*2 POPE, Before BARNES and JERT- BERG, Judges. Circuit BARNES, Judge. Circuit Appellant brought charging- suit below appellees infringement with the of its “Coppertone,” trademark a word which acquired secondary- had meaning an established litigation. Doug- other Cf: Corporation las Copper Laboratories Tan, Inc., 2 Cir. Ap- F.2d 453. sought pellant and an ac- counting. Various defenses and coun- appeared terclaims answer, such- allegations (a) prior as pellees; ap- use (b) prior state trademark registration by appellees “Copatint” York, in New California, Florida and prior registration “Copper Tan”' California; (c) competi- lack of parties; tion between the (d) the- lack products. of confusion between their consent Thereafter a was en- November 1959 in the tered on Unit- Court, District ed Southern Dis- States decreeing California, (1) the trict of ownership Copper- of the trademark appellant; (2) that use of tone Tan, Copa Copa Copa Cream and words appellees Tint to cause- confusion; (3) appellees per- using argued, the names made. Defendants’ motion was petually restrained following Findings Copacream, “or of Fact and Copatint Copatan, similar Conclusions of entered: Law were “to Coppertone, thereto,” or to use OF FACT “FINDINGS Copa root, prefix word, or suffix use the *3 “1. of The Plaintiff the owner injunction was (4) Copper;” and or stayed Coppertone trademark which July 1, 1961, permit lo- affixes to containers suntan present appellees stock to sell their by represented MM. Exhibit tions as per- goods. Despite stay, a writ of “2. own- The Defendants are language containing injunction manent Tan and ers of the Coca trademarks of the consent similar to that marks affixed' Coca Tint which are on May 11, 1961, and served was issued containers of lotions suntan 9, 1961, appellees. May 12, On June represented by LL Exhibits and IIr original period 1961, of the within respectively. agent purchased from stay, appellant’s “3. Plaintiff cer- is the owner of products manufac- appellees suntan two rights, tain titles and interests Tan by appellees, labeled C5ca tured Tan, Copa Copa Copa Tint and Tint.1 and one labeled Coca Cream. charging ap- An to show cause order “4. Plaintiff not and has never injunction pellees violation of the Tan, Copa Copa used the names 13, An affidavit issued June was Copa Tint litigation and Cream in connection alleging original filed, was goods any products, its above mentioned had been settled services. signing payment contract, and the of a appellees $20,750.00, and “5. The Tan and! names Coca be- issue before the court confusingly Coca Tint are simi not low order to cause on the show Copa Tan, Copa Copa lar to Tint and the words “whether or not the use of Cream. within the Coca Tan and Tint are Coca “6. not true that the De- injunction.” scope of the fendants’ trademarks Coca Tan and II, hearing, LL and At the Exhibits Coca Tint colorable are mere at- placed plain- MM were in evidence and tempts to avoid confusion with stipulat- tiff’s defendants’ counsel Coppertone. trademark Plaintiff’s ed that affidavits be consid- certain produced' The Plaintiff “7. Further, ered as evidence. showing evidence the De- no deposi- portion offered a certain of the using any are now trade- fendants Harry No- taken on tion of B. Solmson confusingly Copper- mark similar to 8, 1961, vember which was received tone. plain- of the evidence. At the conclusion OF LAW “CONCLUSIONS case, the defendants moved tiff’s order to The Defendants the utili- to dismiss “1. ground suf- Tan and' show cause on the that no zation trademarks Coca showing contempt suntan
ficient
had been
Tint or
lotions
Coca
injunction
Nothing
stayed
permanently
ventory.”
record shows-
en
manufacturing,
joined appellees
Tan and
sell
stock of Ooca
Ooca
when the
*
**
“bearing
ing etc., products
or first
were manufactured
Tint bottles
Copatint
Copacream,
used,
Copatan,
were or were not ever
or that
confusingly
pre-injunction
any
part
or them
name or names
of the
inventory.”
thereto,
Cop
“present
So far as the rec-
similar
pertone, specifically including
or to the trademark
discloses,
must
we
con-
trade
ord in this case
jecture
products purchased
word,
containing
mark
root, prefix
or trade
alleged
Copa
Copper.”
(which
viola-
of the
are the basis
or suffix
injunction issued)
stayed
fall within
This
ing
lowing
to and includ
tion
or without the
exception
July
purpose
carved out
of al
for the
injunction.
liquidate
present
in-
Kreis “to
confusing-
selling
determining
product
possibility
test in
which is
confu-
Cop-
ly
appearance, pronunciation
sion
similar to
Plaintiff’s
Lounge
pertone
applied
Sleeper
lotions.
verbal
to suntan
translation.
