Palmer v. Gulf Pub. Co.

• Citation: 79 F. Supp. 731
• Decision Date: 13 July 1948
• Docket Number: No. 7614.,7614.
• Court: U.S. District Court — Southern District of California
• Parties: PALMER v. GULF PUB. CO.

79 F. Supp. 731

PALMER v. GULF PUB. CO.

No. 7614.

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

July 13, 1948.

Kenneth E. Grant and Richard A. Perkins, both of Los Angeles, Cal., for plaintiff.

Harris, Kiech, Foster & Harris, by Ward D. Foster and Ford Harris, Jr., all of Los Angeles, Cal., and Fulbright, Crooker, Freeman & Bates and Leon Jaworski, all of Houston, Tex., for defendant.

YANKWICH, District Judge.

I.

The Nature of the Controversy.

The action is for trademark infringement and unfair competition. The sole remedy sought by the plaintiff is injunction of the use of the title "World Oil" by the defendant for its monthly trade publication. Back of the controversy are certain undisputed facts.

The plaintiff, Mona Palmer, as trustee, under the Last Will and Testament of Russell Palmer, deceased, is the owner and publisher of the trade journal bearing the name "World Petroleum". As surviving partner of the partnership, Palmer Publications, which consisted of Mona Palmer and her deceased husband, Russell Palmer, she is also the publisher of the trade journal named "Petroleum World." The management of these publications is under the direction of Rex Wadman as general manager. "World Petroleum" is published in New York, "Petroleum World" in California. Both trade journals are published once a month and are intended for the oil industry. "World Petroleum" is circulated in the United States, Canada, England and other countries, while "Petroleum World" is sectional in interest and devoted primarily to California. A copy of the front page of the former is reproduced at the end of the opinion.¹

The defendant, The Gulf Publishing Company, formerly used the name "The Oil Weekly" for a trade publication also circulated in the oil industry. It had originally only a sectional circulation, but, later, its operations assumed an international scope. It, too, was circulated in the United States, Canada, England and certain other countries. In the issue of "Oil Weekly" of June 2, 1947, and by other means, the defendant published an announcement of change of name from "The Oil Weekly" to "World Oil," the change to be made effective with the issue of July 7, 1942. Subsequent announcements by the defendant of its change of name were made between June 2, 1947, and July 7, 1947. Plaintiff received notice of the prospective change on or about June 2, 1947.

On June 16, 1947, "World Petroleum" circulated a letter to all its then advertisers and prospective advertisers and advertising agencies with whom it did or expected to do business, commenting on the defendant's change of name from "The Oil Weekly" to "World Oil." "Petroleum World" circulated a letter, entitled "Thank you, Mr. Dudley," written on its letterhead. A copy of the letter reached the defendant. By letter, dated July 23, 1947, written by the plaintiff's attorney to the defendant, complaint was made about the change of name from "The Oil Weekly" to "World Oil." The letter was received by the defendant on July 25, 1947.

"World Petroleum" has a circulation of approximately 9,000, not less than ninety percent of which falls within what is termed "controlled circulation," which means that the publication is sent free to advertisers and to such patrons in the oil industry as are most likely to purchase advertised products. "World Oil" has paid subscribers only, its paid circulation being approximately 17,000. Neither "World Petroleum" nor "World Oil" is sold at news stands.

"World Petroleum" is sustained by advertising revenue. Approximately ninety per cent of the advertising placed in it is through advertising agencies, which investigate the advertising media used.

From the first publication under the new name of "World Oil" until the present time, the defendant has carried at the top of the cover page of its publication the legend: "Established 1916 as The Oil Weekly", as shown by a cover page photostated at the end of the opinion.² A reference to the successorship of "The Oil Weekly" is also carried on the defendant's letterheads.

"World Petroleum" was registered as a trademark (No. 292796) on April 28, 1931, after full compliance with the requirement of the statutes.³ Other facts will appear further on in the discussion.

The controversy centers around the similarity of names. Plaintiff insists that both under the presumption of legality which attaches to the trademark registration, and under the principles evolved by courts in unfair competition cases, she has the right to be protected against the use of "World Oil", a designation which she asserts is so similar to hers as to result in that confusion which the law condemns.

