Humble Oil & Refining Co. v. Standard Oil Co.(Kentucky)

• Decision Date: 13 March 1964
• Docket Number: Civ. A. No. 3137.
• Citation: 229 F. Supp. 586
• Court: U.S. District Court — Southern District of Mississippi
• Parties: HUMBLE OIL & REFINING COMPANY, Plaintiff, v. STANDARD OIL COMPANY (KENTUCKY), Defendant.

229 F. Supp. 586

HUMBLE OIL & REFINING COMPANY, Plaintiff, v. STANDARD OIL COMPANY (KENTUCKY), Defendant.

Civ. A. No. 3137.

United States District Court S. D. Mississippi, Jackson Division.

March 13, 1964.

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Leslie D. Taggart, Nicholas John Stathis, Ronald O. Thomas and Christopher J. Aeschlimann of Watson, Leavenworth, Kelton & Taggart, New York City, Forrest M. Darrough and Dillard W. Baker, Houston, Tex., F. X. Clair, New York City, Joe A. Thompson, Jackson, Miss., George F. Woodliff, of Heidelberg, Woodliff & Franks, Jackson, Miss., M. M. Roberts, Hattiesburg, Miss., for plaintiff.

Beverly W. Pattishall and W. Thomas Hofstetter, of Woodson, Pattishall & Garner, Chicago, Ill., F. R. Kirkham, James B. Atkin and Harlan M. Richter, of Pillsbury, Madison & Sutro, San Francisco, Cal., Dana Brown, Louisville, Ky., William E. Suddath, Jr., of Watkins & Eager, Jackson, Miss., Robert W. Thompson, Jr., of Mize, Thompson & Mize, Gulfport, Miss., for defendant.

MIZE, District Judge.

This lawsuit involves a controversy between the plaintiff, Humble Oil & Refining Company, hereinafter referred to as Humble, and Standard Oil Company of Kentucky, hereinafter referred to as Kentucky and grows out of a contract between the two, entered into on the 27th day of January, 1955, involving the right to use the trade name ESSO. Involved also are two other contracts.

The first contract was executed on March 24, 1934 between Penola, Inc., plaintiff's predecessor, and defendant, and by its terms appointed defendant the sole distributor in the 5-state area here involved of ESSO marine lubricants and other petroleum products supplied by or under authority of plaintiff's predecessor. This contract is an exhibit to the amended complaint.

The second contract, an exhibit to the amended complaint, was executed on September 15, 1938 and was between Standard Oil Company of New Jersey, the plaintiff's predecessor, and the defendant, Kentucky, by which Kentucky was granted the privilege of using the trade mark ESSOTANE in the 5-state area here involved.

The 5-state area here involved consists of the states of Alabama, Georgia, Florida, Kentucky and Mississippi.

The last contract, and the controlling contract, was executed on the 27th of January 1955 between Esso Standard Oil Company, a Delaware corporation, plaintiff's predecessor, and the Standard Oil Company of Kentucky, the defendant herein, and is set out hereinbelow first. In order to reach a correct solution of the problem involved it is necessary to consider each and every sentence and paragraph of the contracts, and for that reason they are set out verbatim.

"TRADEMARK

LICENSE AGREEMENT

This Agreement made this 27th day of January, 1955 by and between ESSO STANDARD OIL COMPANY (hereinafter called ESSO STANDARD), a Delaware corporation having an office at 15 West 51st Street, in the City and State of New York; and

STANDARD OIL COMPANY (KENTUCKY) (hereinafter called KENTUCKY), a Kentucky corporation having an office in the Starks Building, City of Louisville, State of Kentucky:

WITNESSETH:

Whereas ESSO STANDARD is the owner of the trade marks listed in the attached `Schedule of Esso Standard Trade Marks' together with the good-will of the business appertaining thereto; and

Whereas, KENTUCKY for many years has marketed products purchased from ESSO STANDARD in Alabama, Florida, Georgia, Kentucky and Mississippi under these Esso Standard trade marks without giving rise to any confusion with KENTUCKY's trade marks which during the same period have been actively used by KENTUCKY in the same states; and

Whereas, it is now desired by ESSO STANDARD and KENTUCKY to set forth specifically the terms and conditions governing KENTUCKY's use of these Esso Standard trade marks or any other Esso Standard trade marks used hereafter by KENTUCKY in connection with products supplied by or on behalf of ESSO STANDARD:

ESSO STANDARD and KENTUCKY agree as follows:

(1) KENTUCKY recognizes ESSO STANDARD's ownership of and the exclusive right to the use of these Esso Standard trade marks in the States of Alabama, Florida, Georgia, Kentucky and Mississippi. KENTUCKY recognizes also the validity of the registrations of these Esso Standard trade marks at the U. S. Patent Office and in the States named above. KENTUCKY agrees that neither while this agreement is in force nor at any time thereafter will it claim any right, title or interest in or to any of these Esso Standard trade marks.

