David Sherman Corporation v. Heublein, Inc.

• Citation: 340 F.2d 377
• Decision Date: 18 February 1965
• Docket Number: No. 17582.,17582.
• Parties: DAVID SHERMAN CORPORATION, Doing Business as the Sarnoff Company, Appellant, v. HEUBLEIN, INC., Doing Business as Ste Pierre Smirnoff, Fls, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

340 F.2d 377 (1965)

DAVID SHERMAN CORPORATION, Doing Business as the Sarnoff Company, Appellant, v. HEUBLEIN, INC., Doing Business as Ste Pierre Smirnoff, Fls, Appellee.

No. 17582.

United States Court of Appeals Eighth Circuit.

January 12, 1965.

Rehearing Denied February 18, 1965.

John D. Pope, III, St. Louis, Mo., made argument for appellant and filed brief with Gary L. Newtson, St. Louis, Mo.

Harold I. Kaplan, of Blum, Moscovitz, Friedman, Blum & Kaplan, New York, N. Y., made argument for appellee and filed brief with Jos. J. Gravely, St. Louis, Mo., and Alex Friedman, Martin J. Beran and Paul R. Dohl, of Blum, Moscovitz, Friedman, Blum & Kaplan, New York, N. Y.

Before VAN OOSTERHOUT, BLACKMUN and MEHAFFY, Circuit Judges.

BLACKMUN, Circuit Judge.

Heublein, Inc., distiller and distributor of Smirnoff vodka in the United States, instituted this action, based on alleged trademark infringement and unfair competition, (a) to enjoin David Sherman Corporation from using "Sarnoff" or any imitation of Heublein's name "Smirnoff" or of its "label or the color scheme and the design thereof" and (b) for an accounting and damages. The district court, 223 F.Supp. 430, granted injunctive relief but denied damages; it also dismissed on the merits a counterclaim filed by the defendant. Sherman's appeal is concerned with only the injunction; Heublein has not cross-appealed.

The district court, by its judgment, determined that Heublein owned the following trademarks which were registered under § 1 and uncontestable under § 15 of the Trade-Mark Act of 1946:

No. 513,428, issued August 9, 1949, for "Smirnoff" for vodka;

No. 328,594, originally issued October 1, 1935, but renewed October 1, 1955, for a crown and drape design for vodka;

No. 330,899, originally issued December 17, 1935, but renewed December 17, 1955, for a crown design for vodka.

The court also determined that Sherman had infringed plaintiff's Smirnoff registration No. 513,428 by its use of "Sarnoff" for vodka; that it had "copied the color scheme, the drape design and the crown design" of the Smirnoff label; and that, by its own vodka labels, it had infringed Heublein's design registrations Nos. 328,594 and 330,899.

The interesting history of the origin and development of Smirnoff vodka is related in Judge Harper's opinion at pp. 431-432 of 223 F.Supp. It is not in dispute and it need not be repeated here. It suffices to say that Smirnoff is an old and established name in the vodka market; that in 1933 Rudolph Kunett, a long-time friend of the Smirnoff family, by purchase acquired the Polish Smirnoff firm's United States formulae, processes, and trademarks; and that Heublein's corporate predecessor acquired these in turn from Kunett by purchase in 1939.

The defendant, a Missouri corporation, does business as the Sarnoff Company. Its predecessor began to sell vodka under the Sarnoff name and labels in the Saint Louis area in 1956. David S. Sherman, Sr., its president and sole shareholder, had been head of a concern which distributed Smirnoff vodka in Arkansas for three or four years around 1936. It is conceded that the defendant has refused, after demand by the plaintiff, to discontinue the use of Sarnoff for vodka.

The issues as they come to us have been narrowed. Sherman here confines its argument to asserting that the district court erred (a) in finding, p. 434 of 223 F.Supp., that the defendant's mark "SARNOFF for vodka is so similar to plaintiff's trademark SMIRNOFF for vodka as to amount to a colorable imitation likely to cause confusion or mistake or to deceive purchasers as to the source of the contents of bottles so labeled", and in holding that the defendant's labels infringe Heublein's drape and crown designs and incontestable marks, and (b) in finding that Sherman copied the color scheme and designs of the Smirnoff label. The appeal thus rests primarily on the trade-mark infringement aspect of the case.

When the complaint was filed on September 22, 1960, § 32 of the 1946 Act, 15 U.S.C. § 1114, provided:

"(1) Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services * * * shall be liable to a civil action by the registrant for any or all of the remedies hereinafter provided * * *."¹

Section 45, 15 U.S.C. § 1127, then read in part as follows:

"The term `colorable imitation\' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive purchasers."²

This court in prior opinions has enunciated the well known principles generally applicable in this area of trademark law:

1. The standard, as the language of the statute indicates, is likelihood of confusion and deceit of actual or prospective purchasers. Cleo Syrup Corp. v. Coca-Cola Co., 139 F.2d 416, 418, 150 A.L.R. 1056 (8 Cir.1943), cert. denied 321 U.S. 781, 64 S.Ct. 638, 88 L.Ed. 1074; Dietene Co. v. Dietrim Co., 225 F.2d 239, 243 (8 Cir.1955).

