SC Johnson & Son v. Johnson

• Citation: 28 F. Supp. 744
• Decision Date: 01 August 1939
• Docket Number: No. 2024.,2024.
• Parties: S. C. JOHNSON & SON, Inc., v. JOHNSON.
• Court: U.S. District Court — Western District of New York

28 F. Supp. 744

S. C. JOHNSON & SON, Inc., v. JOHNSON.

No. 2024.

District Court, W. D. New York.

August 1, 1939.

Waugh & McClellan, of Chicago, Ill., and Harold I. Popp, of Buffalo, N. Y. (William F. Waugh and Vernon B. Bates, both of Chicago, Ill., of counsel), for plaintiff.

Babcock, Sullivan & Weaver, of Buffalo, N. Y. (John R. Weaver, of Buffalo, N. Y., of counsel), for defendant.

KNIGHT, District Judge.

This is a suit for trade-mark infringement and unfair competition. Plaintiff is a corporation manufacturing finishes, polishes and cleaners for floors. It and its predecessors in interest have engaged in this business since 1888. Its principal place of business is at Racine, Wisconsin, but it has branches in numerous states and some five different countries. Its employees number many hundreds. Its products are sold throughout the world. Its gross sales since 1902 have been upwards of $84,000,000. Total payments for advertising alone have been about $16,000,000. From 1931 through July, 1938, its gross sales were over $35,000,000, and from 1936 to the same date its total payments for advertising were $2,500,000.

Defendant is the sole owner of Johnson Products Company, under which name he does business. He started in this business in 1932 as a manufacturer of what is called "Johnson's Cleaner." Defendant's product is sold principally through demonstrators in stores. His total output to date has been 368,504 bottles from which he received $224,178.06. He has expended for advertising $8,703.45. The place of manufacture is at Buffalo, New York, and he employs about twenty people. Concededly the defendant uses his own name. His product is a water-colored liquid and is put up in bottles.

The label first used by the defendant on his product bore across its face the word "Johnson's" in large red letters with the word "Cleaner" thereunder in red letters half the size of the word Johnson's. The label itself was of a yellow color. It had a band or strip of black on either edge. Above the words "Johnson's Cleaner" appeared the words "rugs (oriental, domestic) upholstery, mohair, velour and tapestry," and underneath the words "Johnson's Cleaner", "auto upholstery, draperies, woolens, woodwork (painted and enameled) sanitas walls, shades, spats, awnings, felt hats, white shoes." At the bottom of the label (in small letters) appeared these words: "Copyright 1933 by Johnson Products Co., Buffalo, N. Y." The label now used by the defendant bears the word "Johnson's" printed in large red letters edged with black on a background which is predominantly yellow, a large disc of dark blue beneath the word "Johnson's" in which appears the word "Cleaner." Underneath this are these words, "for general housecleaning", and in smaller letters: "oriental and domestic rugs, mohair and velour upholstery, auto upholstery, woolens, painted and enameled woodwork, sanitas, venetian blinds, refrigerators, tile." Thereunder are the words: "Copyright 1938 by Johnson Products Co., Buffalo, N. Y."

Plaintiff has registered the trade-mark "Johnson's" as follows:

Oct. 12, 1915, No. 106108, for powdered wax, prepared wax, wood dye, paste wood filler, varnish remover and floor cleaner.

Nov. 27, 1923, No. 176405, for prepared wax in paste, powdered and liquid forms and for paint and varnish remover.

Feb. 22, 1927, No. 224358, for varnish.

May 8, 1928, No. 241695, for prepared wax in paste, powdered and liquid form.

It also uses the name Johnson's on these other products: "appliers and dusters, enamels, lacquers, auto cleaner and polish, shi-nup furniture polish." Plaintiff uses its trade-mark "Johnson's" in large, conspicuous print on its various products. Plaintiff does not make a cleaner suitable for use on fabrics and upholstery. Defendant claims his product is "essentially" a fabric cleaner, but the label points out several other uses. It describes it as a cleaner for "painted and enameled woodwork, sanitas, venetian blinds, refrigerators, tile."

The grounds for plaintiff's allegations of confusion and infringement lie in the use of the name "Johnson's", which is made a prominent part of the labels used by both parties, and the fact that the products of plaintiff and defendant are displayed and advertised together. While there is similarity of color between plaintiff's and defendant's labels, that question is not in direct issue.

Two questions are presented in this case: (1) Whether the product of the defendant is so related to those of the plaintiff as to constitute "merchandise of substantially the same descriptive properties;" 15 U.S.C.A. § 96. (2) Whether defendant's use of the word "Johnson's" is in a manner tending to mislead the public into believing that his goods are those of plaintiff.

