John Walker & Sons v. TAMPA CIGAR COMPANY
| Decision Date | 02 September 1954 |
| Docket Number | Civ. A. No. 2009. |
| Citation | 103 USPQ 21,124 F. Supp. 254 |
| Parties | JOHN WALKER & SONS, Limited, Plaintiff, v. TAMPA CIGAR COMPANY, Inc., Defendant. |
| Court | U.S. District Court — Southern District of Florida |
Harry B. Terrell and Whitaker, Whitaker & Terrell, Tampa, Fla., for plaintiff. Ellis W. Leavenworth and Leslie D. Taggart, New York City, of counsel.
E. O. Palermo, Tampa, Fla., for defendant.
Having considered the evidence and stipulations of the parties, the court makes the following findings of fact and conclusions of law:
Findings of Fact.
1. Plaintiff is a British corporation and a citizen and resident of the United Kingdom of Great Britain and Northern Ireland with an office and place of business at Kilmarnock, Scotland.
2. Defendant is a Florida corporation, a citizen of the State of Florida and a resident of the Southern District of Florida, Tampa Division, with an office and place of business at 2502 Twelfth Street, Tampa 1, Florida.
3. This is a civil action between a citizen of a foreign state and a citizen of one of the states of the United States wherein the matter in controversy exceeds the sum or value of $3,000 exclusive of interest and costs, and it is also an action arising under the trademark laws of the United States, Act of July 5, 1946, 60 Stat. 427, 15 U.S.C.A. § 1051 et seq.
4. Plaintiff manufactures Scotch whisky and sells the same in the United States and elsewhere under two trademarks consisting respectively of the name Johnnie Walker and a picture of Johnnie Walker which are owned by plaintiff together with the following registrations thereof in the United States Patent Office which have all been republished under the Act of July 5, 1946:
Date of
Number Date first use
78,556 June 21, 1910 1880
255,416 April 23, 1929 1910
307,393 October 24, 1933 1910
320,563 January 1, 1935 1910
329,524 November 5, 1935 1934
5. In addition to trademark registrations in the United States, plaintiff is the owner of 637 registrations in 128 foreign countries or jurisdictions of trademarks consisting of, or including, the name Johnnie Walker or the picture of Johnnie Walker or both the name and picture.
6. Plaintiff's business was established in 1820 by an individual named John Walker who was succeeded by the firm of John Walker & Sons which was in turn succeeded in 1886 by John Walker & Sons, Limited, a private company, and in 1923 by the plaintiff, a pubic company or corporation of the same name. Plaintiff acquired all of the business, good-will and trademarks of its predecessors.
7. The trademark Johnnie Walker has been used by plaintiff and its predecessors continuously since at least 1880 and in the United States continuously since 1908 except during the period of national prohibition when it was used on whisky imported and sold for medicinal purposes from August 1920 to at least November 1925.
8. The trademark consisting of the picture of Johnnie Walker was intended to represent John Walker, the founder of plaintiff's business, dressed in the garb of an early nineteenth century dandy with top hat, monocle and walking stick. The picture has been continuously used as a trademark in the United States by plaintiff and its predecessors since 1910.
9. Plaintiff's Johnnie Walker whisky is and had been of excellent quality, well and favorably known to the public in the United States and extensively advertised and sold in the United States. From 1908 to 1920 when national prohibition took effect the advertising and sales in the United States were substantial, and since the repeal of national prohibition in December 1933 over $8,000,000 has been spent in advertising Johnnie Walker whisky in the United States and more than 4,600,000 cases of the whisky have been sold in the United States.
10. The advertisements of Johnnie Walker whisky have appeared regularly in leading newspapers throughout the country and in Time, Newsweek, Colliers, The New Yorker, Fortune, Esquire, Holiday and other leading magazines. The whisky has also been extensively advertised by use of billboards and point of sale displays.
11. The number of "advertising impressions" obtained by Johnnie Walker whisky advertising 1948 through 1953 (the compilations being limited to six years because of the work involved) is conservatively estimated to have been 1,910,643,675 without including the billboard or point of sale advertising. The billboards have been displayed in New York, Chicago, St. Louis, Boston, Minneapolis, Kansas City, Los Angeles, San Francisco and other large cities, and many of them have been illuminated and animated at night, and have shown, when illuminated, the figure of Johnnie Walker in the act of walking or striding.
12. Plaintiff's trademark Johnnie Walker is and has been for many years a famous trademark for whisky.
13. Plaintiff's...
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...and the marketing appeal of the goods. Our conclusions in this regard are supported by several cases. In John Walker & Sons, Ltd. v. Tampa Cigar Co., 124 F.Supp. 254 (S.D.Fla.1954), aff'd, 222 F.2d 460 (5th Cir. 1955), the court "17. Whiskey and cigars are closely related in distribution an......
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...products are "closely related in distribution and use" helps determine the similarity of the products. John Walker & Sons, Ltd., v. Tampa Cigar Co., 124 F.Supp. 254, 256 (S.D.Fla.1954), aff'd 222 F.2d 460 (5th Cir.1955). Plaintiff's and Defendants' products do not currently appear in the sa......
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