Lucien Lelong, Inc. v. Dana Perfumes

• Decision Date: 22 December 1955
• Docket Number: No. 49 C 1541.,49 C 1541.
• Citation: 138 F. Supp. 575
• Parties: LUCIEN LELONG, Inc., Now by Change of Name, Oxford Mercantile Corporation v. DANA PERFUMES, Inc.
• Court: U.S. District Court — Northern District of Illinois

138 F. Supp. 575

LUCIEN LELONG, Inc., Now by Change of Name, Oxford Mercantile Corporation v. DANA PERFUMES, Inc.

No. 49 C 1541.

United States District Court N. D. Illinois.

December 22, 1955.

James P. Hume, Gerrit P. Groen, William E. Anderle, Wilkinson, Huxley, Byron & Hume, Chicago, Ill., for plaintiff and counter-defendant.

James R. McKnight, Chicago, Ill., for defendant and counter-plaintiff.

HOFFMAN, District Judge.

The original complaint herein was dismissed on motion of the plaintiff¹ but jurisdiction was retained to adjudicate a counterclaim filed by the defendant. The counterclaim sought a declaratory judgment that the defendant was entitled to use the words "solid cologne" for the labeling, packaging and advertising of cosmetics, an injunction restraining the plaintiff from threatening infringement suits against the defendant's dealers, distributors or customers for handling the defendant's products so labeled and damages suffered by the defendant from such threats.

A short chronological statement of the principal events relevant to the case seems the clearest way to present the issues involved.

Some time in 1941 Lucien Lelong, Inc., began to manufacture and sell cologne in the form of a homogeneous body, consisting of approximately 75 per cent liquid cologne and 25 per cent soap. The product is one capable of retaining its form and shape, but yields its liquid content when rubbed on the skin. When handled it will neither leak nor spill.

When it first started production of cologne in this form Lelong consulted its trade-mark attorneys as to whether the word "Solid" could be registered as a trade-mark therefor. The attorneys advised Lelong that the word "Solid" as applied to this form of cologne was solely a descriptive use of the word, as the cologne was in fact solid, and hence could not be registered as a trade-mark.

From 1941 to 1948 Lelong manufactured and sold cologne in a non-liquid form using the word "Solid" in its advertising and packaging both as the brand name and to describe the cologne.

On July 5, 1947, the Lanham Trade-Mark Act, Act of July 5, 1946, c. 540, 60 Stat. 427, 15 U.S.C.A. § 1051 et seq., became effective. The Lanham Act changed the law with respect to the registration of a descriptive word as a trade-mark to the extent of permitting its registration when it "has become distinctive of the applicant's goods". Section 2(f) of the Act authorizes the Commissioner of Patents to accept as prima facie evidence that a word has become distinctive as applied to the applicant's goods, proof of substantially exclusive and continuous use for the five years next preceding the date of the application for its registration.

On August 1, 1947, Lelong filed an application to register the word "Solid" as a trade-mark for its cologne, alleging its use by Lelong since 1941 and claiming the exclusive right to such trade-mark. Registration issued May 11, 1948.

Early in 1949 the affiliated Dana companies, Dana Perfumes, Inc., Dana Manufacturing Co., and Consolidated Cosmetics, began to manufacture and sell a non-liquid cologne under various trademarks including "Tabu," "20 Carats," "Platine," "Emir" and "Extra Dry." Dana used the words "solid cologne" in the packaging and advertising to designate the product and its form.

On May 7, 1949, a petition to cancel registration by Lelong of the trade-mark "Solid" as applied to cologne was filed with the United States Patent Office by one of the affiliated Dana companies.

On June 28, 1949, Lelong notified the Dana companies that Lelong claimed the exclusive right to use the word "Solid" as applied to cologne and charged the Dana companies with having infringed Lelong's trade-mark by their use of the word "Solid."

On October 10, 1949, Lelong filed the instant suit charging the Dana companies with infringement of Lelong's registered trade-mark "Solid" for cologne. Lelong sought to enjoin the use of the word "Solid" in the manufacture, sale or distribution of cologne or other similar articles and to recover all profits made by the Dana companies from sales of cologne or related products in connection with which the word "Solid" was used. The complaint named five defendants: Dana Perfumes, Inc.; Dana Manufacturing Co.; Consolidated Cosmetics, a partnership composed of James L. Younghusband and Howard Younghusband, both officers of the two Dana corporations; James L. Younghusband, individually, and Howard Younghusband, individually.

