Home/Fifth Circuit/Chevron Chemical Company, a Delaware Corporation v. Voluntary Purchasing Groups, Inc., a Texas Corporation, and Hi-Yield Chemical Co.

Chevron Chemical Company, a Delaware Corporation v. Voluntary Purchasing Groups, Inc., a Texas Corporation, and Hi-Yield Chemical Co.

659 F.2d 695, 212 U.S.P.Q. (BNA) 904, 1981 U.S. App. LEXIS 16623
CourtCourt of Appeals for the Fifth Circuit
DecidedOctober 23, 1981
Docket80-1729
StatusPublished
Cited by195 cases

This text of 659 F.2d 695 (Chevron Chemical Company, a Delaware Corporation v. Voluntary Purchasing Groups, Inc., a Texas Corporation, and Hi-Yield Chemical Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Fifth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Chevron Chemical Company, a Delaware Corporation v. Voluntary Purchasing Groups, Inc., a Texas Corporation, and Hi-Yield Chemical Co., 659 F.2d 695, 212 U.S.P.Q. (BNA) 904, 1981 U.S. App. LEXIS 16623 (5th Cir. 1981).

Opinion

ALVIN B. RUBIN, Circuit Judge.

Plaintiff Chevron Chemical Co. (“Ortho”) contends that Voluntary Purchasing Groups, Inc., and Hi-Yield Chemical Co. (together, “VPG”) copied the packages in which it sells lawn and garden products thus infringing its trade dress and violating § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976), and the Texas law of unfair competition. 1 Finding that VPG did deliberately copy Ortho’s insignia, the district court denied relief on the grounds that the Lanham Act does not provide a cause of action for trade dress infringement and that Ortho failed to show, as required under applicable Texas law, either that its trade dress had acquired secondary meaning or that there was any likelihood of confusion on the part of consumers as to the respective sources of the competing products.

As to Ortho’s federal claim, we conclude that earlier decisions of this Court compel the conclusion that the Act does provide a cause of action for trade dress infringement; Ortho was not required to show “secondary meaning,” as that term is understood in trademark law, to prevail under that section; the district court applied an erroneous legal standard in finding no likelihood of confusion, thereby stripping that determination of the protection normally accorded fact findings under Rule 52(a), Fed.R.Civ.P.; and, at least with regard to one of the VPG packagirigs, Ortho demonstrated such a likelihood of confusion. Turning to Ortho’s state claim under the Texas law of unfair competition, we assume arguendo both that Texas law requires proof of secondary meaning and the requisite proof by Ortho, but conclude that Or- *697 tho’s recovery under state law cannot be greater than the relief accorded it under § 43(a) since both require a similar showing of a “likelihood of confusion.” Therefore, we reverse and remand so that the district court may enter an appropriate injunction and hold further proceedings consistent with this opinion.

I.

Ortho manufactures agricultural chemicals. It is, and has been for many years, the leading seller of lawn and garden products, such as pesticides, weed killers, and fertilizers, for home consumption, such as home gardening. 2

Ortho’s management decided in 1949 to package and sell its more than 125 lawn and garden products in a uniform “family” trade dress. Since then, with few exceptions, it has packaged its products in trade dresses featuring the colors red and yellow. In 1971, it adopted the trade dress shown in black and white on Diagram 1 below.

VPG and its predecessors have also produced and marketed agricultural chemicals for many years; in 1974 it decided to introduce a new line of lawn and garden products under the trademark “Hi-Yield.” 3 The district court found that, in designing its packaging, VPG intended to copy Or-tho’s trade dress as much as the law would allow, and consulted its attorney for advice in order to accomplish this end without violating the law.

The Ortho package shows a background composed of three horizontal bands of color; the top 20% is white, the next 30% is yellow, and the bottom 50% is red. Ortho’s registered trademark, “ORTHO,” is printed on the white band in bold black letters, along with the distinctive chevron mark of the Chevron companies. The yellow band contains the name of the particular product, e. g., Bone Meal, which is also printed in black letters. The red band contains the required warnings regarding toxicity, general information about the product and its ingredients, and a drawing suggestive of the uses of the product, e. g., the insects which a particular pesticide will eradicate. The printing in this red band is partly in black and partly in white. The back of the package is white and yellow; the top band is white and is the same width as the top white band on the front, and the rest of the back is yellow. The product’s contents and directions for its use are printed on the back. Those Ortho products sold in liquid form come in bottles bearing a label identical to the design just described. The bottle itself is dark brown and has a yellow cap.

*698

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659 F.2d 695, 212 U.S.P.Q. (BNA) 904, 1981 U.S. App. LEXIS 16623, Counsel Stack Legal Research, https://law.counselstack.com/opinion/chevron-chemical-company-a-delaware-corporation-v-voluntary-purchasing-ca5-1981.