Manufacturing Co.,
Bell
Co. v.
Cir.
By
“2.
Tan
the use
ques-
phrased
we
Coca Tint the Defendants are
similarity
tion as whether there existed
selling
products
“sound, sight
Though
meaning.”
Tan,
Copa
similar to
depends upon
likelihood of confusion
Copa
Copa
Tint and
Cream.
many
feature,
factors, the “one essential
“3.
in-
are not now
Defendants
pro-
without which the
others have
fringing
Coppertone
the trademark
value,”
bative
is the
between
marketing
selling,
reason of the
registered
the
fringing
in-
marks and the
distributing
products
of suntan
*4
Sleeper
phrase.
mark or
under the names
and Coca
Coca Tan
Lounge
Manufacturing Co.,
Bell
su-
Tint.
pra, at 723.
“4. Defendants are not now in-
We have here considered the difference
fringing
rights
damaging any
specific appearance
in-
in
marks
of the
Copa
Plaintiff has in the names
clearly
volved. The exhibits in evidence
Tan, Copa
by
Copa
Tint and
Cream
general ap-
a difference in the
disclose
pearance
selling,
reason of Defendants
mar-
general
e.,
of
the
the
keting
distributing
prod-
and
—i.
suntan
whole;
appearance of the containers as a
ucts under
the
Coca
trademarks
design.
shape,
color
There
their
and
Tan and Coca Tint.”
of
no claim of
or likelihood
judgment
plain-
The
entered was that
“similarity”
only
The
confusion therein.
tiff-appellant’s
motion for an order
pack-
packaging
of
aged
was that
were
both
why defendants-appellees
show cause
Admittedly,
“spray”
the
cans.
punished
contempt be,
should not be
for
infringing
changes
alleged
made in the
was,
Timely appeal
and it
dismissed.
phrase
physical
to some extent affect the
was taken here. 28
U.S.C. §
pro-
appearance
If
of
trademark.
The court below found no “confus-
correctly,
exists
nounced
there likewise
ing similarity”
Copa
words
between the
Thus,
change
phonetic
sound.
Tan, Copa Tint,
Copa
and
Cream and
danger
words
of confusion if the
urg-
Tan and
Appellant
Coca
Coca Tint.
seen,
heard,
is to
rather than
but
error;
urge
is
es this
clear
appellees
some
eliminated.
extent
appellant simply
that
prove
failed to
Copatan caused
audible verbal
If
case.
confusingly
Cop-
translation
similar
urges
Appellant
appellees
that all
have
only
Copatan
pertone,
be because
change
done
one letter. This is not
pronounced with the
“o” of
short
was
“kop'er”.
original injunction
The
true.
referred
(Webster’s
New International
Coppertone, Copa-
to four coined words—
Dictionary,
ed., 1956.)
pronounced
2d
If
tan, Copatint
Copacream. Copper-
and
long
“old”,
seem
“o” of
it would
tone is not here involved or material.
sound.
similar in
alleged infringement
composed
unconfusing pronunciation was
Such an
pair
phrases:
of a
two-word
by
placing
the macron
insured
Tan; Coca Tint. The trial court took
symbol
“o” in
over the
in-
only
notice of this difference. Not
does
fringing first word.
two,
“p”
become
one word
but the
be-
“c”, and to
comes
the “o” there is added
argue
Counsel
symbol (ó).
a macron
trial
Tan
perhaps
words Coca
(Tr.
took notice of
55.)
p.
this difference.
on tele
mispronounced over
radio or
But there
no evidence vision.
agreed
We
mispronouncement,
heretofore
such
judicial
Torts, 729,
Restatement
take
notice
We can
confusion.
§
urged
among many,
many
defense,
lees
are
lotions
as a
of the fact that
lawfully acquired
by
over
trade
mouth
advertised
word of
by
registration
Copatint by
radio,
by
and
marked
mouth
and word of
sight
July
television,
take New Yoik
and
we cannot
Florida
over
litiga
judicial
many radio
California in
1952. This
notice that
June
and/or
by
tion
payment
mis-
was settled
of a
or would
television announcers do
pronounce
by
bearing
simple
money
appellees
sum
substantial
simple words
appellant,
symbol
mis-
such
entered into
pronunciation
a contract was
so
occur, in
between them.
con
occurs,
take
The terms
or is
although
us,
tract are not before
the fact
confusion.
to cause
numbers as
rights
of its existence is. What
are
sight
change
addition
therein established is
now
not a
sound,
prefix used—“Coca”-—estab-
before
Aus.
was en
consent
meaning
than that
a different
lishes
tered
parties.
into
We
re
any is
“Copa”;
if
prohibited prefix
quired
it,
do
we are
The use
latter.
established
bound,
parties
it,
law
suntanning concoctions
cocoa-butter
Artvale,
Rugby
case.
