La Chemise Lacoste v. General Mills, Inc., 72-1111.

• Decision Date: 06 September 1973
• Docket Number: No. 72-1111.,72-1111.
• Citation: 487 F.2d 312
• Parties: LA CHEMISE LACOSTE, a French corporation, Appellant, v. GENERAL MILLS, INC., a Delaware corporation, David Crystal, Inc., a Delaware corporation and Izod, Ltd., a New York corporation as additional Defendants under Rule 19, Appellees. The ALLIGATOR COMPANY, INC., a Delaware corporation, Defendant and Third-Party Plaintiff, Appellee, v. JEAN PATOU, INC., a New York corporation, Third-Party Defendant.
• Court: U.S. Court of Appeals — Third Circuit

487 F.2d 312 (1973)

LA CHEMISE LACOSTE, a French corporation, Appellant, v. GENERAL MILLS, INC., a Delaware corporation, David Crystal, Inc., a Delaware corporation and Izod, Ltd., a New York corporation as additional Defendants under Rule 19, Appellees.

The ALLIGATOR COMPANY, INC., a Delaware corporation, Defendant and Third-Party Plaintiff, Appellee, v. JEAN PATOU, INC., a New York corporation, Third-Party Defendant.

No. 72-1111.

United States Court of Appeals, Third Circuit.

Argued February 26, 1973.

Decided September 6, 1973.

As Amended November 1, 1973.

Thomas S. Lodge, Connolly, Bove & Lodge, Wilmington, Del., for plaintiff-appellant and third-party defendant; W. Brown Morton, Jr., Donal B. Tobin, Morton, Bernard, Brown, Roberts & Sutherland, Washington, D. C., of counsel.

Lewis S. Black, Jr., Morris, Nichols, Arscht & Tunnell, Wilmington, Del., for defendant, appellee.

Robert K. Payson, Potter, Anderson & Corroon, Wilmington, Del., for additional defendants, appellees; Irving Constant, Brian Bilzin, Rubin, Wachtel, Baum & Levin, New York City, Arthur H. Seidel, Allen L. Greenberg, Seidel, Gonda & Goldhammer, Philadelphia, Pa., of counsel.

Before HASTIE and ALDISERT, Circuit Judges, and DITTER, District Judge.

OPINION OF THE COURT

HASTIE, Circuit Judge.

This litigation began with a complaint filed in the district court by La Chemise Lacoste, a French corporation, against the Alligator Company, Inc., a Delaware corporation. The relief sought was a declaratory judgment that Lacoste owned a certain crocodile emblem as a trademark for toiletries and was entitled to sell toiletries bearing that emblem in the United States.

Responding to this complaint, Alligator pleaded that Lacoste, acting through Jean Patou, Inc., a New York corporation, as its exclusive distributor, had violated Alligator's trademark rights and had competed unfairly by marketing in the United States toiletries so marked as to infringe its alligator emblem and trademark. Patou, as the instrumentality through which Lacoste had acted, was joined as a third-party defendant to affirmative request by Alligator for a determination of trademark rights between Alligator and Lacoste.

At this stage the litigation was essentially a controversy over the use of lizard-like emblems on toiletries and the pleadings showed that decision would be required upon conflicting claims to trademark rights in such emblems so used.

Lacoste then answered the charge in Alligator's counterclaim that it was violating Alligator's trademark rights and undertook to add as unwilling parties defendant three other American corporations: General Mills, Inc., Izod, Ltd. and David Crystal, Inc., though neither Lacoste nor Alligator had theretofore sought relief against these corporations. Lacoste treated this joinder as a matter of right under Rule 19(a), Federal Rules of Civil Procedure.

Thereafter, the cause came on for hearing on a motion of Lacoste for a preliminary injunction restraining General Mills, Alligator, Izod and Crystal from "diluting the distinctiveness of . . . Lacoste's common law trade marks, `Chemise Lacoste' and `Lacoste'," by alleged misuse of a lizard-like emblem on various articles of apparel. Simultaneously, the court considered a motion by General Mills, Izod and Crystal to dismiss the action as against them on the ground they were misjoined and the further ground that no cause of action had been pleaded against them.

The court granted the motion to dismiss the added parties and denied Lacoste's motion for a temporary injunction. 1971, ...