Noll v. Rinex Laboratories Co., 4962.

Decision Date01 July 1935
Docket NumberNo. 4962.,4962.
Citation25 F. Supp. 239
PartiesNOLL v. RINEX LABORATORIES CO. et al.
CourtU.S. District Court — Northern District of Ohio

WEST, District Judge.

Suit for infringement of trade mark. Plaintiff, who does business under the name Pinex Co. at Fort Wayne, Indiana, for over 25 years has made and sold a medicinal preparation for use in compounding a remedy for coughs and bronchial irritation, under the trade mark "Pinex". He acquired the mark in 1909 from one Schmidt, who had registered it for use on a "cough balsam" and re-registered it in 1929, in class 6, "Chemicals, medicines and pharmaceutical preparations". Plaintiff sells to wholesale drug houses by advertising for which he expends as much as $200,000 a year, and sales amount to over 1,000,000 bottles annually. The preparation is sold in 2½ oz. bottles which the user mixes with a syrup to produce a pint of the remedy. About 1933 he began making and selling nose drops under the same trade mark, put up in a box indicating they are made by Pinex Laboratories, which is said to be a department of the plaintiff's business. Sales of both products extend throughout the United States.

The Rinex Laboratories Co., located in Cleveland, Ohio, makes and sells a bottled package of capsules and tablets for asthma, nasal congestion and irritation of hay fever and colds under the name "Dr. Platt's Rinex Prescription" and a nasal medication for colds under the name "fed-Rinex". Attempt was made to register the former name by Clinical Laboratories Co., predecessor of defendant, but on the opposition of the plaintiff, registration was denied in 1926. Clinical Laboratories Co. went into bankruptcy in 1932, whereupon the defendant company was organized by some of those interested in the bankrupt concern, Mr. Frailey being president of both.

Defendant and its predecessor have sold the Rinex remedies in all parts of the United States, and by the expenditure of considerable sums in advertising, a very substantial business has been built up.

There is no evidence of wilful substitution of goods, and the evidence of actual confusion of buyers is meager and discloses nothing serious. Actual confusion would hardly be expected as between the cough remedies. Pinex is put up and sold in a yellow carton about twice the height of the one enclosing the Rinex bottle; it is a liquid used as the base of a compound and is not administered from the bottle, as are the Rinex capsules and tablets. The dress of the package, shape, size, and contents of the bottles are not similar. The same is true of the nasal remedy. Pinex nose drops are liquid and come in a bottle with a dropper attachment, while fed-Rinex is a thin jelly put up in a tube with a capped extension for insertion in the nostril. The enclosing cartons are dissimilar in appearance.

No fraudulent acts or purpose are established against the defendant, and as I see the matter, plaintiff's case depends upon its ability to prove trade mark infringement, without assistance from acts of unfair competition, except as defendant's use of a word so obviously similar to Pinex may constitute unfair competition.

Defendant claims, among other things, that plaintiff has been guilty of unfair practices in that it has made use of the name "Pinex Laboratories" on its nose drops, the desired inference being, I suppose, that it wished to imitate the "Laboratories" feature of defendant's name on its packages in order to prepare a better case of similarity between packages. There is no real foundation for this contention, and it is disregarded.

The absence of proof of actual confusion of goods and unfair competition is not fatal to plaintiff's claim of infringement of its technical registered mark. This is sufficiently shown by the following from Coca-Cola v. Carlisle Bottling Works, 6 Cir., 43 F.2d 119, 120: "The evidence is insufficient to establish a case of substitution, similarity of dress, or `passing off,' and we concur therefore in the conclusion of the District Judge that plaintiff is limited to the question whether its trade-mark is infringed."

See, also, Gehle v. Hebe Co., 7 Cir., 276 F. 271.

Intent to deceive is not a requisite to infringement of a registered trade mark. Thaddeus Davids Co. v. Davids, 233 U.S. 461, 462, 34 S.Ct. 648, 58 L.Ed. 1046, Ann. Cas.1915B, 322. And an infringement of "Pinex" carries a presumption of fraud. Barton v. Rex-Oil Co., 3 Cir., 2 F.2d 402, 40 A.L.R. 424.

