II1. Defendant Columbian Art Works, Inc., (“CAW”) is a Delaware corporation that maintains its executive offices at 5700 West Bender Court, Milwaukee, Wisconsin. It is engaged in the manufacture and sale in interstate commerce of desk and wall calendars, diaries, appointment books, and other record-keeping products. CAW does business in New York and operates a distribution facility in Newburgh, New York, which is within the Southern District of New York. Undisputed Facts ¶ 2. In this action, plaintiff alleges that defendant: (a) has infringed and diluted plaintiffs At-A-Glance ® Trademarks; (b) falsely designated the origin of its products; and (c) engaged in unfair competition, intentional deception of the public and false and deceptive advertising and acts. This action involves claims arising under the Lanham Act, specifically, Sections 15, 32, 33 and 43, 15 U.S.C. §§ 1065, 1114, 1115 and 1125, Sections 133, 349, 350, 350-d, 368-d of the New York General Business Law, and the common law. CAW defends upon the grounds that it is the prior user, that its use of the phrase “At A Glance” is not likely to cause confusion, that its use is a good faith descriptive use, and that although plaintiffs trademark registrations are valid, plaintiff has acquiesced in and is estopped to complain of defendant’s use. Plaintiff requests a judgment: a. permanently enjoining defendant from (i) using “At-A-Glance” or any variation of that phrase with a time designation {e.g., “Day-At-A-Glance”, “Week-At-A-Glance”, “A-Week-At-A-Glance”, “Two-Weeks-At-A-Glance”, “Month-At-A-Glance” or “Year-At-A-Glance”) in any form or logo {e.g., with or without capitalization or hyphenation) on any product; and (ii) using “At-A-Glance” or any variation of that phrase with a time designation (as described above) to advertise or promote any product; b. ordering the destruction of all infringing articles in defendant’s custody or control; c. awarding plaintiff three times the profits realized by defendant from the sale of infringing products; d. awarding plaintiff such damages, trebled, as it can show at trial; e. awarding plaintiff its costs of bringing this action, including reasonable attorneys’ fees; and f. granting such other and further relief as is just and proper. Defendant, by its answer, requests that the complaint be dismissed with costs, that the Court order cancellation of plaintiff’s trademark registrations, pursuant to 15 U.S.C. § 1064(c), and that defendant have and recover of plaintiff its reasonable attorney fees. By stipulation of the parties and order of the Court, dated March 7, 1989, the trial conducted on April 4, 5, 6, 10, 12, 13 and May 8 was limited to the issues of liability and entitlement to injunctive relief. It was agreed that if plaintiff prevailed, a separate trial on the issue of damages would be set for a later date. B. The Trademarks in Issue The “At-A-Glance® business” was established by Nascon Service, Inc. (“Nas-con”) in New York. As the business exists today, it consists primarily of the manufacture and distribution of bound calendar books, which are appointment books, diaries, and the refills for those books. This line of bound calendar books is identified by the At-A-Glance® trademark. Each dated product in the line is marked with the At-A-Glance ® trademark and a related trademark, such as Month-At-A-Glance ®, Week-At-A-Glance ® or Day-At-A-Glance ®. These trademarks are collectively referred to as the “At-A-Glance ® Trademarks.” The At-A-Glance ® line also includes other related products such as address books, planners and wall calendars, which are identified by the At-A-Glance ® trademark. PX 201-37, 305. The first At-A-Glance ® product was introduced by Nascon in 1934. PX 289, at 7359, 7366, 7382; PX 292, at 7452, 7459, 7503. Eaton Paper Corporation (“Eaton”) acquired Nascon in 1947 and the two At-A-Glance ® trademarks that had been registered by that time were assigned to Eaton, which later registered additional At-A-Glance ® trademarks. PX 290, at 74; PX 292, at 7483. In 1968, Textron, Inc. (“Textron”) acquired Eaton, and later merged Eaton with its' Sheaffer pen business to form the Sheaffer Eaton Division of Textron (“Sheaffer Eaton”). Frantz 276-77. The At-A-Glance ® Trademarks were assigned to Textron in 1968 which later registered the balance of the At-A-Glance ® Trademarks. Undisputed Facts ¶ 4. In August 1987, Textron sold its Sheaf-fer Eaton Division to Gefinor, Inc., which incorporated this business as a wholly owned subsidiary, Sheaffer Eaton, Inc. The At-A-Glance ® Trademarks were assigned by Textron to the newly formed Sheaffer Eaton, Inc. Undisputed Facts 114; Frantz 276-77. In February 1988, Cullman purchased the At-A-Glance ® business from Sheaffer Eaton, Inc. and the At-A-Glance ® Trademarks were assigned to Cullman. PX 288; Undisputed Facts U 4; Frantz 276-77; Hargrove 127-32. The following trademarks appear on the Principal Register of the United States Patent and Trademark Office (“PTO”): Trademark Current Reg. No. Issue Date Exhibit Number At-A-Glance ® 714411 4/25/61 PX 289 Day-At-A-Glance ® 338509 9/08/36 PX 290 Day-At-A-Glance ® 1269780 3/13/84 PX 291 Week-At-A-Glance ® 338598 9/08/36 PX 292 Week-At-A-Glance ® 1269782 3/13/84 PX 293 Month-At-A-Glance ® 634044 9/04/56 PX 294 Month-At-A-Glance ® 1269781 3/13/84 PX 295 Undisputed Facts II3. The applications for Registrations No. 338598 (PX 292) (Week-At-A-Glance®) and No. 338509 (PX 290) (Day-At-A-Glance ®) were filed January 17, 1936, claiming continuous use in interstate commerce since the early part of January 1934 and January 1935 respectively. On September 8, 1936, the registrations were issued for use on “memorandum books and calendar books.” These registrations were republished under Section 12(c) of the Lan-ham Act, 15 U.S.C. and 1062(c), in the fall of 1949. The application for Registration No. 634044 (PX 294) (Month-At-A-Glance®) was filed September 20,1955, claiming continuous use in interstate commerce since March 27, 1953. The registration was issued on September 4, 1956 for use on “memorandum books and calendar books.” The application for Registration No. 741411 (PX 289) for At-A-Glance ®, without any time designation, was filed August 19, 1960, claiming continuous use in interstate commerce since January of 1934. This registration was in block letters (as compared with the other registrations which were in logo form) and was issued on April 25, 1961. Pursuant to Section 15 of the Lanham Act, the following affidavits were filed with the PTO verifying that the At-A-Glance ®, Day-At-A-Glance ®, Week-At-A-Glance ® and Month-At-A-Glance ® trademarks were used for five consecutive years without being challenged either in Court or at the PTO: Trademark Reg. No. Section 15 Affidavit Filed Exhibit Number At-A-Glance ® 714411 9/26/66 PX 296 Day-At-A-Glance ® 338509 7/18/55 PX 297 Week-At-A-Glance ® 338598 7/18/55 PX 298 Month-At-A-Glance ® 634044 10/02/61 PX 299 These trademarks are, therefore, incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065. See Undisputed Facts 115. On April 22, 1982, Cullman’s penultimate