Esso, Inc. v. Standard Oil Co.

• Decision Date: 18 July 1938
• Docket Number: No. 11099.,11099.
• Citation: 98 F.2d 1
• Parties: ESSO, Inc., v. STANDARD OIL CO.
• Court: U.S. Court of Appeals — Eighth Circuit

98 F.2d 1 (1938)

ESSO, Inc., v. STANDARD OIL CO.

No. 11099.

Circuit Court of Appeals, Eighth Circuit.

July 18, 1938.

Edward S. Rogers, of Chicago, Ill. (H. M. McLarin, of New York City, Frank H. Sullivan, and William O. Reeder, both of St. Louis, Mo., and Edwin S. Hall, of New York City, on the brief), for appellant.

Harry D. Nims, of New York City, and George O. Durham of St. Louis, Mo. (Harry C. Barker, of St. Louis, Mo., Louis

L. Stephens, of Chicago, Ill., and Wallace H. Martin and Stewart L. Whitman, both of New York City, on the brief), for appellee.

Before GARDNER, WOODROUGH, and THOMAS, Circuit Judges.

GARDNER, Circuit Judge.

This is an appeal from a decree enjoining appellant from using the term "Esso," either alone or in combination with other names, terms, letters, marks, symbols, or syllables in connection with petroleum and its products in the States of Missouri, Colorado, Illinois, Indiana, Iowa, Kansas, Michigan, Minnesota, Montana, North Dakota, Oklahoma, South Dakota, Wisconsin and Wyoming. The court found that the use of such word or term by itself or in such combination constituted an infringement of plaintiff's trademarks established and used by it in said states, and that the use thereof by the appellant constituted unfair competition. We shall refer to the parties as they appeared below.

Plaintiff, in its bill of complaint, alleged that for a long time prior to the acts complained of, it had been engaged in the production and sale of petroleum products in the named states, and that it was now and had been for many years the largest and best known marketer of petroleum products in said states, under one or more of the following marks: "Standard Oil Company," "Standard Oil," "Standard," "S O C O," and "S O;" that during said time it had caused its products to be advertised before the public in said states, including the State of Missouri, and that it had expended many millions of dollars in advertising in various publications, outdoor advertising, and other forms of advertising, in which said marks or symbols were emphasized as trade-marks, identifying the products so advertised as sold by plaintiff; that these marks were made to appear before the public in many ways, and that each of them identified plaintiff; that it is the owner of the trade-marks for said terms, trade-names, and symbols in Missouri and the other states mentioned; that these marks have been used by plaintiff, or its predecessors, exclusively, and that in Missouri such exclusive use began prior to the year 1900; that plaintiff is a corporation organized under the laws of the State of Indiana, while defendant is a corporation organized under the laws of the State of Delaware; that the term "Esso," which appears in the corporate name of defendant and on containers and signs used by it, is merely the letters "S" (ess) and "O" (o) spelled out; that the letters "S O," whether spelled out (Ess O), or written as letters (S O) are identical in sound and meaning, the letters "S O" being the initials of plaintiff's trade-mark "Standard Oil;" that the Standard Oil Company of New Jersey caused the defendant to be organized, and owns all its stock; that shortly prior to the commencement of this suit, defendant began to sell and was selling in Missouri petroleum products under and in connection with the letters "S O," using them in their spelled-out form in the brand "Esso," and in other brands containing them; that the products so handled and sold by defendant in Missouri were furnished, directly or indirectly, by the Standard Oil Company of New Jersey; that the defendant is selling its petroleum products, not made nor sold by plaintiff, in containers carrying the colors red and white, or red, white and blue, in connection with the letters "S O;" that plaintiff protested against said invasion of its territory by the Standard Oil Company of New Jersey, through its subsidiary, the defendant, but that notwithstanding such protest it has persisted in invading plaintiff's said trade territory, and in committing the said acts of unfair competition, giving rise to confusion and uncertainty as to what products it was in fact selling.

Defendant admitted many of the facts alleged in the bill but denied its purpose unfairly to secure the benefit of plaintiff's good will, and asserted its right to use the words, terms, and names, and the right to extend its trade into the territory claimed by plaintiff. It put in issue the inferences to be drawn from the facts pleaded, rather than the basic facts alleged.

