Standard Oil Company v. Standard Oil Company

• Decision Date: 12 June 1956
• Docket Number: Civ. No. 3745.
• Citation: 141 F. Supp. 876
• Parties: STANDARD OIL COMPANY, a corporation, Plaintiff, v. The STANDARD OIL COMPANY, a corporation, and Sohio Petroleum Company, a corporation, Defendants.
• Court: U.S. District Court — District of Wyoming

141 F. Supp. 876

STANDARD OIL COMPANY, a corporation, Plaintiff, v. The STANDARD OIL COMPANY, a corporation, and Sohio Petroleum Company, a corporation, Defendants.

Civ. No. 3745.

United States District Court D. Wyoming.

June 12, 1956.

Wallace H. Martin, Walter J. Halliday and Robert Bonynge (Nims, Martin, Halliday, Whitman & Williamson), New York City, Walter T. Kuhlmey (Kirkland, Fleming, Green, Martin & Ellis), Chicago, Ill., Harry B. Henderson (Henderson & Thomson), Cheyenne, Wyo., and Thomas E. Sunderland, Hunter Johnson, Jr., and L. Bates Lea, Chicago, Ill., of counsel, for plaintiff.

Maurice F. Hanning, Leland L. Chapman, Rufus S. Day, Jr., Robert J. Leaver and Paul C. Shafer, Jr., Cleveland, Ohio, (McAfee, Grossman, Taplin, Hanning, Newcomer & Hazlett), Cleveland, Ohio, Walter H. Free (Campbell, Brumbaugh, Free & Graves), New York City, Carleton A. Lathrop (Lathrop & Lathrop), Cheyenne, Wyo., for defendants.

KENNEDY, District Judge (retired).

This is a trademark infringement case. It seems to be an important piece of litigation for the following reasons: About thirty-five days were consumed in the taking of evidence and presentation of oral arguments which probably marks it as the longest trial in time consumed which is recorded in the Wyoming Federal Judicial District. Approximately five thousand pages of testimony and arguments make up the written record. In addition to this, however, a considerable number of days were used in the presentation and disposition of advance motions, including a somewhat extended argument of a motion to dismiss on behalf of defendants. By agreement of counsel exchange trial briefs were submitted in advance of oral argument consisting of two briefs for each litigant and covering something over five hundred and fifty pages. Over two thousand exhibits were introduced and received in evidence. Considerably more than one hundred authorities were cited in briefs and arguments, some of which were duplicated by counsel on either side as different conclusions were drawn as to their significance and meaning. The record will show that approximately one hundred and thirty witnesses gave evidence, either orally or by deposition. These witnesses were from long distances from the place of trial, while counsel likewise appeared from remote regions as the above appearances will indicate. The only mystery which remains undisclosed is the expense to the litigants in the preparation and trial of this law suit. This perhaps will only be disclosed when income tax returns reveal the secret and then only for official eyes. These elements all suggest the importance of the litigation, especially to the litigants themselves, and correspondingly place upon the trial court a heavy responsibility in endeavoring to solve the problem involved.

On account of the presiding trial judge having had little experience in the trial of trademark litigation he is perhaps illy equipped to preside over a trial of this character and it was suggested during the trial that it is a case which properly belongs in the bosom of Appellate Courts on account of its complicated questions. Nevertheless, although this Court feels that he may be sitting as a Master to take the evidence, yet under the law the obligation is placed upon him to reach a conclusion to the best of his ability and therefore an honest effort will be made to that end.

The case was filed on May 5, 1954 and the issues are rather sharply drawn and comparatively simple. The gist of the charges laid in the complaint is that the defendant in its use of the word "Sohio" in plaintiff's territory is an infringement of plaintiff's rights and trademarks in that it has caused and will continue to cause confusion in the mind of the public so as to carry with it the idea and significance that it is a Standard Oil company. Plaintiff therefore seeks an injunction restraining the defendant from the use of that word as a trademark in plaintiff's territory, for an accounting and for such other and further relief as may be just, together with costs.

The defendants answer by admitting certain facts alleged by the plaintiff but denying any infringement and assert affirmative defenses of laches and estoppel; that the relief sought by plaintiff would be in the nature of a restraint of trade; lack of equity; abandonment of claim on the part of plaintiff, and a counterclaim seeking a declaratory judgment that the trademarks of defendants do not infringe upon the plaintiff's rights.

