Esso Standard Oil Co. v. Standard Oil Co. of New England, Civ. A. No. 1845.

• Decision Date: 18 December 1958
• Docket Number: Civ. A. No. 1845.
• Citation: 170 F. Supp. 71
• Parties: ESSO STANDARD OIL COMPANY v. The STANDARD OIL COMPANY OF NEW ENGLAND, Incorporated and Arnold Polonsky.
• Court: U.S. District Court — District of New Hampshire

170 F. Supp. 71

ESSO STANDARD OIL COMPANY v. The STANDARD OIL COMPANY OF NEW ENGLAND, Incorporated and Arnold Polonsky.

Civ. A. No. 1845.

United States District Court D. New Hampshire.

December 18, 1958.

Upton, Sanders & Upton, Richard F. Upton and Frederic K. Upton, Concord, N. H., Nims, Martin, Halliday, Whitman & Williamson, New York City, of counsel, for plaintiff.

Arthur E. Porter, Manchester, N. H., for defendants.

CONNOR, District Judge.

This is a motion for summary judgment to restrain the defendants from using in any manner the corporate name "The Standard Oil Company of New England, Incorporated," and the trade names "Standard Oil of New England," "Standard Oil Company of New England," and "Standard Oil of New Hampshire" or any other name so closely similar to the corporate name of the plaintiff as to lead to confusion. The scope of the complaint embraces the use of such names both as corporate names and in connection with petroleum or petroleum products.

The complaint in essence is based on two related theories: violation of plaintiff's trade marks, which are protected by the Trade Mark Act of July 5, 1946 (15 U.S.C.A. § 1051 et seq.), and unfair competition in that the public is likely to be confused as to the source of the defendants' products.

Diversity of citizenship and $3,000 in controversy is alleged, but defendants deny that the jurisdictional sum is present, on the ground that the defendants have not actually commenced business operations.

In view of the fact that the unfair competition claim is substantial and related to the trade mark laws within the meaning of 28 U.S.C. § 1338(b),¹ there is no need to determine whether or not $3,000 is in controversy.

The uncontroverted facts, as shown by the affidavits, indicate that the plaintiff, which, prior to 1948 was named the Standard Oil Company of New Jersey, has been doing an extensive business in New Hampshire and New England continuously since 1931, through a subsidiary, under its trade name "Esso," and for the past decade, under its own trade name, "Standard Oil Company." As of June 30, 1957, there were 264 dealers distributing the products of plaintiff in New Hampshire. Over $50,000 has been spent on radio advertising in New Hampshire alone in the past decade. In 1957, there were 39 billboards on the roads and highways entering New Hampshire and throughout the state which invited motorists to use products of Esso Standard Oil Company. There is distributed annually in the State of New Hampshire in excess of one-half million cans of motor oil and other petroleum products upon most of which the name Esso Standard Oil Company appears.

The defendant Arnold Polonsky in July, 1957, registered with the Secretary of State of New Hampshire the trade names Standard Oil of New England, Standard Oil Company of New England, and Standard Oil of New Hampshire for the purpose of building a retail establishment to market petroleum products in Littleton, New Hampshire. As of the date of the hearing, the defendants had not actually commenced the operation of the business. Registration by the Secretary of State is not conclusive proof that no unfair competition exists. See Standard Oil Company of New Mexico, Inc. v. Standard Oil Company of California, 10 Cir., 1932, 56 F.2d 973.

Defendant argues that the name "Standard" has fallen into the public domain and is merely a synonym for "uniform" or "regular." Granted that this may be true, and that there are companies with such apparently valid names as "Standard Brands," "Standard Packaging," the problem is whether plaintiff has a right to the name "Standard Oil" not just the name "Standard" alone.

Defendant next...