Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc.

On June 25, 1957 Harold F. Ritchie, Inc., a New Jersey corporation and owner of the registered trademark “Brylcreem,” brought suit against Chesebrough-Pond’s, Inc., a New York corporation, charging trademark infringement and unfair competition by appellee’s use of the trademark “Valcream.” The complaint sought injunctive relief pursuant to 15 U.S.C.A. § 1116, and an accounting of profits, treble damages and costs pursuant to 15 U.S.C.A. § 1117. Federal jurisdiction was based on the Lanham Act, 15 U.S.C.A. §§ 1114, 1121, with pendent jurisdiction of the claim of unfair competition, 28 U.S.C.A. § 1338(b), and also on diverse citizenship, 28 U.S.C.A. § 1332. The trademarks, Brylcreem and Valcream, were employed to designate cream hairdressing for men which is marketed in collapsible metal tubes packaged in paperboard cartons. The case was tried before Chief Judge Ryan without a jury. Pursuant to his opinion of September 14, 1959, reported in 176 F.Supp. 429, judgment was entered dismissing appellant’s action. The court found no such similarity between “Val-cream” and “Brylcreem” as to cause likelihood of confusion to purchasers, and concluded that appellant had not sustained the burden of proving either trademark infringement or unfair competition. Timely notice of appeal was duly filed.

The appeal asserts that the trial court erred (1) in failing to give recognition to the legal principles applicable to a second comer in the field of competition, (2) in failing to find as a fact that the appellee intentionally imitated plaintiff’s trademark, (3) in the treatment accorded the evidence of actual confusion, and (4) in dismissing the claim of unfair competition.

By way of introduction to its argument appellant contends that this court is in as good a position as the trial judge to determine likelihood of confusion. This same contention was advanced in our recent decision in J. R. Wood & Sons v. Reese Jewelry Corp., 2 Cir., 1960, 278 F.2d 157, 158. There a finding of infringement was reversed, this court saying: “The decision as to infringement must, of necessity, be based primarily upon a comparison of the marks. In the absence of other determinative evidence, a question of law or at best a mixed question of law and fact is presented as to which appellate review is not foreclosed.” Where an appellant’s argument is predicated upon the similarity of the trademarks themselves, this court has held that “ * * * we are in as good a position as the trial judge to determine the probability of confusion.” Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 2 Cir., 199 F.2d 602; Eastern Wine Corp. v. Winslow-Warren, Ltd., 2 Cir. 137 F.2d 955, 960, certiorari denied 320 U.S. 758, 64 S.Ct. 65, 88 L.Ed. 452.

There is no dispute that appellant had a valid registered trademark; the only issue is whether appellee’s conduct infringed the trademark or constituted unfair competition. Each case alleging trademark infringement must be judged on its own facts, and citation of authorities is not very helpful, except insofar as they show the general pattern. LaTouraine Coffee Co., Inc. v. Lorraine Coffee Co., Inc., 2 Cir., 157 F.2d 115, 117, certiorari denied 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663; Q-Tips, Inc. v. Johnson & Johnson, 3 Cir., 206 F.2d 144, 147.

Beginning in 1942 appellant, and its predecessors in title, have sold the “Brylcreem” product in the United States and Canada, and in recent years appellant has been an acknowledged leader in the sale of men’s cream style hairdressing packaged in tubes contained in paperboard cartons. Appellant has spent very large sums in advertising; its share of the United States market has increased from 2.6% in 1953 to 11.9% in 1958. In 1914 appellee began selling in bottles “Vaseline Hair Tonic,” a clear liquid, and much later, in 1947, “Vaseline Cream Hair Tonic,” a milky white liquid. In 1955 appellee decided to manufacture and sell on the United States market a men’s cream style hairdressing in tubes. This decision was due to the increasing popularity of this type of product and was made after a thorough study of this new market created by “Brylcreem.” When appellee entered that market with test sales in August 1956, and nationally by April 1957, it was obviously a second comer to appellant.

