SC Johnson & Son v. Johnson

• Citation: 175 F.2d 176
• Decision Date: 02 June 1949
• Docket Number: Docket 21141.,No. 103,103
• Parties: S. C. JOHNSON & SON, Inc. v. JOHNSON et al.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

175 F.2d 176 (1949)

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

No. 103, Docket 21141.

United States Court of Appeals Second Circuit.

June 2, 1949.

William T. Woodson, Chicago, Ill., Rogers & Woodson, Chicago, Ill., Kenefick, Cooke, Mitchell, Bass & Letchworth, Buffalo, N. Y., for plaintiff-appellant.

Bean, Brooks, Buckley & Bean, Buffalo, N. Y., Edwin T. Bean, Conrad Christel, Buffalo, N. Y., for defendant-appellee.

Before L. HAND, Chief Judge, and SWAN and CLARK, Circuit Judges.

L. HAND, Chief Judge.

The plaintiff's motion made on May 20, 1948, from whose denial this appeal has been taken, was a sequel to our decision in 1940¹ and to the steps taken under it. We then declared — as the only relief to which the plaintiff was entitled — that the defendant must add "in immediate juxtaposition" to the words, "Johnson's Cleaner," the suffix, "made by Johnson Products Company, Buffalo, N. Y." We refused to forbid him the use of his name, "Johnson," as the district judge had done, although we agreed that that use had "caused confusion among the plaintiff's customers." The judgment of the District Court was entered on our mandate on April 21, 1941, and the defendant adopted a new label in which the words: "Johnson's Cleaner," printed in blue ink at the top, are immediately followed around the bottom by the legend: "Made by Johnson Products Company, Buffalo, N. Y.," printed in letters of red ink of the same size. The supplemental complaint alleged these facts and added that the original defendant, John W. Johnson, had turned over the business to a firm of five partners consisting of himself and four others, of whom only one was named Johnson. It alleged that this firm was doing business under the old name, "Johnson Products Company"; that the changed label did not conform to the decree; that the defendants' use of the name, "Johnson's," was "likely to and does cause confusion or mistake, and deceive purchasers as to the source of origin of defendants' product"; and that the only "effective protection that can be given to the public against confusion, mistake and deceit" was to prevent altogether the use by the defendants of the word, "Johnson's," as a brand or trade-mark. The plaintiff urges four reasons why it should be allowed to file this supplemental pleading: (1) that the label does not conform to the judgment; (2) that the original injunction did not give the plaintiff adequate relief or protect the public; (3) that the original defendant had taken in the four new partners; and (4) that the Lanham Act² has since been passed.

We agree that the judge had jurisdiction at any time to entertain a motion to modify the injunction;³ and it is not necessary to decide whether it was necessary as a preliminary for him to ask leave of this court because of our decision on the former appeal. The cause is now before us, and it would be a barren formality to reverse the order, grant leave to the judge to entertain that motion, have him enter a new order, and compel the plaintiff to appeal again. We shall therefore at once proceed to the merits. As to the first point, we hold that the new label exactly conforms to the decree. As to the second, we hold that it was irrelevant under the Act of 1905, 33 Stat. 724, that the suffix has not prevented all mistake and confusion. Upon this we have nothing to add to what we said before, when we very deliberately assumed that the public might still be confused after the prescribed change had been made. As to the third point, we hold that it makes no difference that the original defendant has now associated himself with four partners, three of whom do not bear his name. The business has continued under its original name and whatever rights it has gained since its origin in 1932, have inured to the benefit of the firm. For many years it has been the law that the old good-will passes with the business.⁴ The motion was a patent effort to procure a reargument after a lapse of seven years, and has not the slightest justification save for the enactment of the Lanham Act in 1946. To this we address ourselves as the only point deserving discussion.

