American Aloe Corp. v. Aloe Creme Laboratories, Inc.

• Citation: 420 F.2d 1248
• Decision Date: 25 February 1970
• Docket Number: No. 17250.,17250.
• Parties: AMERICAN ALOE CORPORATION, Plaintiff-Appellant, v. ALOE CREME LABORATORIES, INC., Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

420 F.2d 1248 (1970)

AMERICAN ALOE CORPORATION, Plaintiff-Appellant, v. ALOE CREME LABORATORIES, INC., Defendant-Appellee.

No. 17250.

United States Court of Appeals Seventh Circuit.

January 9, 1970.

Rehearings Denied February 25, 1970.

COPYRIGHT MATERIAL OMITTED

David R. MacDonald, James G. Barnes, Chicago, Ill., for appellant; Baker & McKenzie, Chicago, Ill., of counsel.

Charles J. O'Laughlin, James R. McKnight, Chicago, Ill., for appellee.

Before CASTLE, Chief Judge, FAIRCHILD, Circuit Judge and BEAMER, District Judge.²

ON PETITIONS FOR REHEARING¹

BEAMER, District Judge.

This is an appeal from the Northern District of Illinois involving claims of trademark infringement and invalidity, unfair competition and antitrust violation and counterclaims based on similar charges. The central question before the Court is the validity of defendant-appellee's "ALO-" trade names, and plaintiff-appellant's alleged infringement thereof.

Defendant Aloe Creme Laboratories, Inc. began the sale of an ointment in 1953, and cosmetics in 1957, both containing the gel of the sub-tropical aloe vera plant. The use of the fresh gel from the cut leaves of this plant had long been known to the natives of the region in which it is grown as a remedy for sun burn. Prior to defendant's entry into the market and its development of a process of stabilizing and preserving the gel, it had too short a shelf life to be commercially valuable. Due to defendant's efforts over the intervening years, its products, containing Aloe vera gel, became widely known and commercially successful. Beginning in 1953 and throughout this period, the defendant operated under the trade name "Aloe Creme Laboratories, Inc." Its first product was known under the trade name ALO-CREME OINTMENT which was changed to ALO-OINTMENT in 1963. Commencing in 1957, defendant began the manufacture of various cosmetics known as ALO-CREME FACE, and ALO-CREME HANDS, and ALO-CREME BODY, which names were abbreviated to ALO-FACE, ALO-HANDS, and ALO-BODY in 1963. Since 1963, the defendant has also used the trademarks ALO-PLUS, TRAV-ALO, ALO-MOISTURE PLUS, ALO-V SKIN CLEANSER, ALO-BEAUTY MATTE, ALO-TONE, ALO-ROUGE, ALO-LIPSTICK, ALO-POUDRE, ALO-V SHAMPOO, ALO-COSMETICS, ALO-CABANA SET, ALO-LEGS, FASHION TAN and AFTER TAN, all of which were the subject of trademark registrations.

Plaintiff commenced operations on January 20, 1964, and made its first sales of products bearing trademarks on March 8, 1965. Plaintiff adopted as its trademarks, HOUSE OF ALOE, ALOE ESSENCE, DESIGN OF PLANT, JEL D'ALOE, MASQUE OF ALOE and TROPICALOE. After defendant notified plaintiff of its claim to a family of ALO trademarks which it claimed was infringed by plaintiff's use of ALOE in its trade names, plaintiff commenced this action asking a declaratory judgment finding defendant's trademarks invalid and upholding plaintiff's right to use its ALOE trademarks, together with a claim of unfair competition and antitrust violation. Defendant counterclaimed for trademark infringment and unfair competition. The district court found for the defendant-counterclaimant on all issues, dismissed the complaint, awarded treble damages and enjoined the plaintiff from using ALOE in its trade names or trademarks.

Central to a determination of the issues in this case is whether defendant's use of the term ALO- is sufficient to preclude others from using the words Aloe or Alo. Also in question is defendant's claim to trademark registration of "ALO-and Design". We hold that defendant has no trademark rights, through use or registration, in the term "ALO-" by itself.

Aloe is the generic name of a large genus of succulent plants and of the drugs prepared from the aloe vera variety of that plant. (Webster's New International Dictionary, 2d ed. 1934.) In particular, for purposes of this case, it is the generic name for the gel of the Aloe vera plant. It is undisputed that in the absence of a strong showing of secondary meaning, a generic name cannot be the basis of a trademark. Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938) (shredded wheat); Henry Heide, Inc. v. George Ziegler Co., 354 F.2d 574 (7th Cir.1965) (ju-jubes); Donald F. Duncan, Inc. v. Royal Tops Manufacturing Co., 343 F.2d 655 (7th Cir.1965) (yoyos).