In this circuit and others, numerous decisions have recognized that the second comer has a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer. This principle is well illustrated by G. D. Searle & Co. v. Chas. Pfizer & Co., Inc., 7 Cir., 265 F.2d 385, 387, certiorari denied 361 U.S. 819, 80 S.Ct. 64, 4 L.Ed.2d 65, which held the trademark “Dramamine” was infringed by “Bonamine,” each designating a remedy for motion sickness. At page 387, quoting verbatim from an earlier decision of the Seventh Circuit, the court said:

“One entering a field of endeavor already occupied by another should, in the selection of a trade name or trademark, keep far enough away to avoid all possible confusion.”

It is permissible in the American competitive economy for the second comer to endeavor to capture as much of the first' comer’s market as he can. He must do this, however, by giving his product a name and dress descriptive and fanciful in its own right and selling it on its own merit, not by confusing the public into mistakenly purchasing his product for his competitor’s. The second comer must create a reputation of its own and not trade on the goodwill of another product already established at considerable cost and risk.

In this regard the law today is much the same as it was fifty years ago, when this court said in Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73, 75:

“It is so easy for the honest business man, who wishes to sell his goods upon their merits, to select from the entire material universe, which is before him, symbols, marks and coverings which by no possibility can cause confusion between his goods and those of his competitors, that the courts look with suspicion upon one who, in dressing his goods for the market, approaches so near to his successful rival that the public may fail to distinguish between them.”

Important in determining whether the second comer’s entrance into the market creates possible confusion, is any evidence of conscious imitation of the first comer’s product. It has often been recognized that “One of the elements to be considered in deciding whether there is confusing similarity is the intent of the actor who adopts the designation.” Appellant contends that the trial court erred in not finding conscious imitation of plaintiff’s trademark by defendant’s selection of its mark “Val-cream.” In support of its contention appellant argues (1) that the cumulative absence of differentiation is objective evidence of conscious imitation, and (2) that the evidence concerning appellee’s choice of name and its copying of nonfunctional aspects of appellant’s product show actual subjective intent to imitate. The trial court in a single sentence rejected this contention saying, “the alleged evidence of conscious imitation is nothing more than advertising jargon and the use of practices which are common, in the business world in general, and in this highly competitive field in particular.” We do not think that evidence which shows a cumulative absence of differentiation should be disposed of so summarily.

Appellant points out that the two products are identical in the size and shape of the tubes and cartons, the prices identical, the colors similar, the orifice identical in size, and the advertising on the tubes and packages substantially the same. Moreover the contents of the tubes are indistinguishable. They look, feel and smell the same; and their ingredients are concededly virtually identical. As to each of these items appellant admits it had no monopoly, but it contends, and we agree, that the multiplicity of the similarities is objective evidence of defendant’s conscious imitation of plaintiff’s product.

Even of more significance than the so-called “objective” evidence of intent is the “subjective” evidence of which the proof was largely documentary. Having decided to market a cream style hairdressing in tubes, defendant asked an advertising agency to suggest names for this hairdressing “of the Brylcreem Type,” emphasizing that need for a name was of “top priority.” Exh. 65. The agency responded with a list of 25 names for “Bryl Cream Type.” Exh. 58. From this list the appellee picked Valcreem, one of the two names on the list which most closely approximated appellant’s trademark Other exhibits (66, 67, 68, 69 and 70) show that up to January 5, 1956, defendant intended to use the suffix “creem.” Why or when the determination was made to change “creem” to “cream” can only be surmised. A memorandum in November 1955 from appellee’s file reveals that the successful market “pioneering” by “Brylcreem” was a compelling reason for appellee’s choice of the name “Valcreem.” Exh. 94. The similarities between the original Brylcreem tube and the Valcream tube are accounted for by the fact that when the artist was summoned to design the Val-cream tube, there was a tube of Brylcreem on the desk in front of him. Joint Appendix 125. When it came to devising the instructions for use and the statement of ingredients on the outside of defendant’s carton, the advertising agency was sent a carton of “Brylcreem” as an aid in composing a “like panel on Val-cream.” Exh. 87. Even the color of the cap was made red, conforming with Brylcreem, when the question arose whether to make it red or white. Exh. 78. Before marketing Valcream, appellee ran a series of “blind product tests” by which it was learned that “34% * * * saw no difference between Brylcreem and Valcream * * *. While the sample was too small to be definitive in preferences this close, it would appear, at most, that any superiority of Brylcreem would probably be no more than 1% point over Valcream, if any.” Exh. 86; see exhs. 89 and 90. In making such tests, defendant consumed five hunderd and fifty 1% ounce tubes of Brylcreem. Exh. 80.

