Miles Laboratories, Inc. v. Frolich

• Decision Date: 08 June 1961
• Docket Number: No. 337-60 MC.,337-60 MC.
• Citation: 195 F. Supp. 256
• Court: U.S. District Court — Southern District of California
• Parties: MILES LABORATORIES, INC., Plaintiff, v. Henry J. FROLICH, d.b.a. Encino Chemicals, Defendant.

195 F. Supp. 256

MILES LABORATORIES, INC., Plaintiff, v. Henry J. FROLICH, d.b.a. Encino Chemicals, Defendant.

No. 337-60 MC.

United States District Court S. D. California, Central Division.

June 8, 1961.

Lyon & Lyon, by Reginald E. Caughey, Los Angeles, Cal., Woodson, Pattishall & Garner, by Lewis Garner, Chicago, Ill., for plaintiff.

Henry J. Frolich, in pro. per.

CROCKER, District Judge.

Miles Laboratories, Inc., an Indiana corporation (having its principal place of business in that state and doing business in the State of California)¹ has, since 1930, been continuously engaged in the manufacture, advertising, distribution and sale of an anti-acid effervescent preparation, under the trade-mark Alka-Seltzer. The trademark has been duly registered under the federal trade-mark acts of 1905, 1942 and 1946² and under appropriate California statutes. Reg. No. 510,330 has now become incontestable under the provisions of 15 U.S.C.A. § 1065.

Plaintiff has sold millions of dollars worth of its product on a nationwide scale since 1930, or shortly thereafter.

Defendant, Henry J. Frolich, is a citizen of California, doing business under the name of Encino Chemicals. At present, defendant produces limited quantities of home remedies. Among these is a medical preparation of the same general nature and designed for the same purposes as plaintiff's Alka-Seltzer product, which defendant sells under the name Milk-O-Seltzer.

Miles Laboratories seeks to have this court enjoin defendant from using the name Milk-O-Seltzer on his products, and requests an accounting for damages.

The court holds that the name Milk-O-Seltzer does not infringe the trade-mark Alka-Seltzer. Injunction and accounting are denied.

Jurisdiction

Congressional power to enact legislation to protect trade-marks is derived from the commerce clause of the Constitution and not from specific provisions as in the case of patents or copyrights, Trade-Mark Cases, 1879, 100 U. S. 82, 25 L.Ed. 550; Fairway Foods, Inc. v. Fairway Markets, 9 Cir., 1955, 227 F.2d 193, 196, 197, and see Commentary on Lanham Trade-Mark Act by Daphne Robert, 15 U.S.C.A.

Being so derived, protection under the Lanham Act, 15 U.S.C.A. §§ 1051-1127, is limited to "any person who shall, in commerce * * *" do the prohibited acts (§ 1114).³ "Commerce" is defined as "all commerce which may lawfully be regulated by Congress," (§ 1127).

Although jurisdiction of the federal courts cannot rest solely upon stipulation People's Bank of Belville v. Calhoun, 1880, 102 U.S. 256, 26 L.Ed. 101 or waiver United States v. Griffin, 1937, 303 U.S. 226, 58 S.Ct. 601, 82 L.Ed. 764 this court has jurisdiction based on the Lanham Act. Defendant admitted allegations of the complaint and stated in his deposition that he has sold his product in interstate commerce. Moreover, defendant has applied for registration of Milk-O-Seltzer alleging that it has been used in interstate commerce. This use was not extensive, but defendant indicated that he intended to expand his production and sales. Under such circumstances the court has jurisdiction. A single actual sale or use by defendant in another state would be sufficient interstate commerce to give federal protection under the Act, New England Duplicating Co. v. Mendes, 1 Cir., 1951, 190 F.2d 415, 417. See, also, Stauffer v. Exley, 9 Cir., 1950, 184 F.2d 962, and Moore's Federal Practice, vol. 1, pp. 610-611.

Principal Issue

The Lanham Act protects registered marks against an infringer's use in commerce, without consent, where "such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services," (§ 1114).⁴

Hence, the issue here is whether or not the name Milk-O-Seltzer, when affixed to products used for the relief of headaches and upset stomach, is likely to cause confusion, mistake or deception in the minds of purchasers, Time, Inc. v. T. I. M. E., Inc., D.C.S.D.Cal. 1954, 123 F.Supp. 446, 454, and numerous cases cited there. Or again, whether a consumer, using that degree of care which a reasonable man would use in purchasing goods of this description,⁵ intent on purchasing a product for the relief of headaches and upset stomach would buy Milk-O-Seltzer thinking that that product was made or endorsed by Miles Laboratories.

Essentially, the question is one of fact, G. D. Searle & Co. v. Chas. Pfizer & Co., 7 Cir., 1956, 231 F.2d 316, to be decided, not by expert opinion, but by the Court, Standard Oil Co. v. Standard Oil Co., D.C.Wyo.1956, 141 F. Supp. 876, 890, affirmed 10 Cir., 252 F. 2d 65; Societe Anonyme, etc. v. Julius Wile Sons & Co., supra; Callman, Unfair Competition and Trade-Marks, 2d Edition, p. 1570.