Defendant concedes that this is the law, but maintains that it is not marketing "Aloe" as such, but is selling cosmetics containing Aloe, which are not encompassed within the generic or descriptive name and with respect to which the word "Aloe" is at most, suggestive. In view of the fact that Aloe is the distinguishing ingredient in defendant's products upon which its claims to special effectiveness are based, the Court must find that "Aloe" is the generic and descriptive term for that class of cosmetics containing Aloe and that any claim to a trademark in the name must be based on "secondary meaning".

The case is unlike Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 41 S.Ct. 113, 65 L.Ed. 189 (1920) where the term Coke or Coca was originally descriptive of the extract of Coca leaves, or cocaine contained in the plant, but which lost this generic sense when the plaintiff was compelled to remove any effective cocaine from the product, after which Coca or Coke acquired a purely secondary meaning. Neither is this case controlled by those decisions which have found that exact copies or phonetic equivalents infringe purely suggestive names which have acquired trade name significance, such as Douglas Laboratories Corp. v. Copper Tan, Inc., 210 F.2d 453 (2nd Cir.1954) which said "copper tone" for sun tan lotion was suggestive rather than descriptive, and Orange Crush Co. v. California Crushed Fruit Co., 297 F. 892 (D.C.Cir.1924) which said "Crush" was not descriptive of a soft drink and was not used in its generic sense; nor is it in the same class with those which hold that terms having a general descriptive but not denominative sense acquired secondary meaning. Keller Products, Inc. v. Rubber Linings Corp., 213 F.2d 382, 47 A.L.R.2d 1108 (7th Cir.1954) (Tub Cove v. Tub Kove); Speaker v. Shaler Co., 87 F.2d 985 (7th Cir.1937) (Hot Patches v. Hot Patches — for vulcanizing products); Barton v. Rex-Oil Co., Inc., 29 F.2d 474 (3rd Cir. 1928) (Dynashine v. Dye & Shine — for shoe polish). It must also be distinguished from the Supreme Court's decision in Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195 (1939) where the essentially descriptive and denominative term "nu-enamel" had acquired a secondary meaning at least partially through its widespread application to products other than enamel — such as paint brushes.

This case is properly classified with those where the term in question was the common name for the article sold and hence denominative of that article regardless of source. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938) (shredded wheat); Henry Heide, Inc. v. George Ziegler Co., 354 F.2d 574 (7th Cir.1965) (ju-jubes); Donald F. Duncan, Inc. v. Royal Tops Manufacturing Co., 342 F.2d 655 (7th Cir.1965) (yo-yos) and particularly with those cases where the term was denominative of the prime or distinguishing ingredient in the product. Compare LeBlume Import Co. v. Coty, 293 F. 344 (2nd Cir.1923) (Lorigan v. L'Origan de Coty — for perfume); Pinaud, Inc. v. Huebschman, 27 F.2d 531 (E.D.N.Y.1928) (Lilas De France v. Lilas De France — for perfume); Wells & Richardson Co. v. Siegel, Cooper & Co., 106 F. 77 (N.D.Ill.1900) (Celery Compound v. Celery Compound) with Dixi-Cola Laboratories, Inc. v. Coca-Cola Co., 117 F.2d 352 (4th Cir.1941) (cola v. cola — for soft drink containing extract of cola nut). It is clear from an examination of the cases that while the test may be stated in the same language in both types of cases, it is much more difficult to establish secondary meaning in a denominative term (as used herein) than in a purely descriptive one.

The criteria for determining whether a denominative term has acquired the necessary secondary meaning to be a trademark are best described in the language of the Supreme Court in Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73, 79 (1938):

It is contended that the plaintiff has the exclusive right to the name `Shredded Wheat,\' because those words acquired the `secondary meaning\' of shredded wheat made at Niagara Falls by the plaintiff\'s predecessor. There is no basis here for applying the doctrine of secondary meaning. The evidence shows only that due to the long period in which the plaintiff or its predecessor was the only manufacturer of the product, many people have come to associate the product, and as a consequence the name by which the product is generally known, with the plaintiff\'s factory at Niagara Falls. But to establish a trade name in the term `shredded wheat\' the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.

In the recent decision of Henry Heide, Inc. v. George Ziegler Co., 354 F.2d 574, 576 (7th Cir.1965) dealing with the term "ju-jubes" for fruit flavored gum candy, this Court said: "But more importantly, a generic term in circumstances such as those before us may not be exclusively appropriated as a trademark, regardless of the length of time it may have been used by a single distributor at the consumer level and despite whatever promotional effort he may have expended to exploit it." See Donald F. Duncan, Inc. v. Royal Tops Manufacturing Co., 432 F.2d 655 (7th Cir. 1965); Dixi-Cola Laboratories, Inc. v. Coca-Cola Co., 117 F.2d 352 (4th Cir. 1941).

The defendant-appellee, Aloe Creme Laboratories, Inc., here seeks to accomplish what the courts prohibited in the above cases. Having originated the use of a stabilized aloe gel in cosmetics and...