Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc.

• Decision Date: 29 July 1960
• Docket Number: Docket 25961.,No. 297,297
• Citation: 281 F.2d 755
• Parties: HAROLD F. RITCHIE, INC., Plaintiff-Appellant, v. CHESEBROUGH-POND'S, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

281 F.2d 755 (1960)

HAROLD F. RITCHIE, INC., Plaintiff-Appellant, v. CHESEBROUGH-POND'S, INC., Defendant-Appellee.

No. 297, Docket 25961.

United States Court of Appeals Second Circuit.

Argued April 14, 1960.

Decided July 29, 1960.

Townley, Updike, Carter & Rodgers, New York City, for appellant; Stuart N. Updike and Walter E. Shuttleworth, New York City, of counsel.

White & Case, New York City, for appellee; Thomas Kiernan, James A. Smyth, Edmund Dill Scotti and Ernest A. Fintel, New York City, of counsel.

Before SWAN, CLARK and FRIENDLY, Circuit Judges.

SWAN, Circuit Judge.

On June 25, 1957 Harold F. Ritchie, Inc., a New Jersey corporation and owner of the registered trademark "Brylcreem," brought suit against Chese-brough-Pond's, Inc., a New York corporation, charging trademark infringement and unfair competition by appellee's use of the trademark "Valcream." The complaint sought injunctive relief pursuant to 15 U.S.C.A. § 1116, and an accounting of profits, treble damages and costs pursuant to 15 U.S.C.A. § 1117. Federal jurisdiction was based on the Lanham Act, 15 U.S.C.A. §§ 1114, 1121, with pendent jurisdiction of the claim of unfair competition, 28 U.S.C.A. § 1338(b), and also on diverse citizenship, 28 U.S.C.A. § 1332. The trademarks, Brylcreem and Valcream, were employed to designate cream hairdressing for men which is marketed in collapsible metal tubes packaged in paperboard cartons.¹ The case was tried before Chief Judge Ryan without a jury. Pursuant to his opinion of September 14, 1959, reported in 176 F.Supp. 429, judgment was entered dismissing appellant's action. The court found no such similarity between "Valcream" and "Brylcreem" as to cause likelihood of confusion to purchasers, and concluded that appellant had not sustained the burden of proving either trademark infringement or unfair competition. Timely notice of appeal was duly filed.

The appeal asserts that the trial court erred (1) in failing to give recognition to the legal principles applicable to a second comer in the field of competition, (2) in failing to find as a fact that the appellee intentionally imitated plaintiff's trademark, (3) in the treatment accorded the evidence of actual confusion, and (4) in dismissing the claim of unfair competition.

By way of introduction to its argument appellant contends that this court is in as good a position as the trial judge to determine likelihood of confusion. This same contention was advanced in our recent decision in J. R. Wood & Sons v. Reese Jewelry Corp., 2 Cir., 1960, 278 F.2d 157, 158. There a finding of infringement was reversed, this court saying: "The decision as to infringement must, of necessity, be based primarily upon a comparison of the marks. In the absence of other determinative evidence, a question of law or at best a mixed question of law and fact is presented as to which appellate review is not foreclosed." Where an appellant's argument is predicated upon the similarity of the trademarks themselves, this court has held that "* * * we are in as good a position as the trial judge to determine the probability of confusion." Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 2 Cir., 199 F.2d 602; Eastern Wine Corp. v. Winslow-Warren, Ltd., 2 Cir. 137 F. 2d 955, 960, certiorari denied 320 U.S. 758, 64 S.Ct. 65, 88 L.Ed. 452.

There is no dispute that appellant had a valid registered trademark; the only issue is whether appellee's conduct infringed the trademark or constituted unfair competition. Each case alleging trademark infringement must be judged on its own facts, and citation of authorities is not very helpful, except insofar as they show the general pattern. LaTouraine Coffee Co., Inc. v. Lorraine Coffee Co., Inc., 2 Cir., 157 F.2d 115, 117, certiorari denied 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663; Q-Tips, Inc. v. Johnson & Johnson, 3 Cir., 206 F.2d 144, 147.

