Merrick v. Sharp & Dohme

• Decision Date: 19 January 1951
• Docket Number: No. 10150.,10150.
• Citation: 185 F.2d 713
• Parties: MERRICK et al. v. SHARP & DOHME, Inc.
• Court: U.S. Court of Appeals — Seventh Circuit

185 F.2d 713 (1950)

MERRICK et al. v. SHARP & DOHME, Inc.

No. 10150.

United States Court of Appeals Seventh Circuit.

December 22, 1950.

Rehearing Denied January 19, 1951.

George E. Middleton, New York City, L. B. Mann, Chicago, Ill., for appellant.

Cyril A. Soans, William E. Anderson, Morgan L. Fitch, Jr., all of Chicago, Ill., for appellee.

Before DUFFY, FINNEGAN and LINDLEY, Circuit Judges.

FINNEGAN, Circuit Judge.

Defendant-appellant expresses the problem presented by this appeal in the following query: Does the filing in the Patent Office of a statutory notice of opposition to the registration of a trade-mark, which opposition is based upon the confusion-in-trade clause of the statute, create an actual controversy between the parties justiciable by a Federal Court under the Declaratory Judgment Act?

The trial court's findings of fact and conclusions thereon are reported in full in 89 F.Supp. at page 139. Consequently, we believe that, in this opinion, it will be necessary to restate only those vital facts which disclose the background of the dispute here involved.

On August 27, 1949, the plaintiffs A. C. Merrick and John R. Kneebone, citizens of Illinois and co-partners doing business as the Brookfield Laboratories, filed in the United States Patent Office their application for the registration of the trade-mark Sulfodene, which they had selected as the name for a medicinal preparation in liquid form for external application in the treatment of eczema of mycotic (parasitic fungi) origin. They sought registration of the mark in class six: "Chemicals, medicines and pharmaceutical preparations."

The application was in proper form, and on January 23, 1948 was passed by the examiner for publication in the Official Gazette of the United States Patent Office on February 17, 1948. 15 U.S.C.A. §§ 1051-1062.

The defendants Sharp & Dohme, Incorporated, a Delaware Corporation, under the provisions of the Trade-Mark Act, 15 U.S.C.A. § 1063, filed a timely notice of opposition to the registration by the plaintiffs of the trade-mark Sulfodene. The ground of opposition urged was that the mark in question so resembled two trade-marks of said defendant; namely: Sulfasuxidine, (No. 394,111) and Sulfathalidine, (No. 408,341) as to be likely when applied to the goods of the plaintiffs to cause confusion or mistake or to deceive purchasers. 15 U.S.C.A. § 1052(d).

The notice of opposition further alleged that both marks of the defendant are registered in class six: "Chemicals, medicines and pharmaceutical preparations" to be applied to certain medicinal preparations for internal use in the prevention and treatment of infections of the gastrointestinal tract; that these marks were registered in the Patent Office as trade-marks No. 394,111 on March 17, 1942, and trade-mark No. 408,341 on August 8, 1944, and that defendant-appellant has used them since November 5, 1941 and June 11, 1943, respectively.

The notice of opposition as filed was in the form prescribed by the Rules of the Patent Office in trade-mark cases. 37 C.F.R. 110.31; 15 U.S.C.A.Appendix following section 1127.

Because of the construction placed upon the notice of opposition by the trial court, we deem it advisable to here restate its exact language as to the grounds upon which the opposition rests:

"3. The applicant's trade-mark and the above trade-marks of the opposer are used upon similar goods or goods of the same descriptive properties.

"4. The applicant's trade-mark is confusingly similar to the above trade-marks of the opposer.

"5. The applicant's claimed date of first use, April 1946, is subsequent to the first use of the above trade-marks owned by Sharp & Dohme, Incorporated.

"6. Because of the use of a trade-mark by the applicant, consisting of the word Sulfodene, the trade and the public, upon seeing applicant's goods, are likely to be confused and misled into the belief that applicant's goods are manufactured and sold by the opposer, to the damage of the opposer.

"7. For the reasons above, and other reasons, the opposer will be damaged by the granting of the registration applied for by the applicant, and the application for registration should therefore be denied."

Thereafter, on May 20, 1948, applicants filed in the Patent Office their answer to defendant's "notice of opposition." They admit that trade-marks Nos. 394,111 and 408,341, were issued to the defendants, but disclaim knowledge as to the remaining allegations in paragraphs one and two of the "notice of opposition." The applicants deny the allegations in paragraphs numbered three and four of the "notice" and state that they are without knowledge as to matters alleged in paragraph 5. They deny the allegations made in paragraphs 6 and 7.

