Douglas Laboratories Corp. v. Copper Tan

• Decision Date: 26 November 1952
• Citation: 108 F. Supp. 837
• Parties: DOUGLAS LABORATORIES CORP. v. COPPER TAN, Inc.
• Court: U.S. District Court — Southern District of New York

108 F. Supp. 837

DOUGLAS LABORATORIES CORP. v. COPPER TAN, Inc.

United States District Court S. D. New York.

November 26, 1952.

COPYRIGHT MATERIAL OMITTED

Leslie D. Taggart, New York City, Raymond A. Ledogar and Samuel S. Cross, Jr., New York City, of counsel, for plaintiff.

Louis Seadron, New York City, and John S. Finn, New York City, of counsel, for defendant.

EDELSTEIN, District Judge.

This is an action for trade-mark infringement and unfair competition. The complaint alleges imitation of plaintiff's trade-mark "Coppertone" for sun tan lotions and creams by defendant's use of "Copper Tan" on similar products, and asks a permanent injunction against the use of the designation "Copper Tan" by the defendant and against the performance of enumerated acts of unfair competition by the defendant. The defendant counterclaims for a declaration that the plaintiff has no trade-mark rights in the designation "Coppertone", and that the designation is descriptive and incapable of functioning as a trade-mark. The case was tried to the court without a jury.

Findings of Fact.

1. Plaintiff is a corporation organized and existing under the laws of the State of Florida and has its principal place of business in Miami, Florida.

2. Defendant is a corporation organized and existing under the laws of the State of New York, and has its principal place of business in New York, New York.

3. The amount in controversy, exclusive of interest and costs, exceeds $3,000.

4. Plaintiff's predecessors are Benjamin Green, doing business as Douglas Laboratories, and Douglas Laboratories, Inc., a Florida corporation.

5. Defendant's predecessors are a partnership of four persons, formed on May 29, 1946 as the Copper Tan Mfg. Co., and a corporation organized by the same four persons and incorporated on June 14, 1946.

6. The products of plaintiff and defendant are sun tan products.

7. The designation "Coppertone" describes the effect, functions and result of the use of the product manufactured by the plaintiff.

8. Benjamin Green, doing business as Douglas Laboratories, in Miami, Florida, adopted and began to use "Coppertone" on a sun tan product in November of 1944. Plaintiff and its predecessors continuously used "Coppertone" on their sun tan products, and by June of 1946, the designation was understood by the purchasing public in Florida and New York markets to identify a product whose origin had a single source.

9. If there were any sales of "Copper Tan" products prior to June of 1946, those sales were in very small quantities, to very few stores, and were made casually, sporadically and intermittently. Defendant began to make substantial and sustained efforts to market "Copper Tan" in June of 1946.

10. In June of 1946, the purchasing public in the Florida and New York markets did not understand the name "Copper Tan" to identify a product originating from a single source.

11. In June of 1946, defendant made an announcement to the trade which was false and which had as its purpose the confusion of the public so that defendant could sell its products on the strength of the plaintiff's good will.

12. Prior to the commencement of this action, defendant slandered "Coppertone" and attempted to coerce plaintiff's customers from selling it, maliciously threatened plaintiff's customers with lawsuits, and attempted to pass off its product for that of the plaintiff.

13. However, these acts did not extend beyond a time approximately a year prior to the commencement of this suit, and between 1946 and 1952 no consistent continued course of conduct was indulged in by the defendant as a result of which plaintiff suffered continuing injury.

14. The defendant at the time of trial possessed no intent to compete unfairly, on the reputation and good will of the plaintiff.

15. The mark of the plaintiff at the time of trial was a picture of an Indian above which appeared the words "Don't be a paleface" and below which appeared the word "Coppertone".

16. The packaging of defendant's product in color, lettering and outward appearance is not similar to that of plaintiff's product.

17. Defendant, ever since its inception, has used and continues to use on its cartons the notation:

The Original COPPER TAN New York Miami,

and on its labels the notation:

COPPER TAN, INC. New York Miami.

At no time has defendant had a place of business in Miami or outside the City of New York, and it is "Coppertone" which originally achieved success in Miami.

18. The use of the notation "The Original" and the address "Miami" on "Copper Tan" products is likely to cause confusion or mistake or the deception of purchasers.