Inc. v.
Fab
mean-
public.
No
well known to
Corp., Cir.,
rics
prefix
suggested
use of
*5
But
any
we do not draw
inferences from
“Copa”.
pleadings
the
anyone
and the consent
that
decree
agree with
doWe
“caught” doing anything.
was
spe
has a
a trademark
that the seller
Appellees later either violated the in
a name
duty
with
confusion
to avoid
cial
junction,
or
did
The
not.
court be
Wagon
v.Co.
Fish
he
Bros.
has sold.
low held
evidence before it that
546, 52
Wagon Works, Wis.
82
Belle
La
defendants-appellees
in vi
not
(1892). The
595,
16 L.R.A.
N.W.
olation.
had here
seller
lower court concluded
keepWe
here
in mind
concerned
we are
agree.
We
any such confusion.
avoided
only
meaning existing
secondary
with a
agree
appellant that
with
as to one of the
mentioned in the
We also
words
caught,”
infringer,
Coppertone.
should
No
“once
word
an
—the
any
meaning
carefully
secondary
alleged,
scrutinized
his conduct
was
claimed
proved
Copatan.
Copatint
determine
so
to
operations
as to
future
going
He
does.
he
as far as
intent in
agree
appellant that
We
with
dis
keep
required
a safe
to
must “be
is not whether there was
margin
away
line.”
from the
tance
protected
proved
confusion
between the
Manoff,
Rope Co.
& Bascom
Broderick
alleged infringing words,
marks and the
353,
F.2d
354.2
6 Cir.
but whether there
likelihood
was “once
existing.
p.
no one
(Br.,
here
But
such confusion
caught”
of those
cited.)
ways
in the usual sense
But
cases
better
one of the
ais
two-
prove
consent decree
The
words.
confusion
likelihood
in the
original
ap
edged
suit
prove
In the
past.
sword.
future is
it existed
alleged
say
trademark
pellant
it owned the
We
exist
cannot
there does
likeli
1955;
January 25,
any
Coppertone
sparse
confusion,
hood
on the
rec
—issued
acquired a
had
trademark
and that the
ord
There is
before this court.
meaning;
Copatan
secondary
impact
that
and word of evidence as
or ef
3 infringed Coppertone. Appel-
Copatint
supposed
fect of the
alleged infringer
cited,
In
case
then used “Auto-Tow-Line”
well as
2.
competition
(by
precise
mistake)
sold “Au-Tow-Line”
“Autowline,”
word “Au-Tow-
being
both
lines
au-
tow
Line.”
infringer
tomobiles.
using
Copacream appears
restrained from
word
No
been
mention of
in the
original complaint.
hyphenated
“Autowline” or
word
alleged infringer
“Au-Tow-Line.”
approach
necessary
products
“trade
Such an
here
be-
upon
A
the market.4
when,
only
comparison
that
evi-
protected
cause
was the
mark
where
case,
is dence before
there
the court
There
below.
and in the facts of each
proof:
utter lack of
actual or
confusion as to
Mer
source of the article in commerce.”
(a)
buy-
person
of confusion of one
Pachmayr,
shon Co.
thinking
Cir.
“Copper-
“Coca Tan”
it was
Appellant
never
here has
“QT”
“Royal Blend,”
tone” or
or even
Copatint or
Copatan,
used the words
“Copatan”;
that it was
business,
Copacream any aspect
of its
(b)
packages
that
looked similar
prior
subsequent
in
either
to or
alike;
brought
junction.
fact, appellant had
(c)
products
the names of the
products
out new
lotion
after
alike,
sounded similar or
the case
as was
purchase
had,
its
but
these
in several of the
dis-
cases cited in the
choice,
use,
preferred
own
and had
senting opinion;5
“QT”
“Royal
used, the
trademarks
(d)
any
copy-
there
exact
Blend.”
ing;
By
filing
proceeding,
(e)
upon
there was
effect
appellant attempts,
prevent
com
prospective customers.
