273 F. 84 | 2d Cir. | 1921
On the 19th of December, 1918, the appellee filed in the Patent Office of the United States, an application for a registered trade-mark for aspirin tablets, and on September 23, 1919, a certificate of registration, No. 126,617, was granted. The mark adopted and used was a red colored band with initials. The representation of the box formed no part of the mark. In the affidavit, the trade-mark is said to have been used continuously since March 1, 1917. The trade-mark is applied and affixed to the packages containing the goods by placing thereon a printed label, on which the mark is shown with the initials “S. K. & F.” across the red band.
On October 24, 1916, the appellant obtained a certificate of registration, No. 113,541, of its trade-mark. It was registered in the same class as the appellee’s. The mark consists of a label, a semicircle; there being printed on the label the letters “A. D. S.” in white. The appellant and appellee are manufacturers of and dealers in drugs and pharmaceutical supplies. Among the variety of goods which each manufactures and sells are aspirin tablets. The claim of infringement and unfair competition arises from the use of the mark on the box or package which is used by the appellant in marketing its goods. The appellant adopted its label in 1907, and has continuously used it on many of its goods ever since. The body of the label so used was in white, or a color approaching white, with the name of the article printed in the same color upon a red background, consisting in some cases of a rectangle, and in some others oí a red band or stripe, and over the center of this red block was a red semicircle, upon which was printed in the same colors as the lettering on the band, the letters “A. D. S.” Such labels were used on a great variety of its products, and the sales between the year 1912 and the date of the trial of this action amounted to $4,300.000, or about 2,500,000 dozen packages.
On February 27, 1917, the Bayer patent on aspirin expired, and both the appellant and appellee entered the field in the manufacture and sa.le of aspirin tablets. The appellee marketed its aspirin tablets in a paper box with a solid red band around it. The record is clear that, when it did so, it knew of the extensive use of the label by the appellant. It was prior to January, 1919, when the appellant decided to put aspirin on the market in small retail tin containers. It then contracted for such tin packages with the Metal Package Corporation. The trade-mark of the appellant is substantially the same as that which has been used by it on its labels for a long period prior. The box came on the market June 5, 1919. In either March or April, 1919, the appellee decided to use a package of similar size, duplicating what had previously been
The appellant’s red mark is different in sufficient identifying respects. It is a solid red stripe or parallelogram, instead of a band proper. It has above the center of the band constituting a part of it, a red semicircle about one-third of the length of the red background, and of a height about equal to the width of the stripe. The initials “S. K. & F.” are absent. The word “aspirin” appears, and, in the semicircle, the letters “A. D. S.” In no sense can it be said that the appellant’s mark has a “hand.” The stripe of the appellant’s does not go to the edge of the box. The band of the appellee goes around and encircles the box. The registered trade-mark which the appellee possesses must be limited to the specific design shown. The mere color may be impressed in a particular design and constitute a valid trade-mark, such as a circle, square, triangle, cross, or star. Leschen Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 26 Sup. Ct. 425, 50 L. Ed. 710. But with a parallelogram and not a band used, and without the initials of the appellee, but with prominent use of the initials of the appellant in the semicircle constructed above the parallelogram of the appellant and attached thereto, such would not constitute a use of the appellee’s trademark. Schlitz Brewing Co. v. Houston Ice Co., 250 U. S. 28, 39 Sup. Ct. 401, 63 L. Ed. 822.
“But it is true that the unlawful imitation must be what achieves the deception, even though it could do so only on the special background lawfully used.”
We think by no possibility could the ordinary observer be confused between the appellee’s and appellant’s boxes and the marks placed thereon. Whatever confusion may have resulted was brought about by the appellee’s imitation and selection of the type of tin box used by the appellant. There are three incidents which are called to our attention as evidence of confusion between the containers of the appellee and appellant. The first was a decoy order, given appellant for “red band” aspirin, and which was filled by sending the appellant’s product. The second was found on exhibition, a large box, on a druggist’s counter, with three containers of appellant’s aspirin and six containers of appellee’s therein. The third is when purchases of aspirin were made at two retail drug stores by employes of the appellee who, when they purchased, merely asked for “red band” aspirin, and were given aspirin tablets of the appellant. The circumstances which led up to each of these instances, do not justify the claim of confusion. Mere similarity is not, as a matter of law, conclusive evidence of intention to deceive.
The appellant in its answer filed a counterclaim and asked for affirmative injunctive relief. The reasons which we have assigned for denying relief to the appellee hold with equal force as against the claim of the appellant, and for the same reasons the appellant cannot succeed.
Decree reversed.