Barbasol Co. v. Jacobs

• Decision Date: 28 February 1947
• Docket Number: No. 8969.,8969.
• Citation: 160 F.2d 336
• Parties: BARBASOL CO. v. JACOBS.
• Court: U.S. Court of Appeals — Seventh Circuit

160 F.2d 336 (1947)

BARBASOL CO. v. JACOBS.

No. 8969.

Circuit Court of Appeals, Seventh Circuit.

February 28, 1947.

Edward S. Rogers and William T. Woodson, both of Chicago, Ill. and Karl Pohl, of New York City, for appellant.

Maurice S. Cayne, of Chicago, Ill., for appellee.

Before SPARKS, MAJOR, and KERNER, Circuit Judges.

MAJOR, Circuit Judge.

This is an appeal from a judgment entered July 16, 1945, dismissing plaintiff's complaint in an action for statutory trademark infringement, Act of 1905, as amended, 15 U.S.C.A. § 81 et seq. The court made findings of fact and conclusions of law upon which its judgment was predicated.

Plaintiff is a shaving cream manufacturer with its factories and principal offices located at Indianapolis, Indiana. The defendant is an individual of Chicago, Illinois, who markets toilet preparations, including shaving creams, under the name of Eaton Laboratories. Plaintiff's trade-mark, registration No. 344122, is described in the certificate thus:

"The trade-mark consists of parallel diagonal blue, white and red stripes in the color sequence of blue-white-red-white-blue-white-red-white, etc., the said colored stripes forming a border for a rectangular panel or field in blue color. The drawing is lined to indicate the colors blue and red."

The color design thus described has been in continuous use by plaintiff since 1919, although not registered as a trade-mark until March 16, 1937. Defendant commenced in 1941 the use of the design alleged to infringe. Both the plaintiff and the defendant use their designs in connection with a brushless shaving cream. There is no question, therefore, but that their respective designs are used upon goods of the same descriptive properties.

Plaintiff's trade-mark and the manner of its use was found by the court as follows:

"Plaintiff's shaving cream product is identified by the word trade mark `Barbasol' and by the distinctive package design trade mark hereinafter referred to. Said product is displayed and offered for sale in two types of cartons. One of said cartons is of rectangular shape, the length of which is about 3½ times its width and the depth is a little less than the width. In addition to the word `Barbasol' being provided thereon, the carton has a striped border of blue, white and red diagonal stripes surrounding a rectangular panel or field in blue color. The shaving cream disposed in this type of carton is packed in an elongated soft metal tube, which is received and housed within said carton. The other type of carton is approximately square and it also has the word trade mark `Barbasol' provided thereon, and the entire carton is provided with diagonal colored stripes of red, white and blue, said stripes forming a border for a blue field, on which appears the word `Barbasol' and other printed matter. The shaving cream is disposed in a glass jar of octangular cross section and upon which the word `Barbasol' appears. The jar is white and is disposed within the square carton."

The defendant's alleged infringing design and the manner of its use was found by the court as follows:

"The defendant's shaving cream is sold in only one type of container, that is a round glass jar, upon which is provided a label, the label having the word trade mark `Eatons' provided thereon. The label is printed in a color combination of red, white and blue. The front of said label, upon which the word `Eatons' appears, consists of a blue panel which is broken near its bottom by a horizontal white band upon which appear the words `Shaving Cream' in red. The rear of the label, as the same appears on the jar, is also blue and has the word `Eatons' appearing thereon at the top, in addition to other printed matter covering substantially the entire surface of said panel. Disposed between the front and rear blue panels are two narrow vertical panels with alternating diagonal red, white and blue spirally designed stripes, one panel on each side of the jar. The vertical edges of the front and rear blue panels are spaced from the narrow vertical panels by wide white lines."

