Plough, Inc. v. Kreis Laboratories, a Corporation

314 F.2d 635

• Court: Court of Appeals for the Ninth Circuit
• Decided: March 26, 1963
• Docket: 17719
• Status: Published

Opinions

BARNES, Circuit Judge.

Appellant brought suit below chargingappellees with the infringement of its trademark “Coppertone,” a word which had acquired an established secondary-meaning in other litigation. Cf: Douglas Laboratories Corporation v. Copper Tan, Inc., 2 Cir. 1954, 210 F.2d 453. Appellant sought an injunction and an accounting. Various defenses and counterclaims appeared in the answer, such-as (a) allegations of a prior use by appellees; (b) a prior state trademark registration by appellees of “Copatint” in New York, Florida and California, and the prior registration of “Copper Tan”' in California; (c) the lack of competition between the parties; and (d) the-lack of confusion between their products.

Thereafter a consent judgment was entered on November 12, 1959 in the United States District Court, Southern District of California, decreeing (1) the ownership of the trademark Coppertone in appellant; (2) that use of the words Copa Tan, Copa Cream and Copa Tint by appellees was likely to cause-confusion; (3) that appellees were perpetually restrained from using the names Copatan, Copatint or Copacream, “or any other names confusingly similar thereto,” or to use Coppertone, or “to use the word, root, prefix or suffix Copa or Copper;” and (4) the injunction was stayed to July 1, 1961, to permit the appellees to sell their present stock of goods. Despite this stay, a writ of permanent injunction containing language similar to that of the consent judgment was issued May 11, 1961, and served on May 12, 1961, on appellees. On June 9, 1961, within the period of the original stay, appellant’s agent purchased from appellees two suntan products manufactured by appellees, one labeled C5ca Tan and one labeled Coca Tint.¹

An order to show cause charging appellees with violation of the injunction was issued June 13, 1961. An affidavit was filed, alleging the original litigation above mentioned had been settled by the signing of a contract, and the payment by appellant to appellees of $20,750.00, and that the only issue before the court below on the order to show cause was “whether or not the use of the words Coca Tan and Coca Tint are within the scope of the injunction.”

At the hearing, Exhibits II, LL and MM were placed in evidence and plaintiff’s and defendants’ counsel stipulated that certain affidavits might be considered as evidence. Further, the plaintiff offered a certain portion of the deposition of Harry B. Solmson taken on November 8, 1961, which was received in evidence. At the conclusion of the plaintiff’s case, the defendants moved the court to dismiss the plaintiff’s order to show cause on the ground that no sufficient showing of contempt had been made. Defendants’ motion was argued, and the following Findings of Fact and Conclusions of Law were entered:

“FINDINGS OF FACT

“1. The Plaintiff is the owner of the trademark Coppertone which it affixes to containers of suntan lotions as represented by Exhibit MM.

“2. The Defendants are the owners of the trademarks Coca Tan and Coca Tint which marks are affixed' to containers of suntan lotions as represented by Exhibits LL and IIr respectively.

“3. Plaintiff is the owner of certain rights, titles and interests in Copa Tan, Copa Tint and Copa Cream.

“4. Plaintiff is not and has never used the names Copa Tan, Copa Tint and Copa Cream in connection with any of its products, goods or services.

“5. The names Coca Tan and! Coca Tint are not confusingly similar to Copa Tan, Copa Tint and Copa Cream.

“6. It is not true that the Defendants’ trademarks Coca Tan and Coca Tint are mere colorable attempts to avoid confusion with Plaintiff’s trademark Coppertone.

“7. The Plaintiff has produced' no evidence showing that the Defendants are now using any trademark confusingly similar to Coppertone.

“CONCLUSIONS OF LAW

“1. The Defendants by the utilization of trademarks Coca Tan and' Coca Tint or suntan lotions are not selling a product which is confusingly similar to Plaintiff’s product Coppertone as applied to suntan lotions.

“2. By the use of Coca Tan and Coca Tint the Defendants are not selling suntan products which are confusingly similar to Copa Tan, Copa Tint and Copa Cream.

“3. Defendants are not now infringing the trademark Coppertone by reason of the selling, marketing and distributing of suntan products under the names Coca Tan and Coca Tint.

