*1 his other than by one has had no assets who CON CONSUMERS PETROLEUM CO. v. salary spent on wages which he SUMERS CO. ILLINOIS. OF expenses In living received. as soon as No. 9407. Ballance, Cir., 352, we Baily 123 F.2d v. properly granted discharge held that a Appeals. Circuit Court of notwithstanding his traveling salesman Seventh Circuit. keep books records. failure July York Morris Plan Bank New Industrial Rehearing Aug. 19, 1948. Denied Cir., Dreher, Circuit F.2d Appeals re- the 2nd Circuit de- versed a District Court decision discharge similar
nied in a somewhat bankrupt A
case.
granted discharge opposed which was
because had failed account for the he
expenditure where, salary of his
here, spent living claimed it in he to have beyond means, Barry, D.C., his re
F.Supp. by the Circuit affirmed opin-
Appeals of Second Circuit on the Court, Barry
ion the District v. Morris Bank,
Plan Industrial
do not say that failure salary
to account for received could justify
no circumstances the refusal of a
discharge. The salary size of the or cir- showing
cumstances concealment or bad might
faith well call explana- for detailed tion on the bankrupt. Where however, salary, is not in excess of required might reasonably
what he liv-
ing expenses considering the manner bankrupt,
life of the where there are no showing
circumstances fraud or faith bad bankrupt and where the testifies that he spent salary living, discharge his
may not be denied because he cannot ex-
plain in all salary detail where went
or because of minor contradictions in
estimates to some of the items. There
nowas other basis denying it here. regard contention with
bankrupt’s failure to list his household justifies kitchen furniture hardly discus His testimony
sion. this furniture
belonged to his wife was uncontradicted.
The fact that it was listed for taxation in proves nothing;
his name and we note that Judge
neither District nor the Referee
referred in denying the matter discharge. stated,
For the reasons the order re-
fusing discharge will be reversed.
Reversed.
15á
MINTON, dissenting. Judge, Circuit Hershenson, McKeon, Harry B. G. James Jr., Jenner, Albert and Edward H. E. Hat- ton, Chicago, 111.(Hershenson all & Her- Poppen'husen, Johnston, shenson Thompson Raymond, 111., Chicago, & all of appellant. counsel), Fleming, Joseph Lloyd, S. Lloyd Carl B. Bowden, Kirkland, Green, Fleming, M. Ellis, Chicago, 111., Martin & for ap- all pellee. MINTON, Before Circuit MAJOR LINDLEY,
Judges, Judge. District MAJOR, Judge. Circuit authorized “to and re- deal at wholesale coal, coke, tail in wood other fuel of brought by This action was Consumers * * * kinds, all engage Company against Petroleum Consumers *3 * * * sale with of all articles connected Company enjoin the latter Illinois to the business other dealing in and coal from in employing the name “Consumers” fuel.” marketing the business of oils Chicago metropolitan area, an ac- and for theory in plaintiff embodied counting. incorporated complaint Plaintiff was under its is that argument and the laws of the State of on Decem- continuously Illinois engaged soley in the business 28, 1925, ber “buy, and was authorized to selling distributing and fuel oil in sell, manufacture, petroleum and in Chicago deal in- area since date of its by-products and its that corporation, Since under trade of “Con- its names time in engaged it has been the business sumers” and “Consumers Petroleum Com- marketing petroleum by-products, pany,” and its during and spent such time it has particularly oils, scale in large large on a money suml of ad- promoting and County and Cook areas under the vertising its under trade business such names, corporate “Consumers” name and its name having and utilized said Company,” business, “Consumers Petroleum as trade in such it is entitled ex- to their names. clusive use connection therewith. Fur- ther, it is claimed that the defendant sub- incorporated Defendant was sequently appropriated trade laws of the State of Delaware “Consumers” the sale and distribution of buy, sell, and was authorized “to gener- and fuel oil and that as a result the ally deal in and with at wholesale use, been confused which consti- retail, import export, coal, coke, and and unfair tutes and resultant dam- wood and other fuel or material combustible ages plaintiff’s business, and every description.” and nature Defend- reputation. The defendant denies incorporated ant subsequent was wrongfully appropriated the trade name corporate reorganization as a result of a “Consumers” in connection with the sale proceeding instituted in the United States oil; distribution of fuel its March, District in which theory right is that it to utilize this corporation by Illinois the name of trade name in connection with sale Consumers was the debtor. The incorporation fuel oils prede- since of its plan reorganization directed the trustees cessor in appropriation convey, assign, transfer and all deliver such trade name plaintiff in 1925 was corporation, the assets of debtor “in- wrongful. Defendant does contend that cluding good will and the to use their engaged was in the fuel oil respective corporate names,” new but, alleged in one of its counter- corporation organized. to be On Febru- claims, plaintiff inception from the ary assignment trustees of its charged business has “been with sold, assigned writing quit claimed all knowledge Company, that Consumers de- property and assets of the debtor predecessor, might fendant’s any at time corporation and its subsidiaries to defend- commerce to sell fuel oils