Beginning in 1942 appellant, and its predecessors in title, have sold the "Brylcreem" product in the United States and Canada, and in recent years appellant has been an acknowledged leader in the sale of men's cream style hair-dressing packaged in tubes contained in paperboard cartons. Appellant has spent very large sums in advertising; its share of the United States market has increased from 2.6% in 1953 to 11.9% in 1958. In 1914 appellee began selling in bottles "Vaseline Hair Tonic," a clear liquid, and much later, in 1947, "Vaseline Cream Hair Tonic," a milky white liquid. In 1955 appellee decided to manufacture and sell on the United States market a men's cream style hairdressing in tubes. This decision was due to the increasing popularity of this type of product and was made after a thorough study of this new market created by "Brylcreem." When appellee entered that market with test sales in August 1956, and nationally by April 1957, it was obviously a second comer to appellant.²

In this circuit and others, numerous decisions have recognized that the second comer has a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer.³ This principle is well illustrated by G. D. Searle & Co. v. Chas. Pfizer & Co., Inc., 7 Cir., 265 F.2d 385, 387, certiorari denied 361 U.S. 819, 80 S.Ct. 64, 4 L.Ed.2d 65, which held the trademark "Dramamine" was infringed by "Bonamine," each designating a remedy for motion sickness. At page 387, quoting verbatim from an earlier decision of the Seventh Circuit, the court said:

"One entering a field of endeavor already occupied by another should, in the selection of a trade name or trademark, keep far enough away to avoid all possible confusion."

It is permissible in the American competitive economy for the second comer to endeavor to capture as much of the first comer's market as he can. He must do this, however, by giving his product a name and dress descriptive and fanciful in its own right and selling it on its own merit, not by confusing the public into mistakenly purchasing his product for his competitor's. The second comer must create a reputation of its own and not trade on the goodwill of another product already established at considerable cost and risk.

In this regard the law today is much the same as it was fifty years ago, when this court said in Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73, 75:

"It is so easy for the honest business man, who wishes to sell his goods upon their merits, to select from the entire material universe, which is before him, symbols, marks and coverings which by no possibility can cause confusion between his goods and those of his competitors, that the courts look with suspicion upon one who, in dressing his goods for the market, approaches so near to his successful rival that the public may fail to distinguish between them."

Important in determining whether the second comer's entrance into the market creates possible confusion, is any evidence of conscious imitation of the first comer's product.⁴ It has often been recognized that "One of the elements to be considered in deciding whether there is confusing similarity is the intent of the actor who adopts the designation."⁵ Appellant contends that the trial court erred in not finding conscious imitation of plaintiff's trademark by defendant's selection of its mark "Valcream." In support of its contention appellant argues (1) that the cumulative absence of differentiation is objective evidence of conscious imitation, and (2) that the evidence concerning appellee's choice of name and its copying of non-functional aspects of appellant's product show actual subjective intent to imitate. The trial court in a single sentence rejected this contention saying, "the alleged evidence of conscious imitation is nothing more than advertising jargon and the use of practices which are common, in the business world in general, and in this highly competitive field in particular." We do not think that evidence which shows a cumulative absence of differentiation should be disposed of so summarily.

Appellant points out that the two products are identical in the size and shape of the tubes and cartons, the prices identical,⁶ the colors similar, the orifice identical in size, and the advertising on the tubes and packages substantially the same. Moreover the contents of the tubes are indistinguishable. They look, feel and smell the same; and their ingredients are concededly virtually identical. As to each of these items appellant admits it had no monopoly, but it contends, and we agree, that the multiplicity of the similarities is objective evidence of defendant's conscious imitation of plaintiff's product.

Even of more significance than the so-called "objective" evidence of intent is the "subjective" evidence of which the proof was largely documentary. Having decided to market a cream style hairdressing in tubes, defendant asked an advertising agency to suggest names for this hairdressing "of the Brylcreem Type," emphasizing that need for a name was of "top priority." Exh. 65. The agency responded with a list of 25 names for "Bryl Cream Type." Exh. 58. From this list the appellee picked Valcreem, one of the two names on the list which most closely approximated appellant's trademark.⁷ Other exhibits (66, 67, 68, 69 and 70) show that up to January 5, 1956, defendant intended to use the suffix "cream." Why or when the determination was made to change "cream" to "cream" can only be surmised. A memorandum in November 1955 from appellee's file reveals that the successful market "pioneering" by "Brylcreem" was a compelling reason for appellee's choice of the name "Valcreem." Exh. 94. The similarities between the original Brylcreem tube and the Valcream tube are accounted for by the fact that when the artist was summoned to design the Valcream tube, there was a tube of Brylcreem on the desk in front of him. Joint Appendix 125. When it came to devising the instructions for use and the statement of ingredients on the outside of defen...