Solventol Chemical Products v. Langfield

• Decision Date: 06 April 1943
• Docket Number: No. 9215.,9215.
• Citation: 134 F.2d 899
• Parties: SOLVENTOL CHEMICAL PRODUCTS, Inc., v. LANGFIELD.
• Court: U.S. Court of Appeals — Sixth Circuit

134 F.2d 899 (1943)

SOLVENTOL CHEMICAL PRODUCTS, Inc., v. LANGFIELD.

No. 9215.

Circuit Court of Appeals, Sixth Circuit.

April 6, 1943.

John A. Blair, of Detroit, Mich. (John A. Blair and Harness, Dickey & Pierce, all of Detroit, Mich., on the brief), for appellant.

William T. Woodson, of Chicago, Ill. (Edward S. Rogers, William T. Woodson, and James H. Rogers, all of Chicago, Ill., Charles C. Andrews, of Detroit, Mich., and Hill, Hamblen, Essery & Lewis, of Detroit, Mich., on the brief), for appellee.

Before SIMONS, HAMILTON, and McALLISTER, Circuit Judges.

HAMILTON, Circuit Judge.

This suit commenced as an action under Sec. 4915, R.S., 35 U.S.C.A. § 63, seeking a judgment authorizing the Commissioner of Patents to register appellant's trade-mark "Solventol" while appellee's registered trade-mark "Solvite" was extant.

Appellee filed a counterclaim praying that appellant be enjoined from using the name Solventol on the ground that it was a colorable imitation and an infringement of appellee's registered trade-mark, Solvite. The lower court dismissed appellant's petition and sustained appellee's counterclaim.

Two issues are presented: (1) Is there clear error in the court's finding that appellant's trade-mark, Solventol, is confusingly similar to appellee's registered trademark, Solvite, in the light of the purposes for which the parties used these marks, and (2) Did appellee sustain the burden resting on it to show that the sale of appellant's goods under the trade-mark, Solventol, has caused, or is likely to cause, the purchasing public to believe that such goods are the product of appellee.

Appellee manufactures and sells, under its trade-mark, Solvite, a cleaning preparation which, when mixed with gasoline, is used for cleaning garments, draperies, fabrics, rugs, carpets, automobile seats or other articles.

Appellee and his predecessors have used this trade-mark in the manufacture and sale of this preparation since 1914, and it has been sold throughout the United States, but largely in the State of Michigan and particularly the city of Detroit. Appellant's trade-mark, No. 243,223, was registered in the Patent Office June 12, 1928.

Charles A. Campbell has been engaged in the manufacture of soap and water soluble cleaning materials in Detroit, Michigan, since 1923. In 1932, he devised a formula for an alleged new type water soluble cleaning compound and began to manufacture and sell it in that year under the trade-mark Solventol. Appellant, Solventol Chemical Products Company, was created in 1935 for the purpose of acquiring, which it did, the trade-marks, trade name and business of Campbell who is now its president. On October 14, 1936, appellant filed an application in the United States Patent Office to register the word "Solventol" as its trade-mark for a general cleaning compound to be used in household and industrial cleaning.

On March 30, 1938, appellee filed in the Patent Office, notice of opposition (15 U.S. C.A. § 86) to the registration of the mark, Solventol, on the ground that he was selling a cleaner under the registered trade-mark Solvite, and that Solventol so nearly resembled his mark that it might cause confusion and mistake in the mind of the public and deceive purchasers.

On April 24, 1939, the Examiner of Trade-Mark Interferences, sustained appellee's opposition on the ground that the two marks were confusingly similar and on January 7, 1940, the Commissioner affirmed the decision of the Examiner. 44 U.S.P.Q. 261. Appellant, in this action, seeks to reverse the Commissioner.

For a time, appellant and its predecessor sold their products in bulk to consumers using large quantities of water soluble detergent compounds for use in cleaning floors and walls. During the period from August 1932 to the end of 1935, appellant sold 1,200,000 pounds of its product under the trade-mark Solventol and received gross therefor approximately $84,000.

In 1936, appellant put its product under the name Solventol, in small retail packages for sale in department, grocery, hardware and drug stores. It first introduced the package to the buying public by a direct house to house demonstration and selling campaign sales in the Detroit area, being made to approximately 150,000 households in this way. Sale of appellant's product was further expanded by direct house to house solicitation throughout Michigan, Ohio, Indiana, Pennsylvania, parts of Nebraska, Missouri, Minnesota and New York. Within eight years appellant expended approximately $400,000 in advertising and sales promotion. Its sales to retailers in small packages and to industrial users in bulk increased rapidly from 1935 to and including 1940. In the latter year, appellant's sales in small packages to retailers totaled $106,410.67 and its bulk sales, $190,355.25. Appellant had no actual knowledge of the existence of appellee's trade-mark until March 1938, although the respective products were sold in the same communities and through the same sale outlets.

Appellee acquired his formula and trade-mark in 1924, from the Wyeth Chemical Company of New Jersey. He devotes his time largely to the business of the Northville Laboratories, Inc., of Northville, Michigan, a suburb of Detroit, and his manufacture and sale of Solvite is conducted through agents. His gross sales ranged from $1,217.54 in 1936 to $792.29 in 1940 up to December 12th. His product and trade-mark are not generally advertised although he does some street car and newspaper advertising.

The burden rests on appellant to show manifest error in the decision of the Patent Office Tribunal and that of the lower court. Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657; United States ex rel. Baldwin Company v. Robertson, 265 U.S. 168, 44 S.Ct. 508, 68 L.Ed. 962. Each party put into the record additional evidence not considered by the Commissioner of Patents.

Appellee employed two persons to visit stores in the city of Detroit and ask for Solvite cleaner. These parties testified they visited thirteen stores, the first two of which had no Solvite, but offered Solventol, Dic-A-Doo, Spic-and-Span, the clerk in the second store stating that the last was the best cleaner on the market. In the next store the merchant picked up a can of Solventol and sold it to the shoppers without any comment. In the next store when the two shoppers asked for Solvite cleaner the clerk made several inquiries about it and then said he had never heard of it; he then picked up a can of Solventol and said, "This is Solventol," but didn't attempt to sell it to them. At the next store when the shoppers asked for Solvite cleaner the clerk inquired whether they wanted Solventol or Soilex, saying the former came in three sizes, but the latter in only one and showed them several packages to ascertain if any of them was what they wanted. On being answered in the negative the clerk gave them a sample can of Soilex. The next inquiry was at a Kroger store and when asked for Solvite cleaner, the clerk said he never heard of it, but that he had heard of Solventol, although he didn't suggest that they buy it. At the next store when asked for Solvite cleaner the clerk inquired if they wanted it for cleaning and on being told they did, he said "Solventol is what you want," and sold them a 25-cent size. At the next store the clerk said he never heard of Solvite but that he had Soilex and Solventol. At the next store the clerk said he didn't have Solvite but that he did have Solventol and brought back a 25-cent can of that and a sample can of Am-Best cleaner remarking "there are a thousand cleaners on the market." At the next store the clerk said he had never heard of Solvite and as they were leaving the store he said he had some Solventol that maybe that was what...