It is thought that, upon reason and in harmony with many decisions of the court in recent years, the products of the parties are of "substantially the same descriptive properties." It is true that plaintiff's trademarks do not specifically cover a "fabric cleaner" or a "general household cleaner", but registered trade-mark No. 106108 does cover floor cleaner. Other products of the plaintiff, not under registered trade-mark, but a natural outgrowth from trade-marked products, include Liquid Wax for floors, Furniture Polish and Shi-nup for silver and general household use. All of plaintiff's products, save the auto cleaner and polish, come within the general description of materials for household use. Plaintiff's Shi-nup was first advertised as a "silver polish," but later as a "household cleaner", although no change was made in the product itself. Plaintiff had the right to extend its trade-mark to related products.

Cases almost without number have considered the classification of goods under the language of the statute. We do not expect to find an exact counterpart in any of these, but the instant case seems fairly comparable with many. Among such are: Aunt Jemima Mills Co. v. Rigney & Co., 2 Cir., 247 F. 407, L.R.A.1918C, 1039; Akron-Overland Tire Co. v. Willys-Overland Co., 3 Cir., 273 F. 674; Vogue Co. v. Thompson-Hudson Co., 6 Cir., 300 F. 509; Wall v. Rolls-Royce, 3 Cir., 4 F.2d 333; Yale Electric Corp. v. Robertson, Com'r of Patents, 2 Cir., 26 F.2d 972; Duro Co. v. Duro Co., D.C., 27 F.2d 339; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272; Landers, Frary & Clark v. Universal Cooler Corp., 2 Cir., 85 F.2d 46; Time, Inc. v. Ultem Publications, Inc., 2 Cir., 96 F.2d 164.

This language in Aunt Jemima Mills Co. v. Rigney & Co., supra, is specially pertinent 247 F. 409, L.R.A.1918C, 1039: "It is said that even a technical trade-mark may be appropriated by any one in any market for goods not in competition with those of the prior user. * * * But we think that goods, though different, may be so related as to fall within the mischief which equity should prevent. * * *." Again as was stated in L. E. Waterman Co. v. Gordon, supra 72 F.2d 273: "It is now well settled in this country that a trade-mark protects the owner against not only its use to the articles to which he has applied it, but upon such other goods which might naturally be supposed to come from him." The present rule of determination is well stated in Rosenberg Bros. & Co. v. Elliott, 3 Cir., 7 F.2d 962, 964, in which case hats and caps were held to come within the descriptive properties of men's clothing. There the court said, in part: "Specifically there is a difference between coats, vests, pants, overcoats and hats and caps. * * * But on a charge of infringement courts, advancing a step from the old law, are to-day less concerned with the species than with the class of goods on which a trade-mark has been used. * * * Thus the mark is the owner's `symbol of his good will,' a trade asset of very real value; it is his `commercial signature;' it `sells his goods.' * * * Where the goods of a trader have become popular not only because of their intrinsic worth, but also by reason of the ingenious and persistent manner in which they have been advertised, the good will acquired in this way takes on still another aspect and is entitled to protection."

Defendant asserts the right to use his own name in doing business. While it is generally true that a surname cannot be appropriated for exclusive use as a trade name, Borden Ice Cream Co. v. Borden's Condensed Milk Co., 7 Cir., 201 F. 510; Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 S.Ct. 625, 35 L.Ed. 247; Emerson Electric Mfg. Co. v. Emerson Radio etc., D.C., 24 F.Supp. 481, affirmed, 2 Cir., July, 1939, 105 F.2d 908; Stix, Baer & Fuller Dry Goods Co. v. American Piano Co., 8 Cir., 211 F. 271, yet, its use by a newcomer to a field of trade may be restrained where it is calculated to deceive, Champion Spark Plug Co. v. Champion, D.C., 23 F.Supp. 638; L. E. Waterman Co. v. Modern Pen Co., 235 U.S. 88, 35 S.Ct. 91, 59 L.Ed. 142; Rochester Savings Bank v. Rochester Savings & Loan Ass'n, 170 Misc. 983, 11 N.Y.S.2d 130, or where its natural tendency will be to mislead the public, Rosenberg Bros. & Co. v. Elliott, supra; Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 28 S.Ct. 350, 52 L.Ed. 616; Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461, 34 S.Ct. 648, 58 L.Ed. 1046, Ann.Cas.1915B, 322, or where the way is opened for dealers to create confusion in the mind of the public. John H. Woodbury Inc. v. William A. Woodbury Corp., D.C., 23 F.Supp. 162; John B. Stetson Co. v. Stephen L. Stetson Co. Ltd. et al., 2 Cir., 85 F.2d 586; Chesebrough Mfg. Co. v. Old Gold Chemical Co., 6 Cir., 70 F.2d 383.

Many registrations of the name "Johnson's" have been introduced by defendant to show the widespread use of the name on products of many descriptions. Even were such others using the name on identical products, such fact could not avail defendant if plaintiff has been wronged by his action. Bond Stores, Inc. v. Bond Stores, Inc., 3 Cir., 104 F.2d 124; Rochester Savings Bank v. Rochester Savings & Loan Ass'n, supra.

Defend...