19. Without such notation and address, "Copper Tan" products would be adequately distinguished from plaintiff's products so as to prevent the confusion or deception of the purchasing public.

20. The defendant applied for registration of the trade-mark "Copper Tan" in the Patent Office, and registration No. 503,807 was granted on the Supplemental Register under the Act of 1946.

Discussion.

Much of plaintiff's evidence during the trial was devoted to an effort to prove that "Coppertone" had been established as a common law trade-mark. But the problem which immediately presents itself is whether the compound word is merely descriptive of the qualities, characteristics and functions of the sun tan preparation to which it applies. Such a word is not capable of exclusive appropriation as a trade-mark. 15 U.S.C. § 1052, 15 U.S.C.A. § 1052; Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536; see Nims, Unfair Competition and Trade-Marks, 4th Ed., vol. 1, §§ 200, 201. The plaintiff, of course, urges that the term is, at most, suggestive, and that it is necessary for a consumer to engage in "conscious exercise of the perceptive faculties" relate the word to the sun tan product. To draw the line between a highly suggestive and a merely descriptive mark is a very difficult task and admits of difference of opinion. But after a careful and prolonged consideration, I am inevitably constrained to the conclusion that the term is merely descriptive of the function or effect of the product, namely, to produce a sun tan of a copper color when used on the skin during exposure to the sun. The words "copper tone", it seems to me, adequately and simply describe a color, and compounding the words does not lend them sufficient mystery to vitiate the description. There is evidence, indeed, that a long and widely used color hair shampoo uses the word "coppertone" to describe the color of one particular shampoo item. Even using "tone" in the verb rather than in the noun sense, produces scant distinction when applying the word to a sun tan preparation. The function of imparting to the sun-exposed epidermis a particular hue is described.

The fact that, as plaintiff contends, the desirable color which the use of the product is intended to effect is tan, a shade of brown, with copper, a shade of red, being an undesirable and unintended chromatic result, does not alter the conclusion. In the first place, even though the word be inaccurately descriptive, it is none the less descriptive. See Nims, § 201. And secondly, the word is descriptive though it ascribes to the product an attribute which it does not have but might have. Restatement of Torts, § 721, comment b. Plaintiff's labels provide evidence that the preparation not only might have such an attribute, but also that this attribute is desirable and intended. For the labels display the profile of an Indian, the classic red man, over whose head is the legend, "Don't be a paleface", and underneath which appears the word "Coppertone". Further, there is testimony by a representative of another manufacturer of a sun tan product that it had used the words "For a copper colored tan" on its labels. This obviously descriptive usage is, to my mind, hardly more descriptive than the compound word "Coppertone" alone, employed in connection with a sun tan preparation. Under the test suggested by Nims, supra, § 200, that a mark is not valid if the user may, by prohibiting its use in connection with a competitor's goods in the same market, thereby deprive competitors of the right to describe their goods by the normal use of the words involved, I feel that "Coppertone" is clearly invalid as a trade-mark. Plaintiff's first cause of action for trade-mark infringement must fail.

But although the plaintiff has not established a common law trade-mark in the term "Coppertone", it may nevertheless acquire the right to the protection of the term against unfair competition "if, through usage, the term has acquired a secondary meaning, that it has come to indicate that the goods in connection with which it is used come from a single source, manufacturer or producer. If one can show that his mark is endowed with this quality, that the public identifies his mark with the goods manufactured by him, then he is entitled to protection in its use. The crux of a secondary meaning is the origin of the goods from a single source. As stated by Judge L. Hand, in Bayer Co. v. United Drug Co., D.C., 272 F. 505, 509, the public must understand by the term `That it came from the same single, though, * * * anonymous, source from which they had got it before.'" National Nu Grape Co. v. Guest, 10 Cir., 164 F.2d 874, 877. Plaintiff's second cause of action is one for unfair competition, and since a common law trade-mark has not been established, it must be determined whether the proof adduced establishes a secondary meaning in the name.

The plaintiff's business in "Coppertone" was originated in humble circumstances in Florida in November, 1944. But it enjoyed rapid success, particularly in Florida and New York. The record of "Coppertone" sales and advertising, and the testimony of witnesses who merchandised sun tan products is sufficient to convince me that by June of 1946, when defendant made its first substantial effort...