predecessor, the Sheaffer Eaton Division of Textron, filed applications to amend their logo registrations for Day-At-A-Glance ®, Week-At-A-Glance ® and Month-At-A-Glance ®, changing the form or style of the mark from a vertical format to a horizontal format virtually identical to the present logo form. On October 12, 1982, the requested amendment to the Day-At-A-Glance ® registration was granted (PX 290); on September 28, 1982 the requested amendment to the Week-At-A-Glance ® registration was granted (PX 292); and on May 24, 1983, the requested amendment to the Month-At-A-Glance ® registration was granted (PX 294). Each of these amendments states that “[s]uch amendment has been entered upon the records of the Patent and Trademark Office and the said original registration [Nos. 338509, 338598 and 634044 respectively] should be read as so amended.” On March 13, 1984, it appears that new registrations were issued as a result of these applications for amendment. These new registrations, Nos. 1269780 (PX 291), 126978 (PX 295) and 1269782 (PX 293) have not yet become incontestable as the requisite Section 15 affidavits could not be filed prior to March 13, 1989 on account of this litigation. This is, however, of no consequence because the original registrations, as amended, are incontestable and were not superseded. During the past 55 years, At-A-Glance ® has become the “leading brand” of appointment books and diaries in the industry. H.C. Norris 628, 678; Williams 244; Har-grove 125. Wholesalers, retailers and consumers ask for the product by the At-A-Glance® name. Williams 244-47; Flanagan 258-59. The At-A-Glance ® Trademarks have always been displayed prominently on the At-A-Glance® bound calendar books, in Sheaffer Eaton’s (and now Cullman’s) catalogs, on display fixtures in retail stores, and in advertisements. For example: (a) The At-A-Glance® trademark appears on every page or on every other page of virtually all bound calendar books in the At-A-Glance ® line, and the trademarks Day-At-A-Glance ®, Week-At-A-Glance ® or Month-At-A-Glance ® appear on the cover and fly sheet, PX 201-07, 305; (b) The At-A-Glance ® Trademarks have been prominently displayed on virtually every page of the At-A-Glance® catalogs of Cullman and its predecessors, PX 208-37; (c) The At-A-Glance ® trademark is featured on display fixtures supplied by Cullman and its predecessors and used by retailers all over the country and is on the packaging for the product, PX 305, 233; and (d) The At-A-Glance ® Trademarks have been featured in magazine advertising nationally and in millions of copies of wholesalers’ catalogs, e.g., PX 407, 412. Since acquiring Keith Clark in 1976, Cull-man, through its Keith Clark Division, has been a manufacturer of a wide variety of diary and calendar products under various trademarks. Prior to 1988, Keith Clark produced dated products under the Guil-ford ®, Ever Ready ® and Work-A-Day ® trademarks. In late 1987 and early 1988, an asset acquisition was arranged whereby Cullman purchased the At-A-Glance ® business from Sheaffer Eaton, Inc. for “net book value of the assets plus $45 million” for an ultimate purchase price of about $54 million. Hargrove 127. The primary physical asset was a production facility in Pittsfield, Massachusetts where the At-A-Glance ® line was produced and distributed. Hargrove 128. This facility was comprised of the building, the land and heavy machinery and equipment. Cullman subsequently sold the facility as well as the bulk of the equipment for approximately $2 million, Hargrove 131, and integrated the production and distribution of the At-A-Glance ® line with its production and distribution organization for its other dated products. Hargrove 130. In addition, Cullman hired only two or three of the 300-350 people engaged in the manufacturing and marketing processes at Sheaffer Eaton. Hargrove 128-130. In effect, Cullman paid well over $40 million for the heart of the At-A-Glance ® business — the At-A-Glance ® Trademarks, and all that went with the At-A-Glance ® brand name, such as its strong position in the marketplace and its tremendous customer goodwill and following. Hargrove 131; H.C. Norris 750-751. In 1988, Keith Clark commenced manufacturing dated products under the At-A-Glance ® Trademarks while continuing its production under its other trademarks. C. CAW’s Usage of the Term At-A-Glance CAW (and its predecessor corporations) have manufactured calendar products for over 70 years. Undisputed Facts 116. H. Coleman Norris has been the Chief Executive Officer of CAW since 1972. Thomas W. Norris, his father, was the Chief Executive Officer of CAW from the 1930’s until 1971 and continues to serve as a director of the company. Undisputed Facts 117. Over the years and prior to Cullman’s purchase of the At-A-Glance ® business, CAW had used the term “At A Glance” on or with respect to a few of its desk and wall calendars. Cullman’s predecessors complained to CAW of CAW’s usage of the term “At A Glance” in 1938,1965 and 1976, PX 157-61, 162-66, 167-69, 171-73, but, no legal proceedings were instituted until the present action. Instead, this usage was “tolerated” by Cullman’s predecessors primarily because it was limited to a small number of wall and desk calendars which Cullman’s predecessors did not believe to be directly competitive with the At-A-Glance ® line. Frantz, 276-79, 356-57. Cullman asserts that this usage can no longer be tolerated due to the recent widespread and wholesale infringement by CAW of the At-A-Glance ® Trademarks on CAW’s 1989 Appointbook® line, a line which is in direct head-on competition with the At-A-Glance ® line. The 1989 products went on sale in late 1988 and were discovered by Cullman in early November 1988. The CAW Appo-intbooks ® listed below used the phrases “Day At A Glance,” “Week At A Glance,” or “Month At A Glance," with and without hyphens and/or block lettering, on their covers or fly sheets for the first time with the 1989 edition. These usages are not descriptive usages, but trademark usages as they are designed to grab the attention of the consumer since they are featured prominently on the products. See infra, at 132-33. These usages also copy the At-A-Glance® Trademarks word-for-word and are on products which are identical in size and function to the corresponding At-A-Glance® products listed below: CAW Item Description At-A-Glance ® Equivalent Phrase Used by CAW #280 (PX 34) monthly Appointbook ® # 70-120 (PX 201) “Month-At-A-Glance” printed on cover and fly sheet #236 (PX 33) weekly # 70-045 Appointbook® (PX 202) “Week-At-A-Glance” printed on cover and “WEEK AT A GLANCE” printed on fly sheet # 204 & 206 (PX 40, 32) # 206-00 (PX 36) daily Appointbook ® daily refill # 70-800 (PX 203) # 70-992 (PX 205) “Day-At-A-Glance” printed on fly sheet “Day-At-A-Glance” printed on first page CAW Item Description At-A-Glance ® Equivalent Phrase Used by CAW # 237-00 (PX 37) weekly refill #70-905 (PX 204) “WEEK AT A GLANCE” printed on first page #403 (PX 35) daily academic Appointbook ® # 70-807 “Day-At-A-Glance” (PX 206) printed on fly sheet #406 (PX 41) daily