petition
any product
produces
it
un
we,
any evidence,
Are
in the absence of
Copatan, Copatint
der the name
pacream (for
or Co
judge
specu-
better able than a trial
produces none),
it
general impressions
late as to what
ob-
prevent
marketing
competitive
original
prod-
tained with
any product
market of
so that
marked
pub-
uct or its name in the mind of the
Coppertone.
remind
But
one of
lic,
though
ig-
public
even
be “the
majority
as both the
and the
dissent
*6
norant,
unthinking,
and the credu-1
recognize
portion
this case
of
—“The
not,
lous?” We think
but if
is our
relating
Coppertone
decree
is irrele
second-guess
privilege
court,
the trial
only competi
vant here.” Yet that
then we are convinced two-word trade-
a
involved,
tion here
of this
under
facts
impact
mark has a different visual
on
case.
read,
We cannot
evidence
public
than would a
trade-
one-word
any
us,
palm
before
intent to
off “Coca
mark.
Tan”
“Coppertone.”
or “Coca Tint” as
aptness
sug-
Nor do we see the
of
long
appellees
as
do
If that be so—so
gestion
single
that one cannot break a
confusingly similar to
not use
necessarily
word
two
into
words and
Copa
'Copa Tan, Copa
Tint—
Cream and
charge
infringement.
a
avoid
of
We
agreement
which, plus
specific
a
<for
agree.
dispute
judg-
We would not
prefix
word, root,
or suffix
to use “the
Judge
ment of
togen”
Learned Hand that “Lis-
Copa Copper,”
appellees
had been
or
attempt
was an
to borrow from
cash)
appellees,
paid
as the dissent
“Listerine.” But would it be clear be-
ing
states,
open
a
“had
them
yond doubt that “Sister Rain” would be
dictionary
full
well
as
whole
violative of the trademark “Listerine”?
names that
all the fanciful
as
We think not.
alphabet.”
from the entire
fabricated
dissenting opinion is critical
The
There
in
existed
the record no evidence
majority
“comparing
injury
approach
damage,
probable injury
or
juxtaposition only.”
damage, entitling
[words]
two
find-
to a
Sleeper Lounge
1953,
560;
“National”,
v. Bell
4.
Manufactur
208 F.2d
the word
Fairway
Co., supra;
ing
stripes by
Foods v. Fair
with vertical
National Trans-
way Markets,
1955,
193,
Storage Co.,
compared
9 Cir.
227 F.2d
&fer
stripes
word “National”
196.
with vertical
Lines,
Inc.,
National Van
National Van
“Peppermint
Dean, Cir., 1956,
The
Box”
American
Lines v.
9
641 Judge POPE, (dissenting). Circuit has been dis- obeyed. complete I am in accord with the ma^ jority opinion’s initial proving the violation notation that the burden The the trial court fact this case is the appellant. consent As rested on required stated, appellant rested which we en- after plaintively sup- Rug- Artvale, As there to stated in v. Inc. “What evidence force. by below: port injunction?” 283, your Cir., Corp., Fabrics 2 F.2d of] violation [the satisfy 284, 49.)6 opinion, “A (Tr. Appellant which is p. did cited in the agreement represents a viola- consent had decree below there been court injunction, parties evidence cannot ex- which court tion of majority pand of this a contract.” does not convince there had been. We must note also ease of certain cir- that under this kind the
While it is true
of likelihood of
able as the
well
confusion is one for
we are as
this court to decide.
cumstances
Judge
Sleeper
if there is
determine
As
Lounge
Barnes
court to
well stated in
trial
Manufacturing
Company
mere visual
of confusion
v. Bell
likelihood
pro- Co., Cir.,
auditory comparison
723,
720,
marks
253 F.2d
“we
allegedly infringing,7
good position
judge
we can-
‘in as
á
as the trial
tected
us,
not,
probability
differ
record here before
to determine the
on the
of con-
” citing
judge,
Shoes,
much less hold
fusion’
with the trial
findings
Miles
R.
Inc. v.
clearly
Macy
Co., Cir.,
See
erroneous.
H.
199 F.2d
al.,
language
Chappell
quoted
5 Cir.
et al. Goltsman et
which the last
circuit,
mere use
This is the rule
taken.
this
right
appellees
long
decisions,
of a name
settled in a
line
prevailing
not in and of itself constitute
use can
it is
rule
other circuits
competition.8
Distilling
as well.
unfair
See
Fleischmann
Corp.
