HUMBLE OIL & REFINING COMPANY v. American Oil Company

• Decision Date: 29 September 1966
• Docket Number: No. 63 C 251(2).,63 C 251(2).
• Citation: 259 F. Supp. 559
• Court: U.S. District Court — Eastern District of Missouri
• Parties: HUMBLE OIL & REFINING COMPANY, a corporation, Esso, Incorporated, a corporation, and Standard Oil Company, a New Jersey corporation, Plaintiffs, v. AMERICAN OIL COMPANY, a corporation, and Standard Oil Company, an Indiana corporation, Defendants.

259 F. Supp. 559

HUMBLE OIL & REFINING COMPANY, a corporation, Esso, Incorporated, a corporation, and Standard Oil Company, a New Jersey corporation, Plaintiffs, v. AMERICAN OIL COMPANY, a corporation, and Standard Oil Company, an Indiana corporation, Defendants.

No. 63 C 251(2).

United States District Court E. D. Missouri, E. D.

September 29, 1966.

Walter R. Mayne, Nelson W. Hartman and Thos. R. Schwarz, Fordyce, Mayne, Hartman, Renard & Stribling, St. Louis, Mo., Forrest M. Darrough, Dillard Baker, Houston, Tex., Francis X. Clair, New York City, Dugald S. McDougall and Theodore R. Scott, McDougall, Hersh & Scott, Chicago, Ill., for plaintiffs.

Coburn, Croft & Kohn, St. Louis, Mo., John W. Sherman, Richard J. Farrell, L. B. Lea, and Ernest L. Godshalk, Walter T. Kuhlmey, Reuben Hedlund, Kirkland, Ellis, Hodson, Chaffetz & Masters, Chicago, Ill., for defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

MEREDITH, District Judge.

This proceeding was brought under and pursuant to Rule 60(b) of the Federal Rules of Civil Procedure to modify an injunction decree of this Court entered in 1937 in case No. 11407, which was affirmed on appeal in Esso, Inc. v. Standard Oil Co. (Indiana), 98 F.2d 1 (8 Cir. 1938). Under the 1937 decree "Esso, Incorporated, its agents, servants, representatives, employees, attorneys, confederates, and all others acting for, with, through or under it and each of them," were perpetually enjoined from using in the petroleum industry in the States of Colorado, Illinois, Indiana, Iowa, Kansas, Michigan, Minnesota, Missouri, Montana, North Dakota, Oklahoma, South Dakota, Wisconsin and Wyoming "the term Esso alone or in combination with other names, terms, letters, marks, symbols, or syllables," or the trade names or trademarks Standard, Standard Oil, Standard Oil Company, S O, or S O C O, or "any names, terms, marks or symbols colorably similar thereto in sound, appearance, significance of meaning."

Plaintiffs in this proceeding are Humble Oil & Refining Company, a Delaware corporation (herein called Humble), Esso, Inc., a corporation, and Standard Oil Company, a New Jersey Corporation (herein called Standard Oil New Jersey). Humble is wholly owned by Standard Oil (New Jersey), and Esso, Inc., is wholly owned by Humble. Esso, Inc., was a defendant in the 1937 case.

Defendants in this proceeding are The American Oil Company, a Maryland corporation (herein called American), and Standard Oil Company, an Indiana corporation (herein called Standard Oil Indiana), which owns all of the capital stock of American. Standard Oil (Indiana) was the plaintiff in the 1937 case and obtained the above-mentioned injunction.

Plaintiffs herein seek to modify the 1937 injunction to permit Humble to use the name and mark "Esso" in the petroleum industry in the fourteen midwest states covered by the decree and in the State of Nebraska. Following the entry of the 1937 injunction, Standard Oil (Indiana) began marketing in Nebraska. These fifteen states are hereafter referred to as the midwest.

Plaintiff Humble is now the owner of record of the federal registration of the trademark "Esso". Plaintiff is prohibited from using it in the midwest by virtue of the 1937 decree.

To understand the problems of this litigation, a brief history of the Standard Oil Company is necessary. The Standard Oil trust began in 1870. By 1899 Standard Oil was the leading and dominant name in the American oil industry. A holding company, Standard Oil of New Jersey, was formed and through this holding company various Standard Oil Companies were controlled from 1899 to 1911. During this period of time the name "Standard Oil", by extensive national advertising and excellent products, achieved a nationwide reputation. In 1911 the Supreme Court held that the method of operation of Standard Oil violated the Sherman Antitrust Act and ordered the company dissolved. Standard Oil Co. of New Jersey v. United States, 221 U.S. 1, 31 S.Ct. 502, 55 L.Ed. 619 (1911). After 1911 the courts determined that various Standard Oil Companies had the exclusive right to use the Standard name and marks in their own territories, as this Court so held in 1937 in relation to fourteen midwest states.

