Thomas Kerfoot & Co. v. Louis K. Liggett Co.

• Decision Date: 04 October 1933
• Docket Number: No. 2791.,2791.
• Citation: 67 F.2d 214
• Parties: THOMAS KERFOOT & CO., Limited, v. LOUIS K. LIGGETT CO.
• Court: U.S. Court of Appeals — First Circuit

67 F.2d 214 (1933)

THOMAS KERFOOT & CO., Limited, v. LOUIS K. LIGGETT CO.

No. 2791.

Circuit Court of Appeals, First Circuit.

October 4, 1933.

Harry D. Nims, of New York City (Arthur P. Hardy, of Boston, Mass., and Hugo Mock, Asher Blum, Walter L. Post, and Mock & Blum, all of New York City, on the brief), for appellant.

James F. Hoge, of New York City (Thomas Hunt of Gaston, Snow, Saltonstall & Hunt, of Boston, Mass., and Edward S. Rogers, of New York City, on the brief), for appellee.

Before BINGHAM, WILSON, and MORTON, Circuit Judges.

MORTON, Circuit Judge.

This is a suit to restrain infringement of plaintiff's trade-mark "Vapex," and unfair competition by the defendant with the plaintiff in the sale of a remedy, similar to the plaintiff's, under the name "Vapure." In the District Court, after full hearing, at which much evidence, both oral and documentary, was presented, the bill was dismissed. The plaintiff has appealed. The District Judge went into the case very thoroughly. His opinion is long and careful, covering some 25 pages in the record. More than 125 witnesses testified, many of them in his presence. Under such circumstances it is well settled that his conclusions of fact carry great weight and will not be disturbed unless shown to be clearly wrong.

"Vapex" is a coined word invented by the plaintiff, or its predecessors in business, about 1915, and applied to a new medicinal preparation devised by them and used as an inhalant in combating colds. The word was registered in England as a trade-mark on such goods in 1915, and in this country by the plaintiff in March, 1924, on an application filed in October, 1923. The preparation to which "Vapex" is applied by the plaintiff is a secret composition. It is used by putting a few drops on a handkerchief and sniffing it, or on the pillow at night, so that the odor or emanations may be breathed.

As to the plaintiff's business in "Vapex" in the United States, the bill alleges that at the time of the alleged infringement and unfair competition, the plaintiff had an extensive business here, "the sales in the United States being conducted by an agent," and that the plaintiff "exclusively marketed the said preparation in the United States of America through an agent, by reason of which the plaintiff built up a very large and valuable good will in the United States of America which was a source of great profit." (Bill, clause 7.) The evidence on this point is neither full nor satisfactory. We gather that the plaintiff sells "Vapex" in bulk to Donald's, Limited, and that Donald's, Limited, has an arrangement with Fougera for packaging it and distributing it to the retail trade.

The defendant operates a chain of about 500 retail drug stores. It is affiliated with the United Drug Company, from which it procures much of the merchandise which it sells. At the time when this suit was begun, the defendant's stores were carrying "Vapex," and also a somewhat similar preparation called "Vapure." "Vapure" is also a coined word; it is registered as a trade-mark by the United Drug Company, and is applied by the Drug Company to an inhalant remedy for colds of its own manufacture. The defendant did not originate nor manufacture this remedy, and had nothing to do with naming it. As a retail druggist, it bought both remedies and sold them in its stores. The plaintiff constantly falls into the error of speaking of the defendant as if it were the originator and manufacturer of "Vapure." Of course, if the goods which the defendant sells infringe the "Vapex" trade-mark, or are so named or marked that there is danger of confusing them with "Vapex," the defendant is not protected by the fact that it bought the goods from somebody else. Saxlehner v. Siegel-Cooper Company, 179 U. S. 42, 21 S. Ct. 16, 45 L. Ed. 77. Its sales methods are within its control and must be kept within legal bounds.

The question whether "Vapure" is an infringement on "Vapex," i. e., whether the two names are so similar in appearance and in sound that one is likely to be mistaken for the other by an ordinarily careful buyer, is to be determined, not merely by an inspection of the words, but by considering them in connection with other similar words in use in the same general field. This test is well established. U. S. Tobacco Co. v. McGreenery (C. C.) 144 F. 531; Id. (C. C. A.) 144 F. 1022; Coats v. Merrick Thread Co., 149 U. S. 562, 13 S. Ct. 966, 37 L. Ed. 847; Wrisley Co. v. Iowa Soap Co., 122 F. 796 (C. C. A. 8); E. Regensburg & Sons v. Portuondo Cigar Mfg. Co. (C. C.) 136 F. 866. It has been recognized by the plaintiff. In connection with proceedings by it to register "Vapex" with a green triangle as a trade-mark, and in answer to objections by the Vick Chemical Company which owned the prior trade-mark "Vapo Rub," the plaintiff argued in its brief: "Both `Vapo Rub' and `Vapex' are derived from the word `Vapor', and it is evident that the syllable `Vap' for preparations of this kind is common property. Long prior to the time that the opposer (Vick Chemical Company) adopted the word `Vapo Rub' others had used the syllable `Vap' in numerous marks so that the opposer is not entitled to such a broad interpretation of its right as will preclude the applicant from the use of the same syllable, provided the termination of its word is different."

This argument was sound and applies to the present case. The plaintiff's bill alleges that: "No other person * * * in the United States used a trademark or trade-name to designate a similar or competing preparation beginning with `Vap,' save for occasional cases of infringement which might have occurred, etc." The indisputable fact, however, is that more than 20 trade-marks having a word beginning with "Vap," most or all of them applied to remedies, had been registered in the United States Patent Office before the plaintiff applied for registration of "Vapex," e. g. "Vap," "Vaps," "Vapo," "Vaporia," "Vapoform," "Vaporine," "Vaporub," Some of these prior remedies became widely known and sold, e. g. "Vaporub," "Vapo-Cresolene," and others. The statement in the plaintiff's bill above referred to is, to...