Petition for Writ of Certiorari — Schenley Distillers, Inc. v. John P. Dant Distillery Co.

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LIBRARY —

SUPREM! COURT. U.S.

oo SS ——————————

IN THE.

MAY 7 i

Supreme Court of the Unite

‘ Ocroser TERM, n@—.

Pe ae

SCHENTEY DISTILLERS, INC. :

; ee a Ps ‘Petitioner,

W. «

“JOHN P. DANT DISTILLERY CO.

and. JOHN P. DANT, JR,

, Respondents. |

= a — ——— ———_——_—— — ——_— — — ————

PETITION FOR A WRIT OF CERTIORARI TO THE

. UNITED STATES COURT OF APPEALS

os FOR THE SIXTH CIRCUIT

ee ear = ——_—_

eos Miron HANDLER * |

Sipney A. DiamonpD

. 425 Park Avenue

io NeW York 22, N. Y.

: Attorneys -for Petitioner

Kaye, ScHOLER, FrerMan, Hays & HANDLER

425 Park Avenue

New York 22, N.Y.

NICHOLS, Woops, Marx & GINTER

900 Tri-State Building

Cincinnati 2, Ohio

JosePH J. KAPLAN

Ben F. WasHER

Marion E. Taylor Building

Louisville 2, Kentucky

— Of Counsel

ratesy's. cuerk

——$$___—___,—_

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INDEX. , <

a prune wees -

. , a ; PAGE.

I TI sa ic erin ccinceicibicnnihieonhiene ean 7

JORMIDGORION 5c nclionennenve- tania ers Lee 2

‘ 1a | >

gy. ee eee Ie Une a :

. : ere :

‘ nee | —e

‘Statutes Invo.vep.’ ner oer ETO . 8

| STATEMENT =... APR POE as al ide teaalctcisecosses ai

“ae 5 : ; : a aoe ts ° 5 :

Reasons ror GRANTING THE WRIT... 22-22-22 .

‘ : ™ eaeu* a ;

Be NEM SE AUT OX CS ee SO, Se “19

APPENDIX A--Statutes Involved... ves eo

ernest neiciedl 2 .

ta ‘B_Mesiorandum Opinion: of the United ie es ?

et States District Court for the ‘Western District of oa

. Kentueky - ekustieabanaitisedinsonipatnaionias : 25

APPENDIX. i halliala of the United States’ ‘Dis- ne |

trict + Court for the. Western District of Kentucky 36

&

soveniat D—Opinion of the United States Court

of Appeals: ‘for the Sixth Circuit. oe ci 37

Aprexpix E—J udgment of the United States Court

of Appeals for the Sixth Circuit P — 639

. Appenprx Fz-Order of the United States Court of .

. Appeals for the Sixth — Denying Petition

t for oe ae

i a mi, ; . ,

Citations.

Supp. 613 (D. Conn. 1933) .....-----eoecseesesseseeeeneeeesee

oo

i

16

._- Casear: : : naan

"Anheuser- Busch, Inc. v. Budweiser Malt Produc ts

_Corp., 287 Fed. 243 (8. °D. N.Y. 1921), aff'd, -

295 Fed. 306 (2d Cir. 1923)... ¥

Armstrong Paint & Varnish Works v v. Mi u- -Enamel ’

— ——Corp, 305 U.S. 315 (1938) ane neeeenrnentenrn 13

Brown Chemical Co. v. Meyer, 139 U.S. 540 (1891) 7,10

Brow ne-Vintners' Co. v. National Distillers. &

“Chemical Corp., 151, F. Supp. 595. (8. D. N.Y.

SS ESE RS -

\- Bulte v. Igleheart Bas, 137 Fed. 492 (7th Cir. ° +

firs e 1905) EE Beater iuseks tecaidaosdiasldaiioniiatsA comeeicisiamabidiinne’ 16

5 lament bhemplon: Spark Plug Co. v. Sanders, i wv. s.

