Hygienic Products Co. v. Judson Dunaway Corporation, Civ. No. 668.

Citation81 F. Supp. 935
Decision Date23 December 1948
Docket NumberCiv. No. 668.
PartiesHYGIENIC PRODUCTS CO. v. JUDSON DUNAWAY CORPORATION.
CourtUnited States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of New Hampshire

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COPYRIGHT MATERIAL OMITTED

Sulloway, Piper, Jones, Hollis & Godfrey, Frank J. Sulloway and Irving H. Soden, all of Concord, N. H., and Frease & Bishop, of Canton, Ohio, for plaintiff.

McLane, Davis, Carleton & Graf and John P. Carleton, all of Manchester, N. H., and Emery, Varney, Whittemore & Dix, and Manvel Whittemore, all of New York City, for defendant.

CONNOR, District Judge.

This is a suit for trade-mark infringement and unfair competition brought by The Hygienic Products Company, an Ohio corporation, having its principal place of business in the city of Canton, Ohio, against the Judson Dunaway Corporation, a New Hampshire corporation, having its principal place of business in the city of Dover, New Hampshire. Suit is brought pursuant to the provisions of section 17 of the Trade-Mark Act of 1905, 33 Stat. 723, 15 U.S.C.A. § 97. Jurisdiction is also based upon diversity of citizenship, and the matter in controversy exceeds, exclusive of interest and costs, the sum and value of $3,000.

Findings of Fact.

The plaintiff was incorporated in 1908, and in April 1911 placed on the market a toilet bowl cleaner under the name "Sani-Flush" and has engaged in the manufacture and sale of same in interstate, intrastate, and foreign commerce since that date. It was the first to manufacture a powdered chemical for the cleaning of toilet bowls by chemical reaction, and applied for and was granted Letters Patent No. 1,048,575 on December 31, 1912, and Letters Patent No. 1,124,664 on January 12, 1915, covering its product, the last of which expired in 1932. As is more particularly set forth in plaintiff's patents, the product is a white chemical compound the principal ingredients of which are bisulphate of soda (80%), sodium chloride (15%), and powdered soapstone (5%). This chemical compound when put in water creates a chemical reaction forming hydrochloric acid, a chemical that cleans the lime and rust deposits which accumulate on the inside of toilet bowls and automobile cooling systems. Although plaintiff's product originated as a toilet bowl cleaner, it is likewise used for cleaning automobile radiators. This product is ineffective to accomplish the desired cleaning result except when used in the presence of water, which is essential to produce the chemical reaction which ultimately does the cleaning. As a necessary requisite for effective use of its product, there are printed on the containers full directions, setting forth in detail the successive steps which must be taken in order that the product accomplish its purpose. Upon commencing manufacture, the plaintiff adopted, and has since continually and exclusively used as its trade-mark to indicate the origin of its product, a pictorial representation of a maid pouring from a can into a toilet bowl, and, so far as appears, was the first to adopt and use this pictorial representation. The plaintiff has secured under the Trade-Mark Act of 1905, 33 Stat. 724, trade-mark registrations for a cleaning powder for water-closet bowls and automobile radiators, which registrations it still owns and which have not expired and are described as follows:

                          No.              Date
                        108,251        Jan. 25, 1916
                        263,929        Nov. 12, 1929
                        298,650        Nov.  1, 1932
                        372,096        Oct. 24, 1939
                        372,097        Oct. 24, 1939
                        374,844        Jan. 30, 1940
                        374,845        Jan. 30, 1940
                

Trade-mark registration certificates Nos. 108,251, 263,929, 298,650, 372,096, 372,097 have not been used by the plaintiff on its product since about 1938. The plaintiff has always been alert in discovering and protesting any invasion of its trade-mark rights. The plaintiff's product is now and since prior to 1937 has been sold in a can which is predominantly yellow, has three yellow panels, bordered with blue and white lines, with the plaintiff's trade-mark "Sani Flush" prominently displayed in red letters, and upon one of which panels appears a pictorial representation of a maid standing beside a toilet bowl and holding in her left hand a can of plaintiff's product from which material is falling into the toilet bowl. Accompanying the plaintiff's picture trade-mark on each can of its product has always appeared the legend "For Cleaning Toilet Bowls," together with the slogans "Quick" "Easy" "Sanitary" and "Cleans Without Fuss or Muss." Since 1911 the plaintiff has manufactured and sold over four hundred million cans of said product, representing a sales value to consumers in excess of $80,000,000, and has expended approximately $8,000,000 in advertising its product, always in connection with this picture trade-mark. This advertising has been national in scope, and has been done largely through the media of magazines and newspapers, display cards and leaflets. On each can of the product there has been placed adjacent to the picture trade-mark the statutory notice "Reg. U.S. Pat. Off."