academic Appointbook ® # 70-807 “Day-At-A-Glance” (PX 206) printed on fly sheet # 282-00 (PX 38) monthly refill #70-921 “MONTH AT A (PX 207) GLANCE” printed on first page #285-00 (PX 39) monthly refill #70-921 “MONTH AT A (PX 207) GLANCE” printed on first page From 1924 to 1976, CAW used the words “At A Glance” on the face of only two products, the “2 in 1 Executive’s Calendar,” and the “Success Weekly Calendar.” CAW also used these words in its catalog only with respect to these and four additional products, the “Three-Months-at-a-Glance Wall Calendars,” the “Daily Date Calendar” (originally called the “Loose Leaf Calendar”), the Calmanac® banking calendar, and the Perpetucal ® desk refill. During this period, CAW was not in direct competition with Cullman’s predecessors. CAW primarily produced wall and desk calendars; it did not produce wire bound pocket diary and appointment book products that competed directly with the At-A-Glance® line. 1. The 2 in 1 Executive’s Calendar The “2 in 1 Executive’s Calendar” was sold by CAW from 1930-32. Although no specimen of this product exists, it appears, based on a picture in a catalog, that the product had the words “A Week at a Glance” printed on it. PX 49. Because the product did not sell particularly well, it was discontinued. T. Norris, 430-33, 463. 2. The Success Weekly Calendar The “Success Weekly Calendar” was first produced in 1934 for the 1935 calendar year. It was often referred to by its number, which was No. 100 (it was changed to No. C580, and now goes by No. 1252-0). It is undisputed that when first produced, the calendar had no cover sheet and the words “At A Glance” did not appear on it. T. Norris 435. CAW claims that in 1935 a cover was designed for the 1936 edition and that the phrase “A Week-at-a-glance” was printed on the cover. T. Norris 436. CAW has not, however, been able to produce a specimen of the product with the disputed words on it prior to 1965. In fact, Mr. Norris, Sr., admitted that during a period in the mid to late 1940’s to at least 1955, he had discontinued putting the words “A Week-at-a-glance” on the cover sheet. Cullman asserts that CAW did not use the words “At A Glance” on the weekly calendar prior to 1965. This assertion is supported by the following evidence presented at trial: a. The only existing specimen of the product prior to the 1965 edition is the 1955 edition, which does not have the words “At A Glance” in any form on any part of it. PX 150. b. Although they were sure that the product had “At A Glance” on it for every edition from 1936, both Thomas Norris and Coleman Norris testified that they were surprised to learn that the 1955 edition of this product did not have “At A Glance” on it. T. Norris 489-90; H.C. Norris 517. Thomas Norris, the only witness who could proffer testimony on this issue, also testified that he “could be mistaken very easily” about the years “At A Glance” was on or off this product, and that it is difficult for him to be precise about dates. T. Norris 490-91, 457. c. George P. Clayson, Vice President of Eaton Paper Company, wrote to CAW in August 1965 expressing “amazement” at finding that CAW’s Weekly Calendar had “A Week-at-a-glance” on it. PX 162. He later described this discovery as “the sudden surprise appearance of the phrase” on this product. PX 165. He also stated that we [Eaton] have not been aware that you have used the phrase, “A-Week-at-a-glance” since Eaton’s acquisition of Nascon Products, Inc. in 1947.” Thomas Norris believed that Mr. Clay-son was being truthful in these representations. T. Norris 482-84. d. Mr. Norris sent Mr. Staubach’s letter to CAW’s counsel Ira Jones with instructions to respond. But Mr. Norris did not tell Mr. Jones or Eaton that CAW had used the words “A Week-at-a-glance” or any variation thereof on the Weekly Calendar prior to 1965. PX 163; T. Norris 486-87. Mr. Jones responded to Mr. Clayson’s August 1965 letter by sending copies of the 1938 correspondence between Nascon and CAW — correspondence which made no mention of CAW’s alleged use of the words “A Week-at-a-glance” on the Weekly Calendar. PX 158-59, 164. That correspondence specifically referred only to CAW’s use of the phrase “Three Months at-a-glance” in price lists. And the one specific document referred to in the 1938 correspondence was a CAW circular from 1928, a time when CAW did not make a weekly calendar product. PX 158; T. Norris 468-72. At trial, Thomas Norris admitted that to his knowledge, “nobody from Columbian Art Works ever told anyone at Eaton that [CAW] had been using a week at a glance prior to 1965.” T. Norris 487. e.Throughout the period from 1935 to 1965, CAW referred to this product in its catalogs as the “Weekly Calendar” or “Success ® Weekly Calendar” and did not call it a “Week At A Glance” calendar. T. Norris 480. CAW began to call this calendar “A Week-at-a-glance” in its catalogs beginning with the 1986 catalog. During this same period of 1924 through 1976, CAW’s catalogs used the words “at a glance” — without the word “week” in front of them — within a sentence in the text next to illustrations of the Weekly Calendar. The catalogs for 1935 through 1940 contain this statement: “The Success Weekly Calendar is an extremely convenient accessory for the busy person who wishes to see at a glance the appointments and notations of a whole week....” The catalogs for 1941 through 1976 contain these words within a paragraph: “Appointments and notations for entire week can be seen at a glance.... ” This calendar was not a book product. It had a hole on the top and was designed to be hung on a wall. Through 1975, the pages were stapled at the top and perforated for removal after use. PX 2-9. Thomas Norris has admitted that this product was not a book product. T. Norris 492. 3. The Three Months at-a-Glance Wall Calendar Since the 1925 edition, CAW has produced a line of wall calendars which it has referred to in its catalogs (since 1936) with some variation of the words “Three Months-at-a-Glance,” e.g., “Three Months At-A-Glance Poster Calendars” and “Three-Months-at-a-Glance Wall Calendar For Office or Home.” See pages cited in Table B, No. 2. These wall calendars were sold primarily in the advertising specialty line of distribution. T. Norris 495-96. They were not sold in stationery stores. T. Norris 470-71, 495-96. Beginning in 1925, CAW referred to these advertising wall calendars in price lists with the words “Three Months At A Glance.” E.g., PX 45, at 2010. These price lists were given to CAW’s sales representatives who used the information in the price lists to sell the advertising wall calendars. T. Norris 496. The price lists had “nothing to do with” stores, and the calendars were not sold in stores. T. Norris 495-96. CAW presented no evidence that the price lists ever reached the purchasers of these products. Based on Thomas Norris’ testimony, it appears that these were wholly internal price lists. In all instances, the words “At A Glance” are preceded by the words “three months.” (Emphasis added). Furthermore, the words “At A Glance” have never appeared on this product itself. T. Norris 451; H.C. Norris 595. Moreover, the words “At A Glance” have been dropped from the name of the product; the product is now called the “Three-Month Wall Planner.” PX 149, at 33. 