“4. Defendants are not now infringing or damaging any rights Plaintiff has in the names Copa Tan, Copa Tint and Copa Cream by reason of Defendants selling, marketing and distributing suntan products under the trademarks Coca Tan and Coca Tint.”

The judgment entered was that plaintiff-appellant’s motion for an order to show cause why defendants-appellees should not be punished for contempt be, and it was, dismissed. Timely appeal was taken here. 28 U.S.C. § 1291.

The court below found no “confusing similarity” between the words Copa Tan, Copa Tint, and Copa Cream and Coca Tan and Coca Tint. Appellant urges this is clear error; the appellees urge that appellant simply failed to prove its case.

Appellant urges that all appellees have done is change one letter. This is not true. The original injunction referred to four coined words — Coppertone, Copatan, Copatint and Copacream. Coppertone is not here involved or material. The alleged infringement is composed of a pair of two-word phrases: Coca Tan; Coca Tint. The trial court took notice of this difference. Not only does one word become two, but the “p” becomes “c”, and to the “o” there is added a macron symbol (ó). The trial court took notice of this difference. (Tr. p. 55.)

We have heretofore agreed with the Restatement of Torts, § 729, that the test in determining possibility of confusion is appearance, pronunciation and verbal translation. In Sleeper Lounge Co. v. Bell Manufacturing Co., 9 Cir. 1958, 253 F.2d 720, we phrased the question as whether there existed similarity of “sound, sight and meaning.” Though likelihood of confusion depends upon many factors, the “one essential feature, without which the others have no probative value,” is the similarity between the registered marks and the alleged infringing mark or phrase. Sleeper Lounge v. Bell Manufacturing Co., supra, at 723.

We have here considered the difference in specific appearance of the marks involved. The exhibits in evidence clearly disclose a difference in the general appearance of the product — i. e., the general appearance of the containers as a whole; their shape, color and design. There was no claim of similarity or likelihood of confusion therein. The only “similarity” of packaging was that both were packaged in “spray” cans. Admittedly, the changes made in the alleged infringing phrase to some extent affect the physical appearance of the trademark. If pronounced correctly, there likewise exists a change in the phonetic sound. Thus, the danger of confusion if the words were but heard, rather than seen, is to some extent eliminated.

If Copatan caused an audible verbal translation confusingly similar to Coppertone, it could only be because Copatan was pronounced with the short “o” of “kop'er”. (Webster’s New International Dictionary, 2d ed., 1956.) If pronounced with the long “o” of “old”, it would seem not to be confusingly similar in sound. Such an unconfusing pronunciation was insured by the placing of the macron symbol over the “o” in the alleged infringing first word.

Counsel for appellant argue that perhaps the words Coca Tan might be mispronounced over the radio or on television. But there was no evidence of such mispronouncement, or of any other confusion. We can take judicial notice of the fact that many suntan lotions are advertised by word of mouth only over the radio, and by word of mouth and by sight over television, but we cannot take judicial notice that many radio and/or television announcers do or would mispronounce simple words bearing a simple symbol of pronunciation so that such mistake occurs, or is likely to occur, in such numbers as to cause confusion.

In addition to the change in sight and sound, the prefix used — “Coca”-—establishes a different meaning than that of the prohibited prefix “Copa”; if any is established by the latter. The use of cocoa-butter in suntanning concoctions is well known to the public. No such meaning is suggested by use of the prefix “Copa”.

We do agree with appellant that the seller of a trademark has a special duty to avoid confusion with a name he has sold. Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546, 52 N.W. 595, 16 L.R.A. 453 (1892). The lower court concluded the seller had here avoided any such confusion. We agree.