Mindful that the twofold purpose of the Act is (1) "To protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get," and (2) to protect the owner who has spent time and money in his investment "from its misappropriation by pirates and cheats," Senate Committee Report, 1946, Cong.Serv. p. 1274,⁶ the court has considered the following factors:

Trend of the Cases

It has been correctly pointed out that little can be gained from the citation of specific cases since each must be decided on its particular facts, Green v. Ludford Fruit Products, D.C.S.D.Cal. 1941, 39 F.Supp. 985, 988 and 989, appeal dismissed 9 Cir., 126 F.2d 468.⁷ However, it is important to note the trend of decisions within the circuit by which this court is bound, Q-Tips, Inc. v. Johnson & Johnson, 3 Cir., 1953, 206 F.2d 144, 147, 148, certiorari denied.⁸

Recent trade-mark cases in this circuit have involved virtually identical marks on different products, Sunbeam Furniture Corp. v. Sunbeam Corp., 9 Cir., 1951, 191 F.2d 141, rehearing denied 9 Cir., 191 F.2d 731; Sunbeam Lighting Co. v. Sunbeam Corporation, 9 Cir., 1950, 183 F.2d 969, certiorari denied 340 U.S. 920, 71 S.Ct. 357, 95 L.Ed. 665; Time, Inc. v. T. I. M. E., supra; or marks on business establishments, where the customers might be different, Stork Restaurant, Inc. v. Sahati, 9 Cir., 1948, 166 F.2d 348; Brooks Bros. v. Brooks Clothing of California, Ltd., D.C.S.D.Cal.1945, 60 F.Supp. 442, affirmed, adopting the opinion of the District Court, 9 Cir., 158 F.2d 798, certiorari denied 331 U.S. 824, 67 S.Ct. 1315, 91 L.Ed. 1840; or a store and a product, Safeway Stores, Inc. v. Dunnell, 9 Cir., 1949, 172 F.2d 649, certiorari denied 337 U.S. 907, 69 S.Ct. 1049, 93 L.Ed. 1719.

The only recent case arising within this circuit which the court has found (and none was cited) where the products were very similar and the question turned on the similarity of the names is that of Vita-Var Corp. v. Alumatone Corp., D.C.S.D.Cal.1949, 83 F.Supp. 214. In that case, Judge Yankwich, later Chief Judge of this District, held that "Alumatone" was not confusingly similar to "Alumikote" where the names were both applied to aluminum paint products. In that case, as here, part of the names was identical; there was a vowel sound which might be slurred to sound similar, and the third syllable was different. There, as here, the products were both to be used for the same purpose, although they were in different form. There, one product was a ready-mixed aluminum paint whereas the other was a flaked pigment which was to be mixed with an attached liquid; here, one of the products consists of tablets which are to be dissolved in water, and the other, a powder which is similarly dissolved. There, as here, see infra, there is no indication that the labels were similar. If anything, the case before this court now is a stronger one for denying relief since part of the alleged infringing mark is a familiar English word which is unlikely to be confused.

Until our circuit more clearly defines these cases, it seems that the Vita-Var case is more indicative of the position of this circuit than the decisions of other circuits which may go further in granting trade-mark protection. If this court were sitting in the Third Circuit, it might feel constrained by the opinion in Q-Tips, Inc. v. Johnson & Johnson, supra;⁹ or in the Second Circuit, by Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 1960, 281 F.2d 755;¹⁰ or in the Seventh Circuit, by G. D. Searle & Co. v. Chas. Pfizer & Co., Inc., 1959, 265 F.2d 385, certiorari denied 361 U.S. 819, 80 S.Ct. 64, 4 L.Ed. 2d 65;¹¹ to reach a different result because of a possible trend in those circuits. Admittedly, courts of this circuit have cited each of the above with approval for the general proposition that higher standards of fair business are now required.¹² However, the court has found no case in this circuit holding marks as dissimilar as the ones in this case to be infringing.

Miles Laboratories itself has made numerous forays into the courts to protect their Alka-Seltzer name and have met with varying success. See, for example, American Bio-Chemical Corporation v. Coe, D.C.D.C.1943, 51 F.Supp. 430 (wherein "Vita-Seltzer" not allowed registration); Miles Laboratories, Inc. v. United Drug Co., 1940, 112 F.2d 814, 27 CCPA 1273 (wherein "Rex-Seltzer" was allowed registration); Miles Laboratories, Inc. v. Goodfriend, Comm.1955, 106 U.S.P.Q. 336 (wherein "Carba-Seltzer" was refused registration).

The court is particularly impressed with the result in Miles Laboratories v. Pepsodent Co., Cust. & Pat.App.1939, 104 F.2d 205. Although decisions of the Court of Customs and Patent Appeals have no binding effect on this court, they carry particular weight since they are decided by a three judge court which specializes in this type of case. In Pepsodent, the court held "Pepso-Seltzer" registerable as not confusingly similar to "Alka-Seltzer" when affixed to similar products. As in the Alumatone case, supra, the alleged infringing mark was considerably closer than the mark in the case under consideration, since the middle vowel...