Standard Oil Co. v. Standard Oil Co. of North Dakota

Decision Date27 July 1954
Docket NumberCiv. No. 2008.
PartiesSTANDARD OIL CO. v. STANDARD OIL CO. OF NORTH DAKOTA et al.
CourtU.S. District Court — District of South Dakota

William R. Pearce, Cox, Cox, Pearce & Engebretson, Bismarck, N. D., Wallace H. Martin and Robert Bonynge, Nims, Martin, Halliday, Whitman & Williamson, New York City, of counsel, for plaintiff.

Harry Lashkowitz, Lashkowitz & Lashkowitz, Fargo, N. D., Harold D. Shaft, Shaft, Benson & Shaft, Grand Forks, N. D., for defendants.

VOGEL, Chief Judge.

By this case, plaintiff, Standard Oil Company, an Indiana corporation, seeks to enjoin defendant The Standard Oil Company of North Dakota, a North Dakota corporation, and defendant S. H. Kaplan from using the words "Standard", "Standard Oil" or "Standard Oil Company" as trade-marks or as part of the name of defendant corporation. Diversity of citizenship plus more than the statutory amount are involved. This Court has jurisdiction.

The questions here must be determined according to the law of the State of North Dakota. Erie R. Co. v. Tompkins, 1938, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188. We have no decisions from the North Dakota Supreme Court. It becomes expedient, then, to look to other jurisdictions for guidance.

Plaintiff qualified to do business in North Dakota on February 1, 1896, and registered its trade-mark "Standard" under the laws of the State of North Dakota on February 10, 1923. Plaintiff for many years has been the only petroleum company which has used the trade-names and trade-marks "Standard", "Standard Oil" and "Standard Oil Company" in North Dakota and in fourteen other additional Midwestern states.

Defendant, The Standard Oil Company of North Dakota, was incorporated by the defendant Kaplan on February 19, 1949. Under its charter, it is authorized to engage in practically the same business as the plaintiff; i. e., petroleum production, manufacturing, distributing and selling.

By mere comparison alone, it is obvious that the names of plaintiff and of the corporate defendant are confusingly similar. Restatement, Torts, Sec. 728, comment a (1938). In addition, plaintiff has shown that as a result of publicity given to the incorporation of the corporate defendant, substantial confusion has already occurred in the mind of the public. The use of a confusingly similar corporate name should be enjoined in order to protect the business and good will of the prior corporation. N.D.R.C. of 1943, Sec. 10-0111; General Film Co. of Missouri v. General Film Co. of Maine, 8 Cir., 1916, 237 F. 64; Indian Territory Oil & Gas Co. v. Indian Territory Illuminating Oil Co., 10 Cir., 1938, 95 F.2d 711, certiorari denied 305 U.S. 607, 59 S.Ct. 67, 83 L.Ed. 386; Local Loan Co. v. Local Finance Corp., D.C.E.D.Wis.1944, 56 F.Supp. 658; Zweck v. Aberdeen Laundry & Dry Cleaning Co., 1921, 44 S.D. 176, 183 N.W. 118.

Tacking the phrase "of North Dakota" onto the dominant phrase "Standard Oil Company" does not lessen the confusion. See Standard Oil Co. of New Mexico v. Standard Oil Co. of California, 10 Cir., 1932, 56 F.2d 973, 976. In an attempt to lessen the effect of the obvious confusion through name similarity, the defendant uses the phrase "Not affiliated with any existing oil company" on its letterheads. The use of the phrase not only fails to lessen the confusion but is an obvious admission on the part of the defendant that confusion was expected. See Esso, Inc. v. Standard Oil Co., 8 Cir., 1938, 98 F.2d 1, 7.

The tenacity with which defendants urge their right to use a corporate name which could have acquired no value insofar as their own use of the name is concerned justifies an inference that defendants recognize that the name "Standard Oil Company" has a value which has been derived from some other source, to-wit: The reputation which the Standard Oil Company, operating in the territory, has acquired in fifty years of business operations. The defendants disclaim an intent to appropriate anything of value belonging to another corporation but their actions belie their words.

For all practical purposes, plaintiff's long use of the Standard Oil Company name and trade-marks in North Dakota and in its Midwestern business territory has been an exclusive one. While defendants have shown that a variety of "Standard Oil" companies besides plaintiff's have from time to time been licensed to do business in various states within plaintiff's Midwestern business territory, it does not appear that such companies using the "Standard Oil" name have actually engaged in any business in such states. For the most part, such companies have either abandoned the use of the name or have withdrawn from the territory. Others have been enjoined from using it. In an undefended action, on January 10, 1931, this Court enjoined the use of the name "Standard Oil Company of North Dakota, Inc.," by an earlier North Dakota corporation. See Standard Oil Co., a corporation, Complainant v. Standard Oil Co. of North Dakota, Inc., a corporation, R. J. Young, C. E. Morris and C. L. Young, Respondents, U.S.D.C.N.D., Civil No. 495. See also Standard Oil Co. v. Michie, D.C.E.D.Mo., 1929, 34 F.2d 802; Standard Oil Co. of Colorado v. Standard Oil Co., 10 Cir., 1934, 72 F.2d 524, certiorari denied 293 U.S. 620, 55 S.Ct. 216, 79 L.Ed. 708; Esso, Inc., v. Standard Oil Co., supra.

It cannot be said, as defendants contend, that plaintiff has abandoned its exclusive claim to the "Standard Oil Company" name and related trade-marks. On the contrary, it would appear that plaintiff has been vigilant in objecting to infringements of its trade-marks and its name. The fact that the "Standard Oil" name and trade-marks are used by others in other territories does not qualify plaintiff's right thereto within the territory where plaintiff has first appropriated and maintained exclusive use thereof. See particularly the opinion of the Court of Appeals of this Circuit in Esso, Inc., v. Standard Oil Co., supra, 98 F.2d at page 7, wherein the Court stated:

"The rule seems to be well settled that `where two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other,' each has the exclusive right to the use of the mark within the territory in which he has used it, to the exclusion of the other. (Citations.)"

The defendants contend that plaintiff could not appropriate the exclusive use of the word "standard" as a trade-mark and that the state could not validly register for plaintiff the trademark "Standard" because the word relates to "class or description" or to "quality, or the description". N.D.R.C. of 1943, Sec. 47-2201 and Sec. 47-2203 exclude the registration or appropriation of such marks. Defendants' argument overlooks the fact that the noun "standard" has a distinct meaning, as a signal, beacon, emblem, banner or flag, aside from its common meaning as a...

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