We also agree with appellant that an infringer, “once caught,” should have his conduct carefully scrutinized in any future operations so as to determine his intent in going as far as he does. He must “be required to keep a safe distance away from the margin line.” Broderick & Bascom Rope Co. v. Manoff, 6 Cir. 1930, 41 F.2d 353, 354.²

But here no one was “once caught” in the usual sense of those words. The consent decree is a two-edged sword. In the original suit appellant alleged it owned the trademark Coppertone — issued January 25, 1955; and that the trademark had acquired a secondary meaning; that Copatan and Copatint³ infringed Coppertone. Appellees urged as a defense, among many, that they had lawfully acquired the trademarked name Copatint by registration in New Yoik and Florida in July 1952 and in California in June 1952. This litigation was settled by the payment of a substantial sum of money to appellees by appellant, and a contract was entered into between them. The terms of that contract are not before us, although the fact of its existence is. What rights are therein established is not a question now before us. A consent judgment was entered into by the parties. We are required to and do respect it, and we are bound, as are the parties to it, by the law of the case. Artvale, Inc. v. Rugby Fabrics Corp., 2 Cir., 1962, 303 F.2d 283. But we do not draw any inferences from the pleadings and the consent decree that anyone was “caught” doing anything. Appellees later either violated the injunction, or they did not. The court below held on the evidence before it that the defendants-appellees were not in violation.

We keep in mind we are concerned here with a secondary meaning existing only as to one of the words mentioned in the injunction — the word Coppertone. No secondary meaning was alleged, claimed or proved as to Copatint or Copatan.

We agree with appellant that the question is not whether there was confusion proved between the protected marks and the alleged infringing words, but whether there was a likelihood of such confusion existing. (Br., p. 10, and cases cited.) But one of the better ways to prove likelihood of confusion in the future is to prove it existed in the past. We cannot say there does exist a likelihood of any confusion, on the sparse record before this court. There is not one word of evidence as to the impact or effect of the supposed similarity of the products upon the market.⁴ A “trademark is only protected where and when, and in the facts of each case, there is actual or likely confusion as to the source of the article in commerce.” Mershon Co. v. Pachmayr, 9 Cir. 1955, 220 F.2d 879, 883. Appellant here has never used the words Copatan, Copatint or Copacream in any aspect of its business, either prior to or subsequent to the injunction. In fact, appellant had brought out new suntan lotion products after the purchase of these names, but had, by its own choice, preferred to use, and had used, the trademarks “QT” and “Royal Blend.”

By its filing of this proceeding, appellant attempts, not to prevent competition with any product it produces under the name of Copatan, Copatint or Copacream (for it produces none), but to prevent the marketing in the competitive market of any product marked so that it might remind one of Coppertone. But as both the majority and the dissent in this case recognize — “The portion of the decree relating to Coppertone is irrelevant here.” Yet that is the only competition here involved, under the facts of this case. We cannot read, on the evidence before us, any intent to palm off “Coca Tan” or “Coca Tint” as “Coppertone.”

If that be so — so long as appellees do not use names confusingly similar to 'Copa Tan, Copa Cream and Copa Tint— <for which, plus a specific agreement not to use “the word, root, prefix or suffix Copa or Copper,” the appellees had been paid cash) the appellees, as the dissenting opinion states, “had open to them a whole dictionary full of names, as well as all the fanciful names that could be fabricated from the entire alphabet.”

The dissenting opinion is critical of the majority approach in “comparing the two [words] in juxtaposition only.” Such an approach is here necessary because that comparison was the only evidence before the court below. There is an utter lack of proof:

(a) of confusion of one person buying “Coca Tan” thinking it was “Coppertone” or “QT” or “Royal Blend,” or even that it was “Copatan”;

(b) that the packages looked similar or alike;

(c) that the names of the products sounded similar or alike, as was the case in several of the cases cited in the dissenting opinion;⁵

(d) that there was any exact copying;

(e) that there was any effect upon prospective customers.

Are we, in the absence of any evidence, better able than a trial judge to speculate as to what general impressions obtained with respect to the original product or its name in the mind of the public, even though that public be “the ignorant, the unthinking, and the credu-¹ lous?” We think not, but if it is our privilege to second-guess the trial court, then we are convinced a two-word trademark has a different visual impact on the public than would a one-word trademark.

Nor do we see the aptness of the suggestion that one cannot break a single word into two words and necessarily avoid a charge of infringement. We agree. We would not dispute the judgment of Judge Learned Hand that “Listogen” was an attempt to borrow from “Listerine.” But would it be clear beyond doubt that “Sister Rain” would be violative of the trademark “Listerine”? We think not.

There existed in the record no evidence of injury or damage, or probable injury or damage, entitling appellant to a finding that the injunction has been disobeyed.