4. The Loose Leaf or Daily Date Wall Calendar This product is a wall calendar with a single date on each page. It is designed to be seen from a distance. The words “At A Glance” have never appeared on this product. T. Norris 459. In 1924, CAW filed a copyright application for an advertisement for this product. PX 155. The advertisement (designed to be inserted in envelopes) stated at the top of the first page: “The Date at a Glance at fifteen or at fifty feet.” The copyright was not renewed, and CAW never enforced it against anyone. CAW ceased using this envelope stuffer in 1930. T. Norris 456-57. In its catalogs, CAW originally called this product the “Loose Leaf Calendar” and subsequently called it the “Daily Date Calendar.” Prior to 1974, CAW’s catalogs used the words “At A Glance” — without the word “day” in front of them — within a sentence in the text next to illustrations of this product. The catalogs for 1935 through 1940 contain this description: “Here is the date at a glance whether from fifteen or fifty feet ...” The catalogs from 1941 through 1973 contain these words: “Large daily date easily seen at a glance from fifteen to fifty feet away ...” or “Large daily date easily seen at a glance from fifty feet away ...” See Table C. Although CAW continued to market this product after 1973 and to illustrate it in its catalog, CAW dropped the words “At A Glance” with reference to this product. Instead, CAW’s 1974 and subsequent catalogs say: “Large daily date is easy to see — from as far as 50 feet away ...” E.g. PX 123, at 2406; PX 124, at 2412; PX 125, at 242. 5.No. 85 Perpetucal ® Desk Calendar Refill For the years 1974 to 1977, CAW used the words “At A Glance” within a sentence in the text next to illustrations of this product. E.g., PX 123, at 2404; Table C at 5 (“Past, current and coming months are shown at a glance on the large daily calendar page.”). 6. No. 057-00 Calmanac ® Banking Calendar For the first time in its 1977 catalog and continuing to the present, CAW used the words “At A Glance” within a sentence in the text next to illustrations of this product. Kg., PX 126, at 2427; PX 190, at 7; Table C at 5-6 (“Allows you to determine at a glance the exact due date of loans at any time within a year’s span_”). All of the above facts indicate that for over forty years, from 1934 to 1976, CAW and Cullman’s predecessors co-existed, in Coleman Norris’ words, without any “serious direct conflict in the marketplace.” PX 168; H.C. Norris 598-600. Indeed, relations between CAW and Cullman’s predecessors had always been relatively good. As Thomas Norris, former president of CAW, testified: “Nascon was a good company, they didn’t bother us, and we didn’t bother them.” T. Norris 440. Two reasons for this lack of conflict were that CAW and Cullman’s predecessors primarily made different products and sold their products primarily through different channels of distribution. Nascon, Eaton and Sheaffer Eaton made appointment books and diaries, which they sold through gift shops, art stores, department stores and specialty shops; CAW made desk and wall calendars, which it sold through the commercial stationery and office supply channels of distribution. T. Norris 472-74, 491-93; H.C. Norris 599-600. It is also clear that during this entire forty-year period through 1976, CAW was keenly aware of the At-A-Glance ® Trademarks and the prominent use by Cullman’s predecessors of these trademarks on the At-A-Glance ® line of appointment books and diaries. PX 159; PX 168; T. Norris 445-46; H.C. Norris 597-98, 619-20, 678. The correspondence between Cullman's predecessors and CAW also indicates that aside from the “Weekly Calendar” referred to above, CAW carefully avoided uses of “At A Glance” that would confuse consumers. PX 168. Cullman’s predecessors did the same with respect to CAW’s trademarks. PX 168-70, 172-75; H.C. Norris 605-07. There was, however, a time when Eaton produced a pocket calendar called “Calendates.” CAW has a registered trademark to the word “Calendater.” U.S. Reg. No. 608339. CAW in fear of confusion in the minds of purchasers, requested that Eaton discontinue use of the word “Calendates” on the Eaton product. PX 168. The two companies resolved this dispute in cooperative fashion; Sheaffer Eaton was permitted to continue selling the products it had already gone to press on, but agreed to cease using the name after that time. PX 168-169; PX 172-174. Thus, it can be said that the companies came to the understanding that each would carefully avoid uses of terms in the other’s trademarks that would confuse customers. This understanding was set forth by CAW’s current president Coleman Norris in a March 31, 1976 letter to William Staubach, Vice President of Eaton: Contributing to the lack of [serious direct conflict in the marketplace between the two respective companies] has been the good faith efforts by the management of both companies to avoid uses of trademark terminology, labeling and advertising which are likely to confuse or deceive purchasers as to the source of our respective products. PX 168; H.C. Norris 604-08. Mr. Staubach responded in a letter: “We here at Eaton subscribe to the ‘good faith efforts’ you described in your letter ... I will do everything I can to continue our cooperative working relationship.” PX 169. It is important, at this point, to reiterate briefly the context of CAW’s usage of the words “At A Glance” at the time of this correspondence: (a) it used the words within and as part of a sentence in its catalog with respect to the Weekly Calendar, and it printed “A Week-at-a-glance” on the cover sheet of this product. PX 9,10 and 125, at 2418; (b) it included the words in its catalog with reference to its “Three Months At-A-Glance Wall Calendar.” PX 125, at 2418; and (c) it used the words within a sentence to refer to the No. 85 desk calendar in its 1974 through 1977 catalogs, see pages cited in Table C, No. 4. CAW stopped using the words “At A Glance” as part of its catalog reference to the Daily Date Wall Calendar in 1973. As discussed above, it continued to sell the product, but it did not use the words “At A Glance” with respect to it. Especially noteworthy is that, at the time of these communications, CAW had never used the words “At A Glance” with respect to any book product nor with respect to any product directly competitive with products manufactured by Eaton and sold as part of Eaton’s At-A-Glance ® line. Furthermore, CAW had never used the words on any product continuously produced (other than the Weekly Calendar since 1965) nor as part of the name of any product in a catalog or price list other than the “Three Month-at-a-Glance” wall calendars; and it had not used the words “At-A-Glance” by themselves or the words “Day-At-A-Glance” or “Month-At-A-Glance.” While their relationship remained “cooperative,” the competitive positions of CAW and Sheaffer Eaton changed shortly after