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

> Court of Appeals for the Second Circuit · July 29, 1960 · 281 F.2d 755

URL: https://www.frixlaw.com/law-library/cases/9447505

## Case

- **Full name:** HAROLD F. RITCHIE, INC., Plaintiff-Appellant, v. CHESEBROUGH-POND’S, INC., Defendant-Appellee
- **Court:** Court of Appeals for the Second Circuit
- **Decided:** July 29, 1960
- **Citations:** 281 F.2d 755; 126 U.S.P.Q. (BNA) 310; 1960 U.S. App. LEXIS 3922
- **Precedential status:** Published
- **Opinion:** Dissent by Clark
- **Judges:** Clark, Friendly, Swan
- **Cited by:** 133 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9447505

## How later opinions describe it (automated extraction)

- holding evidence of actual confusion shown through incorrect billings and mailings should not have been discarded by district court
- noting that name and package of "Val-cream" were chosen with "Brylcreem” name and package in mind
- finding of confusion as to identical product

## Opinion text

CLARK, Circuit Judge
(dissenting).
In a recent series of carefully formulated and reasoned opinions this court has declined to extend the trade-mark monopoly to prohibit the competitive use of well-known and ordinary English words. J. R. Wood & Sons v. Reese Jewelry Corp., 2 Cir., 278 F.2d 157 ; Avon Shoe Co. v. David Crystal, Inc., 2 Cir., 279 F.2d 607 ; Speedry Products, Inc. v. Dri Mark Products, Inc., 2 Cir., 271 F.2d 646 ; Dawn Donut Co. v. Hart’s Food Stores, 2 Cir., 267 F.2d 358 ; Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 2 Cir., 266 F.2d 541 ; Warner Bros. Co. v. Jantzen, Inc., 2 Cir., 249 F.2d 353 ; and see also Norwich Pharmacal Co. v. Sterling Drug, Inc., 2 Cir., 271 F.2d 569 , certiorari denied 362 U.S. 919 , 80 S.Ct. 671 , 4 L.Ed.2d 739 ; and the classic earlier cases of Eastern Wine Corp. v. Winslow-Warren, Ltd., 2 Cir., 137 F.2d 955 , certiorari denied 320 U.S. 758 , 64 S.Ct. 65 , 88 L.Ed. 452 , and G. B. Kent & Sons, Ltd. v. P. Lorillard Co., D.C.S.D.N.Y., 114 F.Supp. 621 , affirmed 2 Cir, 210 F.2d 953 . My brothers avoid this body of recent opinion by the convenient device of ignoring it. But so many and so close are the precedents as necessarily to suggest that Chief Judge Ryan was, on strong grounds in denying relief below in his very fully analyzed opinion, D.C.S.D.N.Y., 176 F.Supp. 429 , and that reversal comes because of the differing composition of the sitting panel.
Now I recognize the exigencies of decision to find actionable similarity or its absence in trade name cases where the final test, after all, must usually be the trier’s subjective reaction to the looks of the competing names on inspection. So it is but natural that the precedents, may seem diverse or inconsistent; perhaps judicial uncertainty here is not wholly without its value as a stimulus or goad to the “American Way” of free competition. And for myself, I certainly do not claim any special degree of consistency, which is so impossible of attainment here. But I do suggest that there are certain desirable ground rules which ought to limit somewhat the area of doubt where applicable. Perhaps the most important presently in issue is the admonition against discovering actionable similarity only through the use of a word already in the public domain. Here quite obviously the prefix “Val” is wholly unlike the combination of harsh conso *763 nants “Bryl”; only when we add the simple word “cream” (or even more strangely, plaintiff’s corrupted form “creem”) is there a semblance of infringement. This is to make a plus, a unique plus, of infringement from two zeros of noninfringement; for separately the two parts of the words cannot justify action. For this bases the monopoly upon a common and highly useful word whose use is not properly to be limited to such exclusive exploitation.
The principle is aptly illustrated by our recent case essentially on all fours with the one here, J. R. Wood & Sons v. Reese Jewelry Corp., supra, 2 Cir., 278 F.2d 157, 159 . There in holding that the trade-mark “Artcarved” for wedding and engagement rings was not infringed by the defendant’s mark “Art ♦ Crest,”
Judge Moore pointed out that both marks used as a first syllable a word in common use, i. e., “art.” He continued: “Trademarks containing a word in the public domain are said to be less ‘confusingly similar if they resemble each other only by the inclusion of a word which is in the public domain;’ [Citing Goldring, Inc. v. Town-Moore, Inc., 228 F.2d 254, 255 , 43 CCPA 740, and other cases.] * * * To grant to appellee the protection sought would bestow upon it a virtual monopoly of any word commencing with ‘art.’ ” Citing Warner Bros. Co. v. Jantzen, Inc., supra, 2 Cir., 249 F.2d 353 , and Eastern Wine Corp. v. Winslow-War-ren, Ltd., supra, 2 Cir., 137 F.2d 955 , certiorari denied 320 U.S. 758 , 64 S.Ct. 65 , 88 L.Ed. 452 . 1