Two questions are raised on this appeal, (1) is plaintiff's registered trade-mark a valid and subsisting trade-mark? and (2) if so, does the defendant's label design infringe plaintiff's carton design? We assume the first question was not urged below for the reason that no mention is made of it by the court. The second question was decided in the negative, apparently upon the court's finding that "Plaintiff has failed to show that anyone has been confused and thereby purchased or dealt in defendant's goods bearing defendant's label believing that the same were plaintiff's products or goods," and its conclusion of law that "As the resemblance of defendant's package design and label is not strikingly and confusingly similar to that of plaintiff's containers and labels, the plaintiff must prove confusion."

It is quite plain from the colloquy which took place between the court and counsel as shown by the record, as well as from the court's finding and especially its conclusion of law just quoted, that the court's decision was made upon the authority of Rytex Co. v. Ryan, 7 Cir., 126 F.2d 952.

It is important to keep in mind that the instant cause of action is solely for statutory trade-mark infringement, unfettered by any charge of unfair competition as is often-times the case, and that the mark in suit is for a design. It thus becomes immaterial as to the kind, size or shape of the container upon which such design is employed. It is equally important to keep in mind the fact that plaintiff's and defendant's products admittedly are of the same descriptive quality.

On the question of the validity of the trade-mark, we start with the recognized rule that the registration of a trade-mark raises a strong presumption of its validity. Weiner, et al. v. National Tinsel Mfg. Co., 7 Cir., 123 F.2d 96, 98; Hemmeter Cigar Co. v. Congress Cigar Co., Inc., 6 Cir., 118 F.2d 64, 68; Feil v. American Serum Co., 8 Cir., 16 F.2d 88, 89.

Trade-marks comprising colors or a combination of colors have rarely been considered by the Supreme Court. One of the few cases, and perhaps the leading one, is Leschen & Son Rope Co. v. Broderick, & Bascom Rope Co., 201 U.S. 166, 26 S.Ct. 425, 50 L.Ed. 710. In that case, the trademark was used upon wire rope, the essential feature of which was "a strand of a different color from the other strands of the rope." The court held this mark invalid upon the ground that it was too wide and indefinite. In doing so, however, the court among other things stated at page 171 of 201 U.S., at page 426 of 26 S.Ct., 50 L.Ed. 710:

"* * * if color be made the essential feature, it should be so defined, or connected with some symbol or design, that other manufacturers may know what they may safely do."

Further on the same page, the court after expressing doubt that mere color could constitute a valid trade-mark stated:

"Doubtless it may, if it be impressed in a particular design, as a circle, square, triangle, a cross or a star."

In Hygienic Products Co. v. Coe, 66 App. D.C. 98, 85 F.2d 264, 266, the Court of Appeals for the District of Columbia held in a mandamus proceeding against the Commissioner of Patents that the plaintiff was entitled to register a trade-mark consisting of "a rectangular yellow panel, bounded by contrasting dark blue border, applied to the can or other package containing the goods." In that case, the Examiner had refused the right to register "on the ground that what is claimed as a trade-mark is not in fact a trade-mark, i. e., that it is not such a device as would ordinarily indicate to the public origin or ownership of the goods." In deciding to the contrary, the court held it to be settled law that color may constitute a valid trade-mark, provided it is impressed in a particular design, citing the Leschen case, supra.

In Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 6 Cir., 119 F.2d 316, the trade-mark which the court recognized as valid consisted of a red circular plug embedded in the center of a rubber heel. The Supreme Court allowed certiorari solely on the question of the measure of damages recoverable by the plaintiff and reversed on the ground that the rule announced by the lower courts for determining such damages was not adequate. Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 62 S.Ct. 1022, 86 L.Ed. 1381. While the question as to the validity of the trade-mark was not considered by the Supreme Court, the fact that it took the case and announced a rule for the measurement of damages would seem to be some indication that the court considered the trade-mark as valid.

The view that the trade-mark in suit is valid is strengthened by the court's finding that "Plaintiff's said package design distinguishes plaintiff's brushless shaving cream and related products from similar products of others." Also in its findings the court recognized plaintiff's trade-mark as a "distinctive package design trade-mark." Moreover defendant in his brief states: "The plaintiff's product is identified by the word...