this 1976 correspondence when CAW moved into the market for appointment books and diaries by introducing an extensive line of over 100 different products under the Appointbook ® trademark — a move designed to compete head to head with Sheaffer Eaton’s At-A-Glance ® line. H.C. Norris 627-29, 535-40. Both companies were now in the diary and appointment book field, a field in which the majority of the products in the At-A-Glance ® line are sold. Despite the fact that CAW and Sheaffer Eaton were now direct competitors, with the same customer base, these rivals did not abandon their “good faith efforts ... to avoid uses of [confusing and deceptive] trademark terminology.” PX 168. In fact, Coleman Norris admitted that these good faith efforts continued until recently. He testified: Q. Did those good faith efforts continue after you wrote this letter of March of ’76? A. I think they continued up to the very recent times. H.C. Norris 608. Indeed, the record bears out the fact that CAW scrupulously avoided using “At A Glance” on or with respect to any of its appointment books and diaries from the introduction of its Appointbook® line in 1977 through its 1988 edition products and its 1989 catalog. There are, however, two exceptions to this general proposition that good faith efforts prevailed during this eleven year period. Cullman suggests, and the Court agrees, that these two exceptions prove this general proposition. First, CAW put “WEEK AT A GLANCE” on the refill portion of one 1987 edition appointment book, but Coleman Norris now admits that he “missed the mark” by putting this phrase on this particular refill because the refill shows two weeks at an opening, not just one. PX 31; H.C. Norris 637. “WEEK AT A GLANCE” did not appear on the 1989 editions of this product. H.C. Norris 637-38; Table A, at 2. Second, CAW used the phrase “Week-at-a-glance” in its catalogs for the years 1987 through 1989 within a sentence next to the illustration of only one of its Appoint-books ®: the undated No. 364 Any Week Professional Planner. PX 145, at 20; PX 147, at 26; PX 148, at 22. But CAW’s catalog shows that Sheaffer Eaton did not make a product comparable to the No. 364. PX 145, at 48-49; PX 147, at 52-53; PX 148 (comparative chart at end); H.C. Norris 645-48. Thus, CAW refrained from using the words “At A Glance” in its catalogs with respect to any appointment books or diaries comparable to any books in Sheaf-fer Eaton’s At-A-Glance® line. The one usage of “At A Glance” by CAW with respect to an Appointbook ® in its catalog was with respect to a product that did not have an equivalent in Sheaffer Eaton’s At-A-Glance® line. Although Coleman Norris testified that it was “just plain old common sense” to put “At A Glance” on appointment books and diaries and that it is “the most logical thing in the world to do,” H.C. Norris 609-10, 615-16, 678-80, CAW did not use “At A Glance” on or with respect to these products during the eleven-year period when Sheaffer Eaton and CAW both made appointment books and diaries. H.C. Norris 616-622, 625-27, 659-61, 673-74, 679. Moreover, no other manufacturer of appointment books and diaries put “At A Glance” on the cover of its products, even though Mr. Norris believed it was the self-evident and logical thing to do. H.C. Norris 610-16, 662-64, 674-76. The eleven years of “good faith efforts” to avoid confusing and deceptive trademark terminology ended when Textron sold its Sheaffer Eaton Division in August 1987 and the At-A-Glance® business was acquired by Cullman in February 1988. Ten of CAW’s 1989 edition Appointbook ® products displayed the At-A-Glance ® Trademarks. PX 32-42. Books whose editions from 1978 to 1988 bore phrases such as “Daily,” “Weekly” or “Monthly” now had “Day At A Glance,” “Week At A Glance,” or “Month At A Glance” printed prominently on them. Hargrove 160-62; H.C. Norris 644-45. This was CAW first use of “Day At A Glance” and “Month At A Glance” ever on CAW products (calendars or books). H.C. Norris 688-89; Table A. And, except for one refill product in one year, PX 31, this was the first use by CAW of the four words “Week At A Glance” without the letter “A” preceding them and without a stylized script. H.C. Norris 689-95; Table A. As for the 1990 CAW catalog, which was printed in the fall of 1988, H.C. Norris 700-01, in place of textual passages referring to Appointbook ® products with terms such as “one day per page” or “one week per two-page spread,” which had been used in CAW’s 1978 to 1989 catalogs, there are numerous controversial phrases in the 1990 CAW catalog such as “Day at a Glance” and “Week at a Glance.” Compare PX 148, at 12-19, 36-37 with PX 149, at 12-19, 36-37; Hargrove 112-14, 163-68; H.C. Norris 644-45, 723-28; Table C, at 6-7. The At-A-Glance® Trademarks were also used for the first time as the titles for Appointbook ® products. PX 149, at 36-37; Hargrove 167-68; H.C. Norris 726-28; Table B, at 6. At trial, CAW attempted to show that its dramatic increase in the use of the term “At A Glance” was unrelated and merely coincidental to the sale of the At-A-Glance ® business. H.C. Norris 555, 634-35, 641, 695-96. This explanation, however, is wholly incredible. CAW realized this, and at the end of cross examination, CAW’s president Coleman Norris, finally admitted that the sale of Sheaffer Eaton “contributed” to CAW’s decision to increase the usage of At A Glance on and with respect to appointment books and diaries. H.C. Norris 748-50. He would not admit, however, that it was the purchase by Cullman Ventures, parent corporation of Keith Clark, a competitor with whom relations had been likened to an “atomic war,” H.C. Norris 682, 683-85; PX 170, that triggered the dramatic increase that ensued. Cullman argues that the timing of CAW’s introduction of “At A Glance” on the latter’s 1989 Appointbook® products strongly suggests that CAW’s actions were directly related to Cullman’s acquisition of the At-A-Glance ® line in February of 1988. This Court certainly believes, as begrudgingly admitted by CAW, that it was Textron’s sale of Sheaffer Eaton in August of 1987 to Gefinor that motivated CAW to increase its usage of the term “At A Glance” on its Appointbook® line. We also believe that the resale of Sheaffer Eaton (and the At-A-Glance ® business) shortly thereafter to Keith Clark, a fierce competitor, could not have been anything but a decisive factor as to the nature and the scope of the significant increase in usage. While denying that CAW was trying to confuse customers, Coleman Norris reluctantly admitted that he put “At A Glance” on CAW Appointbook ® line to attract new customers. H.C. Norris 729-34. Specifically, he hoped that this change in the product would result in increased sales. H.C. Norris 732. Because CAW’s Appoint-book ® line is rarely sold in the same retail store as the At-A-Glance ® line, it is a fact that there will be few, if any, side-by-side comparisons by customers. Precisely because the products are not sold together, however, it is certain that customers would be confused by the term “At A Glance” on a CAW Appointbook ®. See infra at 