addition to ant, marks, “trade including names, coal, coke and other fuel.” inventories, inventions and good will, to- gether respective to use the Confusion on the pub- of the buying assignors.” names of the lic as between and defendant as to predecessor purchased (sometimes Defendant’s the source of fuel oils sought re- original purchased charged ferred to the old or Consumers in both the complaint organized in Company) was 1913 as the re- counter-claims. merger side, of a sult Knickerbocker however, Ice Each responsibility disclaims City with the Company. Fuel for the confusion and each asserts that former in the ice the wrongful business was result of act of the and the latter in the coal business. in appropriating was other and using the trade less, name “Consumers” connection more and no the trade name to use prede- oil. sale and distribution of fuel possessed “Consumers” as that words, cessor. In other in Chancery A Master to whom the cause predecessor stepped in- into shoes of large was referred heard considered a concerned. sofar as the right to its documentary evi- amount of both oral shall, therefore, We treat situation as dence, report, thor- made voluminous in existence though, had been analyzed oughly the theories pleadings, incorporation the date of the respective applicable law parties, the predecessor. thereto, and recommended that issues be decided in favor involves question A discussed much *4 against exceptions the defendant. to 53(e) On given 52(a) effect and to be Rules report, the Master’s to the court refused Proce- (2) of Civil Rules Federal recommendation, adopt- follow 723c, the dure, Master’s section following 28 U.S.C.A. ed findings its own of fact and concluded made the inasmuch District Court has as as a matter of law that defendant had respects the findings inconsist- in some of fact engage the fuel oil business by ent made Master. We with those the on its own account under its ef- think occasion to discuss the there is no name, and that neither this nor other properly given fect these should compe- of defendant matter, act constituted unfair because, the we view the rules plaintiff; tition with party each court, contrary by result reached sought guilty of laches so toas bar all relief Master, in the main of was occasioned 'by party other; each against plain- application principles of of different tiff was also barred estoppel; that the law. theory damages adopted by of Master The Master found: fact; was without foundation in law or formation, “Shortly after its Consumers equity was in with unclean Company solid began to sell [defendant] hands; party neither was entitled to Chicago, fuels and around to * relief, complaint and that the and counter- sold, among things, and other claims should be dismissed. petroleum carbon, remaining the residue gasoline after from crude has been distilled questions
Some of the numerous oil not start oil presented did to sell fuel disposed summary of in not un- domestic consumers because was fashion. upon was based di Jurisdiction year 1922 that domestic versity citizenship. til about the expressed The court per- sufficientlypérfected oil burner was jurisdiction the view that it was without mit efficient economical use in requisite and because the not in amount was homes, although type oil burner had one attempts volved. Neither side all this During been available since jurisdiction, this view to want of and present period continuing and until we think was Moreover, erroneous. court, time, Company large spent while Consumers has expressing this view as to jurisdiction, proceeded money advertising lack of sums of in and about decide sale, products purpose case it offered for for the on its merits. up good prod- building will for these attempts Plaintiff differentiate up very ucts. has built valuable It rights between the defendant with will.” reference to the use of the trade name in November, findings relate controversy predecessor and of its cor Chicago were tele- listed poration. Hazelton Boiler Co. v. Hazelton phone directory 55 concerns bearing the Tripod Boiler 142 Ill. doing name “Consumers” and in support cited N.E. this conten area. The Master also found: wording assignment tion. quite Hazelton case different inquiry making “After due and ascertain- instant and is readily distin Company that Consumers view, quishable. In our selling oil, the the business of Mr. Schurman acquired assignment right, [plaintiff’s president] chose name Con- incorpor- parties each and Petroleum sumers should, protection public, December company on liis or about rated permitted of be to continue.” the State the laws of * * * thereafter, Shortly, Illinois. findings of nothing We find around began Chica- selling fuel District in conflict with bought acquired plant go. It a bulk just Master impairs findings * * in- operated Since its trucks. situation Thus, a factual stated. we have corporation present continuing until the of its from the time wherein the time, Consumers Petroleum solely to incorporation its business confined spent large about money sums fuels as coal hard the distribution of sale, advertising products it offered it commenced and wood until when purpose building up for the sale and distribution of own products. up very for those built meantime, plaintiff in the account. good will.” valuable year incorporated 1925 was solely distri- of the sale the business Master further found: Further, bution found oils. "Commencing in Consumers Com- *5 disputed, parties Master and each pany began advertising [defendant] advertising spent large money sums of sale of fuel oil and be- for domestic users up their and built business each a gan the solicitation of orders therefor. especially their for business those These orders were filled the Standard they products with which were concerned. Company Oil of Indiana which delivered connection, kept In this must be mind it oil refined it and sold under ” subsequent that while the defendant to ‘Stanolind,’ and ‘Stanolex.’ extent, advertised oil a fuel limited it to Subsequent the reorganization pro- to made no sales such oil under its ceedings and after the was or- meantime, name until 1938. such ganized corporation, as a Delaware fuel oil dealt as it with was Master found: names of Company. the Standard Oil “Defendant carry continued to on situation, connection with this factual method of selling fuel had oils done it pertinent it is also to note that defendant’s since 1927. Commencing in Consum- agent fuel oil business even as for Stand- Company ers changed of Illinois its method ard Oil was an infinitesimal of its busi- doing business insofar as fuel oils are year average gallonage per ness. The stopped concerned. It soliciting orders for year period, through eleven ‘Stanolind,’ ‘Stanolex,’ and the Stand- 186,056 gallons, as contrasted Company Oil ard longer Indiana no 600,000 plaintiff’s gallons business of * made Shortly deliveries for it. gradually which had increased to this, after defendant for first time ac- 9,000,000 in 1936. The record also gallons quired plants one or more bulk and rented convincingly the defendant did shows that trucks delivery for the of fuel These oils. seriously consider itself fuel oil bear trucks ‘Consumers Com- prior 1938. No mention was * * pany’ made of the oil business statements fuel The Master "further found: reports during to its stockholders years undisputed “The was introduced 1927 to 1937. There evidence shows prior year 1938, defendant Exhibit in evidence when defendant be- entitled, gan e., July the sale dated of fuel it oil for itself —i. “Project stopped acting Expansion The Immediate agent For Of for the Standard Through Acquisition Oil Fuel Of Sales Indiana —there Company.” Petroleum public despite The Consumers the minds dispute, similarity authorship document of names. of this It shows further by the it defendant and was introduced very since that time had but there been “appears that it to have considerable Master found confusion. Not person evidence associated allegations prepared not denied some been pros- predecessor.” The pleadings effect constitute the bases descriptive general class pectus other success which same refers to the having adopted the trade oil companies adding coal have had “Consumers,” wrongfully points the name out to their business. ad- it great trend took name when commenced is to “A such trade fuel oil concern, is On the vantage dealings oil in 1925. purchasing going in fuel- a gain hand, cus- other that fuel price wars contends avoidance of - general same plaintiff company, of-the tomers.” hard fuels are As right to descriptive Com- class and stated: “The Consumers Petroleum busi- pany gasoline apply sta- filling six trade name its fuel oil dealer controls They profit- represent tions. ness. desirable ways business, than able more one. defendant, conten- yield They directly; in addi- profit, tion, single Harlan-Wallins case of cites trucks; tion, they afford summer Co., 64 Corp. Oil Coal Transcontinental employees year assist retaining plant C.C.P.A., Patents, 944, F.2d They round basis. could be nucleus registration over involved contest These, greater much number of stations. company mark between coal city name, capitalize under our our company. True, and an easily reputation and sell wide enable us to held oil and coal are gallons gasoline reg- millions of our properties. We * * ular fuel customers. The Con- however, pertinency not impressed, with the steadily re- sumers Petroleum the instant holding of this relates to tained It has of its customers. about 88% case. constructively them by *6 added to convert- recently, quite in California This court oil, coal ing through users to fuel sale of Co., Growers, Baking et Fruit al. v. Sunkist * ** Rotary its Ace Burner. Oil Cir., 7 166 F.2d held: Company always Consumers Petroleum has vegetables in the and are not “Fruits ** profit operations. made a Pres- on bread, same class of as general merchandise ent truck delivery Consum- costs they nor are of the same enviably ers Petroleum are at an only properties things bread. About Partly, splen- is figure. low this due they are they ed- have in common are that plant, partly, did central and location of usually ible same class and sold in the are management. The most plant to excellent customers.” stores to the same class of city plant modern oil in the equally We think true secured.” thing in common between coal and fuel The prospectus concluded: “In conclu- they pur- heating are both used for sion, the Consumers Petroleum poses and in sold recent times have been operation has been for twelve successful by the same class dealers to same