"The primary and proper function of a trademark is to identify the origin or ownership of an article to which it is affixed." Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412, 36 S.Ct. 357, 360, 60 L.Ed. 713. Standard Oil Co. v. California Peach & Fig Growers, D.C., 28 F.2d 283, holds that Nujol and Nujol treated figs are offered for sale for the same human ailment, are sold side by side, are of the same general class, and that a common mark leads to a belief of common origin. And Judge Morris cites Duro Co. v. Duro Co., 3 Cir., 27 F.2d 339, Akron-Overland Tire Co. v. Willys-Overland Co., 3 Cir., 273 F. 674, and Aunt Jemima Mills Co. v. Rigney & Co., 2 Cir., 247 F. 407, L.R.A.1918C, 1039, to the same effect.

There can be no question but that the products involved here are of the same general class. Counsel for defendants say in his brief: "Although in the same general class, they are non-competing products." The court finds they are naturally and actually competitive. Not perhaps in every respect, but certainly in some respects.

Manufacturers of drugs, as the evidence shows, and as all know, often apply their marks on all their products of the same class, as indicating a common source. Plaintiff properly uses "Pinex" as his mark on both his cough remedy and his nasal inhalant.

Speaking of infringement, the Sixth Circuit Court of Appeals says, in Coca-Cola Co. v. Carlisle Bottling Works, 43 F.2d 119, supra, at page 120:

"In determining this question the test is `whether the alleged infringing trademark or label, taken as a whole, so far resembles the other mark or label as to be likely to be mistaken for it by the casual or unwary purchaser.' Western Oil Ref. Co. v. Jones, 27 F.2d 205, 206 (C.C.A. 6). Again, `a proper test is whether, taking into account the resemblances and differences, the former are so marked that the ordinary purchaser is likely to be deceived thereby.' DeVoe Snuff Co. v. Wolff, 206 F. 420, 423 (C.C.A. 6)."

While the decision of the Patent Office on defendant's attempt to register its trade mark is not conclusive, it certainly has much weight as the expression of officials constantly dealing with the subject. On appeal from the examiner of interferences the assistant commissioner said:

"The two words, `Rinex' and `Pinex', so nearly resemble each other both in appearance and sound as to be likely to cause confusion in the mind of the public, when the two words are appropriated to goods of the same descriptive properties. The only difference between the two words is in the first letter, the letter `R' occurring in the one, and the letter `P' occurring in the other. It is believed that the average purchaser would not carry this slight distinction in memory. As to meaning, the two words are arbitrary, hence have no authorized meaning. The different meanings that an analysis of the words might suggest, is a matter with which the average purchaser is but little concerned. The rule that the newcomer should observe a clear and well defined line between the mark which he selects and previously known marks should be applied in this case. (Coca-Cola Co. v. Chero-Cola Co., 51 App.D.C. 27, 273 F. 755.)

"With respect to the goods of the respective parties it must be held that they are of the same descriptive properties.

"The merchandise of each consists of a medicinal preparation for colds, asthma, etc. In fact, it seems clear from the record, that the preparation of each of the parties is intended as a remedy for inflammation or diseases, generally, of the respiratory organs, and is not to be confined in use to hay fever, asthma and head colds. Medicinal preparations for the same or kindred diseases have the same descriptive properties, within the purview of the trade-mark law, even though there may be specific differences in the character of the preparations, or in the form in which they are prepared for the market."

Defendant relies on Thomas Kerfoot & Co., Ltd. v. Louis K. Liggett Co., 1 Cir., 67 F.2d 214, and says the elements of plaintiff's mark "pin" and "ex" have long been public property. In the case cited, the element considered was "vap" and the entire words involved "Vapure" and "Vapex". Here the final syllable in each word is the same, "ex". In the Vapex case it was proven that "vap", the common syllable, had been many times registered for remedies either alone or as the first syllable of another word. There is no such proof here. Ex. 8 is a list of words registered, but "ex" is not found in any of them. Ex. 7 contains many names from the Druggist circular of 1924. Many end in "ex"; whether any are such medicines as we have to do with is not known. And none appears to be registered. The defendant does not bring itself within the Vapex case.

The similarity in appearance and sound between "Pinex" and "Rinex" is so striking that the public is likely to be confused as to the origin of the goods of the same descriptive properties to which they are applied. "Rinex" being the dominant word in the defendant's mark, infringement is not avoided by the use of the small type words "Dr. Platt's above and "prescription" below it. And on the nasal remedy "Rinex" completely dominates, and the hair-like "fed" above it must be ignored. This mark also...

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