Plough, Inc. v. Kreis Laboratories

Citation314 F.2d 635
Decision Date26 March 1963
Docket NumberNo. 17719.,17719.
PartiesPLOUGH, INC., Appellant, v. KREIS LABORATORIES, a Corporation, et al., Appellees.
CourtU.S. Court of Appeals — Ninth Circuit

Lyon & Lyon, Charles G. Lyon and Frank E. Mauritz, Los Angeles, Cal., for appellant.

Kendrick & Stolzy, Elwood S. Kendrick and John P. Scholl, Los Angeles, Cal., for appellee.

Before POPE, BARNES and JERTBERG, Circuit Judges.

BARNES, Circuit Judge.

Appellant brought suit below charging appellees 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 petually 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 C&omacrca Tan and one labeled C&omacrca 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 II, 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 (&omacr). 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 "kap'&emacrr". (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 C&omacrca 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 ___ "C&omacrca" ___ 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 York and Florida in July 1952 and in California in June 1952. This...

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