98 F.2d 1 (8th Cir. 1938), 11099, Esso, Inc. v. Standard Oil Co.

Docket Nº:11099.
Citation:98 F.2d 1, 38 U.S.P.Q. 295
Party Name:ESSO, Inc., v. STANDARD OIL CO.
Case Date:July 18, 1938
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

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98 F.2d 1 (8th Cir. 1938)

38 U.S.P.Q. 295

ESSO, Inc.,



No. 11099.

United States Court of Appeals, Eighth Circuit.

July 18, 1938

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

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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 trade-marks 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 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 product 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 letter '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

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until 1911, when such ownership ceased by reason of a decree of dissolution; that this 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 had 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...

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