In our opinion the above evidence of intentional imitation was not given adequate consideration by the court below. Doubtless the trial court’s summary rejection of this evidence was due to the court’s finding of no confusing similarity between the two trademarks standing alone. We think the District Court should have considered the names of the two products in conjunction with the similarity of the presentation of the products with respect to their design and general appearance, containers, tubes, price, size, perfume, and other non-functional aspects. In My-T-Fine Corp. v. Samuels, 2 Cir., 69 F.2d 76, 77, Judge Learned Hand said:

“ * * * ; a latecomer who deliberately copies the dress of his competitors already in the field, must at least prove that his effort has been futile. Prima facie the court will treat his opinion so disclosed as expert and will not assume that it was erroneous [citing cases]. He may indeed succeed in showing that it was; that, however bad his purpose, it will fail in execution; if he does, he will win. Kann v. Diamond Steel Co., 89 F. 706, 713 (C.C.A. 8). But such an intent raises a presumption that customers will be deceived.”

Admittedly there is nothing to prevent a second comer from making and selling the identical product of the first comer, providing the second comer so names and dresses its product as to avoid all likely confusion. Clearly this test has not been met. This is true not only because of the conscious imitation referred to above, but also because as a result of the similarity of name and dress, actual confusion did occur.

The Gil Hodges television broadcast provided one source of evidence of confusion which is briefly summarized in the District Court opinion. Appellee made an offer by television in certain west coast cities to refund purchasers of the 590 size of Valcream with a check for that sum signed by the baseball player Gil Hodges. This evidence included thirteen instances in which Bryl-creem cartons were mailed to appellant in response to appellee’s television commercial. Appellee also received at least ten, and probably more Brylcreem cartons in response to its offer. There was no evidence of the receipt of cartons of any other competing hairdressing. Another source of evidence was the testimony of the department manager in charge of cosmetics in the Katz Drug Store in Des Moines, Iowa, and the depositions of two employees of Katz Drug Store in Kansas City, Missouri. Two additional instances of confusion were also proved. The Oklahoma Drug Sales Company of Lawton, Oklahoma, mistakenly invoiced appellant for Valcream advertising in a local paper; and Dakota Drug, Inc., of Minot, North Dakota, sent appellant a letter relating to a price reduction offer made by appellee for Val-cream Even Standard & Poor’s somehow transposed the two names and attributed the product Brylcreem to the appellee corporation.

The court brushed aside this evidence with the statement: “The evidence of actual confusion introduced at the trial was hardly overwhelming. Most of the deposition and oral testimony, as we have observed, showed not confusion but carelessness and inattention on the part of the purchaser.” In our opinion this statement by the trial judge is not a finding of fact based on testimony but is merely a characterization of the testimony embodying the judge’s view as to what “confusion” is. In denying significance to the evidence of actual confusion we think the court erred. Confusion on the part of the careless or inattentive purchaser may not be disregarded. As this court said in American Chicle Co. v. Topps Chewing Gum, Inc., 2 Cir., 208 F.2d 560, 563:

“ * * * the first comer’s careless customers are as valuable to him as any others; and their carelessness can hardly be charged to him. Why they should be deemed more legitimate game for a poacher than his careful buyers, it is hard to see, unless it be on the ground that he should have made his mark so conspicuous that it would serve to hold even the most heedless. Surely that is an inadequate defense. We are not committed to [that] doctrine in this circuit.”