129-30. By placing the term “At A Glance” on the cover or first page of its products, CAW hoped to attract a customer who was going to the store to purchase an “At A Glance.” H.C. Norris 731. Because the products of the two companies are otherwise entirely similar in format and style, and with the addition of the words “At A Glance” on the cover, a customer is likely to assume he purchased an At-A-Glance ® product when he in fact received a CAW product. See infra at Part II, Section B, subsections 1(b), (c) and (h). Accordingly, the Court arrives at the inescapable conclusion that CAW was trying to improve their competitive position by trading on the name of the admitted industry leader, At-A-Glance ®, and using it on their products to attract its customers. In fact, the record indicates that, in the short term, CAW’s strategy was successful. Sales of CAW’s 1989 Appointbook ® products with “At A Glance” increased 40.2% compared to less than 23% for the whole Appointbook® line. PX 186; H.C. Norris 740. For all the foregoing reasons, the Court finds that the CAW’s use of the words “At A Glance” on its products was not in good faith pursuant to the implicit agreement of 1976 and was an intentional infringement of the At-A-Glance ® trademarks. II. LEGAL ANALYSIS A. The Right to the Trademarks The threshold question in this action is who, CAW or Cullman through its predecessors, is the first user of the words “At A Glance” in a trademark sense. We find that Cullman has the rights of the first user. As conceded by CAW, Pretrial Order Part 5, ¶ 5; Part 7,1113, the At-A-Glance ® Trademarks are “incontestable” under Section 15 of the Lanham Act, 15 U.S.C. § 1065. By virtue of Section 33(b) of this statute, the registration certificate of an incontestable trademark is “conclusive evidence of the registrant’s exclusive right to use the registered mark,” subject only to limited defenses set forth in the statute, 15 U.S.C. § 1115(b) (emphasis added); see Wrist-Rocket Mfg. v. Saunders Archery Co., 578 F.2d 727, 730 (8th Cir.1978), and those incorporated by reference such as Section 15. See 2 J.T. McCarthy, Trademarks and Unfair Competition, § 32:44 at 758 (2d ed. 1984). Because its trademarks are incontestable, Cullman is presumed, as stated above, to have the exclusive right to use them. However, before we approach the question of whether Cullman proved its entitlement to injunctive relief, it is necessary at this juncture to consider one of the three defenses asserted by CAW to this action; that CAW is the prior user. CAW states several times in its Brief that Cullman has not established “the necessary priority of trademark rights to entitle it to injunctive relief.” Def.Br. at 43, 23, 25. CAW suggests in its Post-Trial Proposed Conclusions of Law, 11113-7, 53-64, that Cullman must prove priority as part of its affirmative case and that GAW has no burden of proving prior use as an affirmative defense. These statements and suggestions misstate the law. The cases cited by CAW stand for the legal truism that priority of use is determinative of trademark rights. Def. Br. 41-43. None deals with the situation here in which a prior use is alleged to defend against a claim of infringement of incontestable registered trademarks. Under these circumstances, the statute makes clear that the presumption is that the owner of the trademark has the exclusive right to use the trademarks subject only to the specified defenses on which the defendant has the burden of proof. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 14 (2d Cir.1976). Furthermore, if proved, a Section 33 defense does “no more than destroy the conclusive evidentiary status of the registration.” 2 J.T. McCarthy, Trademarks and Unfair Competition, § 32:44, at 762-63. Thus, even if CAW met its burden of proving any of these defenses, such proof would not constitute an absolute defense to Cullman’s claim of infringement. These defenses would merely reduce the eviden-tiary status of the At-A-Glance ® registrations from “conclusive proof” to “prima facie proof” of Cullman’s exclusive right to use the At-A-Glance® Trademarks. See Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 199 n. 6, 105 S.Ct. 658, 664 n. 6, 83 L.Ed.2d 582 (1985); Quill Corp. v. LeBlanc, 654 F.Supp. 380, 384-85 (D.N.H.1987). CAW would still have the burden of rebutting Cullman’s right to exclusive use of these trademarks. See, e.g., Aluminum Fabricating Co. v. Season-All Window Corp., 259 F.2d 314, 316 (2d Cir.1958); see also 20th Century Wear, Inc. v. Sanmark-Stardust, Inc., 747 F.2d 81, 88-89 n. 8 (2d Cir.1984) (defendant has the burden of rebutting the presumption of plaintiff’s right to exclusive use of the mark by a preponderance of the evidence, cert. denied, 470 U.S. 1052, 105 S.Ct. 1755, 84 L.Ed.2d 818 (1985). As discussed below, we hold that CAW has failed to sustain its heavy burden of proof with respect to the prior use defense. 1. CAW Has Not Established Prior Use Under 15 U.S.C. § 1065 CAW attempts to defend its recent and widespread infringement of the At-A-Glance ® Trademarks on and with respect to appointment books and diaries by pointing to its minimal, sporadic historic use of the words “At A Glance” with respect to a few desk and wall calendars. CAW relies on this historic usage in asserting the “pri- or use” defense of 15 U.S.C. § 1065 as a means of contesting Cullman’s incontestable At-A-Glance ® registrations. Section 15 of the Lanham Act, 15 U.S.C. § 1065, would provide a limited defense to CAW’s infringement of the incontestable At-A-Glance ® Trademarks only if CAW established that the At-A-Glance ® Trademarks “infringe[] a valid right acquired [by CAW] under the law of any State or Territory by [CAW’s] use of [‘At A Glance’ as] a mark or trade name continuing from a date prior to the date of registration under this Act of such registered mark.” 15 U.S.C. § 1065. To establish the prior use defense, CAW must show: (1) that it acquired trademark rights under state law prior to the date of the At-A-Glance ® registrations; (2) that its use of “At A Glance” as a trademark has continued since a date prior to the At-A-Glance ® registrations; and (3) that its prior use is on products with respect to which infringement has been shown—appointment books and diaries. See Casual Corner Assoc., Inc. v. Casual Stores of Nevada, Inc., 493 F.2d 709, 712 (9th Cir.1974); Markel v. Scovill Mfg. Co., 471 F.Supp. 1244, 1249 (W.D.N.Y.), aff'd, 610 F.2d 807 (2d Cir.1979). If CAW carries this burden, then the At-A-Glance ® registrations will be contestable to the limited extent of allowing CAW to continue its prior use. See 815 Tonawanda St. Corp. v. Fay’s Drug Co., 842 F.2d 643, 646 (2d Cir.1988); Wrist-Rocket Mfg. v. Saunders Archery Co., 578 F.2d. 727, 731 (8th Cir.1978). CAW has not met and cannot meet its burden of proof on these issues. Significantly, much of CAW’s case focuses on arguments and testimony which are plainly inconsistent with the proof essential to establish the prior use defense. An example of such an inconsistency that will be elaborated on below is that CAW has continually maintained