years; invariably profit; has shown class of customers. managed by its conservatively owner who Co., In Milling France Inc. v. Washburn- is competently qualified, well assisted Inc., Cir., Crosby Co., 2 7 F.2d staff; consistently; and compact grown “straight” court held that and wheat flour expanded progressively facilities “prepared” flours were not' same of the and in tune with —if not advance of—the goods or class of In hold- commodities. so acquisition by us trends fuel oil. Its ing, it stated: profitable.” would be wise and any “Classification of question is whether fuel oil commercial article A critical depends far plaintiff selling which the commenced more commercial custom upon than property general prod- the inherent 1925 is same nature of the pilot as the description Dog solid uct. biscuit class or fuels such bread are close- ly physical origin, allied in gun- coal wood was and so are calico, Much of selling argument that time. at cotton commercial classi- question. fact, poles they apart. this In are around de- fication differ- revolves ‘straight’ predicated prepared ence contention on the between flours fendant’s theory and hard as in illustration great given, that fuel oil fuels is not so are they but that We the court as commercial commodities there is no basis for think plain- opinion plainly characterizing testimony is in thus different our president knowledge shown tiff’s concern- his ing the time defendant ais common The word “consumers” sale of evident- fuel oil. the witness What only a word and limit such word affords ly was referring to the time was when protection arbitrary, ed contrast defendant commenced sale of fuel oil fanciful For a dis and distinctive words. name, on its own account and under own cussion respect, Distil see Arrow admittedly early It 1939. leries, Co., Cir., Inc. Globe Brewing v. obvious was no that there occasion Corp. Phillips F.2d and Philco prior part concern on the Co., Mfg. Cir., F.2d to that time for the reason the rec- In Pabst Brewing v. Decatur Brew Co. indisputedly ord shows that was no there Co., Cir., F. this court held part confusion on the of customers toas extract malt and beer were not origin source prior of fuel oil descriptive qualities general class thereto. conclusion based merchandise. The Other findings of the lower court premise at least on the that there point. noted at this It found: was no likelihood in the sale of confusion products. Dwinell-Wright of such also See “Plaintiff was familiar with defendant’s Cir., Co. v. White House Milk 132 F. standing, activities extensive advertis- 2d where it was held that milk was not ing when it (plaintiff) entered the fuel oil product general of the same class as tea immediately began using business. and coffee. single marking word ‘Consumers’ in the displays.” trucks and in other think the instant situation we quite persuasive that was no confu subsequently view of authorities origin sion as to soui'ce as between cited, we finding think this is of no conse- coal; sale of no con fuel oil and quence. engendered fusion as between The court also found: defendant while latter *7 “Since corporate powers 1913defendant’s sold fuel oil under the trade names continuously have only power Oil. It was de included the Standard when the ‘to coke, coal, deal in engaged wood and fendant the fuel oil business un other fuel of all kinds.’ sale controversy hereby of fuel der the that the oil is trade found to within power.” We this confusion arose. are of view charter products solid which defendant sold Assuming accuracy finding, of this we were class as point. think is beside the It not fol- does by plaintiff. oil fuel sold low from the fact the defendant right pertinent power this connection it under its charter engage note court, sale contrary lower of fuel find- also had to the Master, ii3gs engage sale of the found: un- name, name, der even its own which had parties “Each of has known since previously put been by competitor to use engaged 1927that other was sale commodity. in the sale of such testimony given plain- oil and Schurman, president, unduly tiff’s Isador prolong ‘It opinion this my cite, discuss, came to attention that much Consumers less the numerous cases Company upon by in the sale respective relied parties. 1939,’ hereby oil in found important to be of the untrue. Some more will suffice. protest objection made no upon Plaintiff or to de- Defendant relies number of cases engaging support fendant’s in the fuel oil business of its contention indi- corporate 26, under its name until January corporation vidual has a property right or a 1940 when sent to defendant a letter of his or its name and an inherent protest which in evidence plaintiff’s lawfully possessed to use if it is or ac- No. 1.” Wyckoff, quired. Exhibit Scale v.Co. Howe 198 160 972; 118, 609, identity L.Ed. 140, 49 two
U.S.
25 S.Ct.
in which the
parties
Mexico v. Stand
engaged.”
Standard Oil Co. of New
were
California,
Cir.,
F.2d
10
56
ard Oil Co. of
Inc.,
America,
Syndicate
Investors
973, 977; Elgin
Elgin
Butter Co. v.
Cream
422,
413,
et al. v.
Hughes, 378 Ill.
Edward J.
Co.,
127, 137,
ery
N.E.
155Ill.
40
754,759,
38 N.E.2d
stated:
the court
important
cases
most
of these
are
Howe
com-
injunction
“Even in
cases between
Elgin Butter
Scale
case and the
peting
corporations
decision
the trend
case,
they
while
furnish some
place
emphasis on
less
support
proposition
for the
advanced
broad
* *
more
cas-
[Citing
on confusion.
defendant,
rationale
their
we think
es.].”
considerably
has been
limited
the more
Lady Esther,
Lady
Ltd.
Esther Corset
recent decisions.
451,
Shoppe, Inc., 317 Ill.App.
N.E.2d
instance,
For
in Waterman Co. v. Mod- 165,
6,
in which
A.L.R.
is another case
Pen
ern
U.S.
S.Ct.
enjoined
using
cor
stated:
L.Ed.
the court
porate
plain
name similar
to that
tiff,
proposition
competition.
though
“In
of this
the de-
even
not in direct
lays
language
origin
fendant
hold of
Howe
element
of confusion as
Benedict,
Wyckoff,
recognized
importance.
&
controlling
Scale Co. v.