Advertising or other representations by KENTUCKY referring to these Esso Standard trade marks, products or otherwise shall be conducted and made in such manner as will not impair or endanger ESSO STANDARD's ownership of or right to use these trade marks in Alabama, Florida, Georgia, Kentucky and Mississippi or the validity of its trade mark registrations during or after the termination of this agreement.

(2) KENTUCKY agrees to cooperate with ESSO STANDARD in the protection of these Esso Standard trade marks in the States referred to by promptly informing ESSO STANDARD of any encroachments or misuses of these Esso Standard trade marks which come to KENTUCKY's attention and KENTUCKY agrees also to notify ESSO STANDARD promptly of any pending or threatened litigation involving the trade marks. Any litigation involving these Esso Standard trade marks shall be at the expense of and under the complete control of ESSO STANDARD.

(3) ESSO STANDARD shall furnish KENTUCKY current information and instructions regarding the labeling, marking, package designs and color schemes to be used by KENTUCKY in the sale of products under these Esso Standard trade marks, including instructions regarding trade mark registration notices where considered necessary by ESSO STANDARD. During or after the life of this agreement, KENTUCKY will not sell or offer for sale products under trade marks, labels, markings or package designs, confusingly similar to any of these Esso Standard trade marks, labels, markings or package designs used by KENTUCKY under the terms of this agreement.

(4) KENTUCKY agrees to take all reasonable steps to insure that all products supplied to it in bulk for resale under these Esso Standard trade marks, labels and markings are not in any way contaminated or adulterated and that all packaged products sold by KENTUCKY under these Esso Standard trade marks are of the same quality as the bulk products supplied by ESSO STANDARD or comply with ESSO STANDARD's specifications for products bearing the particular ESSO STANDARD brand. ESSO STANDARD or its designated inspector shall have the right to inspect KENTUCKY's plants and methods of packaging and draw samples at stations, bulk plants or otherwise where products to be sold under these Esso Standard trade marks are being filled into containers by KENTUCKY or its representatives to insure that the quality of the branded products are maintained throughout the packaging operation and to verify that the labeling and packaging is in accordance with the program adopted or approved by ESSO STANDARD.

(5) KENTUCKY agrees that whenever any of these Esso Standard trade marks are used by KENTUCKY in advertising copy or promotional material the status of the brand as a registered trade mark of the manufacturer shall be indicated. This shall be done by use of the statutory trade mark registration notice — `®'.

(6) No products shall be sold by KENTUCKY under these Esso Standard trade marks, labels or markings unless such products shall have been supplied by ESSO STANDARD or under its authorization.

(7) The permission to KENTUCKY to use these Esso Standard trade marks, labels and markings herein granted is personal to KENTUCKY and shall not be transferable, assignable or inure to the benefit of any successor or assignee of KENTUCKY without the written consent of ESSO STANDARD first had and obtained.

(8) This agreement shall be subject to cancellation at any time by either party giving to the other not less than ninety (90) days' written notice in advance.

(9) Upon the termination or cancellation of this agreement, KENTUCKY agrees to discontinue promptly all use of these Esso Standard trade marks and KENTUCKY agrees also that any and all rights to the use of these trade marks as authorized by this agreement shall upon the termination or cancellation of the agreement revert to ESSO STANDARD.

(10) Nothing contained herein shall be construed to limit or restrict the right of KENTUCKY to sell petroleum or other products under trade marks, labels and markings not confusingly similar to these Esso Standard trade marks, labels and markings.

IN WITNESS WHEREOF, the parties hereto have caused these presents to be executed by their duly authorized officers the day and year first above written.

ESSO STANDARD OIL COMPANY By R. H. SCHOLL R. H. SCHOLL VICE PRESIDENT STANDARD OIL COMPANY (KENTUCKY) By W. G. VIOLETTE " - O -

                                     Schedule of Esso Standard Trade Marks
                    Trade               U. S. Pat. Off
                    Mark                   Reg. No.                       Goods
                    ACTO                        550,625          Petroleum Sulfonates
                    ACTOL                       198,782          Motor Oil
                    ANDOK                       310,097          Lubricating Grease
                    ARACAR                      303,931          Lubricating Oil
                    ARAPEN                      324,745          Lubricating Grease
                    AROX                        315,950          Lubricating Oil
                    BAROSA                      340,393               "       "
                    BASEKOTE                    514,173               "      Grease
                

                    BAYOL                       320,815          White Oil
                    BAYOL                       320,899              "
                    BAYOL                       322,111              "
                    BEACON                      114,684          Lubricating Grease
                    BEACON                      232,598              "         "
                    BRYMUL

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