La Maur, Inc. v. Revlon, Inc.

• Decision Date: 12 July 1965
• Docket Number: No. 4-64 Civ. 65.,4-64 Civ. 65.
• Parties: LA MAUR, INC., Plaintiff, v. REVLON, INC., and Red Owl Stores, Inc., Defendants.
• Court: U.S. District Court — District of Minnesota

245 F. Supp. 839

LA MAUR, INC., Plaintiff, v. REVLON, INC., and Red Owl Stores, Inc., Defendants.

No. 4-64 Civ. 65.

United States District Court D. Minnesota, Fourth Division.

July 12, 1965.

COPYRIGHT MATERIAL OMITTED

Harold D. Field, Jr., and Allen I. Saeks, of Leonard, Street & Deinard, Minneapolis, Minn., for plaintiff.

W. Lee Helms, New York City, and A. Lyman Beardsley, Minneapolis, Minn., for defendant.

NORDBYE, District Judge.

Plaintiff seeks relief for an alleged infringement of its registered trademark STYLE, issued July 23, 1963, which mark is used on hair spray and other products. There having been no showing for recovery either of punitive or compensatory damages, although requested in the complaint, the Court will consider in this decision only the relief sought by way of an injunction.

The challenged products are a hair spray denoted as STYLE and SET and a hair setting lotion termed SET & STYLE manufactured by defendant Revlon, Inc. The hair spray STYLE and SET was distributed in Minnesota by defendant Red Owl Stores for a period of time, but on March 27, 1964, it agreed to refrain from selling any further STYLE and SET after it had disposed of its limited stock on hand, and the record would indicate that Red Owl no longer is a necessary party herein.

Plaintiff is a Minnesota corporation engaged almost exclusively in the manufacture of chemical products for feminine hairdressing, primarily hair sprays, hair setting lotions, waving lotions and various other hair fixatives. Defendant is a well-known manufacturer of a large number of products designed for female beauty use, including hair fixatives. Its products enjoy nation-wide distribution and reputation.

Prior to 1944, plaintiff was engaged in selling its products exclusively to what has been termed the "professional trade"; that is, the hair fixatives were sold to beauty supply dealers for use by beauty operators in the course of their business. After that date, plaintiff released extensive merchandise into all retail channels handling cosmetics. In its retail distribution, La Maur first confined its attention to the southwestern United States, then the west, and moving from the west coast eastward until approximately three years ago when the eastern market was penetrated. At the present time, therefore, plaintiff has its products distributed throughout the nation.

The product principally involved in this action is La Maur's hair spray denoted as STYLE, a product which has met with great commercial success. The single word "Style" was apparently first used as a mark as early as 1945 by the plaintiff on a setting lotion. That use was, however, discontinued in 1950 and since that time STYLE has been used almost exclusively in connection with La Maur's hair spray packaged in an aerosol can. La Maur then distributed a setting lotion, not in an aerosol can, but bottled in liquid form designated as STYLAST. Thus, at approximately the time La Maur was entering the retail channels of trade, the mark STYLE was being used on the aerosol hair spray and the setting lotion was marketed under the derivative term STYLAST. These articles were marketed originally as produced by Modart rather than La Maur. In the early period of the company's existence the name "Modart" was used as identification of the source of origin in La Maur's marketing to the professional trade and is currently used on many of its products for retail distribution.

Plaintiff has put out a great variety of merchandise under the trademark STYLE other than the principal hair spray product. La Maur has a series of wave sets denoted as Natural Style, Silver Style, Tint Style, White Style and Teen Style. There also is a variety of STYLE shampoos, a STYLE nail polish remover and a STYLE "creme rinse". In addition, the mark STYLE has also been used with various suffixes on other products, as STYLAST, a setting lotion; STYLON, a molding and setting lotion; and STYLIST, a molding and setting lotion concentrate. In addition, since June, 1964, La Maur also has marketed an aerosol hair spray in an unscented formula under the name STYLAST, indicating that the product is "From the House of Style." Thus, the STYLAST characterization has been used on both a hair spray and the setting lotion. As previously stated, the mark STYLE was last used on a setting lotion in 1950. It was last marketed in 1951, but the mark STYLAST is being used by plaintiff on its setting lotion at the present time.