Seamans
as of
118, 140,
198 U.S.
49 L.Ed.
S.Ct.
similarity
re
Where
of names
972, 986,
books,
in other
to the effect
origin
prod
sults
confusion
will not interfere with
courts
ucts, it seems to be immaterial whether such
party’s
of a
own name ‘where the
con-
names be treated as
marks
fusion,
any,
similarity
if
results from a
names. The court
in American Steel
names,
from manner of the
Robertson, Commissioner,
Foundries v.
et
But,
expres-
generality
use.’
whatever
al.,
sion there
been
earlier
have
upon
L.Ed.
comments
situation and
cases, it
established that
now is
when the
:
states
upon
goods by
use of his own name
his
“A
to fall more
name seems
competitor'
a later
will and does lead the
appropriately
latter
into the
class
that those
to understand
[trade
precise
But the
difference
already
product
name].
of a concern
established
material,
pro-
often
since the law affords
name,
well known under
and when
against
appropriation
tection
either
to,
profit
is known
view, upon
princi-
same fundamental
and,
material,
by,
if that be
is intended
ples.”
man,
require
him
later
law
to take
*8
precautions
prevent the
reasonable
to
mis-
page
-court on the following
stated:
take.”
general
equity
“The
doctrine
is that
only
enjoin
appropriation
will
and use
Supreme
in
The Illinois
Johnson
a
trade-name,
of
trade-mark or
Co.,
106,
where it is
Mfg. Co.
Skate
Ill.
v. Johnson
completely
787,
identical
125,
distinguished
likewise
name
144N.E.
corporation,
enjoin
appropri-
will
such
Company case. The same
Howe Scale
ation and use where the
court,
Chicago
Koebel
Landlords’
resemblance
in
v.
Pro
likely
produce
so close as
be
to
confu-
Bureau,
176, 183,
to
210 Ill.
71 N.E.
tective
identity,
as
154,
injury
sion
to
to the
Am.St.Rep.
such
of the
362, 364, 102
also distin
corporation
belongs.”
to which the name
Elgin
Company case,
Butter
guished the
and stated:
speak-
It
noted that the
will be
court is
only
appropriation
trade
a
ground upon
think the true
which
“We
use;
in
stated,
name
but its
court
a
equity
jurisdiction court of
re-
to
380,
page
162,
U.S.
70 L.Ed.
defendants,
bill,
prayed
as
in this
strain the
317:
that,
rests,
name
by
assumed
the de-
to
is so similar
that of
person
fendants
the com-
“The mere fact
that one
pub-
mislead and confuse
plainant
adopted
to
used a
as
and
goods
trade-mark
his
city
prevent
in the
adoption
mind
as
lic
to the does
and use of
by
case,
articles pany
holding
others on
supra,
same trade-mark
in
no
description.
a different
There
the senior
trade mark
user of a
property in a
apart
junior
trade-mark
from
barred
user
interfering
awith
which
business
trade in connection with
in
or
the same mark
the latter
when
user
employed.”
it is
faith
notice
its use
and without
expends money
user
ef-
senior
Metcalf,
In
v.
Milling
Hanover Star
Co.
building
fort
up
substantial
a
403,
357,
240 U.S.
60 L.
36 S.Ct.
unoccupied
a territory
has been
court, referring
marks,
Ed.
to
long
a
time
user’s
the senior
busi-
stated:
ness.
course,
symbol
“Of
if
or device is al-
use,
ready
general
employed
in such
these
From
authorities and others
adoption
manner that
an
as
index of
cited,
appears
could
to
origin
produce
source or
con-
principle
a person
established
or cor
public,
fusion
mislead the
not sus- poration
acquire
property right
can
ceptible
adoption
as a trademark.”
only by
trade mark
use of
or trade
In
Drug
United
such mark
v. Theodore
or name
connection
Company,
Ap
Rectanus
39 S.
the same
class.
48, 50,
plying
Ct.
L.Ed.
principle,
this
the court stated:
we
view
“
acquired
* * *
property
the defendant
right
a particular
to
mark
right
“Consumers,”
trade name
use,
grows
adoption;
of its
not its mere
out
applied
oil,
to
the reason
simply
designate
its function is
the goods
not use
in that
did
such name
connection
product
particular
of a
trader and
long prior
until
time the
protect
against
his
the sale
appropriated
trade name had been
and used
his;
product
of another’s
and it is not
by the
in connection with
subject
property except
connection
corollary, plaintiff
As
in 1925
business.
existing
with an
business.”
right
had a
appropriate and use
Esso,
Cir.,
Co.,
Inc. v. Standard Oil
name in
with fuel
connection
oil.
98 F.2d
the court stated:
connection,
have not
we
conflicting
“As between
to the
claimants
overlooked
argument, stressed
right
mark,
priority
to use
name or
court,
during
period
the lower
appropriation implies
than priority
more
from 1927
when defendant was
employment of the mark.
means that he
It
selling
in a limited
fashion in
employed
who
particular
mark in a
oil under
Standard
market
better
that market.”
Company,
Oil
it advertised
fuel oil
It has
person
also been held that a
telephone directory,
billboards
corporation
adopts
who
uses
a trade
frequently
otherwise.
has been
held
one territory
permitted
mark in
will not be
Illinois, however,
adop
“The mere
extend its
territory
use into a different
advertisements,
tion
words in
doing
origin
where
so
confusion as to
price lists
signs
circulars and
and on
will result.
