Autoline Oil Co. v. Indian Refining Co.
| Decision Date | 30 December 1924 |
| Docket Number | No. 351.,351. |
| Parties | AUTOLINE OIL CO. et al. v. INDIAN REFINING CO., Inc. |
| Court | U.S. District Court — District of Maryland |
John E. Cross, Albert E. Donaldson, and Jesse N. Bowen, all of Baltimore, Md., for complainants.
Bartlett & Brownell, of New York City, and Haman, Cook, Chesnut & Markell, of Baltimore, Md., for defendant.
The bill of complaint alleges the infringement by the defendant of two registered trade-marks belonging to the complainant Wm. C. Robinson & Son Company, and also acts of unfair competition, and prays for an injunction, for an accounting of profits, and for other relief. The first trade-mark consists of the letter "F" inclosed within the outline of a diamond-shaped figure as a trade-mark for engine and machine oils. The second trade-mark consists of the letter "F" somewhat ornamental in design, but unaccompanied by the diamond-shaped figure as a trade mark for lubricating oils. There are two complainants. Wm. C. Robinson & Son Company, hereinafter called the Robinson Company, was incorporated in 1901. It operates a plant for the blending of oils in Baltimore, and is the successor in business of the former copartnership known as Wm. C. Robinson & Son, long established in that city. When the automobile business became active, it adopted the name "Autoline Oil Company," which it advertised as the "automotive oil sales' department" of its business. In 1924 the Autoline Oil Company was incorporated and acquired all of the stock of the Robinson Company. When the complainant is referred to in this opinion, the latter company is meant.
In the year 1887 the firm, which preceded the corporations, adopted and used the diamond "F" as a trade-mark for engine and machine oils, and in 1914, upon the application of the Robinson Company, the trade-mark was duly registered. At this time the principal business of the company was the distribution and sale of general lubricating oils to industrial plants, mills, machine shops, etc. "Diamond F" engine and machine oils became known to the oil trade in the northern, eastern, and southern states, and as far west as Chicago, and the trade-mark indicated to the trade in this territory not only an engine or machine oil, but one manufactured by the Robinson Company. This product became an important part of the business, and amounted to 30 per cent. of the output. Business conditions became somewhat unfavorable during the World War, so that "Diamond F" machine and engine oils were not so easily marketed as in previous years, but the product still remained the best seller of the complainant's oils of this description.
The trade-mark "F," unaccompanied by the diamond-shaped figure, is of more recent origin. It was registered in the Patent Office on February 20, 1923. The Robinson Company, in the meantime, had embarked upon the business of the blending and sale of lubricating oils for internal combustion engines and automobiles. These oils it sold under the trade name "Autoline," which, upon the company's application, was duly registered in the Patent Office on November 7, 1905. The trade-mark was adopted as an arbitrary word indicating the origin of the oils, and has been continuously used by the Robinson Company in connection with the sale and distribution of its automobile lubricants.
For some eighteen months prior to January 1, 1922, the Robinson Company was endeavoring to discover a lubricating oil especially adapted to Ford automobiles. It was common experience that because of the construction of the Ford car ordinary lubricating oils, suitable for other automobiles, were not entirely satisfactory for Fords. The foot or service brake on a Ford car operates upon the transmission, which is of the planetary type. Leather bands surround and contract upon a drum in the transmission when the brake is applied. It was found that in the use of lubricants generally employed the bands acquired a hard, glazed surface so that when the brake was applied and the bands were contracted they would alternately slip and hold in contact with the drum, and a more or less violent vibration of the transmission and of the whole car would ensue. This vibration was known as chattering, and the problem to which the complainant, as well as others in the oil trade, devoted themselves was the discovery of a nonchatter oil.
In the latter part of 1921 the Robinson Company perfected a nonchatter oil at its Baltimore plant by combining with a petroleum base a small percentage of animal oil known as degras, consisting of refined wool grease. In December of that year samples were furnished to local Ford dealers and repair shops, and found to be satisfactory. When the new oil was used, the transmission bands were kept soft and pliable so that too sudden gripping was avoided. In January, 1922, the Robinson Company began to advertise the new oil. It adopted the name "Ford Autoline" to distinguish the product from other kinds of Autoline which it was advertising for automobiles of other makes, and to indicate to Ford owners that it was especially suitable to their cars. The advertisements took the form of articles in the Baltimore newspapers, of circulars or broadsides sent to Ford dealers in the eastern half of the United States, and of other advertising devices which were sent to owners of Ford cars.
