American Cyanamid Corp. v. Connaught Laboratories, Inc.

• Decision Date: 05 September 1986
• Docket Number: No. 1581,D,1581
• Citation: 800 F.2d 306
• Parties: , 231 U.S.P.Q. 128 AMERICAN CYANAMID CORPORATION, Plaintiff-Appellee, v. CONNAUGHT LABORATORIES, INC., Defendant-Appellant. ocket 86-7447.
• Court: U.S. Court of Appeals — Second Circuit

Page 306

800 F.2d 306

55 USLW 2204, 231 U.S.P.Q. 128

AMERICAN CYANAMID CORPORATION, Plaintiff-Appellee, v. CONNAUGHT LABORATORIES, INC., Defendant-Appellant.

No. 1581, Docket 86-7447.

United States Court of Appeals, Second Circuit.

Argued July 16, 1986.

Decided Sept. 5, 1986.

Cynthia Clarke Dale, Washington, D.C., (Sughrue, Mion, Zinn, MacPeak & Seas, Washington, D.C., Ludwig Saskor, Smith, Steibel, Alexander & Saskor, New York City, of counsel), for defendant-appellant.

Marie V. Driscoll, New York City (Townley & Updike, New York City, Stanley J. Silverberg, American Cyanamid Co., Wayne, N.J., of counsel), for plaintiff-appellee.

Before WINTER and MAHONEY, Circuit Judges, and CABRANES, District Judge. ^*

WINTER, Circuit Judge:

Connaught Laboratories, Inc. ("Connaught") appeals from Judge Owen's preliminary injunction enjoining the use of the trademark HibVAX for Connaught's Haemophilus influenzae type b vaccine and requiring the recall of any of the HibVAX vaccine already shipped. The district judge found that American Cyanamid Corporation, the manufacturer of an identical vaccine bearing the trademark HIB-IMUNE, was likely to prevail on the merits of its trademark infringement claim against Connaught. We believe there is no infringement as a matter of law. Because plaintiff's other claims are also without merit, we reverse and order the complaint dismissed.

BACKGROUND

The parties to this action manufacture chemically identical vaccines that immunize children against Haemophilus influenzae type b diseases. One generic term for such diseases is "Hib"; the other is "H-FLU." The vaccine manufactured by American Cyanamid's Lederle Laboratories Division ("Lederle") is sold under the registered trademark "HIB-IMUNE"; the vaccine manufactured by the defendant Connaught is sold under the name "HibVAX." The Lederle vaccine went on the market in December 1985, the Connaught vaccine in April 1986. The only other manufacturer of a Hib vaccine is Praxis Biologics, Inc., whose product went on sale in April 1985 and has dominated the market since.

The vaccines in question are not sold to the public either by prescription or over the counter; instead, they are sold only to physicians or to pharmacies, wholesalers, and hospitals that resell to physicians. These vaccines are administered to patients only by licensed medical personnel at doctors' offices, clinics, and other medical facilities.

Both vaccines are packaged in pairs of small bottles. One bottle contains the active ingredient; the other contains a diluent that is mixed with the active ingredient to reconstitute the vaccine before it is administered to the patient. A package of HibVAX contains five doses of active ingredient in one bottle and somewhat more than five doses of diluent in the other bottle; a package of HIB-IMUNE has five bottles containing one dose of active ingredient and five bottles containing slightly more than one dose of diluent.

The proper dosage of either HibVAX or HIB-IMUNE is 0.5 milliliters of the reconstituted vaccine. This dose is clearly stated on the outside of the packages, on the individual bottles, and in package inserts. The instructions for mixing and administering the vaccines are also specifically set forth in the package inserts.

The full generic name of the Hib vaccine, "Haemophilus polysaccharide vaccine," appears on the front of each package of HIB-IMUNE and HibVAX in larger type than the trademark. The generic name of the vaccine also appears on each bottle label in type as prominent as the trademark. In addition, the name of the manufacturer, either Lederle or Connaught, appears on each package and bottle of their respective vaccines.