The burden of proving the violation rested on appellant. As the trial court plaintively stated, after appellant rested below: “What evidence is there to support [the violation of] your injunction?” (Tr. p. 49.)⁶ Appellant did not satisfy the court below there had been a violation of the injunction, and the evidence does not convince a majority of this court there had been.

While it is true that under certain circumstances we are as well able as the trial court to determine if there is a likelihood of confusion by a mere visual or auditory comparison of the marks protected and allegedly infringing,⁷ we cannot, on the record here before us, differ with the trial judge, much less hold his findings to be clearly erroneous. See Chappell et al. v. Goltsman et al., 5 Cir. 1952, 197 F.2d 837, 839. The mere use of a name which appellees had a right to use can not in and of itself constitute unfair competition.⁸

We can find no proof of any possibility of similarity “such as would cause confusion of any appreciable number of ordinarily prudent purchasers as to the source of the goods.” Restatement of Torts, § 728. Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 2 Cir. 1952, 199 F.2d 602, 603.

Affirmed.

1 . The stayed injunction permanently enjoined appellees from manufacturing, selling etc., products “bearing * * * the names Copatan, Copatint or Copacream, or any other name or names confusingly similar thereto, or to the trademark Coppertone, specifically including any trademark or trade name containing the word, root, prefix or suffix Copa or Copper.” This injunction was stayed to and including July 1, 1961, for the purpose of allowing Kreis “to liquidate its present inventory.” Nothing in the record shows-when the stock of Ooca Tan and Ooca Tint bottles were manufactured or first used, or that they were or were not ever a part of the pre-injunction or them “present inventory.” So far as the record in this case discloses, we must conjecture whether the products purchased (which are the basis of the alleged violation of the injunction issued) fall within or without the exception carved out of the injunction.

2 . In the case cited, the alleged infringer sold “Au-Tow-Line” in competition with “Autowline,” both being tow lines for automobiles. The alleged infringer had been restrained from using the word “Autowline” or the hyphenated word “Au-Tow-Line.” The alleged infringer then used “Auto-Tow-Line” as well as (by mistake) the precise word “Au-TowLine.”

3 . No mention of Copacream appears in the original complaint.

4 . Sleeper Lounge Co. v. Bell Manufacturing Co., supra; Fairway Foods v. Fairway Markets, 9 Cir. 1955, 227 F.2d 193, 196.

5 . The “Peppermint Box” in American Chicle Co. v. Topps Chewing Gum, 2 Cir., 1953, 208 F.2d 560; the word “National”, with vertical stripes by National Transfer & Storage Co., as compared to the word “National” with vertical stripes by National Van Lines, Inc., National Van Lines v. Dean, 9 Cir., 1956, 237 F.2d 688.

6 . Continuing, the court said: “You haven’t got any evidence here now. If you want to rest now, why the answer is your motion is dismissed because you haven’t put any evidence on.” Thereafter, Exhibits II and LL and certain stipulations re evidence were received.

7 . McCormick & Co., Inc. v. B. Manischewitz Co., 6 Cir. 1953, 206 F.2d 744, 746; California Fruit Growers Exchange v. Sunkist Baking Co., 7 Cir. 1948, 166 F.2d 971; Sleeper Lounge Co. v. Bell Manufacturing Co., supra.

8 . “Shredded Wheat” — Kellogg Company v. National Biscuit Company, 1938, 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73; “Wheaties vs. Oaties” — Quaker Oats Co. v. General Mills, Inc., 7 Cir. 1943, 134 F.2d 429.

1 . There is a suggestion made in the court’s footnote 1 with which I must take issue.

There, after noting the stay ordered for the purpose of allowing Kreis “to liquidate its present inventory” the footnote continues: “Nothing in the record shows when the stock of Coca Tan and Coca Tint bottles were manufactured or first used, or that they were or were not ever a part of the pre-injunction or then ‘present inventory.’ So far as the record in this case discloses, we must conjecture whether the products purchased (which are the basis of the alleged violation of the injunction issued) fall within or without the exception carved out of the injunction.”

I think this shows a misunderstanding of the facts. The “present inventory” was the collection of products making up the old stock of “Copa” products, made under the name which Kreis was then selling to appellant. It was after the decree that appellee started its sales using the new “Coca” names and labels.

Plainly these were no part of the “present inventory” described in the decree.