The courts throughout the United States have uniformly held that the particular Standard Oil Company which first and continuously used the name "Standard" and derivatives thereof in a particular trade area had the exclusive right to use that name and all derivatives therefrom to the exclusion of the other Standard Oil Companies and to the exclusion of all strangers who attempted to use the name. See Standard Oil Company (Sohio) v. Standard Oil Company (Indiana), 141 F.Supp. 876 (D.Wyo. 1956), aff'd 252 F.2d 65, 76 A.L.R.2d 600 (10 Cir. 1958); Standard Oil Co. of Colorado v. Standard Oil Co. (Indiana), 72 F.2d 524 (10 Cir. 1934), cert. den. 293 U.S. 620, 55 S.Ct. 216, 79 L.Ed. 708; Standard Oil Co. of New Mexico v. Standard Oil Co. of California, 56 F.2d 973 (10 Cir. 1932); Esso Standard Oil Co. v. Standard Oil Co. of New England, 170 F.Supp. 71 (D.N.H.1958); Standard Oil Co. (Indiana) v. Standard Oil of North Dakota, 123 F.Supp. 227 (D.N.D.1954); Esso Standard Oil Co. v. Bazerman, 99 F.Supp. 983 (E.D.N.Y.1951); Standard Oil of New York v. Standard Oil of Maine, 38 F.2d 677 (D.Maine 1930), aff'd 1 Cir., 45 F.2d 309; Standard Oil Co. (Indiana) v. Michie, 34 F.2d 802 (E.D. Mo.1929). The one exception to this universal holding was found in the case of Humble Oil & Refining Co. v. Standard Oil Co. (Kentucky), 229 F.Supp. 586 (D.C.Miss.1964), where Standard Oil (Kentucky) had been distributing Esso products under a licensing agreement which had expired. Thereafter, Humble began using Esso products in the five southeast states area, Alabama, Georgia, Florida, Kentucky and Mississippi, in its own right. The district court held that if any confusion resulted, it was the fault of Standard Oil (Kentucky), and it could not now complain. This case was reversed by the Fifth Circuit Court of Appeals on July 1, 1966, Standard Oil Co. (Kentucky) v. Humble Oil & Refining Co. 363 F.2d 945 (5 Cir. 1966), and an application for certiorari is now pending in the United States Supreme Court.

The plaintiffs contend essentially that the marketing practices and conditions of the defendants and the habits of the motoring public have changed so much since 1937 that the continued enforcement of the 1937 decree is inequitable and works an extreme hardship upon the plaintiffs; that it deprives the motoring public of the competition that would be engendered in the event the decree were modified to permit the introduction of plaintiffs' products in the midwest under the name "Esso". Plaintiffs further contend that the introduction in the midwest of plaintiffs' products under the name "Esso" would cause no confusion. Plaintiffs contend that practices of the plaintiffs since 1937 are changed in such a manner that the motoring public is now able to distinguish between the products of the plaintiffs and those of the defendants. This Court finds at the outset that the plaintiffs herein stand before this Court of Equity with unclean hands. Their appeal to the conscience of the Chancellor has fallen on stony ground. Relief to them would be denied on this ground alone, even had they met the burden of proof required with clear and convincing evidence. In addition, the plaintiffs have not met the burden of proof on any of their essential contentions.

In 1937 Standard Oil (Indiana) was doing business as an operating company and as a holding company. It was operating on its own name in the fourteen states of the midwest and through subsidiaries in other parts of the United States. Its subsidiary, the Utah Oil Refining Company, operated in Utah, Idaho and Nevada, and after 1937 began to market in Washington and Oregon. A subsidiary, Pan-Am Southern Corporation, operated in Louisiana, Mississippi, Alabama and Tennessee. A subsidiary, the defendant in this case, American, operated in New York, New Jersey, Pennsylvania, Delaware, Maryland, Virginia, West Virginia, North Carolina, South Carolina, Georgia, Florida, Ohio and the District of Columbia. In 1937 these subsidiaries were not wholly owned by defendant Standard Oil (Indiana). Between 1937 and 1961 Standard Oil (Indiana) acquired all of the outstanding stock of these subsidiaries and merged them into a single wholly-owned subsidiary, defendant, American. Since 1961 Standard Oil (Indiana) has operated only as a holding company and a policy-making company.

From 1937 to 1961 the defendants' subsidiaries used a variety of brand names of gasoline, service station color schemes, and other marks and symbols. Prior to 1961 Standard Oil (Indiana) began to adopt the torch and oval as an I D sign on the service stations of its subsidiaries. It also began to adopt certain slogans in connection with radio, television and other advertising. The slogans were: "You expect more from ______ and you get it" and "As you travel, ask us". The red, white and blue color scheme was adopted at various times by its subsidiaries prior to 1961 and was uniformly adopted by all of them in 1961. Since 1937 to date, the service stations of defendants in the midwest have had the name "Standard" on the stations and in the I D sign. Since 1937 to date, the defendants' color scheme in the midwest has been red, white and blue on the service stations. From 1937 to date, the defendants have used at various times and during various intervals in the midwest the initials "S O" and "S O C O" on road maps, on radio and television advertising, on newspaper and magazine ads, on trucks, and certain products such as charcoal starter, Solite lighter fluid and on gasoline pumps. There is no indication from the evidence that the defendants have ever abandoned or intended to abondon the use of the letters "S O" or "S O C O".

Since 1961 the I D sign of defendant American has continued to carry the name ...