Brewing
Company,
Maier
proof
possibility
We can find no
149, (Feb. 12, 1963)
314 F.2d
and cases
con-
“such
cause
as would
probabil-
there cited.
I think that such
any appreciable
number of or-
fusion
ity
of confusion is demonstrated
dinarily
purchasers
prudent
as to
record.1
goods.” Restatement of
source
Torts,
Shoes,
Inc. v. R. H.
728. Miles
§
Initially,
explaining my position,
I
Macy Co., Inc.,
*7
&
2 Cir.
aspect
want to call attention
to
602, 603.
original
facts of the case. After the
the
litigation
commenced, involving
the
Affirmed.
stay
noting
There,
Continuing,
after
the
ordered for
6.
the court said: “You haven’t
allowing
you
purpose
liq-
any
got
Kreis
If
want
“to
evidence here now.
the
inventory”
present
why
your
now,
mo-
the footnote
rest
the answer
uidate its
to
you
put
“Nothing in the record shows
is dismissed because
haven’t
tion
continues:
any
Thereafter,
of Coca Tan and
evidence on.”
Exhibits
when the stock
stipulations
and certain
were manufactured
or first
II and LL
re evi-
Tint bottles
they
used,
were or
were received.
or that
were not ever
dence
pre-injunction
part
the
then
a
Co.,
&
Inc. v. B.
McCormick
Manische
inventory.’
‘present
far
So
as the record
Co.,
1953,
744, 746;
witz
6 Cir.
F.2d
206
discloses,
conjecture
case
we must
in this
Exchange
California Fruit Growers
v.
products purchased
(which
the
Baking Co.,
1948,
Sunkist
7 Cir.
alleged
are the basis
the
violation of
971; Sleeper Lounge
v. Bell
Manu
injunction issued)
the
fall within or with-
facturing Co., supra.
exception
the
carved
out
out of the in-
Kellogg Company
8. “Shredded
Wheat” —
junction.”
Company, 1938,
National Biscuit
305 U.S.
111,
73;
59 S.Ct.
83 L.Ed.
“Wheaties
misunderstanding
I think this shows a
Quaker
vs.
Oats Co. v. General
Oaties” —
“present
inventory”
of the facts.
Mills, Inc.,
7 Cir.
tinctions’ memory juxtaposition. rely They upon in- the sometimes are “beset courts vague ques- defendant, impressions. is attempt genious who And of a remembering whether, tion blinding public well a trade- as of desirous fairly likely get definitely, they mark court, resem- so as as regard designation goods question as be in enable his as will blances identifying provide trade-mark or as sold, will differences and such as practice source dis- indicated trade-mark.”5 his when him cover with 4 covered.” thing This court has said the same ap- my also view that we Brewing It is Independent Heileman G. Co. v. confusing sim- proached Brewing Co., Cir., 497: F. wrong angle. ilarity The words from the “Now, scanning to one de- the detailed “confusingly sim- decree used scription scenes, these two Dutch meaning only proper thereto”. laying ilar pictures by side, side there words, as used to these be attached distinguishing be no trouble in decree, be taken is that must one from the other. But not the this is meaning at- have the same pur- Will test. confusion result to the “confusing subject sim- chasing to the tached public by the use of the two ilarity” developed brought the decisions special compari- into direct or dealing trade-marks, with courts ordinary ap- son? Would the customer competition. names and unfair trade plying Style at the counter for ‘Old Lager,’ observing customary my ap- care view the fails purchasers way, with in that prescribed in ply and tests the standards buying dealing deceived or misled ‘Old into of cases with multitude Lager,’ German if it was offered him. Here question of of confusion. likelihood marked with defendant’s label? We are of names laid the two sets court has impressed that he would.” reason alongside minute of each purchaser prod- for this is that the points analysis I minor of what consider uct seldom marks has before him both in these has reached differences original and the new of con- that no likelihood its conclusion comparison. He has mind proper name That is not the arises. fusion approach. general impressions obtained his Thus, in the Restatement original product or its Torts, “b”, Comment § Law the relating confusing name. to what constitutes execution; does, Mm intended would achieve result if he he will fail will ** * weight.” ordinarily carry little raises But such an intent win. presumption customers will be been well said that the most suc- 4. “It has Fidelity also Audio See Inc. copying employ deceived.” form of cessful Recordings, Fidelity High F. enough points to confuse language enough points above public As 558. 