Clairol Incorporated v. Gillette Company

• Decision Date: 23 June 1967
• Docket Number: No. 66 Civ. 969.,66 Civ. 969.
• Parties: CLAIROL INCORPORATED, Plaintiff, v. The GILLETTE COMPANY, Defendant.
• Court: U.S. District Court — Eastern District of New York

270 F. Supp. 371

CLAIROL INCORPORATED, Plaintiff, v. The GILLETTE COMPANY, Defendant.

No. 66 Civ. 969.

United States District Court E. D. New York.

June 23, 1967.

COPYRIGHT MATERIAL OMITTED

Weil & Lee, New York City, for plaintiff; Alfred T. Lee, New York City, of counsel.

Rogers, Hoge & Hills, New York City, for defendant; William F. Weigel, Marie V. Driscoll, New York City, David P. List, Thomas H. Morsch, Leibman, Williams, Bennett, Baird & Minow, Chicago, Ill., of counsel.

OPINION AND ORDER

WEINSTEIN, District Judge.

In this action for trademark infringement and unfair competition, plaintiff seeks a preliminary injunction restraining defendant from using the term "Innocent" on any hair dye product. Defendant acknowledges that it is presently test-marketing and is about to place on the national market a product entitled "Toni Shampoo—Easy Hair Coloring for Innocent Color," but denies that plaintiff has acquired trademark rights in the word Innocent.

Award of a preliminary injunction is inappropriate. Plaintiff has made neither a "clear showing of probable success" nor of "irreparable injury"—standards which it must meet at this stage of the litigation. Societe Comptoir De l'Industrie Cotonniere Etablissements Boussac v. Alexander's Department Stores, Inc., 299 F.2d 33, 35, 1 A.L.R.3d 752 (2d Cir. 1962) (lack of probable ultimate success). See also Santos v. Bonanno, 369 F.2d 369 (2d Cir. 1965); Imperial Chemical Industries Limited v. National Distillers and Chemical Corporation, 354 F.2d 459 (2d Cir. 1965) (lack of showing of irreparable injury). Defendant has demonstrated that it will suffer substantial damages if enjoined. On the basis of the information now before us, "the likelihood that the plaintiff's mark is valid, is worthy of protection, and is being infringed by the defendant" (W. E. Bassett Company v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966)) is not sufficiently high to warrant circumscribing defendant's freedom of action at this time.

The basic contention on which plaintiff's case rests is that it acquired the exclusive right to the word Innocent as a trademark for hair dyes by having extensively used that term in the form Innocent Beige and Innocent Ivory. In its brief plaintiff states that it is relying solely "upon the common law rights it has acquired by virtue of its extensive and unquestionable prior use of those marks" and concedes, despite contrary allegations in its complaint, that it has no rights by virtue of the registration of Innocent Beige on the Supplemental Register of the Patent Office.

Neither party has considered the effects of plaintiff's disclaimer on the jurisdiction of this Court. Since this is not a diversity case—both plaintiff and defendant are Delaware corporations—federal jurisdiction must rest on section 1114 of title 15 of the United States Code which gives district courts jurisdiction over actions for infringement of a federally registered trademark and subdivision (b) of section 1338 of title 28 of the United States Code which confers on district courts "original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the * * * trademark laws." In the absence of a motion to dismiss, this Court will assume for the purposes of this motion that the allegations in the complaint specifying federal registration of Innocent Beige were sufficient to vest this Court with jurisdiction despite plaintiff's later repudiation of reliance on this registration. See Hazel Bishop, Inc., v. Perfemme, Inc., 314 F.2d 399, 402-403, 5 A.L.R.3d 1031 (2d Cir. 1963). Because of the importance of this question, however, particularly in light of the Supreme Court's recent language in United Mine Workers of America v. Gibbs, 383 U.S. 715, 726, 727, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966), the parties are directed to present briefs on this issue the next time either makes a motion or at the Pre-trial Conference in this case, whichever is sooner.

TRADEMARK RIGHTS ARISING FROM USE OF INNOCENT IVORY AND INNOCENT BEIGE.

