SC Johnson & Son v. Johnson

• Decision Date: 30 December 1940
• Docket Number: No. 38.,38.
• Citation: 116 F.2d 427
• Parties: S. C. JOHNSON & SON, Inc., v. JOHNSON.
• Court: U.S. Court of Appeals — Second Circuit

116 F.2d 427 (1940)

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

No. 38.

Circuit Court of Appeals, Second Circuit.

December 30, 1940.

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

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 appellee.

Before L. HAND, CHASE, and CLARK, Circuit Judges.

L. HAND, Circuit Judge.

The defendant appeals from a judgment enjoining him from selling his "Household Cleaner" under a label in which appears the word "Johnson's"; from imitating the plaintiff's trade-mark (which is the same word) or "affixing" it to goods "of substantially the same descriptive properties" as are mentioned in the plaintiff's "registrations"; and from representing that his goods "emanate from or are in any way connected with plaintiff." The facts were as follows: The plaintiff is a Wisconsin corporation organized in 1932 to take over a business founded in 1886 by one, Samuel C. Johnson, and thereafter carried on either by him, or by a firm made up of himself and his son, or himself, his son and his grandson. At the time of the trial in November, 1938, this business had become very large, employing nearly 900 persons and selling to more than 17,000 dealers and jobbers. Originally Johnson had made and sold only floor-wax; later he, or the firm, added other preparations — floor cleaners, varnishes, fillers, brushes, enamels, lacquers, waxes for motors, furniture polishes and the like; but never any sort of fabric cleaner. At some time undisclosed, but after 1932, the plaintiff began to sell as suitable for glazed surfaces one of its cleaners which it had theretofore sold only as a silver polish; that was its first excursion into any of the markets which the defendant has ever exploited, as will appear. It registered the name, "Johnson's," as a trade-mark in 1915, 1923, 1927 and 1928, applicable generally to its products; and it has always conspicuously marked all its boxes or bottles with that word. In 1932 the defendant started in business under the name, "Johnson Products Company"; it may be assumed that he did not then know of the plaintiff's business. He made and sold a cleaning fluid, used chiefly for rugs, upholstery, tapestry and other fabrics, but also for woodwork, tiles and other glazed surfaces. He adopted a yellow label with the word "Johnson's," in large red letters and below it the word "Cleaner," in letters half the size; at the bottom of the label was the legend in small type, "Copyright 1933, by Johnson Products Co. Buffalo, N. Y." The plaintiff proved to the satisfaction of the judge that the defendant's use of the name has caused confusion among the plaintiff's customers; and we cannot say that the finding is "clearly erroneous." We should have so found ourselves; and indeed the testimony leaves no doubt that, while he did not actively instigate his employees to mislead customers, the defendant instructed them not to undeceive any who were already misled and to take advantage of their confusion.

Obviously the plaintiff cannot stand upon the usual grievance in such cases; i. e. that the defendant is diverting its customers. It has no customers to divert, for it does not sell a cleaner for fabrics; and, as to glazed surfaces, it began to sell its cleaner for these after the defendant; it was the newcomer in that market. Therefore it invokes the doctrine that when a good will is established under the owner's name, given or assumed, he may protect it, not only against the competition of those who invade his market, but also against those who use the name to sell goods near enough alike to confuse his customers. We have often so decided, and it is not necessary to do more than refer to our last discussion. Emerson Electric Mfg. Co. v. Emerson Radio & Phonograph Corp., 105 F.2d 908. Since in such a situation the injured party has not lost any sales, the courts have based his right upon two other interests: first, his reputation with his customers; second, his possible wish to expand his business into the disputed market. The first of these is real enough, even when the newcomer has as yet done nothing to tarnish the reputation of the first user. Nobody willingly allows another to masquerade as himself; it is always troublesome, and generally impossible, to follow the business practices of such a competitor closely enough to be sure that they are not damaging, and the harm is frequently done before it can be prevented. Yet even as to this interest we should not forget that, so long as the newcomer has not in fact misconducted himself, the injury is prospective and contingent, and very different from taking away the first user's customers. The second interest is frequently less palpable. It is true that a merchant who has sold one kind of goods, sometimes finds himself driven to add other "lines" in order to hold or develop his existing market; in such cases he has a legitimate present interest in preserving his identity in the ancillary market, which he cannot do, if others make his name equivocal there. But if the new goods have no such relation to the old, and if the first user's interest in maintaining the...