2d difference to says: quoted the Restatement courts.” Baker v. Master confuse the Union, (D.C.N.J.) F.Supp. intimately and is con- Printers he was “Since probable with the reaction cerned prior market, quoted applied manifested This section was controversy highly persuasive. Co., Distilling American Bellows *10 8, 21, Cal.App.2d his His denial that conduct 220 P.2d advertising tan”, “Copatint”, “Copácream”, billboards, in and and is on Product infringement alleged nowadays, newspapers, and “The television that: and two-word, gets composed phrases: pair im- customer a visual of a screens. The Tan; pression. used the customer has been Coca Tint”. The If says billboards, newspaper watching adver- this makes a difference. on which screens tisements or television place In the first there is basis “Copa appeared then sees and has Tan” fact for this As the difference. bearing drug product store a findings (finding 3), show, trial court’s upon these name Tan” acts “Coca he plaintiff “Copa became the owner of general impressions he of the Tan”, “Copa Tint”, “Copa Cream”. and as result the advertis- had mind statement, That is a correct for rec- ing.6 shows, (Exhibit 1) ord Kreis sold thing This court noted the same Plough registrations certain de- Sahati, Stork Restaurant v. “Copa descrip- scribed as Tint” 348, 359, quoted from where it registrations California, tion of state following a case there cited the state Florida and New York. And as “ ment : ‘The law not made for the findings show, judge the trial was under- protection experts, publi but for taking to ascertain names c—that includes vast multitude which “Coca Tan” and “Coca Tint” were con- ignorant, unthinking and the fusingly “Copa Tan”, “Copa similar to who, making credulous, purchases, Tint”, “Copa Cream”, and which he governed stop analyze, do not but negative, 5). (finding found in the This by appearance general impres and was and is the issue. It cannot be af- ” sions.’ fected the fact that the decree after referring store first purchaser into a “Copa walks who general Tan”, “Copa Tint”, “Copa Cream”, im him his and carries with memory subsequently pressions name. earlier writes of the the same words “Copatan”, “Copatint” comparisons “Copaeream”. minute He cannot make the here. undertaken which the court has support Even if there were facts points of We note the should sought point made, I cannot very rather than which obvious here believe that if a has a trade specific important points of “the less single word, name written as a the would- difference.”7 infringer charge can avoid a of con- fusing similarity by breaking mentioned Some of differences the two signifi- syllable are, really court, think, I word into two words. I think authority in- cant here. Thus it is stated there is no for that. To show junction “Copa- merely dividing having referred to certain words analyzes public multitude, of cases Oallmann the multitude vast which in- —Iliat upon point ignorant, unthinking, and summarizes the re- cludes (The follows, who, credulous, making purchases, of Unfair sults as Competition Law Trademarks, supra, pp. stop analyze, governed do not by but are 1383): too, appearances general impressions.’ 1379 to “Then marks are not buyer vis-a-yis; general impression ordinary to be considered of the viewing buying purchaser, normally mark of the defendant must under rely upon memory prevalent giv- his in. conditions the trade and ** * purchasers usually mark. It must also be aware of attention normally give buying goods, the fact does defendant class of is the slavishly copy plaintiff’s mark, touchstone.” changes’ makes certain ‘colorable 7. appears to me that the court here distinctions’; are ‘variations not and the wholly disregarded suggestions should, therefore, consider Oallmann, (pp. 1381, 1982) made Mr. points general similarity rather than upon summary which are based of a important points specific the less dif- having multitude of cases to do with the * * * ference. problem confusing ‘The law is not similarity, made experts, protection quoted above, but for the which are footnote 6. *11 consequences confusing similarity can- two words overcome natural into defendant, as- possibly let us names. not aid “Holeproof” sume the owners But here we start with decree which “Holefree”, object “Main- could to unequivocally pro- plain and in terms “Mainflyer”, object liner” could to manufacturing selling hibits “Graybear” “Graybar” object to bearing “any products or sunburn object to “Syntopicon” could and that “Synopticon”. confusingly name or names similar.” cas- such Defendants prohibition against any product This is injunctions hardly escape es could calling bearing such similar names. Free”, products “Hole their my it; view that is all there is to “Syn Bear”, “Gray Flyer”, “Main packaging is irrelevant even if the Opticon”. packaging proven. had been sought placed emphasis is Some It is said that there is a difference can- dissimilarity packaging. I upon I poten- sound. think that minor prove anything to record in the find not tial pronunciation differences in the “Ex- defendants’ In the record this. consequenc- these names do not avoid package II”, defendants’ hibit confusing similarity. es of As said G. Co- package of Tint, “LL”, defendants’ D. Co., Searle & Co. v. Chas. Pfizer & package “MM”, plaintiff’s Tan, and ca Cir., “Slight dif- purports Coppertone. The ferences in the sound of trade- similar packaging compare shown to protect infringer.” marks will not pack- difference But even if exhibits. plaintiff’s In that product case the here, aging or relevant material were the trade name Defend- “Dramamine”. This be made. comparison cannot ant competing undertook to market a infringement involving not a case product appeared called It “Bonamine”. for occasion Coppertone and there requested defendant had some Tint Tan and Coca comparing the Coca employees suggest of its to names for its package or Coppertone packages with sug- new and 158 names were ;an. gested. picked, “Bonamine”, The name defendants’ plain that it was It is was the one word in the whole list which was most like “Dramamine”.8 The trial try those customers reach intention Copa Tint Copa Tan about knew who by court found that the words Dramamine offering Tint. Tan and Coca them Coca unlike, referring Bonamine were packaging ma- comparisons If pronunciation. their peals ap- The court of compari- all, the kind of that is at terial ground previously reversed on the it to be made but would have son quotation stated in the above from the here. There none made be cannot decision. The court also noted that al- packages How- Copa in evidence. old though began one name with a “D” and This ever, packaging is irrelevant. “B”, the other with a the two words were trying a suit in plosives” accoustieally “voiced and were injunction over resist- procure an similar. That is the exact situation would con- defendant which ance “p” “Copa” and the “c” provisions of the consent de- tain dealing in “Coca” with which we are appro- In such a case cree. here. argue priate defendant to than just ought case referred because In the court be issued approval case of through Lambert packaging he had with or otherwise cited completely bitrary, perceived fanciful unlike the de- there what 8. The prod- anything suggested trying up to accom- fendant top Q-Tips, quoted plish. in the end defendant’s But Inc. uct. management up Johnson, un- came Johnson 147, quite Tips.’ discussion, following: ‘Cotton It is shows der “The evidence open possibilities why, suggested all the of dozens of names clear a list many it, employees, made this choice.” defendant various which are ar- *12 Corpora- Pharmacal Bolton Chemical coffee was so similar to the other Judge by party’s tion, 325, 326, 219 F. a decision “Martinson’s Jomar” coffee that plaintiff’s likely Learned confusion There Hand. was There to result. again de- pronunciations trade name was “Listerine” and different competing product fendant’s was sold but the confusion was real. Judge “Listogen”. under the name of my opinion the decision in Hand, speaking choice of the defendant’s justified by any case cannot be consider- name, choosing an said: “In arbitra- ation I pronunciations, of variations in ry trade-name, reason what- there was no purchaser do not believe that one why they ever one should have selected would even see or notice the line over which bore so much resemblance “o”; did, even if he mean it would plaintiff’s; any pos- and in such cases nothing to him for when he as not damage sible doubt of the likelihood of has read the billboard advertisement plain- should be resolved favor of the Copa Tan, etc., he is decides that also course, proof tiff. Of al- the burden of pronounced long with a “o”. Mr. Call- As ways moving upon party, but rests “ * * * mann remarks: there is no having adoption similar shown the of a thing pronunciation as a correct name, arbitrary character, trade I pronounced a trade-mark. It is dif- why speculation cannot see as to ways by people.”9 ferent different chance that it will cause confusion should expense be at of the man first secondary that, states “No right the field. He has the to insist that meaning alleged, proved claimed or making arbitrary up others their Copatint Copatan.” as to This certainly away keep names should so wholly previ- point beside the here. As ques- from his customers raise as to no ously suggested, if a this were contested * * * tion. To show how near the plaintiff trying case in which is, only change defendant’s name we need procure injunction an re- which was ‘g’ letter, ‘r’; one ‘Listoren’ would by defendant, sisted close so an imitation would not al- plaintiff could claim an exclusive argument low in its Now the right defense. to a certain name involve ‘g’ difference; being does make a consideration name of whether distinctly, consonant it sounds more acquired was one which must have say enough, I cannot it is and no secondary meaning. But is not explanation, explanation reasonable no the situation The consent decree here. whatever, suggested why parties has settled as between these need be