The moving papers show that Innocent Ivory was selected by plaintiff in early 1964 to designate one of at least ten shades in its new Born Blonde line of haircolors, and that Innocent Beige was chosen at the same time or shortly before as the denomination for one of at least ten shades of plaintiff's line of Picture Perfect Instant Color Rinses. Plaintiff sought to register both terms as federal trademarks, but withdrew its application for Innocent Ivory when it was opposed by the Proctor and Gamble Company. Because of our finding below that plaintiff has not yet made a sufficient showing of trademark usage to warrant injunctive relief, we need not decide whether plaintiff forfeited its rights to a trademark in Innocent Ivory by entering into an agreement with Proctor and Gamble which provided that:

"Clairol will limit its use of Innocent Ivory to a shade or color identification for hair tinting, dyeing and coloring preparations, using the same size and style of type for the words "Innocent" and "Ivory" with Innocent Ivory always being less prominent than the product trademark."

Innocent Beige was denied registration on the Principal Register, but was granted registration on the Supplemental Register in May, 1965.

Innocent Ivory has been the most popular color in the Born Blonde line since national distribution started in October, 1964 with over two and one-half million "units" being sold by the time this suit was instituted in October of 1966. National distribution to the beauty salon trade of the Picture Perfect product designated as Innocent Beige began in August, 1965 followed by full retail distribution in July-August, 1966. Plaintiff claims to have sold over 650,000 "units" of this color.

The term Innocent Ivory appears solely on packages of Born Blonde lotion toner which contain the notation "extra light blonde-356." On these cartons, the words "Clairol," "Born Blonde" and "Lotion Toner" are printed in considerably larger and more distinctive letters. See Exhibit A, item 1.

EXHIBIT A

The Innocent Beige color in the Clairol Picture Perfect Instant Color Rinse line is similarly packaged.

PROSPECTIVE ADDITIONAL USE OF INNOCENT BY PLAINTIFF.

Plaintiff claims that it has made extensive plans for greatly expanded use of the word Innocent in a new line of hair dye products. According to its papers, a tentative commitment had been made at least as early as August 3, 1966 to use the phrase Innocent Blonde for a new line of products which it had been developing since late 1965. Plaintiff contends that it did not discover until August 23, 1966 that defendant was about to test-market its new hair dye bearing the words Innocent Color. Formal intra-corporate approval of the Innocent Blonde name was given by plaintiff's president in October, 1966. By the time this motion was argued, however, Innocent Blonde had not reached the market, although plaintiff claimed that marketing would begin within sixty days.

USE OF INNOCENT BY DEFENDANT.

Defendant claims to have adopted the term Innocent Color in November, 1965, and to have been selling this product in the test-market cities of Dallas, Fort Worth, Kansas City, and St. Louis since September, 1966. Defendant concedes that the trademark search it conducted prior to adopting Innocent Color divulged plaintiff's registration of Innocent Beige and pending registration of Innocent Ivory. Defendant argues, however, that it was advised by counsel that plaintiff's names were merely shade designations that could not preclude defendant from using the word Innocent. Defendant further claims not to have used Innocent as a trademark but solely as a descriptive phrase.

Although plaintiff claims not to have heard of defendant's new product until after it had decided to proceed with a new line to be known as Innocent Blonde, defendant suggests that plaintiff's adoption of Innocent Blonde—referred to by defendant's counsel as a "fighting brand" or "spoiler"—was prompted by learning of defendant's imminent introduction of Innocent Color.

FAILURE TO CLEARLY DEMONSTRATE OWNERSHIP OF TRADEMARK.

Even when no effect is given to plaintiff's attempts to register Innocent Ivory and Innocent Beige as federal trademarks, it is clear that plaintiff used these terms in marketing its products prior to the latter part of 1965 which is the earliest date defendant claims to have started using the phrase Innocent Color. There also seems little doubt that the word Innocent is capable of trademark protection where, as here, it is used fancifully and suggestively as a euphemism for guile in making hair appear what it is not, the very antithesis of innocence. See, e. g., Douglas Laboratories Corp. v. Copper Tan Inc., 210 F.2d 453 (2d Cir. 1954).

But priority of usage and suitability as a trademark are not the only criteria a word must meet if it is to warrant protection. Association of the word and the manufacturer's name in the public mind is essential. The "function of a trademark is to identify the source of the product." 3 Callman, Unfair Competition and Trade-Marks, p. 1057 (1965 Cum.Supp.) (emphasis in original). Section 1127 of title 15 of the United States Code provides:

"the term `trade-mark' includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others."

This statutory language essentially embodies the concept and definition of common law trademarks. See, e. g., Ex parte Pulitzer Publishing Co., 82 U.S.P.Q. 229 (Comm'r Patents 1949).

A mark which is used to designate a particular style, grade, or, as in this instance, color is capable under some conditions of becoming with use a valid trademark—but only if it primarily serves to indicate origin and only secondarily to designate the particular kind of goods. Nims, Law of Unfair...