Douglas Laboratories Corp. v. Copper Tan

• Decision Date: 10 February 1954
• Docket Number: No. 137,Docket No. 22882.,137
• Citation: 210 F.2d 453
• Parties: DOUGLAS LABORATORIES CORP. v. COPPER TAN, Inc.
• Court: U.S. Court of Appeals — Second Circuit

210 F.2d 453 (1954)

DOUGLAS LABORATORIES CORP. v. COPPER TAN, Inc.

No. 137, Docket No. 22882.

United States Court of Appeals Second Circuit.

Argued January 8, 1954.

Decided February 10, 1954.

Leslie D. Taggart, New York City (Raymond A. Ledogar, New York City, on the brief), for plaintiff-appellant-appellee.

John S. Finn, New York City (Louis Scadron, New York City, on the brief), for defendant-appellee-appellant.

Before CHASE, Chief Judge, CLARK, Circuit Judge, and GIBSON, District Judge.

CLARK, Circuit Judge.

Plaintiff has brought this action for trade-mark infringement and unfair competition to protect its use of the name "Coppertone" for its sun tan preparation against competition by defendant, which is using the name "Copper Tan" for its similar preparation. As the case was tried, jurisdiction was rested on the diverse citizenship of the parties. In a reasoned opinion, D.C.S.D. N.Y., 108 F.Supp. 837, Judge Edelstein made findings favorable to the plaintiff, including that of secondary meaning in the name, although he declined to uphold a common-law trade-mark (plaintiff having no registered trade-mark) because he held the word "Coppertone" to be descriptive, rather than fanciful. He therefore granted an injunction to plaintiff (with costs) enjoining the defendant from using the notation "The Original" and the address "Miami" in connection with "Copper Tan" in the Florida and New York markets; he also ordered cancelled defendant's U. S. trade-mark registration No. 503,807 for "Copper Tan." Both parties have appealed. We think his findings favorable to plaintiff are supported by the evidence, and his resulting conclusion, that defendant unfairly competed in marketing its sun tan preparation, is appropriate in the light of these findings. Hence defendant can take nothing by its appeal, and we affirm the judgment against it.

On the plaintiff's appeal we are constrained to hold the grant of relief inadequate. The court found, 108 F.Supp. at page 839:

"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."

It is also found that, while defendant began to make substantial efforts to market "Copper Tan" in June, 1946, yet at that time

"10. * * * 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."

Following further findings as to slanderous competition and the like by defendant, the court went on to find, 108 F. Supp. at page 840:

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

It also found the following:

"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."

We think the record shows confusion in the names such as that plaintiff, if entitled to any relief, is entitled to full protection against the use of a similar name for like goods. First we regard the name as not descriptive, but fanciful, justifying the finding of a common-law trade-mark. And second and alternatively we hold that the findings, notably Finding 8 quoted above, justify and require the injunction.

In pointing out the limitation on common or generic or merely descriptive names for goods, the Restatement aptly says: "But it is the significance of the designation in connection with the goods upon which it is used, not its abstract significance, which is determinative. Thus the word `Plow' cannot be a trademark for plows, but it can be a trademark for tomato juice. Though `Revolvo' cannot be a trade-mark for revolving doors, it can be a trade-mark for headache pills. That a designation may have a suggestive significance in connection with the goods does not render it inappropriate for use as a trade-mark. The test is the imaginativeness involved in the suggestion, that is, whether the suggestion is so close and direct that it is apparently descriptive and generally useful in approximately that form to all merchants marketing such goods or is so remote and subtle that it is fanciful and not needed by other merchants of similar goods." 3 Restatement, Torts § 721, comment a (1938).

Each of the words "copper" and "tone," as color terms, has at best a derivative meaning. As Webster's New International Dictionary (2d Ed. Unabridged, 1939) shows, the original meaning of copper is the metal, with the word derived from that signifying the Island of Cyprus, coupled with the Latin "aes"; its usage as indicating color comes some three paragraphs down under the word as adjective, and not...