The court found in substance that all the material allegations of plaintiff's bill were true. The findings are elaborate and in considerable detail. It found as a fact that plaintiff's exclusive right to the use of the terms had been adjudicated by various courts; that the Standard Oil Company of New Jersey had recognized and acknowledged plaintiff's exclusive right to the use of these terms and words in said states; that in 1899 the Standard Oil Company of New Jersey acquired the corporate stock of the Standard Oil Companies, including plaintiff, and continued to hold that stock until 1911, when such ownership ceased by reason of a decree of dissolution; that this ownership gave the Standard Oil Company of New Jersey no rights in nor ownership of the good will or trade-marks of plaintiff, but, on the contrary, that since the dissolution decree of 1911, the various Standard Oil Companies, including plaintiff, have used one or more of the trade-marks "Standard," "Standard Oil," "Standard Oil Company," "S O C O," and "S O," or abbreviations of them, exclusively in the territory where each had operated under the name Standard Oil Company, and each of said companies had acquired common law rights in these marks used by it in the states in which it had used such trade-marks; that each of these companies has competed with the others without limitation as to locality under many different names and trade-marks, not, however, including "Standard," or similar words; that as early as 1931, and prior to any use of the word or mark "Esso" by defendant in the mentioned states, plaintiff notified the Standard Oil Company of New Jersey that it would object to any use of that word in such states; that in 1935, defendant opened three stations in the City of St. Louis, Missouri, at which it sold and offered for sale gasoline, oil, and other petroleum products; that on signs, pumps, and other equipment at said stations it displayed the terms "Esso," "Esso, Inc.," and "Esso Station," and also combinations of "Esso," and offered for sale petroleum products in cans marked "Essolube," "Essoleum," and "S O Co. of N. J.;" that signs marked "Esso" also bore phrases like, "Not Connected with Standard Oil Company (Indiana);" that pamphlets were distributed by it containing similar statements, as did its other advertisements; that defendant's stations were decorated in the same colors as those of plaintiff; that plaintiff used its trade-marks and trade-names in the legitimate course of its business and not with the intent or purpose of forestalling or preventing legitimate exercise of any lawful rights of the defendant, or its parent company; that the public regards the letters "S O" when used in connection with petroleum products sold by plaintiff as products sold by it; that the intent of the Standard Oil Company of New Jersey, in its use of "Esso" as a brand and as a part of the corporate name of defendant, is to sell its goods as "Standard Oil" and "S O" goods in states in which these brands are not its trade-marks, but are the trademarks and trade-names of plaintiff, and by so doing to enable it to deceive the public to its advantage and profit, and to use and profit by the reputation, popularity and good will of plaintiff; that members of the public, seeing the word "Esso" displayed at defendant's stations believe that the products sold are the products of plaintiff, or of a subsidiary of plaintiff, and that such belief is not eliminated nor greatly affected by the use of the words, "Not Connected with Standard Oil Company (Indiana)," but that members of the public who have purchased merchandise in defendant's stations have believed, because of the use of the term "Esso" there displayed, that they were getting plaintiff's products, and were thereby deceived, and the likelihood of confusion arising out of defendant's use of "Esso" is not obviated by defendant's explanatory phrases, or other precautions of defendant.

Defendant, in seeking reversal, urges: (1) That no reasonable person could be misled into believing defendant's business and products are those of plaintiff; (2) that "Esso" is not similar to any brand used by plaintiff, or any name by which plaintiff or its goods are known; (3) that the "not connected with" announcements dispel any notion that anyone could possibly entertain that defendant, Esso, Incorporated, is connected in any way with the plaintiff, Standard Oil Company (Indiana); (4) that plaintiff has attempted to forestall the extension of the use of the Esso trade-mark; (5) that the operation of the dissolution decree is obstructed by the decree below.

As has already been observed, the lower court found all the material facts in favor of plaintiff. These findings are presumptively correct, and while not conclusive on appeal in an equity suit, they will not ordinarily be disturbed, unless it appears that a serious mistake has been made in the consideration of the evidence, or an obvious error has been committed in the application of the law. Woods-Faulkner & Co. v. Michelson, 8 Cir., 63 F.2d 569; Arkansas Natural Gas Corp. v. Pierson, 8 Cir., 84 F.2d 468; Nave-McCord Mercantile Co. v. Ranney, 8 Cir., 29 F.2d 383; Staley v. Dwyer, 8 Cir., 29 F.2d 982; Fienup v. Kleinman, 8 Cir., 5 F.2d 137; Bowmaster v. Carroll, 8 Cir., 23 F.2d 825; Karn v. Andersen, 8 Cir., 60 F.2d 427. Recognizing this rule, defendant seeks to avoid its effect by...