In Federal Trade Commis-
stationery give
no exclusive
their
Algoma
sion v.
Lumber
U.S.
Eye
Hump
use.”
Hook
Co.
DeLong
*9
page 81, 54
315, page 321,
S.Ct.
78 L.Ed.
Hairpin Mfg. Co.,
297 Ill.
130
655, the court stated:
765, 767;
N.E.
Hazelton Boiler Co. v.
“An analogy
be found in the deci-
Tripod
al.,
Boiler
142 Ill.
Hazelton
et
sions
marks,
on the law
trade
of
where 494, 507,
162 case, page Milling supra, this Star Co.
court,
upon
support
of
are relied
20
36
713:
General
Co. v.
S.Ct.
L.Ed.
contention.
Industries
60
Cir.,
Corp.,
Wacker Drive
Building
principles
general
“It results
from
Products,
474; Wilhartz
Turco
F.2d
rights,
thus far
trademark
discussed that
731;
Inc., Cir.,
California Fruit
F.2d
user, may
like others
be lost
rest
Exchange,
Bak
Growers
et al. v. Sunkist
laches,
ac-
nonuser,
abandonment,
or
fact,
Co., Cir.,
In
F.2d 971.
quiescence.
ac-
laches and
toAs
the General Industries
claimed that
case
held,
quiescence,
repeatedly
it has been
here.
decisive
We think defendant’s in cases
acted
where defendants
fraud-
this
founded. The
reliance on
case is ill
plaintiffs’
ulently
knowledge
or
of
with
possibility
involved
incidental
of
rights,
by injunction
relief
arising from mere
confusion
the future
accounting
profits
of
although
accorded
an
similarity
corporate names
between
of
as
should be denied.”
corporations who were
taken
While
been
appeal has
no
the defendant
with each other.
In
dismissing its
from the court’s decree
threatening
un
merely
to do business
cross-complaints,
fact
we think the
to that
a
similar
der
name
the plain
out,
protest
defendant made
pointed
no
plaintiff. As
the court
tiff’s use
“Consumers”
name
parties
“The
are not
page
156 F.2d
business from
competition connection with its fuel oil
likely
be or
found to
to be
filed its answer
the defendant
until
Also,
each other.”
the court relied
with
cross-complaint
the institution
showing
after
upon
heavily
the absence of a
suit,
present
is inconsistent with
contrast,
any actual confusion.
present
plaintiff’s use was
contention that
parties
actually engaged in com
here are
See
wrongful
beginning.
Men
undisputed
petition
finding that
with
Holt,
524, 9
endez v.
U.S.
similarity
a con
of names
created
de
only
168
Court.
1927,
Supreme
be-
1925
three decisions
during
period
to
the
the
Bros.
in the
engaged
Co. v. Wolf
cause
Hamilton-Brown Shoe
defendant was
269,
L.Ed.
years
Co.,
251,
&
60
240
36
during
those
U.S.
S.Ct.
oil business
Co.,
1938,
629;
Kresge
the
any capacity.
Mfg.
1927
Co.
to
Mishawaka
v.
From
;
reason
1381
plaintiff
203,
1022,
the
316
suffered
62
86 L.Ed.
harm for
U.S.
S.Ct.
Sanders,
331
Champion Spark
Co. v.
Plug
that defendant’s limited
125,
1136,
name “’Con-
the
91 L.Ed.
not conducted under
U.S.
67 S.Ct.
upon
two
sumers”
under
The defendant
relies
the first
but
trade
question* is
Company.
cases,
plaintiff
No
relies
Oil
of these
Standard
while the
subsequent
plaintiff
upon
raised
thereto
the
but
The decisions
both
the latter.
apt
on
served a notice
the
the
time
Hamilton Shoe
to
defendant
the latter’s
to
protesting
appear
confined
Mishawaka case
to be
in con-
statutory
the use
the name “Consumers”
mark
situations where a
business,
infringement
fuel oil
nection
true
was involved.
appropriately
infringe-
suit was
instituted.
thereafter
the
mark
former case both trade
competition
found,
ment
unfair
were
important
trouble
Another
employed
determining
but the criterion
question
plaintiff,
some
ad
whether
proof
character and burden of
neces-
injunctive relief, is
dition
entitled
to
to
sary
support
appears
a monetary
to
award
monetary award. That
latter does
upon
to have
been based
the former.
matter of
plain
not follow as a
course is
out,
pointed
page
U.S.
court
240
Siegel-
from the authorities. Saxlehner v.
“* * *
256,
270,
36
60 L.Ed.
S.Ct.
629:
42,
16,
Cooper
179
21
45
U.S.
S.Ct.
upon
be necessary
pass
it will not
to
77;
Milling
v.
L.Ed.
Hanover Star
Co.
question
proper
measure
recov-
Metcalf,
357,
U.S.
ery in a non-trademark case.” The court
713; Champion Spark
Plug
L.Ed.