The essential question is whether the marks alleged to infringe are likely to cause confusion as to the source of origin of the goods in the minds of "ordinary purchasers, buying under the usual conditions prevailing in the trade, and giving such attention as such purchasers usually give in buying that class of goods, * * *." Queen Mfg. Co. v. Isaac Ginsberg & Bros., Inc., 25 F.2d 284 (8 Cir. 1928). In that case the court made the following statement, at p. 287,

"In order to constitute an infringement, it is not necessary that the trade-mark be literally copied. * * * Neither is it necessary that every word be appropriated. There may be infringement where the substantial and distinctive part of the trade-mark is copied or imitated. * * * Dissimilarity in size, form, and color of the label and place where it is applied are not conclusive against infringement. * * * Where a trade-mark contains a dominating or distinguishing word such as the word `Queen' in the instant case, and where the purchasing public has come to know and designate the article by such dominating word, the use of such word by another in marking similar goods may constitute infringement, although the latter mark, aside from such dominating word, may be dissimilar."

Similarities in appearance, meaning or sound in the marks are of course important considerations. Any similarity in pronunciation, that is, that the marks are sound-alikes, is, however, minimized when, as here, the product is often purchased in a self-service cosmetics department and not by request to a sales-clerk. See Southern Shellfish Co., Inc. v. S. Felicione & Sons Fish Co., Inc., 108 U.S.P.Q. 289 (Comm'r 1956).

Plaintiff introduced testimony taken by a poll conducted in four supermarkets in the Twin Cities carrying hair fixatives in an attempt to establish confusion as to source of origin between a can of STYLE hair spray and a can of Revlon STYLE and SET hair spray. The poll-taker would stop a person in the store, not at the counter carrying hair fixatives, and showing a can of STYLE and a can of STYLE and SET side by side, ask whether the interviewee thought the products were made by the same or different companies. The answers were to the overwhelming effect that the two products were made by the same company. Every answer was recorded on written forms which, together with the tabulated results, were offered in evidence. The current view is that objections to such poll evidence go to the weight to be accorded to it, not its admissability. See, e. g., Miles Laboratories, Inc. v. Frolich, 195 F.Supp. 256 (S.D.Cal.1961). See generally Public Opinion Surveys as Evidence: The Pollsters Go to Court, 66 Harv.L.Rev. 498. The poll evidence fairly sustained plaintiff's contention that, as between STYLE and STYLE and SET, there would be consumer confusion. No poll evidence was introduced on the question of confusion for SET & STYLE, plaintiff contending that if STYLE and SET will cause confusion, it would follow that SET & STYLE will also.

Although in trademark law prior decisions have almost no definitive ruling effect, as each case invariably presents its own unique facts, see, e. g., L. J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 42 CCPA 932 (1955), weight can be given a prior determination when the plaintiff's trademark has been tested against an infringer employing a trademark similar to that employed by the defendant in the instant case. In Wella Corp. v. La Maur, Inc., 312 F.2d 831 (CCPA 1963), La Maur was successful in having the Wella mark for a hair setting lotion termed STYLE-TEX cancelled. The court held that the goods were similar, and that since Wella adopted the whole of La Maur's mark and added the meaningless TEX suffix, STYLE was the dominant feature of Wella's mark and therefore "confusion, mistake or deception of purchasers would be quite likely to occur." Revlon contends that the Wella case is not applicable here as its marks do not employ the word "Style" as the dominant feature and its additional "and Set" are differentiated from the use of "Tex" as they are meaningful, being suggestive of the use of the products. However, in the Wella case the court stated, at p. 831,

"It is not disputed that La Maur has used the word `Style' since 1945 as its trademark on hair setting and holding spray products, marketed in substantial volume throughout the country to beauty salons and the general public.

"Since La Maur's priority of use is not questioned, and the goods are similar, the sole issue is one of likelihood of confusion within the meaning of Section 2(d) of the Lanham Act.

"It is clear, as the board observed in sustaining La Maur's petition, that `Style' is the whole of La Maur's mark and the

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