206 F.2d 144 (3rd Cir. 1953), 10988, Q-Tips, Inc. v. Johnson & Johnson

Docket Nº:10988, 10989.
Citation:206 F.2d 144, 98 U.S.P.Q. 86
Party Name:Q-TIPS, Inc. v. JOHNSON & JOHNSON (two cases).
Case Date:June 26, 1953
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit
 
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206 F.2d 144 (3rd Cir. 1953)

98 U.S.P.Q. 86

Q-TIPS, Inc.

v.

JOHNSON & JOHNSON (two cases).

Nos. 10988, 10989.

United States Court of Appeals, Third Circuit.

June 26, 1953

Argued May 8, 1953.

Rehearing Denied July 28, 1953.

Stewart W. Richards, New York City (Kenneth Perry, New Brunswick, N.J., H. Kenneth Haller, New York City, Arnold S. Worfolk, Herbert E . Bailey, New Brunswick, N.J., on the brief), for Johnson & Johnson.

Before GOODRICH, McLAUGHLIN and KALODNER, Circuit Judges.

GOODRICH, Circuit Judge.

This case is based on trade-mark infringement. The plaintiff is the owner of the registered trade-mark 'Q-Tips.' The defendant manufacturers and sells Johnson's Cotton Tips.' This, the plaintiff says, is a violation of its trade-mark. The district court agreed and filed a thoroughly considered opinion which sets out all the facts. 1 We shall repeat only those necessary for our discussion of the case.

The litigation is less complicated than would appear from the first reading of the numerous briefs. In the stubbornly contested lawsuit, with both parties represented by competent and experienced counsel, each has engaged in what is called in criminal court 'throwing the book' at the other.

We may postpone again, as we have before, the issue whether we may build up

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our controlling law from federal precedent or must look to state law and if so where. 2 The parties are properly in federal court either by diversity of citizenship 3 or by the provisions of the Lanham Act. 4 We have not been referred to nor have we found a split of authority between federal and state rules to compel us to make the choice just mentioned.

The case may be simplified also by eliminating several other questions. In the fist place there is no packaging of the defendant's goods in such a way that they may be mistaken, by reason of their appearance, for those of the plaintiff. The colors of the two competitor's packages are different. The defendant features the name Johnson on this as upon many other preparations put out by it in the bandage and allied fields. It is true that each package has on it a picture of crossed sticks with cotton wound about them at both ends. But we agree completely with the district judge that there is no such similarity in packaging that will serve as a basis of any charge of 'palming off.'

Nor is there anything in the suggestion that the so-called 'dilution' doctrine has a point in this case. This is not a situation where a man has a trade-mark for an umbrella and raises the question whether another manufacturer may use a similar trade-mark for a mouth wash. 5 The ordinary rules of unfair competition and trade-mark infringement are sufficient to protect one from competitors, and plaintiff has no need to resort to the 'dilution' doctrine here.

We shall not discuss here points raised by the defendant charging the plaintiff with misconduct which disentitles it to equitable relief under the clean hands doctrine. Insofar as those issues are present in the pending patent case between the present litigants they will be discussed there. For the purpose of the case now being considered we refer to and adopt the full explanation given by the district judge in which he found that this defense was not available against this plaintiff. 6

The issues in the case, we think, get down to three. The first is whether the plaintiff has a trade-mark, for which it is entitled to legal protection, in the use of the term 'Q-Tips' to designate a wooden stick with a cotton twist at each end. If this question is answered in the affirmative, the next question is whether the defendant has infringed that trade-mark by its selection of the name 'Johnson's Cotton Tips.' If, in turn, this question is answered in the affirmative, then the remaining issue is whether the district court was correct in giving the plaintiff an injunction but declining to order an accounting of profits and damages.

It is worth pointing out, at the start of our discussion, that we are in a field where the tendency of the law 'has been in the direction of enforcing increasingly higher standards of fairness or commercial morality in trade. The tendency still persists.' Restatement, Torts, Volume III, page 540. In any situation where the law is in the growing stage it is not to be expected that the advance in all courts will be simultaneous. Furthermore, when the final outcome on a given set of facts may vary, not with the legal concepts involved, but their application to particular states of fact, the pattern is inevitably less clear than in cases where a definite rule is to be applied.

A trade-mark is defined in Section 715 of the Restatement of Torts as follows:

'A trade-mark is any mark, word, letter, number, design, picture or combination thereof in any form of arrangement, which

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'(a) is adopted and used by a person to denominate goods which he markets, and

'(b) is affixed to the goods, and

'(c) is not, except as stated in §§ 720-722, a common or generic name for the goods or a picture of them, or a geographical, personal, or corporate or other association name, or a...

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