2. It is not necessary to show actual deceit. "It is sufficient to show that such deception will be the natural and probable result of the defendant's acts". Queen Mfg. Co. v. Isaac Ginsberg & Bros., 25 F.2d 284, 288 (8 Cir.1928); Esso, Inc. v. Standard Oil Co., 98 F.2d 1, 5-6 (8 Cir.1938); United Drug Co. v. Obear-Nester Glass Co., 111 F.2d 997, 1000 (8 Cir.1940), cert. denied 311 U.S. 665, 61 S.Ct. 22, 85 L.Ed. 427.

3. The purchaser contemplated is the ordinary one who uses ordinary caution "buying under the usual conditions prevailing in the trade, and giving such attention as such purchasers usually give in buying that class of goods", Queen Mfg. Co. v. Isaac Ginsberg & Bros., supra, p. 287 of 25 F.2d; Seven Up Co. v. Cheer Up Sales Co., 148 F.2d 909, 911 (8 Cir.1945), cert. denied 326 U.S. 727, 66 S.Ct. 32, 90 L.Ed. 431, or, as has been said otherwise, "an ordinarily prudent purchaser". United Drug Co. v. Obear-Nester Glass Co., supra, p. 999 of 111 F.2d; S. S. Kresge Co., v. Winget Kickernick Co., 96 F.2d 978, 987 (8 Cir. 1938), cert. denied 308 U.S. 557, 60 S.Ct. 79, 84 L.Ed 468; F. W. Fitch Co. v. Camille, Inc., 106 F.2d 635, 639 (8 Cir. 1939).

4. Each case stands upon its own peculiar facts. Dietene Co. v. Dietrim Co., supra, p. 243 of 225 F.2d.

5. Whether the similarity deceives or is likely to deceive is a question of fact. Cleo Syrup Corp. v. Coca-Cola Co., supra, p. 417 of 139 F.2d; Seven Up Co. v. Cheer Up Sales Co., supra, p. 911 of 148 F.2d; Star Bedding Co. v. Englander Co., 239 F.2d 537, 543 (8 Cir.1957); Neely v. Boland Mfg. Co., 274 F.2d 195, 201 (8 Cir.1960)

6. "Similarity of sound, as well as appearance, of the words or letters may constitute infringement". Esso, Inc. v. Standard Oil Co., supra, p. 5 of 98 F.2d. To the same effect are LaTouraine Coffee Co. v. Lorraine Coffee Co., 157 F. 2d 115, 117 (2 Cir.1946), cert. denied 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663; Abramson v. Coro, Inc., 240 F.2d 854, 857 (5 Cir.1957); and Sterling Drug, Inc. v. Lincoln Laboratories, 322 F.2d 968, 971 (7 Cir.1963).

7. Some dissimilarity in form and color is not conclusive against infringement. Infringement may exist "where the substantial and distinctive part of the trademark is copied or imitated". Queen Mfg. Co. v. Isaac Ginsberg & Bros., supra, p. 287 of 25 F.2d; Reid, Murdoch & Co. v. H. P. Coffee Co., 48 F.2d 817, 819 (8 Cir.1931), cert. denied 284 U.S. 621, 52 S.Ct. 9, 76 L.Ed. 529.

8. The plaintiff has the burden of proof. Checker Food Prod. Co. v. Ralston Purina Co., 232 F.2d 477, 481 (8 Cir.1956). That burden may be sustained by proving actual deceit of purchasers or the likelihood of their deceit. Cleo Syrup Corp. v. Coca-Cola Co., supra, p. 418 of 139 F.2d.

Sherman would avoid the application of these general rules here by arguing that the likelihood-of-confusion test, while perhaps properly and sensibly applicable where there has been no opportunity to determine whether confusion will actually occur, is subordinate to the actual experience of the market place; that the fact that no deception or confusion has been effected after a lapse of substantial time is strongly probative; that not a single instance of confusion was proved by Heublein, even though it employed teams of paid investigators in the Saint Louis market; that the respective products of the plaintiff and the defendant were sold side by side in that market for six years without confusion; that there is no evidence of copying; and that the color scheme and designs are conventional ones present on many vodka labels.

We recognize that the courts have regarded the absence of actual confusion as an important factor. Indeed, on occasion they have gone so far as to say that the best test of proving likelihood of deception is actual deception itself. Lapointe Machine Tool Co. v. J. N. Lapointe Co., 115 Me. 472, 99 A. 348, 354 (1916); Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 639-640 (9 Cir.1963); Mishawaka Rubber & Woolen Mfg. Co. v. Panther-Panco Rubber Co., 153 F.2d 662, 665 (1 Cir.1946), cert. denied 329 U.S. 722, 67 S.Ct. 64, 91 L.Ed. 625; Societe Anonyme, etc. v. Julius Wile Sons, 161 F.Supp. 545, 548 (S.D.N.Y.1958); Eastern Wine Corp. v. Winslow-Warren, Ltd., 137 F.2d 955, 960 (2 Cir.1943), cert. denied 320 U.S. 758, 64 S.Ct. 65, 88 L.Ed. 452. This court itself has said, in Maas & Waldstein Co. v. American Paint Corp., 288 F.2d 306, 307 (8 Cir.1961);

"It is significant, though not controlling, that during the years the two trade-marks have been used in the same territory by their respective owners, no instances of deceit or confusion in respect to them has been shown * * *."

And in Star Bedding Co. v. Englander Co., supra, p. 543 of 239 F.2d, we...