The colors used on HIB-IMUNE packages and labels are yellow, blue, and white. Lederle uses the same color scheme for most of its other pharmaceutical products. In contrast, the colors used on HibVAX packages and labels are peach and white. The caps on bottles of HIB-IMUNE are blue and yellow, while the caps on bottles of HibVAX are silver.

Lederle commenced this action on May 5, 1986, alleging trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. Sec. 1051 et seq., and unfair competition, dilution, and deceptive trade practices under New York law. On May 28, 1986, Judge Owen granted Lederle's application for a preliminary injunction against the use of the trademark HibVAX, which he found to be "potentially confusing[ly] similar" to the trademark HIB-IMUNE. Memorandum Opinion at 6. He subsequently ordered Connaught to initiate a recall of all products bearing the trademark HibVAX. The injunction and order have been stayed

pending our disposition of this expedited appeal.

DISCUSSION

We believe that Connaught's mark for its vaccine does not infringe the Lederle trademark. Moreover, given the lack of deceptive intent or conduct by Connaught in marketing its product, the dissimilar trade dress of the two vaccines, and the market in which they are sold, there is no chance of confusion between the two products. Neither plaintiff's federal trademark action nor its state claims have any merit, therefore, and must be dismissed.

A trademark holder cannot appropriate generic or descriptive terms for its exclusive use, and a trademark infringement finding thus cannot be based on the use of a generic or descriptive term such as "Hib." See, e.g., Flintkote Co. v. Tizer, 266 F.2d 849, 852 (3d Cir.1959); Upjohn Co. v. Schwartz, 246 F.2d 254, 262 (2d Cir.1957); Eastern Wine Corp. v. Winslow-Warren, Ltd., 137 F.2d 955, 959 (2d Cir.), cert. denied, 320 U.S. 758, 64 S.Ct. 65, 88 L.Ed. 452 (1943). Trademark protection benefits consumers by enabling them to select products on the basis of their origin. This encourages sellers to create and maintain good will by marketing products of reliable quality that consumers associate with their mark. Consumers will not benefit, however, if trademark law prevents competitors from using generic or descriptive terms to inform the public of the nature of their product. Were the first user of a generic or descriptive term, say "bicycle," able to exclude later entrants from use of that term, the former would be able not only to identify itself as the maker of the bicycle and to capitalize on whatever good will it has built up--legitimate purposes of trademark protection--but also to impair the ability of competitors to describe their product as bicycles--a wholly counterproductive result so far as consumers are concerned. See, e.g., Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir.) ("word which is in its primary meaning merely descriptive of the goods to which it is applied may not be appropriated as the exclusive trademark of a single seller, since one competitor will not be permitted to impoverish the language of commerce by preventing his fellows from fairly describing their own goods"), cert. denied, 400 U.S. 916, 91 S.Ct. 174, 27 L.Ed.2d 155 (1970). Accordingly, marks that become generic are no longer valid trademarks. See, e.g., King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir.1963) (thermos bottle); Dupont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.1936) (cellophane), cert. denied, 304 U.S. 575, 58 S.Ct. 1047, 82 L.Ed.2d 1539 (1938).

This principle applies equally to a generic component of a trademark. Although such a component will not necessarily render the entire mark invalid, its presence does affect the analysis of whether a competitor's mark containing the same component is likely to create confusion. As a result, because the generic term "Hib" may not be appropriated by Lederle for its exclusive use, any likelihood of confusion between HibVAX and HIB-IMUNE, and any consequent finding of infringement, must be based on a similarity between the suffixes "VAX" and "IMUNE." The very statement of the issue, however, resolves it. The suffixes are totally different. They are of different length, sound, and appearance. They share not even a letter in common.

Lederle makes much of the fact that the Connaught's suffix "VAX" and its own suffix "IMUNE" are close in intended meaning and concept, and argues therefore that the former infringes the latter. We disagree. Even if the intended meaning and concept are similar, they are wholly descriptive....