Shortly prior to 1937 the defendant developed a toilet bowl cleaner and bathroom deodorant which contains, among other things, the combination of ingredients which until 1932 was covered by plaintiff's patents. In 1937 the defendant commenced to manufacture a chemical compound for cleaning toilets which it marketed under the trade-mark "Vanish" duly registered in the United States Patent Office, and it has since built up a large and prosperous business in this field. For approximately ten years the defendant competed with the plaintiff in the manufacture and sale of its product without attempting to interfere with the plaintiff's use, as a trade-mark, of the pictorial representation of a maid pouring from a can into a toilet bowl. During this period the defendant's president and principal stockholder had knowledge that the plaintiff was using as its trademark the above pictorial representation and that it was of great value to the plaintiff. The defendant advertised its product by means of leaflet folders, display cards, window streamers, and the like, which show a can of Vanish suspended above a toilet bowl with material flowing from the can into the toilet bowl. Another of the advertisements used prior to the claimed date of infringement shows a female holding a can of Vanish from which material is falling toward a toilet bowl which is not shown in full but is indicated by a raised toilet-seat cover. In June 1946 the defendant commenced to use a display card showing a woman holding a can of its product over a toilet bowl. In December of the same year, the defendant acquired and commenced distribution of small leaflets, advertising the product Vanish, and thereon is a picture of a woman holding a can of Vanish over a toilet bowl with material flowing from the can into the toilet bowl. During March and April 1947, for a period of about six weeks, the defendant caused to be published in a number of newspapers an advertisement of its product, illustrated with a similar pictorial representation. At about the same time, it caused another advertisement of its product Vanish to be published in newspapers, this being illustrated by a representation of a toilet bowl, with a hand holding a can of defendant's product poised over the toilet bowl, and material flowing from the can thereinto. When the defendant commenced the manufacture and sale of its product, it was packaged in a can different from that which is now on the market. Some time in 1942 the defendant adopted and has since used a new style of can which is taller than its former can, is of cylindrical shape, and is printed in dark blue with white letters. These cans used by the defendant are dissimilar to those used by the plaintiff as to size, color, and advertising material. The front panel of the can portrays a toilet bowl with an indication of material falling from the letter "I" of the word "VANISH" into the toilet bowl. On the back of the can there is a central panel with the words "Vanish" at the top, followed by directions for use, and the name of the defendant at the bottom, with two narrow side panels each depicting a toilet bowl with a bathroom background. No evidence was introduced that any one has in fact been deceived by defendant's advertising in the purchase of defendant's product in the belief that plaintiff's product was being supplied.

The complaint is directed, not to defendant's cans or what is printed thereon, but rather to the defendant's advertising devices, consisting of leaflets, display cards, and newspaper advertisements, which portray a woman pouring from a can into a toilet bowl. The defendant's newspaper advertisements and display cards do not in any way display the defendant's name, nor do the leaflets except in very small type on the back page thereof completely disassociated with the complained of picture. The "Vanish" can bears the defendant's name on the back thereof, and when placed in the display card, which is one item of complaint, the defendant's name is nowhere visible to one looking at the display, either on the card itself or on the can which is placed therein. The complained of advertising by the pictorial representation came to the attention of the plaintiff through its salesmen in various parts of the country, and thereupon the plaintiff, through its counsel, duly notified the defendant by registered mail on April 2, 1947, that it asserted market trade-mark infringement and unfair competition by use of such advertising matter. Shortly thereafter the present action was brought, and by agreement of parties, in lieu of injunctive order, the objected to advertising matter, leaflets, display cards, and newspaper advertisements were withdrawn from use. The defendant in its answer, as amended, denies the validity of the plaintiff's trade-marks, and infringement thereof, and alleges that...

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