In the first instance it would seem that there are certain points which need not be considered as being in dispute and therefore it would not seem necessary to discuss them here and unnecessarily prolong this memorandum: (a) The Courts have decided in a case of this character that the predominating features of a trademark are to be considered from a three-point consideration, which are appearance, sound and meaning. (b) Plaintiff's so-called trademarks which it may use exclusively in its own territory are "Standard Oil", "Standard", "S.O.", "S O Co.", "S O C O" and "Solite"; (c) Plaintiff's territory consists of fifteen states, which are: Colorado, Illinois, Indiana, Iowa, Kansas, Michigan, Minnesota, Montana, North Dakota, Oklahoma, South Dakota, Wisconsin, Missouri, Nebraska, and Wyoming; (d) Both plaintiff and the defendant The Standard Oil Company of Ohio are so-called integrated companies which in the parlance of the oil industry consist of production, manufacture, transportation and marketing, or distribution, and both the plaintiff and the defendants, with their subsidiaries, are each exercising the aforesaid functions; (e) Each case of this character must stand upon its own facts and circumstances.

Prior to 1911 all the Standard Oil Companies throughout the country were subsidiaries of the Standard Oil Company of New Jersey and at that time under a decree of the Supreme Court of the United States a dissolution was required in order to prevent monopoly and to accomplish free competition in the oil industry. Accordingly, in compliance with that decree the several Standard Oil Companies throughout the country were divorced from the parent company and became so-called independent as to the original company and as to themselves. The territory in which each respectively operated thereupon became its own territory for all purposes and its individual rights as to its use of trademarks and the individual property of each. This fact became known to the general public as Standard Companies acting independently in their own territory in which they had previously operated and entitled to the exclusive use of their claimed and developed trademarks.

In this respect it is probable that the Supreme Court "builded better than it knew" as a distinct rivalry and a decided spirit of competition grew up among them, as with other companies not previously affiliated with the Mother Standard organization. The contest here exemplifies that theory as being a trademark case, it must be on the periphery of company competition. As a result of this realignment in the public mind and through the Press and advertising these companies were variously listed as shown by plaintiff's exhibits from 1924 up to the year 1948, as follows: S. O. New Jersey; S. O. New York; S. O. Kentucky; S. O. Indiana; S. O. Nebraska; S. O. California; S. O. Louisiana; and S. O. Ohio.

Considerable evidence and discussion has arisen over the origin of the name "Sohio". The plaintiff's evidence suggests that its origin is indicated in a publication and exhibit known as "The Sohioan" in 1929 where one of the officials at an O. P. M. A. convention used the following language:

"The Significance of a Name.

"`Sohio' is of course an abbreviation of the full name of our organization, The Standard Oil Company of Ohio. In a degree which exceeds that which characterizes the trade names of other Standard Oil Companies, such as `Stanolind', `Socony', etc., our trade name of `Sohio' is not far fetched and readily suggests to the average layman the formal name of our organization.

"Furthermore, the ease and familiarity with which the words `The Standard Oil Company' blend with the word `Ohio' to form `Sohio' suggests the long intimacy which has characterized the relations between the Standard Oil Company and the state under whose laws it has been incorporated for almost sixty years.

"It is safe to say that there is scarcely a street, a highway, a public building, or any other public improvement of any sort now existing in this state to whose original cost `Sohio' has not directly contributed in substantial amounts. After sixty years of service to the citizens of its state, not the least of which has been that of actually helping to build a state, who else could assume to use with such good grace the beautiful name of `Sohio'."

Defendants' theory is that the name was adopted as their evidence tended to show at the early date when it came into being was on account of its being euphonic and easily pronounced, with the "S" signifying a superior oil which was manufactured in the state of Ohio by defendants. The evidence further discloses that at the time there was a Superior Oil Company in existence and operated in some of the territory here involved.

While the use of "Sohio" was first confined principally to marketing small parcels and confined largely to the state of Ohio, it did not begin to expand in a major way until some time later. In the late '30's the defendant was operating in the state of Michigan, where this law suit probably had its inception. The products carried by defendant, The Standard Oil Company of Ohio, were sold under the trade names "Fleetwing", "Canfield" and "Boron," but later products were being begun to be sold in the state of Michigan under the name of "Sohio-Fleetwing". This caused the plaintiff to confer with representatives of the defendant companies in an effort to settle their differences as to the use of the name of "S...