Actual confusion or deception of purchasers is not essential to a finding of trademark infringement or unfair competition, it being recognized that “reliable evidence of actual instances of confusion is practically almost impossible to secure.” But where such proof has been adduced, weight should be given it. Here the evidence is impressive in view of its spontaneous character and difficulty of attainment.

Moreover, it is difficult to understand on what basis the court found that customers who were confused were careless or inattentive. None of such customers was produced as a witness at the trial. While a side by side comparison of the trademarks, tubes and cartons would enable an attentive observer to differentiate them, this is not the test to be applied. It is the general overall impression which counts; we find no body of opinion in this circuit or elsewhere, to the contrary.

Since we find infringement of the Bryl-creem trademark, it is unnecessary to consider the allegation of unfair competition, which is governed essentially by the same principles already discussed.

For the foregoing reasons we believe the trial court erred in dismissing the action. Accordingly, the judgment is reversed and the case remanded for further proceedings not inconsistent with this opinion.

It is so ordered.

. Appellant’s trademark was registered on November 3, 1942, as No. 398,474. Appellant also owns a New York State Registration of the trademark “Brylcreem.” Appellee applied to the Patent Office for registration of the trademark “Val-cream.” Appellant opposed the registration and, after correspondence between the parties, brought the present suit, in consequence of which the Patent Office proceeding has not been decided.

. Appellee advances the extraordinary contention, unsupported by any citation of authority, that because appellant, in January 1959, changed somewhat the color arrangement and appearance of the “Brylcreem” tubes and cartons it was using when the suit was commenced in June 1957, appellant thereby “became the late or second comer” and “abandoned its claim for unfair competition based on alleged similarity of the parties’ cartons and tubes when this action started.” Appellant’s answer to this contention is obviously correct, namely, that the only effect, if any, which appellant’s voluntary change in the appearance of its packaging can have, relates to the damages recoverable after such change, and has no bearing on the question of trademark infringement or unfair competition prior to such change.

. 15 U.S.C.A. § 1114(1) imposes liability for use of a colorable imitation of any registered mark if such use “is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods * * See J. R. Wood & Sons, Inc. v. Reese Jewelry Corp., 2 Cir., 1960, 278 F.2d 157; Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73, 75; American Chicle Co. v. Topps Chewing Gum, Inc., 2 Cir., 208 F.2d 560, 563; Q-Tips, Inc. v. Johnson & Johnson, 3 Cir., 206 F.2d 144, 147; Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 18 F.2d 774, 775.

. Brylcreem had not acquired such a generic meaning in the public eye as to necessitate imitation of its name by a newcomer in the field. This is evidenced by the success of other products in the field, e.g., Wildroot, Top Brass, Crew Cut’ and Command.

. Quoted from Q-Tips, Inc. v. Johnson & Johnson, 3 Cir., 206 F.2d 114, 147 (“Q-Tips” held infringed by “Cotton Tips”). See also G. D. Searle & Co. v. Chas. Pfizer & Co., Inc., 7 Cir., 265 F.2d 385, 389, certiorari denied 361 U.S. 819, 80 S.Ct. 64, 4 L.Ed.2d 65 (“Dramamine” held infringed by “Bonamine”); Western Oil Refining Co. v. Jones, 6 Cir., 27 F.2d 205, 206 (“Silver Flash” held infringed by “Super-Flash”).

. Brylcreem was the only competitor marketed at retail at 390 and 590 respectively, wben defendant picked the exact prices for which Brylcreem was selling, 390 and 590, respectively.

