Caron Corporation v. Maison Jeurelle-Seventeen

• Decision Date: 07 September 1938
• Citation: 26 F. Supp. 560
• Parties: CARON CORPORATION v. MAISON JEURELLE-SEVENTEEN, Inc., et al.
• Court: U.S. District Court — Southern District of New York

26 F. Supp. 560

CARON CORPORATION v. MAISON JEURELLE-SEVENTEEN, Inc., et al.

District Court, S. D. New York.

September 7, 1938.

Evarts, Choate, Curtin & Leon, of New York City (Maurice Leon, of New York City, of counsel), for plaintiff.

Hoguet, Neary & Campbell, of New York City (Worthington Campbell, and Granville Brumbaugh, both of New York City, of counsel), for defendants.

CLANCY, District Judge.

This is a motion for a preliminary injunction in an action alleging infringement of a trademark and unfair competition.

The plaintiff, Caron Corporation, has been manufacturing and selling, in bottles, a perfumed bath preparation, known as "Bain de Champagne". The defendant, Maison Jeurelle-Seventeen, Inc., has been manufacturing and selling, in bottles, a perfumed bath preparation, known as "Bain Mousseux". "Mousseux" is translated as "Sparkling".

Both of these products are intended to be used in the bath and in this respect are similar. However, the respective reactions of each with water have not been fully set forth. The defendant's product apparently conveys a sparkling or effervescence to the bath. The plaintiff does not claim a similar effect for its product and its attorney admitted on the argument that no such effect was produced.

The bottle in which the plaintiff is marketing its product is claimed to be of the champagne bottle type, and is constructed of transparent glass. In fact, the bottle and its contents are fully transparent. The bottle is wider in the middle than at the base. It has a label which almost completely encircles the base of the bottle and contains the legend "BAiN de CHAMPAGNE, CARON" on one line. The upper edge of this label rises higher above the base in the front than at the rear. In addition to the name, the label contains an artistic illustration of a bath, done in various tones of brown on white, which covers its entire surface. There is an ovate monogrammed label, in the same color scheme, attached to the base of the neck of the bottle, being part of a straplike strip, in like coloring, which circumscribes the bottle at that point. There is goldleaf immediately above this strap, completely encasing the neck and cork. The corks of the bottles offered as exhibits are not of a bulbous shape although the plaintiff's brief appears to assume that they are and some of its exhibits bearing date, 1928, illustrate such a cork.

The defendant's bottle is much larger and is constructed of translucent green glass through which the color of the contents of the bottle cannot be determined. The sides of the bottle rise perpendicularly from the base. Flush with the base of the bottle and encircling a trifle less than one-half of its perimeter is a rectangular label, bearing the words "Bain Mousseux" in red and gold letters, and the word "Jeurelle" in small print below the other two. The label is white, bearing fine horizontal gold lines and a gold border. On the opposite side of the bottle, near the base, is a small red label bearing in white print the words "Use for — bath only." The bottle has a monogrammed label which is circular and bears the words "Maisson Jeurelle, International Building, Rockefeller Center, New York", in red letters. This monogram is white and has a gold border and a bull's eye effect made up of fine gold lines. It is sustained by a paper strap that encircles the bottle at its neck and which also has horizontal gold lines and a gold border. A short distance above the strap, the neck of the bottle is wound with gold cord which extends to the top of the bottle, holding down the ends of a chamois wrapper which covers the cork, giving it a bulbous effect.

From these descriptions, it appears that there is no similarity whatsoever in the bottles, either in size, character, color, labeling or in their general preparation, and, when beheld by the eye the difference is complete. The defendant's bottle is sold in a wicker basket, which, plaintiff claims, is a typical champagne basket. The plaintiff's article is contained in a cardboard box decorated with criss-cross lines which it claims are intended to represent or to convey the idea of a wicker basket, but this suggestion the Court finds its imagination unable to follow. The defendant's package encloses a printed slip of paper describing the product and its use in the following language: "Bain Mousseux is a bath oil of rare distinction and quality. In addition to bubbling like champagne in the water, it perfumes and softens the skin and gives it a feeling of stimulation."

Because of discussions between the attorneys and a belated change of attorneys by the defendant, the date on which the defendant was required to submit answering affidavits passed without such service. The time to answer the complaint had not transpired on the day the motion was argued. Nevertheless, the defendant's attorney answered "ready" and argued the motion, relying apparently entirely on the respective articles of the plaintiff and the defendant, exhibited by the plaintiff, and the plaintiff's papers. While the Court knows of no reason why the allegations in a complaint should be binding on a defendant before the time to answer has expired, since the defendant has submitted his case, we will accept the complaint as an affidavit and its allegations of fact as establishing jurisdiction of the Court and the matters involved in the plaintiff's cause of action, except as they may be modified by plaintiff's affidavits, or modified, vitiated or contradicted by the plaintiff's exhibits. City of Kankakee v. American Water Supply Co., 7 Cir., 199 F. 757; Northwestern Stevedoring Co. v. Marshall, 9 Cir., 41 F. 2d 28. Without, therefore, assuming to state the law of this case in any way to bind the trial judge, but solely for the purpose of deciding this motion, we will accept as established by the complaint, the jurisdiction of this Court and the issuance and valid assignment of the plaintiff's trade-mark and the plaintiff's right to its exclusive use.

From plaintiff's exhibit 1, annexed to the complaint, it appears that its trademark involved in this motion comprises the words "BAiN de CHAMPAGNE" with the "de" and the letter "i" of the first word small letters as in the form on its bottles. Its association with the label chosen by the plaintiff or its position on the bottle is not part of the trademark issued by the Patent Office. Plaintiff has submitted affidavits of its business manager in which it claims that it has sold its product continuously in interstate and intrastate commerce in the United States of America since the year 1924; that the product has been advertised in the United States since December, 1925 in certain named magazines, and that large sums have been spent on this advertising. It does not set forth the amounts expended for advertising but sets forth copies of three separate advertisements, one of which was published in February and April, 1928 and the other two respectively in March, 1928 and April and August, 1928.

Comparison of the titles "Bain Mousseux" and "Bain de Champagne" discloses no similarity in either appearance or sound except for the common use of the word "bain", meaning "bath". It is apparent that this word, in and of itself, as used, is not a proper trademark but is a descriptive term which is common property. Turner & Seymour Mfg. Co. v. A. & J. Mfg. Co., 2 Cir., 20 F.2d 298; Caron Corporation v. Henri Muraour & Cie, 56 App.D.C. 347, 13 F.2d 318; Oakland Chemical Co. v. Bookman, 2 Cir., 22 F.2d 930. It follows that the defendant's use of the word "Bain" could not be an infringement and in fact to hold it as such would be depriving the defendant and the public of their respective rights to have a product properly described (Delaware & Hudson Canal Co. v. Clark, 80 U.S. 311, 20 L.Ed. 581) rather than protecting the right of the plaintiff. However, this word used in connection with any other word or words might be an element of a trademark. Selchow v. Baker, 93 N.Y. 59, 45 Am.Rep. 169; Bennett v. McKinley, 2 Cir., 65 F. 505. The plaintiff has used the word "champagne" in a combination of words which is clearly fanciful and not descriptive of its product. Although the word "champagne" was originally geographical, the Court sees no reason for holding that it has not acquired a secondary meaning which is capable of becoming the basis of a trademark under the Angostura cases, A. Bauer & Co. v. Siegert, 7 Cir., 120 F. 81 and Siegert v. Gandolfi, 2 Cir., 149 F....