Co. stated,
page
U.S.
36 S.Ct.
Sanders,
67 S.Ct.
L.Ed. 629:
91 L.Ed.
The Master recommended
“Not only
findings
do
the court
pay
ordered to
appeals, supported
by abundant evi-
plaintiff
profits
gains and
which
dence,
complain-
show that
imitation of
subsequent
January
(the
lost
fraudulent,
ant’s mark was
profits
plaintiff’s
protest),
date of
letter of
found
included
decree are confined to
$167,348.26.
Concerning
this recom
through
per-
as accrued to defendant
mendation,
“The
the court stated:
Master
sistence in the unlawful
simulation
damages
pure
awarded
on
fic
based
complain-
face
very plain
notice of
tion.”
grasp
While we find it difficult to
rights
ant’s
contained
its bill.”
upon
precise
which
Master’s
basis
Under such
held
circumstances
court
made,
recommendation was
it is sufficient
the defendant must
with the
present
note
the award
profits
theory
it “on
accrued to
represented
profits
the entire
ex maleficio.”
a trust
during
made on the sale
of oil
period. Thus,
appears
predicated
relevant
The Mishawaka
case was
predicated
solely
have been
in
statutory
on
infringe-
rather
mark
ment;
theory
credulous
have
no unfair
involved.
stated,
all the fuel
sold
oil sold
defendant The court
page
U.S.
S.
wrongfully appro
if the latter
Ct.
While numerous authorities dealing profits relied measure with the and dam- upon opposing ages conten- infringement found concerning monetary tions Master’s two lower courts. Whether there was such award, it is sufficient infringement we think to refer to an entitle the petitioner as to *11 164 ap- vigorous and provided by esty the remedies federal faith. The the or open made parently trade-mark laws is not effort it has therefore sincere main-
here.” both in the below and here court its own tain legal right the use of upon a appears decision turn the sale of in connection with provision Act, 15 U.S. the Mark of Trade least demonstration oil is at some seq., C.A. the provides for et § intentionally did trans- purposely or recovery damages the profits of the gress rights plaintiff. And of so, wrongful use a trade Even mark. its con- fact that we have concluded that three members court dissented of the impairs wrongful nor duct was neither ground that that the proof was there no dispels faith. acted the idea wilfully palmed defendant’s been circumstances, Under we are of plaintiff. as off those of rights view and so hold case, Champion Spark Plug both In the an sufficiently protected plaintiff will be infringement statutory mark and un- the sit- equities injunction that the There, competition fair were involved. monetary award uation are injunction the District Court allowed an denied. should be infringement for trade but denied mark is, court there- Ap- lower accounting. decree an The Circuit Court of part, fore, part also reversed peals affirmed in affirmed Court the District accordance proceed directions to held guilty com- unfair expressed. Supreme herein rec- with views petition. While 1139, 130, ognized, page 67 S.Ct. U.S. MINTON, L.Ed. “that Judge where unfair com- Circuit (dissenting). petition established, is any doubts as I agree majority, am unable to with the adequacy generally of the relief are my I believe it worthwhile to state against resolved transgressor,” it went briefly. views start prop I out state, on to “But there here no show- competition osition that unfair is a tort. palming of fraud or off. Their ab- wrong. It is no wrong If com there sence, course, undermine does mitted, Clearly, there relief. can no finding competition. [Citing unfair confusion wrong itself not the con But the of the character conduct cases.] fusion which arise from the mere giving rise the unfair of a domain word remedy to the relevant which should can of itself lead action. We to no have afforded.” The as to decision court already as said much General Industries stated, page Mishawaka case Bldg. Corporation Co. v. 20 Wacker Drive 1139, L.Ed. 67 S.Ct. 1368: al., Cir., et 156 F.2d 476-478. Supreme Court Co. v. said Scale Howe proposi- not stand for “But does Wyckoff al., et U.S. will be accounting tion an ordered “* 609, 614, 49 972: courts L.Ed. infringe- an has been merely because there confusion, will not interfere where the ment. the Trade Act Mark Under any, if similarity results from predecessors, ac- names, not from the manner of injunc- has denied counting been where an use.” .. equities case. satisfy tion will [Citing The same is true cases.] Court, Supreme The Illinois whose competition.” unfair .of case, statements the law bind us Boiler Co. Hazelton said Hazelton plain here conceded al., Tripod Boiler Co. et 142 Ill. tiff, both found Master 345: N.E. below, court occurred, any “If confusion fraud off guilty palming or but that similarity two cor- from cor arisen solely case is one of attempts names, porate ánd identity trade name. In we porate the defendant to deceive. on the nothing satisfied But, held, similarity already have a lack hon- we demonstrates conduct that *12 palm- is the circumstance was guilty of a of which of no fraud or complainant complain, right the solely has off one no the case is but right identity having corporate at least as a confusion of or corporate is in there of its name name. we are satisfied complain- dem- transaction of nothing its business as in defendant’s conduct has If faith.” injury honesty ant use its results onstrates a lack or name. complainant cause, to the such things If cannot true, they these be injuria.” absque is damnum disputed, I has wrong then ask what authority, Nim's, An Un- eminent Mr. ques- the defendant committed? What Competition fair Marks, Trade Vol. tion is Does the