The interest of Ford dealers and owners was elicited, and the Robinson Company determined upon a campaign of national advertising. On January 22, 1922, an extended conference was held between officers, employees, and advertising men to determine finally upon the name of the new oil and the details of advertisement. It was decided to abandon the name "Ford Autoline" for fear that its use might infringe upon the rights of Henry Ford, since the name would probably be understood as indicating an oil manufactured by Ford. See Ford Motor Co. v. Wilson (D. C.) 223 F. 808. Nevertheless the Robinson Company was greatly desirous of adopting a mark that would attract the attention of Ford owners and dealers. Indeed the importance of the venture rested largely upon the fact that approximately one-half of the automobiles used in the United States were Fords, whose needs the company wished to supply. Finally it was determined to call the oil "F Autoline," because the letter "F" could be so used as to indicate readily that the oil was suitable for the lubrication of Ford cars. This was the primary reason for the adoption of the symbol. Another reason which occurred to the company at the time was the fact that for many years past it had used the "Diamond F" trade-mark upon engine and machine oils.
Having decided upon the name of the lubricant, the Robinson Company incurred great expense to make known to the trade that it had an oil suitable for Ford cars, and that the name of the oil was "F Autoline." During the year 1922 $77,000 was spent for advertising. A page advertisement was inserted in the Literary Digest of February 4, 1922, and later in the Saturday Evening Post and other magazines. Advertisements were inserted in newspapers in 100 cities and towns throughout the United States. Telegrams were sent to some 5,000 Ford dealers in various part of the country. Circulars and broadsides were published and widely distributed. The Robinson Company also spent $35,000 in 1923 and $34,000 for nine months in 1924 chiefly in advertising "F Autoline."
The merits of the new oil and the adertisement thereof created a demand which grew steadily until it reached its peak in May, 1922. On June 30, 1922, application was made to the Patent Office for the registration of the trade-mark. It indicated that a symbol consisting of the letter "F," somewhat ornamented and embellished, was to be attached to packages containing lubricating oil. The samples of the trade-mark furnished showed that the letter "F" was used in connection with the word "Autoline," the registered trade-mark of the Robinson Company, and also in connection with the words "for Ford cars." Registration was finally granted on February 20, 1923. Patents for the oil were granted in 1922 and 1923, but no charge of their infringement is made in this case.
Both before and after January 1, 1922, it had been the custom of manufacturers and distributors of oils to use letters and numbers to indicate the grades or kinds of oil sold. The purpose of those who sought the automobile trade was to emphasize a trade-name which indicated the origin of the product, as for instance, Autoline, in the case of the Robinson Company; Polarine in the case of certain of the Standard Oil Companies, and Havoline, in the case of the defendant, the Indian Refining Company. These names the manufacturers endeavored to advertise widely, the grade marks being associated therewith to enable the dealers and customers to follow the more easily the recommendations of manufacturers of the appropriate grade of oil for particular makes of automobiles. It is conceded that there was no letter of the alphabet that was not so appropriated and used. As a matter of fact, the Robinson Company themselves used the symbol "FF" as a grade mark on cup greases, manufactured for the lubrication of automobiles, and at one stage of its national advertising campaign made use of the letter "F" in connection with the word "Tractorlene" to indicate the proper kind of lubricant to be used upon Ford tractors. Prior to the discovery of the "F" oil the grade recommended by the complainant for Ford tractors had been known as "C Tractorlene." The letter "F," although not customarily used to indicate an automobile oil prior to the transactions covered by this case, has been used in the petroleum business as a grade mark for oils suitable for other purposes but its use seems to have been limited to wholesale transactions between refiners and jobbers.
Prior to the discovery of the Ford oil it had been the custom of the Robinson Company, and of other manufacturers of lubricants for...
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