Seven-Up Company v. O-So-Grape Co., 12921
| Decision Date | 18 November 1960 |
| Docket Number | No. 12921,12922.,12921 |
| Citation | 283 F.2d 103 |
| Parties | SEVEN-UP COMPANY, Plaintiff-Appellant, v. O-SO-GRAPE CO. et al., Defendants-Appellees. SEVEN-UP COMPANY, Plaintiff-Appellee, v. O-SO-GRAPE CO. et al., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Beverly W. Pattishall, W. Thomas Hofstetter, Robert M. Newbury, Chicago, Ill., for Seven-Up Co.; Woodson, Pattishall & Garner, Chicago, Ill., Kavanagh, Bond, Scully, Sudow & White, Peoria, Ill., John T. Tabor, J. Stewart Bakula, St. Louis, Mo., of counsel.
Charles F. Meroni, Carlton Hill, Chicago Ill., Eugene R. Johnson, Peoria, Ill., for O-So-Grape.
Before DUFFY, SCHNACKENBERG and KNOCH, Circuit Judges.
Rehearing Denied November 18, 1960, in No. 12921.
This is a suit for trademark infringement, unfair competition and trademark dilution respecting plaintiff's registered trademark "Seven-Up (7-Up)." Plaintiff complains of defendants' use of the trademark "Bubble Up." Injunctive relief was asked against the "Up" portion of "Bubble Up." Accounting and damages were also asked by plaintiff.
Defendants answered with a general denial and affirmative defenses of laches and acquiescence. Under Rule 42(b), Federal Rules of Civil Procedure, 28 U.S. C.A., defendants moved for a separate trial on the issue of laches. Extensive oral arguments were made and extensive briefs were submitted to the trial court which, on September 30, 1959, decided that there should be a separate trial on the issue of laches. The decision was accompanied by an exhaustive and detailed opinion.
Plaintiff then offered judgment to the defendants upon the separate issue of laches. The offer was accepted, and the clerk entered judgment in favor of defendants upon that issue.
Defendants moved for a judgment on the pleadings, and plaintiff moved to set the case for trial. Defendants then moved to amend their motion for judgment on the pleadings so as to convert it to a motion to dismiss, and for injunctive relief against plaintiff. The District Court granted the motion to amend and then granted the motion to dismiss the complaint. It refused to issue an injunction against plaintiff, and ordered the costs to be borne by plaintiff and defendants.
Plaintiff appealed from the order dismissing its complaint and defendants appealed from the denial of injunctive relief against plaintiff, and also from the order requiring each party to bear its own costs.
Plaintiff concedes that its laches precludes it from recovery of any past damages and profits. It claims, however, to be entitled to injunctive relief against the alleged continuing deception, unfair competition and trademark infringement. Plaintiff argues that the judgment against it based upon laches in no way justified the trial court in denying an injunction to prevent future infringement. It, therefore, becomes necessary to review the conduct of plaintiff pertaining to the issue of laches.
On October 2, 1942, plaintiff, Seven-Up Company, filed a suit in the United States District Court at St. Louis, Missouri, against the Cheer Up Sales Company of St. Louis, alleging the registered trademark "Cheer Up" infringed plaintiff's trademark "Seven-Up (7-Up)." On the same day in the same court, plaintiff filed a similar suit charging the registered trademark "Natural Set Up" infringed plaintiff's registered trademark "Seven-Up (7-Up)." About ten months thereafter, in the same court, plaintiff commenced a suit against Leroy O. Schneeberger, doing business as Bubble Up Company, alleging the trademark "Bubble Up" infringed the plaintiff's trademark "Seven-Up (7-Up)."
The case involving the trademark "Cheer Up" was fully tried. The judgment was adverse to plaintiff, the Court deciding that the trademark "Cheer Up" did not infringe the trademark "Seven-Up (7-Up)" and was not confusingly similar thereto. The Seven-Up (7-Up) Company appealed to the Circuit Court of Appeals of the Eighth Circuit, which affirmed.1 Thereafter, the Seven-Up (7-Up) Company petitioned for certiorari. This was denied.2 Plaintiff then filed a petition for a bill of review in the Eighth Circuit Court of Appeals. This was denied.3 A petition for certiorari was again denied.4
After this series of reverses, plaintiff voluntarily dismissed its suit against the then owner of the mark "Bubble Up." The order of dismissal was dated March 13, 1946. Plaintiff also dismissed its suit which charged that the mark "Natural Set Up" infringed its mark.
The suit pending in St. Louis involving the trademark "Bubble Up" was fully at issue before it was dismissed. In the thirteen years following such dismissal, plaintiff herein gave no notice and made no claim, orally or in writing, that the trademark "Bubble Up" was invalid or infringed the trademark "Seven-Up (7-Up)."
Between January 14, 1955 and October 18, 1955, the attorneys for the plaintiff and the defendants herein exchanged friendly correspondence which had the objective of cooperation of defendants in the use of its trademark "Bubble Up" to the end that the suffix "Up" would not become generic. During this period, no claim was made by plaintiff that the trademark "Bubble Up" was invalid or infringed plaintiff's trademark.
Defendants filed a motion to dismiss the instant appeal on the ground the judgment sought to be reviewed is essentially the one to which plaintiff consented and which was invited by plaintiff's offer of judgment. We ordered the motion to dismiss to be taken with the case.
We may assume that before the plaintiff agreed to a judgment against it on the issue of laches, plaintiff's attorneys had read the opinion of the trial court on the motion for a separate trial. Among statements appearing in that opinion was: ...
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