mere boils down this: 92, p. Sec. says: by par- arising confusion from the use word, descriptive ties of the same descriptive “Where the names consist of domain, is give word geographical words, or party and neither user the field the to use exclusive can show secondary name has a majority name? The holds that meaning, priority of use does not avail. does, « * * not but its authorities do If had attached Esther, holding. Waterman, Lady The descriptive feature, distinguishing a words cases all where were cases Johnson it could have prevented copying secondary meaning expressly found or distinguishing feature.” disputed. not Protective Landlords’ The foregoing law state authorities misrepresenta- there evidence of Ias understand wrong it. If is there a wrongful The tion and conduct. Investors that leads to confusion the likelihood or Syndicate case involved an administrative thereof, there if an action. So Secretary act Illinois of State there ais trade-mark valid or application passing on an for the colorable so imitation used another to use certain name. The that there is confusion, likelihood of observe, set the statute standard he was to is infringement actionable. So and his discretion not disturbed. Cases a trade acquired name secondary that has of this are kind not authorities in field meaning. The use of that name in a man- competition. Nims, of unfair Unfair Com- likely ner lead to confusion petition I, Marks, Trade Sec. Vol. actionable. acquired If the name no p. 247. secondary meaning, it must be used opinion’s majority error re- way deceptive that is or for fraudu- misconception gard stems from its purpose lent palming goods off case, Esther Lady issue here. Since the as the one another or such misuse certainly law that the in Illinois of the name must create con- likelihood competing parties not be need always fusion. There must be some ele- same customers unfair market for the ment of wrongdoing that or is results in competition to occur. In this context likely to result in confusion. it’ is So emphasis law’s courts often remark on the any tort. There must abe that in- wrong competition, rather than jures. Wrong is the basis whole the initial re- do overlook courts not conception action, of tort whether it be wrongful quirement ap- the defendant’s unfair otherwise. plain- propriation of word to which The word “Consumers” is word right. his Since tiff has established in issue here. “Consumers” is a competition, parties this case public domain, word incapable in- raised the issue cases mere appropriation becoming act volved. property exclusive any one. attempted register majority’s were if law for Even I opinion, respectfully as a trade-mark submit there and there is find- ing of secondary meaning not, plaintiff is the is first user attaching to word plaintiff. used such sense would au- majority the name in “ * * opinion freely equity admits: interfere. From court of the thorize a *13 Kellogg Supreme that. plaintiff or- The when the Court said in ganized, Co. used the name v. Nat. defendant Biscuit general
“Consumers” in the business 73: fuel 83 L.Ed. up in considerable and had built shar- undoubtedly “Kellogg is plaintiff when field known ing the article goodwill of came along. With the whole lexicon sharing in Wheat’; ‘Shredded and thus from in enter a to choose order to skill a market created which was Chicago, branch fuel field .the judgment predecessor plaintiff’s plaintiff name, al- chose the defendant’s ex- by vast has been widely extended ready in in the fuel The field. general made. penditures advertising persistently widely had a defendant well known and Sharing in unfair. But seal which it its busi- advertised used pat- goodwill unprotected by of an article ness, plaintiff that seal in imitated aof ent exercise or trade-mark is the its fuel oil business. conduct Such free possessed by all—and part plaintiff District warranted public is consuming exercise of which the adoption finding Court that: “Its evidence deeply There interested. no hereby name and seal found similar part deception passing off or on the * * to have been accidental” and innocent or Kellogg plaintiff conclusion of did law questionable con- only evidence not come court with clean into hands. that of the instant duct advertising In 1927 the defendant was plaintiff. oil juxtaposition fuel media in in the District agree I Court advertising, sell- plaintiff’s and was been complaint have dismissed should Oil fuel oil furnished it Standard reason equity for the further without seal sold court not come into plaintiff did expand defendant. defendant did not equitable deny I would with clean hands. in- fuel when it oil until agree certainly would relief and began sell stalled its own tanks and damages plaintiff. no due extensively. fuel oil That had competition, fair to do. That was in which
'the has an interest. The defendant continued to use its name plain- years
used it for twelve before the
tiff into existence and thirteen came plaintiff
years ex- came into after that: District found
istence. The Court oil engaging “Defendant CO. TOOL et al. HUGHES SPENGLER its established business under 3639. No. any improper mo- so name did not do with Appeals. Circuit improper fraudulent, or unfair tive and Circuit. Tenth been act on Aug. 7, proved.” argued, majority plaintiff impressed argu- with the the court was de-
ment, when the until that not selling fuel changed its method
fendant selling product own oil extensively engaged more
of another business, did impact feel
begin then
competition, and up will built
began share in the fuel business. unfair about nothing wrong or
There was