used.” right defendants’ lack of to these names right plaintiff’s and the to an In Java Coffee v. Jos. Martinson Co. against Co., defendants’ use D.C., F.Supp. 423, Judge of those names other names Dimock similar party held that the use Furthermore, of the name “Javar thereto.10 Instant Coffee” for the words “Co- impossible Pocono Rubber Cloth Liv J. A. for the defendant to control Inc., ingston, 44G, pronunciation 448: the give which the trade would suggests apparent “The defendant its trade to the word. It is pronounced ‘Swavel,’ nearly sound, ap- mark should be word so resembles in syllable, giving pearance, spelling plaintiff’s the accent on the first long distinguish necessarily ‘a’ a sound to trade-mark that it will cause ‘Suavelle,’ public trade-mark confusion or mistake mind purchasers syl and will deceive which has accent who second will they buying pro- are think merchandise lable. The selection of the word ‘Swavel’ plaintiff, duced when as a following closely upon fact defendant so purchasing defendant’s merchandise.” of the the selection word ‘Suavelle’ hardly would seem a mere suggestion 10. ITor this same reason the interpretation A fair coincidence. previously had not used evidence rather “Copa” indicates that the word names is irrelevant here. by design. absolutely was chosen That circumstance irrelevant here for Tan”, pa “Copa whether writ- Tint” that there must be confu likelihood of words, together legion are com- sion. two in which cases ten or as differing trade pletely a fanciful than involved more those fanciful. Such recognized generally pre here have nevertheless been held name is espe- confusing similarity. course, “strong” sent name and entitled Of *13 exactly cially great degree protection. alike; Stork two cases I read adjudicated supra, dealing Sahati, 166 cases con Restaurant v. arising solely p. fusion of sim from the use at 355. words, ilar result I cannot reconcile Although question conceding general here with the decisions trend of merely was “there here in this field.12 existing”, likelihood of yet confusion such Finally, it seems clear to me suggests there majority opinion the issue mistakes proof made some should specific been posed appellant’s petition for confusion. actual instances of apparent order This to show cause. proof specific instances That opinion that from by filing the statement of unnecessary wholly cases confusion is involving at- proceeding this confusing sim- question of marketing in tempting prevent the “to ilarity long settled.11 has been any competitive product market of the ultimate We come then to remind marked so that Tan” and here—are “Coca the names certainly Coppertone.” This most similar Tint” “Coca the nothing matter at issue case. The now acquired purchased and names plaintiff “Copper- to do with whatever through payment por- tone”. do with that has to $20,750? of con- Is likelihood there tion of the “That decree which reads: ? fusion * * * perpetually re- defendants Manufacturing, (a) dis- from: strained (Exhibit contract, parties’ Under tributing, offering selling for sale or regis plaintiff 1), defendants sold to bearing any sunburn rights “to names tration and gether in these any Copatan, Copatint names one of the good will in connection with the Copacream or trade as a trademark Wholly apart cal therewith”. name, con- culated effort come as close as ”* * * fusingly similar thereto. possible these old names with Tan, Tint, etc., it seems names Coca I would the district court’s de- reverse to me that the conclusion is unavoidable cision. purchase contract Coro, Inc., Cir., another reason. 5 240 F.2d Abramson v. 854, 857; 11, Champion 1959. Kresge is elated November The consent Co. S. S. v. signed day. 419; Cir., decree injunction the next Spark Plug Co., 415, 6 3 F.2d stayed 1961, July 1, until Mfg. Ginsberg Queen v. Isaac dispose permit Bros., 288; defendants of their Cir., 284, 8 25 F.2d Audio bearing “copa” Fidelity stock hand marks. High Fidelity Recordings,. Inc. During interval Inc., 551, defendants wore Cir., 9 283 F.2d 557. using effect, licensees sample 12. A list convenient of such cases plaintiff. later, Five months on De Distilling is found American Bel Co. v. 4, 1961, matter cember came on for Company, Cal.App.2d 8, 23, lows & hearing in the court below. Non-use 751, 226 P.2d Included there are during period five month involving Holeproof cases as those would not effect an abandonment of the Hole, and No Ilostetter’s Bitters rights. See Saxlehner v. Eis Style Bitters, Host Gold Bar and Gold Go., ner & Mendelson 179 U.S. Band; Septine; Listerine and Lister Cel 60; 7, 45 L.Ed. S.Ct. National Lead luloid and Cellonite. Similar lists of ad Company Wolfe, Cir., 223 F.2d judicated confusing similarity are fur pages nished Callmann Mr. at 11. La Touraine Coffee Co. v. Lorraine Cof inclusive. Co., 115, 117; fee