that its use of “At A Glance” is descriptive use, not trademark use, and that everyone has the “right” to use “At A Glance.” T. Norris 489; H.C. Norris 547, 783. a. No Prior Trademark Rights To sustain its prior use defense, CAW must first prove that it acquired trademark rights under state law prior to Cullman’s predecessors’ first registrations of the At-A-Glance ® Trademarks in 1936. See Marcon, Ltd. v. Helena Rubenstein, Inc., 225 U.S.P.Q. 895, 896 (4th Cir.), cert. denied, 474 U.S. 825, 106 S.Ct. 82, 88 L.Ed.2d 67 (1985); Casual Corner Assoc., supra, 493 F.2d at 712. The record is wholly devoid of any evidence on this issue, and CAW has never indicated under which state’s law it allegedly acquired trademark rights and the geographic extent of those alleged rights. To have established common lav trademark rights under state law in “At A Glance” prior to 1936, CAW must have used “At A Glance” to identify the origin of its products. See, e.g., Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir.1975); Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 255 (2d Cir.), cert. denied, 371 U.S. 910, 83 S.Ct. 253, 9 L.Ed.2d 170 (1962). Moreover, common law trademark rights would have accrued only by the affixation of the trademark to the products whose origin it identified. See Blue Bell, Inc., supra, 508 F.2d at 1267; Western Stove Co. v. Geo D. Roper Corp., 82 F.Supp. 206, 211 n. 1, 213-14 (S.D.Cal.1949). Mere advertisement of a product by use of a mark would not constitute common law trademark use. See Wrist-Rocket Mfg. Co., supra, 578 F.2d at 732; Sunbeam Corp. v. Merit Enterprises, Inc., 451 F.Supp. 571, 574 (S.D.N.Y.1978). Common law trademark rights develop when goods bearing the mark are placed in the market and followed by continuous commercial utilization. Blue Bell, Inc., supra, 508 F.2d at 1265, 1267. CAW relies on cases holding that “prior use analogous to trademark use,” in other words, prior use in advertising or catalogs, gives a party standing to oppose a registration in an interference proceeding. See Def.Br. at 50-51. Whether or not CAW would have had standing to challenge the At-A-Glance ® registrations at some point in the 1930’s or 1940’s because of its advertising, however, is not relevant to the issue here. Furthermore, even if these cases were controlling, they are not inconsistent with Blue Bell, supra, and Feathercombs, supra in that these cases stand for the proposition, inter alia, that this analogous use must be open and notorious and that it must “demonstrate an intention to appropriate the particular word or symbol as an indication of origin.” E.g., Dynamet Tech nology, Inc. v. Dynamet Inc., 197 U.S.P.Q. 702, 705-06 (T.T.A.B.1977) aff'd, 593 F.2d 1007, 201 U.S.P.Q. 129 (1979). As discussed more fully below, CAW claims that it used the words “At A Glance” descriptively, and this Court finds that its use in the early to mid 1930’s, late 1920’s and with the exception of the “2 in 1 Executive Calendar” was, in fact, descriptive use. During this period, CAW’s use of the term “At A Glance” in no way purported to indicate origin; instead, the words CAW used to show origin were “COLART,” “TEAR KLEEN,” “COLUMBIAN,” and “SUCCESS.” PX 45-60. Thus, CAW has not proven that it acquired common law trademark rights. Further supporting this conclusion is the fact that CAW, on several occasions, expressly disclaimed any trademark rights in the phrase “At A Glance.” As Thomas Norris testified: Prior to this lawsuit, I felt that the ‘At A Glance,' no trademark could cover it, [sic] everybody owned it, and we paid no attention to it. We made no effort to put it on a product or anything else, it just simply belonged in the public domain. T. Norris 489; T. Norris 475. Coleman Norris echoed his father in testifying that he believed CAW had no rights in “At A Glance” superior to anyone else: Q. And at the time [of the 1981 license negotiations] you didn’t believe you had any exclusive right to any at a glance phrase. Is that true? A. That’s right, I did not then, I do not now. H.C. Norris 743; H.C. Norris 543-44. He also commented: I didn’t think we had any rights to ‘at a glance,’ I thought everybody had rights to ‘at a glance,’ I thought everybody had rights to ‘at a glance.’ H.C. Norris 543. Coleman Norris also testified that the phrases “At A Glance,” “Day At A Glance” and “Week At A Glance” did not refer to his company’s products or any other company’s products. H.C. Norris 600-01. CAW’s clear position is and has always been that everyone has the right to use “At A Glance” and, more importantly, that no one — including CAW — has or ever had any trademark rights in “At A Glance.” However, by now asserting the prior use defense, CAW must necessarily claim a proprietary right in “At A Glance.” No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502, 507 (T.T.A.B.1985). The inconsistency of CAW’s positions on its rights in “At A Glance” is obvious, and “detracts from the credibility” of its defense. Id. Even if one ignores the inconsistency in CAW’s position, the evidence in this case shows that at the time of the first At-A-Glance ® registrations in 1936, no CAW product had the words “At a Glance” affixed to it. Prior to 1936 CAW had affixed “At A Glance” for two years to one product discontinued in 1932, T. Norris 432-33; Table A, at 4, and sporadically used the words in some price lists, catalogs and advertising. See supra at 11-18. CAW has thus failed to meet the common law affixation requirement. Moreover, this use of “At A Glance” was too casual and uneven to rise to the level of trademark rights. As the Second Circuit stated in La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir.1974): Trademark rights are not created by sporadic, casual, and nominal shipments of goods bearing a mark. There must be a trade in the goods sold under the mark or at least an active and public attempt to establish such a trade. See also Chandon Champagne Corp. v. San Marino Wine Corp., 335 F.2d 531, 534 (2d Cir.1964) (sale of a few hundred cases of Dom Perignon held insufficient to reserve unregistered marks for all time against others); D.M. & Antique Import Corp. v. Royal Saxe Corp., 311 F.Supp. 1261, 1270 (S.D.N.Y.1969) (transitory and minimal use by the defendant held to be insufficient use to give defendant priority over the plaintiffs long, continued and notorious use). Besides failing to meet the affixation requirement, CAW has offered no proof that before 1936 it used “At A Glance” in any way to distinguish its products in consumers’ minds from those of its competitors as required to establish the prior use defense. See Speed Prods. Co. v. Tinnerman Prods., Inc., 179 F.2d 778, 781 (2d Cir.1949); Johanna Farms, Inc. v. Citrus Bowl, Inc., 468 F.Supp. 866, 875 (E.D.N.Y.1978). Almost all of the pre-1936 documents on which CAW relies are price lists for advertising wall calendars which were distributed to CAW’s own sales representatives. PX 45-48, 50-54, 56-57; T. Norris 495-96; see supra at 107. CAW introduced no evidence that these price lists ever reached any consumers and thus CAW cannot rely on