Paragraphs 6 and 7 of applicant's answer to defendant's "notice of opposition" were, on motion of the defendant, stricken from the answer by the Examiner of Interferences of the Patent Office on July 9, 1948. The matter contained in these paragraphs concerned the contention that the marks of the parties are not confusingly similar because of the issuance of a long list of registrations to other third parties for marks containing certain features which are common to the marks here in dispute. Pepsodent Co. v. Comfort Mfg. Co., 83 F.2d 906, 23 C.C.P.A., Patents, 1224; Traub Mfg. Co. v. R. Harris & Co., 53 F.2d 416, 19 C.C.P.A., Patents, 704.

So far as the record at bar discloses, no further proceedings were had in the Patent Office until the final hearing before the Examiner of Interferences, which was held on April 22, 1949.

However, on April 18, 1949, four days before the final hearing before the Examiner took place, the complaint in the action here under review was filed in the District Court of the United States for the Northern District of Illinois, Eastern Division.

The complaint sought a declaratory judgment under the provisions of 28 U.S. C.A. § 2201, and alleged diversity of citizenship as grounds for federal jurisdiction claiming that more than the statutory amount was involved. In their statement of claim the plaintiffs-appellees restated in detail the main facts that we have hereinbefore set out. As originally filed the complaint concluded:

"13. Plaintiffs aver that their trademark Sulfodene is not confusingly similar to defendant's trade-marks Sulfasuxidine and Sulfathalidine and that plaintiffs' use of their trade-mark Sulfodene on their medicinal preparation does not constitute an infringement of defendant's rights with respect to its trade-marks Sulfasuxidine and Sulfathalidine.

"14. In said Patent Office opposition proceeding, and in this suit, the sole question to be determined is whether plaintiffs' use of their trade-mark Sulfodene on their medicinal preparation for external application to the skin of domestic animals is likely to cause confusion or mistake or to deceive purchasers in view of defendant's use of its trade-marks Sulfasuxidine and Sulfathalidine in connection with pharmaceutical preparations for internal use. Plaintiffs further aver that the determination of said question by this Court will be res adjudicata in respect of said opposition proceeding, whereas, the determination of said question in the opposition proceeding would not be binding upon this or any other Court.

"15. Wherefore, plaintiffs demand:

"1. That this Court order, adjudge, and declare: (a) That the use of plaintiffs' trade-mark Sulfodene when applied to their medicinal preparation in liquid form for external application in the treatment of eczema of mycotic origin in domestic animals is not likely to cause confusion or mistake, or to deceive purchasers in respect of defendant's use of its trade-marks Sulfasuxidine and Sulfathalidine on any of defendant's products listed in its United States Patent Office trade-mark Registrations 394,111 and 408,341. (b) That defendant is not entitled to prevent plaintiffs' use of the trade-mark Sulfodene in connection with the sale, offering for sale, and advertising of plaintiffs' said medicinal preparation.

"2. That the defendant be restrained until the further order of this Court from proceeding further in said Patent Office opposition.

"3-4. Costs; such other further relief as to the Court may seem just."

On May 9, 1949, the defendant-appellant moved to dismiss the complaint, because (a) the court lacked jurisdiction over the subject matter of the suit, and (b) the complaint failed to state a cause of action upon which relief could be granted under Section 2201, Title 28 U.S.C.A.

About ten days after this motion was filed, and before it was argued, plaintiffs-appellees, under leave of court, amended their complaint by adding to it an additional averment that federal jurisdiction was invoked because "the controversy involves the question of infringement of trade-marks registered in the United States Patent Office under the laws of the United States, 15 U.S.C.A. § 1114(1)."

The amendment struck from the complaint paragraph 14, which we have hereinbefore copied, and likewise struck from paragraph 15 (Prayer for Judgment) of the complaint, subparagraph 2 thereof, which prayed that defendant be restrained from further proceeding in the Patent Office opposition.

Later, on June 13, 1949, the trial court denied defendant's motion to dismiss; its opinion is reported in 84 F.Supp., at page 1008.

After its motion to dismiss was denied, appellant filed its answer. The answer reiterated that the court had no jurisdiction and that the complaint failed to state a cause of action. It stated that it "has not charged that plaintiffs' use of their mark Sulfodene constituted an infringement of defendant's marks Sulfasuxidine and Sulfathalidine."

While the action for declaratory judgment remained pending in the District Court, the statutory opposition proceeding continued in the Patent Office. On September 26, 1949, the Examiner of Interferences in the Patent Office filed his findings "that the marks in...