Valvoline Oil Co. v. Havoline Oil Co.
| Decision Date | 23 December 1913 |
| Citation | 211 F. 189 |
| Parties | VALVOLINE OIL CO. v. HAVOLINE OIL CO. et al. |
| Court | U.S. District Court — Southern District of New York |
Henry B. Brownell and John P. Bartlett, both of New York City, for defendants.
The suit is brought to enjoin defendants from using the word 'Havoline' on gas engine and automobile lubricants. The complainant claims that this word infringes its trade-mark 'Valvoline,' used on oils in general including lubricating oils of various kinds, and also illuminating and tempering oils. In addition, complainant alleges unfair competition arising through the use of the word 'Havoline' and in the use of the corporate title 'Havoline Oil Company.'
The bill also charges infringement of complainant's emblem trade-mark by reason of the use by defendants of an emblem bearing the word 'Havoline.' These emblem marks are as follows:
The following is complainant's emblem mark:
(Image Omitted)
The following is defendant's emblem mark:
(Image Omitted)
The defenses are: (1) No infringement; (2) no unfair competition; and (3) laches.
Complainant's business of manufacturing and selling lubricating oils, greases, and other petroleum products was founded in 1868 by its predecessors Leonard & Ellis, a partnership. In 1873 this firm adopted and used as a trade-mark for its goods, the word 'Valvoline.' This trade-mark was registered in the United States Patent Office, October 14, 1873, No. 1,502, and again on May 31, 1881, No. 8,289. In 1901 the complainant corporation was organized, and in due course became the successor in business of Leonard & Ellis, and the owner by assignment of the trade-mark registrations. Complainant, in its name, registered the trade-mark 'Valvoline' in the United States Patent Office, February 4, 1902, No. 37,754, again May 29, 1906, No. 53,237, and again October 23, 1906, No. 56,816. Complainant does not confine its mark to lubricating oils, but also uses it on illuminating and tempering oils, while defendants' mark 'Havoline' has always been confined to automobile and gas engine lubricants. The validity of and title to the trade-mark 'Valvoline' was established in the Circuit Court of the United States for the Southern District of Ohio as far back as 1889. Leonard v. White's Golden Lubricater Co., 38 F. 922.
Complainant has done a considerable business throughout the United States and in other parts of the world in its oils generally, and 'Valvoline' has been exhibited and displayed at various expositions and has received awards and medals for excellence. In 1904 Havemeyer Oil Company, defendants' predecessor, adopted the mark 'Havoline.' The cable address of this company was 'Havoil,' which was adopted about the time of the organization of the Havemeyer Oil Company in 1901. This cable word 'Havoil' was coined from the first syllable 'Hav' of the name 'Havemeyer' and the word 'oil.'
At the time that the word 'Havoline' was adopted, the suffix 'oline' or 'line' had become familiar in connection with oils and oil products. The first use of this suffix seems to have been in the word 'Cosmoline' in 1870, and since then trade-marks have been registered for use in connection with various kinds of oils, some of which are as follows:
It is true that some of these marks were used in connection with illuminating and not lubricating oils, and that the marks registered under the act of 1870 come within the decision of the Supreme Court in the Trade-Mark Cases, 100 U.S. 82, 25 L.Ed. 550, declaring that act unconstitutional, and it is also true that there is no evidence of the actual use in commerce of these marks except 'Cosmoline' and 'Autoline.' These facts, however, do not affect the proposition that the suffix 'oline' or 'line' had become so well known and familiar that when the Havemeyer Oil Company used that suffix it was using a familiar suffix-- all to the point that there was not any purpose or intent to appropriate the particular ending of the mark used by the Valvoline Oil Company.
On April 9, 1907, the mark 'Havoline' was registered (No. 61,806). In the same year the Havoline Oil Company was organized by the owners of Havemeyer Oil Company and, later, acquired the title to the Havoline mark and now holds it.
In October, 1909, Indian Refining Company of New York (organized in May of that year) purchased all of the capital stock of Havoline Oil Company; the purchase price being $150,000, which covered the stock of both of these companies. In 1910 Havemeyer Oil Company was dissolved. Since June, 1909, Indian Refining Company of Maine has been the exclusive manufacturer of the Havoline products. The Maine corporation owns all the stock of a New York corporation of like name which is a defendant here.
The testimony establishes a course of business by the owners of 'Havoline' which demonstrates that they were developing their product on its own merits and seeking to acquire a trade individuality for 'Havoline' as against competitors, including complainant. With a single exception (to be later commented upon), there is nowhere in this record that evidence which is so often found in trade-mark or unfair competition cases. There is no invasion of the other's territory by tricky or unfair means, no misleading by similarity of appearance in the packages or containers in which the product is put up, no specious effort at artificial differentiation when the real purpose is to appropriate another's ability, effort, and commercial success.
On the other hand, it is plain that 'Havoline' has succeeded because its owners have employed energetic, up-to-date business methods and have expended substantial sums to make their product widely known. Of course, success in business does not last long unless the public is satisfied with the price and quality of the article, and, in these directions also, good judgment seems to have been exercised by the 'Havoline' owners. The sales of 'Havoline' show the progress made in a business less then eight years old when the testimony in this record was taken (1905-1912). The later sales and receipts were as follows:
Barrels Amount
1909 20,000 $400,000.
1910 28,000 $415,000.
1911 23,000 $375,000.
1912 (8 mos.) 25,000 $350,000.
Respecting the business of complainant, Mr. Ellis, its president, was asked these questions and gave these answers:
'X-Q. 337. How much Valvoline oil marked 'Motor oil' did the Valvoline Oil Company sell in the year 1911; that is, about how much? A. I can only guess at that, and I would say a good deal more than a thousand barrels, in one kind of a container or another.
'X-Q. 338. And, roughly speaking, would you say between one and two thousand barrels? A. Yes, possibly more. I didn't prepare myself for such questions, as I didn't think they would be asked in a trade-mark suit.
'X-Q. 339. In your answer to X-Q. 240, you say,
Thus, it appears that the sales of 'Havoline' were far in excess of 'Valvoline' motor oil.
Of course, the amount of sales is not a standard whereby to determine whether competition is unfair, but in this case it is of service, with other facts, in ascertaining whether 'Havoline' was marketed on its own merits or on the reputation of complainant.
The advertising of complainant has been comparatively small, while that of defendants has been extensive and has invaded every field of advertisement for this kind of product. From about $5,000 spent in 1909, the advertising expenditures rose to over $25,000, in 1911. I think it may fairly be said that including 1912, at least $100,000 has been spent in advertising 'Havoline.'
Advertisements have been inserted in leading magazines of general interest, as well as in magazines specially devoted to automobiling, motor boating, and sports generally. Tour books and display racks have been distributed, and there has been extensive outdoor advertising, including road signs, devices such as pennants, placards, and the like at athletic games and sporting events.
The owners of famous motor boats, as well as noted aviators and automobile racers, have used 'Havoline.' Men of this kind know what they are doing. Their sports are perilous, and, when they buy oil for their engines, it is to be presumed that they understand what article they are buying.
The colors on the 'Valvoline' and 'Havoline' cans are different, the wording is different, and the arrangement is different.
'Valvoline' has used the catch phrase, 'Best by every Test,' while 'Havoline' has endeavored to make familiar, 'It makes a difference.'
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