them for the prior use defense. See Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir.1975) (trademark use not found where sales of product bearing mark not made to public). See also Dynamet Technology, Inc. v. Dynamet Inc., 197 U.S.P.Q. 702, 705-06 (T.T.A.B.1977) (“Use must be open and notorious public use directed to the segment of the purchasing public for whom the [products] are intended.”), aff’d, 593 F.2d 1007, 201 U.S.P.Q. 129 (1979). b. Lack of Continuity In addition, CAW failed to prove that its alleged common law trademark use was continuous beginning from a date prior to the At-A-Glance ® registrations up to the present; a decisive requirement of the pri- or use defense. E.g., Wrist-Rocket Mfg. Co. v. Saunders Archery Co., 578 F.2d 727, 732 (8th Cir.1978); Kinark Corp. v. Camelot, Inc., 548 F.Supp. 429, 433 (D.N.J.1982). For purposes of the prior use defense, “continuing” is not the same as lack of abandonment. Casual Corner Assocs. Inc. v. Casual Stores of Nevada, Inc., 493 F.2d 709, 712 (9th Cir.1974). (non use of one year negates continuing). Instead, any significant interruption of use defeats the prior use defense. See 2 J.T. McCarthy, Trademarks and Unfair Competition § 26:19 at 334 (2d ed. 1984). The continuity requirement is consistent with the strong policy underlying the Lanham Act which rewards those who first seek federal registration. See Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 523, 204 U.S.P.Q. 820 (1980). As discussed above, prior to 1936 there were only two CAW products that might have had the words “At A Glance” on them. The first is the 2 in 1 Executive’s Calendar, which was sold for two years and discontinued in 1932. T. Norris 423-33; Table A, at 4. Obviously, this use has not been continuous. The second product is the No. 100 Weekly Calendar which CAW claims had the words “A Week-at-a-glance” on it in 1935. But even if we accept CAW’s contention that its use of “At A Glance” on this product began in 1935 for the 1936 edition, and even if we ignore the fact that if this usage began in 1935, Nascon claimed in its registration that it had prior common law trademark rights dating to 1934, it was conceded by Thomas Norris that “A Week-at-a-glance” was not on this product from the late-1940’s to 1955. PX 150; T. Norris 437-38, 461-62. This admitted non-use negates the continuity requirement of the prior use defense. Even one year of non-use eliminates this defense. As the court held in Casual Corner Assocs., Inc., supra, 493 F.2d at 712: Section 1065 places upon a person claiming a prior state right the burden of showing that his has been a continuing use. To equate continuing with a failure to abandon would shift the burden from the state-right claimant to the owner of a valid and incontestable trademark. Such a result would be inconsistent with the statute and with the protection afforded by the trademark laws. The Hack Group’s failure to use the mark for the one-year period prevents it from claiming that it falls within the exception of section 1065 requiring a continuing use. (emphasis added). The 1955 edition of the No. 100 Weekly Calendar (the only pre-1965 edition produced by CAW in this litigation) does not have “At A Glance” on it. PX 150. Just this one year of non-usage would thus be sufficient to negate CAW’s prior use defense. We also note that the three year period of non-use from 1932-1935 (again accepting CAW’s contention of use) prevents CAW from claiming continuity of use by “tacking” the use of the 2 in 1 Executive’s Calendar to that of the No. 100 Weekly Calendar. c. Wall Calendars vs. Appointment Books or Diaries Even assuming CAW had been able to establish prior use of the term “At A Glance,” this prior use was only in connection with desk and wall calendars and not with respect to appointment books and diaries, the usage challenged here. The prior use defense permits a defendant to continue to use another party’s incontestable registered trademark only with respect to the products on which the prior use was proved. See, e.g., Dunfey Hotels Corp. v. Meridien Hotels Inv. Group Inc., 504 F.Supp. 371, 381-82 (S.D.N.Y.1980). Prior to 1986, CAW never used the words “At A Glance” in any way on or with respect to its appointment books and diaries. It did not even introduce its line of appointment books and diaries until the 1978 edition of its products. Nascon was clearly the first company to use At-A-Glance ® Trademarks on these products. Thus, CAW’s use of At-A-Glance ® with respect to other products cannot be a defense to its infringement of the At-A-Glance® Trademarks on appointment books and diaries because it was not prior use. See Willson v. Graphol Prods. Co., 188 F.2d 498, 503, 38 C.C.P.A. 1030 (1951) (priority rejected where plaintiff was not first to apply mark to nursing bottles although it was first to use it for prescription bottles). The importance of distinguishing between products for purposes of the prior use defense was discussed in Physicians Formula Cosmetics, Inc. v. West Cabot Cosmetics, Inc., 660 F.Supp. 1222 (E.D.N.Y.1987), rev’d on other grounds, 857 F.2d 80 (2d Cir.1988). There the defendant argued that its prior use of the “ ‘Physicians & Surgeons’ mark on hard-bar soap products entitle[d] it to extend application of the mark to other related skin care products.” Id. at 1224. After reviewing numerous cases on the subject, the district court concluded that the defendant’s rights were limited to the products of its prior use (hard-bar soap products) and could not be expanded to cosmetics and other skin care products. Id. at 1225-26. On appeal, the Second Circuit agreed and stated: Hard-bar soaps were the only product marketed [by defendant] under the PHYSICIANS & SURGEONS mark from 1888 until 1981, when it was first applied to skin creams and lotions. At that time, [defendant’s] predecessors had known of the use of the PHYSICIANS FORMULA mark [by plaintiff] on creams and lotions for at least sixteen years but had made no effort to assert their rights against [plaintiff]. Meanwhile, [plaintiff] had gone to considerable expense to promote its mark and did not learn of the use of the PHYSICIANS & SURGEONS mark [by defendant] on creams and lotions until December 1985. It then acted promptly to challenge what it considered an infringing use. The equities therefore completely favor [plaintiffs] right to the exclusive use of its mark on those products. Physicians Formula Cosmetics, Inc. v. West Cabot Cosmetics, Inc., 857 F.2d 80, 82-83 n. 1 (2d Cir.1988). Consequently, CAW’s limited historic usage of “At A Glance” with respect to a few desk and wall calendars cannot justify its recent expansion to appointment books and diaries. See Speed Prods. Co. v. Tinnerman Prods., Inc. 179 F.2d 778, 781-82 (2d Cir.1949) (Court distinguished between stapling machines and fastening tools on the one hand, and the staples, clips and fasteners themselves on the other hand); Physicians Formula, supra, 660 F.Supp. at 1225-26 (collecting and analyzing cases); Dunfey Hotels Corp. v. Meridien Hotels Inv. Group, Inc., 504 F.Supp. 371, 381-82 (S.D.N.Y.1980)