That act did indeed put federal trade-mark law upon a new footing. The Act of 1905 had made the registration of a trade-mark only prima facie evidence of ownership,⁵ and the question must be regarded as never finally settled whether it created a substantive federal trade-mark law, as distinct from the common-law of the states, or whether it merely gave jurisdiction to the district courts and certain procedural advantages to the owner.⁶ The Lanham Act put an end to any doubts upon that score, and to the confused condition in which those doubts involved the whole subject, especially after Erie Railroad Company v. Tompkins.⁷ These were fully discussed by Judge Wyzanski in his opinion in National Fruit Product Co. v. Dwinnell-Wright Co.,⁸ but they ceased to be important after Congress provided that any infringer should "be liable to a civil action by the registrant for any or all the remedies hereinafter provided";⁹ and that the registration certificate once become "incontestable" after five years,¹⁰ should, with certain exceptions not here relevant, be conclusive evidence of the registrants' exclusive right to use it.¹¹ This conclusion is confirmed, if confirmation is necessary, by the report of the Senate Committee, of which we quote a portion in the margin.¹² Nevertheless, although it is no longer open to doubt that the present act created rights uniform throughout the Union, in the interpretation of which we are not limited by local law, it does not follow that, in determining what these are, we are not to be guided by the existing common-law, especially in regard to issues as to which that law was well settled in 1946. In the case at bar the issue is of the meaning of the following language: "any person who shall in commerce (a) use * * * any reproduction * * * of any registered mark," which "use is likely to cause confusion or mistake or deceive purchasers as to the source or origin" of the goods on which the owner has used it, shall be liable to civil action. The parallel section of the Act of 1905¹³ beginning at its second sentence was practically the same, except that it subjected to civil action only those who should "affix" the registered mark "to merchandise of substantially the same descriptive properties as those set forth in the registration." Clearly a change, and a most substantial change, was intended, and the question is what that was.

The law of trade-marks, which is in any event only a part of the law of unfair competition,¹⁴ was originally designed to protect the mark's owner from the diversion of customers who would otherwise have bought of him. By 1905, however, this had been extended by making the mark in some situations cover goods on which the owner had never used it. So far as we have been able to find, the following are the only decisions in which federal courts had done so. In Carroll v. Ertheiler,¹⁵ Judge Butler allowed the manufacturer of smoking tobacco to enjoin the use of his mark on cigarettes, which he had never made. In Collins Co. v. Oliver Ames & Sons Corp.,¹⁶ Justice Blatchford extended the protection of a mark used on metal picks and hoes and other digging instruments, to metal shovels, which the owner had never made. In Celluloid Manufacturing Co. v. Read,¹⁷ Judge Shipman, on the other hand, dismissed the plaintiff's bill, seeking to enjoin the defendant's use of the word, "Celluloid," upon laundry starch, because starch was remote from anything which the plaintiff sold. In Godillot v. American Grocery Co.,¹⁸ Judge Acheson held a mark used upon general groceries to include coffee and cigars, which the plaintiff had never sold. It will be observed that in all these cases the sales held to infringe were of goods which were "substantially of the same descriptive properties as those set forth in the registration"; and that on the occasion when that was not true, the owner of the mark failed. It seems safe to infer that, when the Act of 1905 used the language we have quoted it intended any rights which it conferred to be coextensive with those which the law of unfair competition recognized, so far as it had developed up to that time.

By 1917 the English courts in a number of decisions, not necessary to consider, had meanwhile extended the cover of a mark or of a make-up considerably further than any of the cases we have cited, or than our own intervening decisions, such as Florence Manufacturing Co. v. Dowd,¹⁹ and British-American Tobacco Company v. British-American Cigar Stores Co.,²⁰ and they have developed a rationale of the interests to be protected which was more definite than anything in our own books. In Aunt Jemima Mills Co. v. Rigney & Co.,²¹ we adopted this reasoning in a case where the infringing goods were syrup and the mark was for pancake flour; that has become the leading case in this country for the now well-established extension of the law of unfair competition in such situations.²²

Thereafter the question several times arose whether this doctrine was within the terms of the Act of 1905; that is, whether "substantially of the same descriptive properties" referred to the physical character of the goods to which the protection of the mark alone extended, or whether it also covered any of which the owner of the mark might be supposed to be the source, We twice at least strongly intimated that it meant the second, although we recognized that this did some violence to the literal meaning of the words;²³ but the weight of authority was the other way,²⁴ and in 1946 it was at best most uncertain whether the Act of 1905 went beyond the law of unfair competition in 1905. It is quite enough to explain the change of diction in the Lanham Act that Congress wished to do no more than clear up this doubt — if indeed it was not more than a doubt — and make the protection of the new right coëxtensive...