As a matter of fact the present case affords an even more apt illustration of the principle. For the word “art” is one of convenient generality, even ambiguity, as applied to high-grade rings, whereas “cream” is both more ordinary and more precisely descriptive of the product here. So the simple and unoriginal mixture here of white oil and beeswax, with a “citrus” perfume, does produce a product not to be conveniently described by some other dictionary substitute, such as “cosmetic” or “emulsion.” And thus even without the added distinction afforded by the plaintiff’s spelling of “creem,” I should think it clear that no actionable confusion could be attributed to defendant’s name, and that affirmance was required. While I shall advert to other considerations, all else does seem to me but gilding the lily.
But further it would seem that the court must view the competitive market here involved realistically and in the light of the plethora of hair creams and other cosmetics distributed everywhere in the ubiquitous collapsible tube. Here we have an inexpensive nonsecret hairdressing, built upon millions spent in advertising, 2 but having after all to compete with countless other similar cream products; while it is entitled to protection of its own name, it cannot claim uniqueness among creams as such or hold this defendant to standards unrealistic in *764 the trade. See 3 Restatement, Torts § 729(c) and (d) and comment g (1938). Plaintiff, making a virtue of necessity, claims greater protection because “inexpensive products are more likely to be confused than expensive ones,” but concedes other registrations of “cream” marks to be valid. Hence the question comes back again to the supposed similarity of “Val” to “Bryl” as applied to a cream; but it is not readily apparent why that is closer than other combinations. Thus defendant showed some twenty registrations by the Patent Office of various composite marks containing the descriptive word “cream” or a misspelling thereof. It is hard to see a differentiation not here present supporting such composites as “Milcream,” “Glo-Cream,” “Lavocream,” “Lashcreme,” “Eeccream,” and “Pearl Cream.” Such composites of cream, such as the presently popular “creme” or “kreme,” are most usual nowadays in hair shampoos, dressings, and cleansing creams, not to speak of the closely allied dental creams and shaving creams; 3 it is a rare medicine closet nowadays which will not have various tubes of “cream.” I suggest with deference that if my brothers are now starting on the road to afford special protecttion to this name, they will find it a long and hazardous, if not an impossible, one. For they are according an all-pervasive uniqueness to plaintiff’s name of the kind realistic perhaps with respect to a precision watch or a fine ring, but hardly so with respect to any mere cosmetic cream.
So my brothers’ meticulous and labored rehearsing of every advertising detail, including the shape and orifice of the tube, the form of the container, the competitive prices — 590 and 390 — seems to be deserving of a better cause. For frankly I cannot see what of value it proves. Admittedly plaintiff has and can claim no monopoly in these trade details; and defendant is entitled to make use of any of them which will aid it in the competitive race. Remember defendant has been in the general cosmetic business longer than the plaintiff, and nothing could be more natural than its attempt to catch up with the plaintiff’s advertising success. Much of what is now cited against it to my mind shows on the contrary very considerable concern to make its competition legal and proper. Of course it intended to compete; it would have been wholly disingenuous and dishonest to have claimed it was oblivious of the presently largest distributor in the business. So when it rejected its original word “Valcreem” to spell “cream” properly, I should think its action commendable, rather than the reverse. To say that defendant picked from a long list of possible names laid before it one of the two names which most closely approximated plaintiff’s trade-mark is to accept blindly the plaintiff’s self-serving asseveration, the truth of which is not apparent on inspection of the 250 or more names set forth. And so as to the much belabored “late-comer” argument, it of course is valid where it is valid, namely, where there is real copying, not where the names are as dissimilar as here. I shall not pause to examine each tidbit of detail, but trust I have set forth enough to explain my own conviction that both the so-called “objective” and “subjective” evidence of intent of itself shows nothing illegal or improper in the competitive battle; on the contrary, it tends to indicate a scrupulous attempt to learn and to observe the proper legal limits.
And that brings me back again to the crucial point of likelihood of confusion as to the source of the competing product. As bearing on the point, plaintiff tried extensively to show evidence of actual *765 consumer confusion, but has had the misfortune to have the distinguished trial judge make findings of fact against it. This, too, presented a serious obstacle to my brothers in reaching the conclusion to which they otherwise felt impelled. There were perhaps two ways in which they might have met this obstacle. One was to ignore it, since we have treated the conclusion as to confusion one of law reviewable by us on appeal. See J. R. Wood & Sons v. Reese Jewelry Corp., supra, 2 Cir., 278 F.2d 157 , citing cases. 4 But in view of the obvious difficulties which are impliedly conceded by the very detail of their argument, they were not quite prepared to take so drastic a step. Instead they pursue the opposite course of attempting to denigrate the findings as being either not in accord with the evidence or not true findings or both. I submit, however, that not thus easily may these determinations of the experienced trial judge be pushed aside.