Under date of October 13, 1949, Lelong sent 5,000 letters to department stores, drug stores, and wholesale and retail outlets handling perfume. These letters were identical except as to the names and addresses of the addressees. The body of each letter read:

"We are today writing our customers to inform them that we own United States Trade Mark registration No. 500262 for the trade mark `Solid' as applied to stick cologne.

"Our rights to this mark have been challenged by Dana Perfumes and we have, in turn, filed suit against them in the United States District Court at Chicago for the infringement of this registered trade mark.

"Furthermore, we expect to do everything necessary to protect our exclusive rights to the trade mark `Solid' in connection with the marketing at wholesale and at retail of stick cologne."

Announcements, identical except that they began "To the Trade: We desire to inform the trade that we own," were published, at Lelong's expense, in three leading trade journals: Women's Wear Daily on October 14, 1949; Drug Trade News on October 31, 1949; and Cosmetics and Toiletries, issue for November, 1949.

On November 25, 1949, Dana filed its answer and counterclaim in the instant suit seeking a declaratory judgment that it had the right to use the word "Solid" to describe cologne, injunctive relief against interference therewith by threats of suits against its customers, and damages for such interference.

On February 14, 1950, Lelong filed suit against one of Dana's customers, Famous Department Stores, Inc., in the United States District Court for the Southern District of California, seeking injunctive relief and damages based on the alleged infringement of Lelong's trade-mark "Solid" through sales of Dana products bearing the word "solid."

On March 3, 1950, upon stipulation of the parties, a temporary injunction was issued in the instant suit barring further threats or suits against Dana's customers pendente lite.

On May 25, 1950, Lelong filed suit in the United States District Court in New York against Stineway Chemists, Inc., charging that the latter's sale of D'Orsay's non-liquid cologne bearing the trade-mark "Solidette" infringed Lelong's trade-mark "Solid."

Dana was successful in the Patent Office proceedings. Early in 1951 the Examiner of Interference recommended cancellation. Lelong appealed to the Commissioner who affirmed. On November 2, 1953, the Commissioner of Patents cancelled Lelong's registration of the trade-mark "Solid." In his decision the Commissioner of Patents completely ignored Lelong's claim that "Solid" had acquired a secondary meaning. He held that the word "Solid" is primarily a descriptive term and hence could not be registered. No mention was made of the Lanham Act which changed the law respecting the registration of such terms. A suit brought by Lelong in the United States District Court for the District of Columbia to review the cancellation order was dismissed voluntarily after Lelong sold its entire toiletries business except the trade-mark "Solid" to Coty, Incorporated, and abandoned the trade-mark "Solid."

Lelong dismissed all three suits filed for infringement, the instant one, the one in California against Famous Department Stores, Inc., and the one in New York against Stineway Chemists, Inc. The order dismissing the complaint in the instant case expressly reserved for future decision by the court all issues as to costs as well as the counterclaim filed by Dana.

With respect to the counterclaim the parties present three issues for decision: (1) whether this court has jurisdiction of the counterclaim; (2) whether Lelong's acts in threatening to sue Dana's customers for handling its cologne bearing the word "Solid" constituted unfair competition; and (3) whether Dana's request for a declaratory judgment that it has the right to use the word "Solid" to describe cologne is now moot.

The jurisdiction of this court over the counterclaim was not lost by dismissal of the complaint upon motion of the plaintiff. The counterclaim was one which defendants were required to file or forego any right to assert their claims in an independent suit. It was filed under Rule 13(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A., which provides:

"A pleading shall state as a counterclaim any claim which at the time of serving the pleading the pleader has against any opposing party, if it arises out of the transaction or occurrence that is the subject matter of the opposing party's claim * * *."

When the defendants' answer was due they had a claim against the plaintiff both for damages for unfair competition and for injunctive relief to protect defendants' right to use the word "Solid" to describe cologne without interference from plaintiff. Both of these claims arose out of the subject matter of the complaint, namely the plaintiff's registration of "Solid" as a trade-mark and defendants' alleged infringement thereof.

The original complaint here was within federal jurisdiction as a suit for infringement of a trade-mark registered under federal laws. Any compulsory counterclaim filed in a suit over which the federal courts have jurisdiction is within federal jurisdiction even though the counterclaim alleges no independent grounds of federal jurisdiction. The dismissal of the original complaint on non-jurisdictional grounds does not require dismissal of a compulsory counterclaim. Moore v. N. Y. Cotton Exchange, 1926, 270 U.S. 593, 609, 46 S.Ct. 367, 70 L.Ed. 750.

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