Carter-Wallace, Inc. v. Procter & Gamble Company

• Citation: 434 F.2d 794
• Decision Date: 10 November 1970
• Docket Number: No. 25280.,25280.
• Parties: CARTER-WALLACE, INC., a corporation, Appellant, v. The PROCTER & GAMBLE COMPANY, The Procter & Gamble Distributing Company, the Procter & Gamble Manufacturing Company, A. B. C. Market Corp., and Oliver Drug Company, corporations, Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

434 F.2d 794 (1970)

CARTER-WALLACE, INC., a corporation, Appellant, v. The PROCTER & GAMBLE COMPANY, The Procter & Gamble Distributing Company, the Procter & Gamble Manufacturing Company, A. B. C. Market Corp., and Oliver Drug Company, corporations, Appellees.

No. 25280.

United States Court of Appeals, Ninth Circuit.

November 10, 1970.

COPYRIGHT MATERIAL OMITTED

Warren L. Kern, Richard A. Wallen, of Harris, Kiech, Russell & Kern, Los Angeles, Cal., Louis Kunin, and V. T. Giordano, of Von Maltitz, Derenberg, Kunin & Janssen, New York City, for appellant.

Richard E. Sherwood, Ralph W. Dau of O'Melveny & Myers, Los Angeles, Cal., Thomas S. Calder and John E. McDowell, of Dinsmore, Shohl, Coates & Deupree, Cincinnati, Ohio, for appellees.

Before HAMLEY and KILKENNY, Circuit Judges, and LEVIN,^* District Judge.

GERALD S. LEVIN, District Judge.

This is an action for unfair competition and common law trademark infringement arising from defendant's¹ alleged infringement of plaintiff's² personal deodorant slogan, "Use ARRID * * * To Be Sure" and its variant, "To Be Sure," used in connection with plaintiff's advertising of its personal deodorant under the trademark ARRID.

Plaintiff's Amended and Supplemental Complaint sought to enjoin defendant from marketing a personal deodorant under an allegedly confusingly similar trademark, SURE. Jurisdiction of the District Court was based on diversity of citizenship (28 U.S.C. § 1332) and was not contested below.

Defendant counterclaimed for declaratory relief and to enjoin plaintiff's alleged infringement of the federally registered trademark SURE for personal deodorant through plaintiff's recent use of the trademark SAFE 'N SURE for a similar product. Plaintiff's thereafter counterclaimed for cancellation of said SURE registration.

The case was tried without a jury, and the District Court entered a judgment for defendant on all counts of the complaint, dismissing plaintiff's Amended and Supplemental Complaint and its counterclaim and sustaining defendant's counterclaims. This appeal was thereupon perfected.

The District Court's Findings of Facts may be summarized fairly as follows:

Plaintiff has manufactured and sold ARRID in interstate commerce since 1936. Beginning about 1947 ARRID was advertised with the slogans "Don't Be Half-Safe," alone or in conjunction with "Use ARRID To Be Sure" or "Be ARRID Safe — Use ARRID To Be Sure." This approach was followed until at least 1953. The principal emphasis of plaintiff's advertising during this period was placed on "Don't Be Half-Safe," and this was the dominant part of its slogans.

Subsequent to 1953, plaintiff used the "Don't Be Half-Safe" theme with less regularity, although it was reintroduced into television advertising as late as 1964. "Use ARRID To Be Sure" and its variants were used frequently but often with significant omissions.

No use was made of the "Use ARRID To Be Sure" slogan in 1957-1960 and 1960-1962. No use was made of this slogan in the test market and introductory stage of the successful ARRID Extra-Dry deodorant, nor in the case of other less important ARRID products.

Beginning about 1950, plaintiff used "Don't Be Half-Safe" and later "Don't Be Half-Safe, Be Completely Safe" on the packaging of its ARRID cream deodorant. The words "Use ARRID To Be Sure" also appeared, but less prominently. This packaging style continued through 1955, after which "Don't Be Half-Safe" was discontinued. Plaintiff continued to use the words "Use ARRID To Be Sure" on the side panel of substantially all of its cream deodorant packaging.

The second major product from of ARRID deodorant, a roll-on, was introduced in 1957, but the words "Use ARRID To Be Sure" were not used in the packaging of this product until 1964.

In about 1964 plaintiff introduced an aerosol spray form of ARRID deodorant. No consistent pattern was followed regarding the use of "Use ARRID To Be Sure" or variants on spray containers. In 1967-68 plaintiff introduced an antiperspirant spray called ARRID Extra-Dry Spray. No use was made of "Use ARRID To Be Sure" on the containers of this product until May, 1968, when it was placed in small print on the back of the container.