Three recent decisions of the Circuit Court of Appeals for the Ninth Circuit⁴ have treated the problem of similarity arising in proper name cases and in others so fully that any discussion may well be confined to such distinctive features as appear in this case.

The problem here is the use of ordinary words to designate a trade publication.

II.

Protection of Trade Names.

(A) Common and Fanciful Names:

Common words used to designate a trade publication are not protected, unless through long use and design, format, symbols, and other distinctive characteristics, they are identified with the particular publication. This is but an application to the publishing field of the rule which applies to the designation of other businesses. It has even been applied to geographical names, which are not, ordinarily, the subject of appropriation.⁵

Fanciful names are a special object of the law's protection. The law on the subject is summed up in the most recent case from the Ninth Circuit Court of Appeals:

"The `Stork Club' is a trade name that, in the language of the books, might well be described as `odd,' `fanciful,' `strange,' and `truly arbitrary.' It is in no way descriptive of the appellant's night club, for in its primary significance it would denote a club for storks. Nor is it likely that the sophisticates who are its most publicized customers are particularly interested in the stork.

"It is not a trade name that would naturally suggest itself for a fashionable restaurant. `Elbow Room,' the name adopted by one of the predecessors of the appellees, would have been more appropriate. So would `Stagger Inn,' or even `Filling Station.'

"In other words, there is little likelihood that the appellant's predecessor and the appellees' predecessor hit upon the names `The Stork Club' and `Stork Club', respectively, as acts of independent creation. It seems a clear case of a junior appropriator's seeking to capitalize on the prestige of the senior, of which more hereafter.

"Equity gives a greater degree of protection to `fanciful' trade names than it accords to names in common use.

"In Arrow Distilleries v. Globe Brewing Co., 4 Cir., 117 F.2d 347, 351, the court said: `* * * the rule that coined or fanciful marks or names should be given a much broader degree of protection than words in common use is sound, for it recognizes not only the orthodox basis of the law of trade-marks that the sale of the goods of one manufacturer or vendor as those of another should be prevented, but also the fact that in modern business the trade-mark patterns performs the added function of an advertising device, whose value may be injured or destroyed unless protected by the courts.'

"When, as here, an insigne accompanies the `coined' trade name, there is even greater need for safeguarding the public as well as the senior appropriator from imitations. Rhea v. Bacon, supra, 5 Cir., 87 F.2d 976 at page 977".⁶ (Emphasis added)

(B) Ordinary Words, alone or in combination:

The use of ordinary words either alone or in combination, without more, to describe a publication, is not entitled to protection under the law of trademarks or as unfair competition. Illustrative of the cases is a leading California case.⁷ In that case, the American Automobile Association sought protection, by reason of prior use, against the use of the name American Automobile Owners' Association. Ruling against such claim, the Supreme Court of California said:

"The important question presented by the appeal must be determined by an application of the well-established test, which no doubt the trial court applied to the case, to-wit: Would a person exercising that care, caution and power of perception which the public may be expected to exercise in the matter which it has in mind, mistake one of said emblems for the other? The only points of similarity are to be found in the size and diamond shape (waiving the difference which exists as to the fact that all of the points of the diamond design of plaintiff California State Automobile Association are pointed, and two of said points of the diamond design of respondent are truncated), and in the small blue border, and in the similarity as to metal color of the smaller lettering on the border. In all other respects they are different as to name, abbreviations, size and style of letters, design of motto, and color. Placed at any point within the distance of visual discernment they present an entirely different picture which could not deceive a person of normal discernment into the error of mistaking one for the other. No claim is made as to the right of monopoly by reason of copyright or trademark of the letters AAA, or as to the exclusive right of appellants to appropriate the words `American Automobile,' for the reason that these words are in common use and are regarded by the law as common property, which may be used by others in combination with other descriptive words, provided they are not used in combination with such other words or symbols or designs as to render it probable that they would mislead persons possessing ordinary powers of perception. Generic terms and words descriptive of place are not subject to exclusive appropriation. No legal objection could be urged against the formation of an association to be known as...