For when we come to examine Chief Judge Ryan’s actual findings in detail, we find them amply supported by the record and particularly exemplary because of the tinge of common sense they reflect. Actually the few puny instances of possible or claimed confusion among millions of sales were so scanty as to impel the contrary conclusion. On the basis of plaintiff’s gross sales defendant reasonably estimates that plaintiff sold approximately 32,000,000 tubes of its cream during a three-year period, and of course defendant also was making substantial sales. The few isolated instances, summarized by the trial court, D.C.S.D.N.Y., 176 F.Supp. 429, 431 , mainly where Brylcreem purchasers tried to cash in on a money-back offer by Val-cream on television, are surely not impressive against such a background of sales; indeed, it is interesting to note that, if anything, Brylcreem was the slight gainer from Valcream’s television advertising, and there seems an actual dearth of a showing of persons who may have bought the latter for the former. So the judge quite properly said: “Most of the deposition and oral testimony, as we have observed, showed not confusion but carelessness and inattention on the part of the purchaser.” D.C.S.D.N.Y., 176 F.Supp. 429, 432, 433 . 5 To me these weak trivialities in this vastly overex-ploited field are anything but impressive —quite the contrary in fact — and they have been correctly appraised by a perceptive trial judge. They are far from demonstrating any real likelihood of confusion within the statutory prohibition, 15 U.S.C. § 1114 (1).
In short all roads bring us back to the necessity of seeing some confusing similarity between “Bryl” and “Val.” Since I cannot see it, I find no basis for in-junctive relief to the plaintiff or for damages and an accounting of “profits.” Surely such an accounting will present unusual questions of fair apportionment of award!
I would affirm.
. For other cases applying this principle, see Coca-Cola Co. v. Carlisle Bottling Works, D.C.E.D.Ky., 43 F.2d 101, 114 , affirmed 6 Cir., 43 F.2d 119 , certiorari denied 282 U.S. 882 , 51 S.Ct. 86 , 75 L.Ed. 778 ; Glenmore Distilleries Co. v. National Distillers Products Corp., 4 Cir., 101 F.2d 479 , certiorari denied 307 U.S. 632 , 59 S.Ct. 835 , 83 L.Ed. 1515 ; Pennzoil Co. v. Crown Central Petroleum Corp., D.C.Md., 50 F.Supp. 891, 898 , affirmed 4 Cir., 140 F.2d 387 , certiorari denied 322 U.S. 750 , 64 S.Ct. 1261 , 88 L.Ed. 1581 . These cases also stress the dominating importance, to show dissimilarity, of the first syllable or word in a combination or composite term. See also Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188 , 44 CCPA 880; Lauritzen & Co. v. Borden Co., 239 F.2d 405 , 44 CCPA 720; Crown Overall Mfg. Co. v. Chahin, 5 Cir., 200 F.2d 935 .
. Plaintiff says in its brief that its “annual sales since 1953 have shown a pattern of direct and consistent relationship to the amount of advertising expense. Thus, during the period 1953-1958, plaintiff moved from 2.6% of the total hairdressing market in the U. S. * * * to 11.9%.” And its advertising expense went up from $696,800 for the fiscal year 1953 to $2,219,800 for 1957.
. For example, Consumer Reports 1957 Buying Guide lists some 13 “creams” or “cremes” among hair shampoos. Plaintiff urges a difference in intended use by men or women; but the record suggests no way of testing hair oil for gender, nor do the trade-mark registrations. The same publication lists some 32 cleansing “creams” and becomes quite indefinite as to the number of shaving and dental creams.
. Not all circuits agree. See, e.g., Cleo Syrup Corp. v. Coca-Cola Co., 8 Cir., 139 F.2d 416, 417, 418 , 150 A.L.R. 1056 , certiorari denied 321 U.S. 781 , 64 S.Ct. 638 , 88 L.Ed. 1074 .
. See the words of Chief Judge McAllis-ter in S. C. Johnson & Son, Inc. v. Johnson, 6 Cir., 266 F.2d 129 , 141: “The owner of a trademark is not entitled to a guarantee against confusion in the minds of careless and indifferent buyers, Mishawaka Rubber & Woolen Mfg. Co. v. Panther-Panco Rubber Co., D.C.Mass., 55 F.Supp. 308 ; and merely occasional cases of confusion or thoughtless errors by very inattentive purchasers are of very little significance in trademark and unfair competition cases. Pennzoil Co. v. Crown Central Petroleum Co., D.C. Md., 50 F.Supp. 891 , affirmed 4 Cir., 140 F.2d 387 .” In accord, see Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121 , 59 S.Ct. 109 , 83 L.Ed. 73 ; Valvoline Oil Co. v. Havoline Oil Co., D.C.S.D.N.Y., 211 F. 189, 194 ; Quaker Oats Co. v. General Mills, 7 Cir., 134 F.2d 429, 432 ; 3 Restatement, Torts § 728, comment a (1938).

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9447505. Public record. Not legal advice.