No combination of words used by plaintiff containing "sure" (or the word "sure" alone) functioned as a trademark for plaintiff's deodorant products, such products being identified at all times by the ARRID trademark. "Use ARRID To Be Sure" functioned as a product claim and as a description of the characteristics of the product rather than as an indication of the origin of the product.

During the period in which plaintiff used "Don't Be Half-Safe" on its packaging in conjunction with "Use ARRID To Be Sure," plaintiff did not regard the latter as a separate trademark or slogan. Plaintiff obtained a federal registration of "Don't Be Half-Safe" in 1951, and obtained registration of several additional deodorant trademarks, but failed to seek registration of "Use ARRID To Be Sure" until 1964, on the eve of its dispute with defendant.

The words "To Be Sure" were not used apart from "ARRID To Be Sure" or "Use ARRID To Be Sure" as a separate slogan either before or after 1953. No slogan or combination of words that included the word "sure" served to identify or distinguish plaintiff's deodorant products either before or after 1953.

The word "sure" has been used in slogans or copy by other sellers of deodorants and deodorant soaps both on packaging and in media advertising. Some of these uses predated plaintiff's, and these uses were known to plaintiff when it commenced its own advertising techniques. Uses of "sure" to convey a selling message similar to plaintiff's occurred both before and after 1953.

Despite plaintiff's extensive advertising of ARRID deodorant, the evidence at trial failed to show a significant degree of consumer association or identification of any slogan including the word "sure" with plaintiff or with ARRID deodorant in either the pre- or post-1953 period.

Defendant's rights stem from the commencement of marketing personal deodorant products by Lexicon, Products, Inc. hereinafter "Lexicon" in January, 1953, using the trademark SURE. Lexicon also used the slogan "Be Sure With SURE" on deodorant containers and in much of its advertising. Lexicon sold SURE on a relatively small scale but did so continuously between 1953 and 1964.

Lexicon federally registered the trademark SURE based on an application filed in February, 1957. The application was published for opposition in April, 1958. Plaintiff did not oppose this application, but an opposition was instituted by McKesson & Robbins, Inc. Lexicon prevailed before the Trademark Trial and Appeal Board, and its registration was issued March 28, 1961.

Plaintiff made no objection to the sale of SURE deodorant by Lexicon, although it appears that plaintiff had notice of Lexicon's claim of ownership.

Defendant considered the name SURE for a personal deodorant product in about 1954. Defendant thereafter discovered Lexicon's claimed ownership of the mark and concluded that the mar was preempted. On two occasions, in 1956 and 1958, defendant communicated with Lexicon regarding possible assignment of the mark, but in both instances Lexicon failed to respond because of its lack of interest in parting with the SURE trademark.

In 1963 defendant was asked to sell its trademark CONTACT to Smith, Kline & French, Inc., which was marketing cold remedies under the mark CONTAC. After negotiation, defendant agreed to exchange its CONTACT mark for the SURE mark if it could be obtained from Lexicon. Smith, Kline & French, Inc., acting through an intermediary, arranged for the acquisition of the SURE mark from Lexicon. On February 25, 1964, Lexicon assigned its rights and federal registration of SURE to defendant (Prior to that date, Lexicon was not aware that defendant was the intended assignee.)

Unknown to defendant, negotiations for the sale of the SURE mark had occurred between Lexicon and International Latex Corp. prior to February 25, 1964. Shortly after the assignment to defendant, International Latex made a claim against Lexicon and defendant based on an alleged prior contract with Lexicon for acquisition of the SURE mark. When defendant would not accede to this claim, International Latex commenced suit in federal court against defendant Lexicon and principals of Lexicon. This action continued until March, 1968, when the parties resolved the dispute by an agreement under which International Latex relinquished all claims to the SURE mark.

During the period of the above litigation and thereafter defendant sold deodorant products with the mark SURE, albeit in small quantities. Defendant has not advertised or promoted SURE deodorant other than by listing the product in trade directories. Defendant's sales of SURE deodorant were not made for profit but for the purpose of continuing the business acquired from Lexicon so that the SURE mark would be available for use on a major advertised product when the legal problems posed by the International Latex litigation and the instant case were resolved.

In August, 1964, shortly before its letter of protest to defendant, plaintiff had filed an application in the United States Patent Office to register "Use ARRID To Be Sure." The trademark examiner rejected the application for reasons including conflict with defendant's SURE registration. Plaintiff's House Counsel asserted that there was no likelihood of confusion between "Use ARRID To Be Sure" and SURE.

In October, 1965, plaintiff filed a second application, and again asserted that confusion was unlikely between its "Use ARRID To Be Sure" and SURE. This second application was withdrawn by plaintiff shortly before the commencement of the instant action.

As to the use of SAFE'N SURE under defendant's counterclaim, defendant had priority of use and plaintiff has conceded that concurrent use of SURE with plaintiff's SAFE 'N SURE as brand names...