. The other name on the list which along with Valcreem most closely approximated appellant’s trademark was Palcreem.

. Much significance was attached by the District Court to the fact that the second syllable was descriptive or generic. Even assuming arguendo the premise as to the dissimilarity of the prefixes standing by themselves, dissimilar prefixes combined with generic or descriptive suffixes have often been found to infringe. Q-Tips, Inc. v. Johnson & Johnson, 3 Cir., 206 F.2d 144 (“Cotton” held to infringe “Q” when both combined with “tips”); Western Oil Refining Co. v. Jones, 6 Cir., 27 F.2d 205 (“Silver” held to infringe “Super” when both combined with “Flash”); Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73 (“Sta” held to infringe “Keep” when both combined with “Clean”). See discussion in G. D. Searle & Co. v. Chas. Pfizer & Co., Inc., 7 Cir., 265 F.2d 385, 388-389, certiorari denied 361 U.S. 819, 80 S.Ct. 64, 4 L.Ed.2d 65. The language in G. D. Searle at page 387 is almost identically applicable to the present case: “Dramamine and Bonamine contain the same number of syllables; they have the same stress pattern, with primary accent on the first syllable and secondary accent on the third; the last two syllables of Dramamine and Bonamine are identical. The initial sounds of Dramamine and Bonamine (‘d’ and ‘b’) are both what are known as ‘voiced plosives’ and are acoustically similar * * *. The only dissimilar sound in the two trademarks is the ‘r’ in Dramamine. Slight differences in the sound of similar trademarks will not protect the infringer.”

. For other Second Circuit cases to the same effect, see Best & Co. v. Miller, 167 F.2d 374, 377, certiorari denied 335 U.S. 818, 69 S.Ct. 39, 93 L.Ed. 373 (dictum); Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 199 F.2d 602, 603; American Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 562; Mastercrafters C. & R. Co. v. Vacheron & Const.-Le C. W., 221 F.2d 464, 467, certiorari denied 350 U.S. 832, 76 S.Ct. 67, 100 L.Ed. 743.

. See Upjohn Co. v. Schwartz, 2 Cir., 246 F.2d 254, 256, where this court said: “The defendant could put up his drug preparations, using the same formula and even the same size and color for his capsules and tablets, if he took adequate precautions to prevent the substitution of his products for plaintiff’s, a result that was likely to happen due to the close similarity of the two products, and if he did not resort to any deceitful practices.” See also footnote 3 and related text.

. 176 F.Supp. 429, at page 431.

. Letters accompanying these cartons are set forth in Exh. 43.

. Exh. 36. Appellee contended that this evidence was inadmissible hearsay. Such testimony, however, falls into the category of exceptions to the hearsay rule which exempts statements as to mental condition. 6 Wigmore § 1714.

. Exhs. 32 and 33.

. Exh. 34. The author of the article testified that this was merely a careless mistake in transposing the names.

. Mastercrafters C. & R. Co. v. Vacheron & Const.-Le C. W., 2 Cir., 221 F.2d 464, 466, certiorari denied 350 U.S. 832, 76 S.Ct. 67, 100 L.Ed. 743; G. D. Searle & Co. v. Chas. Pfizer & Co., 7 Cir., 231 F.2d 316, 317.

. Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 2 Cir., 199 F.2d 602, 603.

. N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 2 Cir., 77 F. 869, 877; Esso, Inc. v. Standard Oil Co., 8 Cir., 98 F.2d 1, 5.

. Coca-Cola Co. v. Chero-Cola Co., 51 App.D.C. 27, 273 F. 755; G. D. Searle & Co. v. Chas. Pfizer & Co., Inc., 7 Cir., 265 F.2d 385, certiorari denied 361 U.S. 819, 80 S.Ct. 64. This is especially true whcre inexpensive products are involved, since the normal buyer does not exercise as much caution in buying an inexpensive article as he would for a more expensive one, making confusion more likely. L. J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 42 CCPA 932.