Sie SER ys: TL I SR Memon er tnt oon Hosted nate .13

ee : Cook Chemical Co. v. Cook Paint & Varnish Co.,

* 185 F. 2d 365 (8th Cir. 1950).......... LEESON Oe 7,8

Coty, Inc. x. Parfums ‘de Grande Luce, Inc., 998 a}

: a, BB CB Cm, BOI) ina eiccssiccreveenceerctpnesmmenenss ‘*

~° Crane.Co. v. Crane Heating € Air Conditioning |

\. +. °‘Co., 299 F. 2d 577 (6th Cir, 1962)........ a Pe a i

\\. Everett 0. Fisk & Co. v. Fisly Teachers’ Agency, |

- \ >. + Ine, SF. OA TCO Clr, TO i isccsieciinene - + UT

(a Gamlen Chemical. Co. v. Gamlen, 79 F. Supp. 622

4 LS 5 SRS SeRper er Monnet) Camnrnnen ae

Gerber Products Co. v. ndatsaalde 109 U.S. P. Qi :,. *

_ (Comm’r 1956). . 12

Girard-Perregqux & Cie., S. A... " Perregauz; 122

-. U.S. P. Q. 95 (Comm’r RG ARE 12 -

Goodyear’s India Rubber Glove Mfg. Co. v. Good- ~ -

year. Rubber Co., 128 U.S. 8, (1888) BAT wee

Great Atlantic & Pacific Tea Co;v. A. & P. Radio

‘ Stores, Inc., 20 ¥. Supp. 703 (E. D. Pa. 1937)... 16

Hat Corp. of America v. D. L. Davis Corp., 4 F.

11

eo

. Henderson v.: Peter Hende ow CTF, 2d 787 .

(7th Cir. 1925)... a

iii

_-——* PAGE

Howe Scale Co. v. Ww whol Seanidns y. ‘Benedict,

198 U. S. 418 (1905)... maseaeeeiieeiogins hideantilaedie 7,10, 12

In re Hoover, 123 U.S. P. Q: ‘394 (T. T. A. B. 1959) 12

In re Toledo Porcelain Enamel Products Co., 58 ¥F.

2d 423 (C. C, P. A. 1932)....:....-.- AI a ae ee 18

Jack Daniels Distillary Lic. v. Hoffman Dsetilling

Co., 298 F. 24 606 (6th Cir. 1962)... , 1%.

‘J.B: Williams Co. *, Williams, 48 F. 2d 398 «6. ©

905 SARS RR. CF 12

J. F. Rowley Co. Vv. Rowley, is F. zd 700 > vir.

ee ee ies

John B. Stetson Co. v. Stephen L. Stetson Co.,85 . /

-F, 2d 586 (2d Cir. 1936), cert. denied, 299 U. 8.

_ National Comics Publications, Inc. v. Sive, 15 yp

U.S. P. Q. 393 (Comm’r 1957).:.. 18

_ National Lead Co. v. Wolfe, 223 F. “2a 195 ‘om

Cir. 1955), cert. denied, 350 U. 8. 883 (1955)........ + oe

| Pecheur Lozenge Co. v. National Candy Co., 315

U. S. 666 (1942). 13

SLC. Johnson & Son, Inc. v. “Johnson, 266 F. 24129 .-

(6th Cir. 1959), cert. denied, 361 U. 8. 820 (1959) 12

Singer Mfg. Co. v. June Mfg. Co. 163 U. 8. 169- ;

(1896) : 7

t.

Gq

peg IC I ae SRM its Seema ee f- 1

Kidd v. Johison, 100 U.S. 617 (4880) ki. 16

Lea v. New Homé Sewing Mach. Co., 139: Fe 6732 :

(BE. D.. N.Y. 1905)...-2--2cegeoetiesteveneenncnstencengfenrnneseonnes 17

L. E. Waterman Co, v. Modern Pen Co.,235 U.S. .

BB, 94 (1914) anger eenernrrnncnneernnrentn 10, 12, 13

MacMahan ‘Pharmacal Co. v. Desoer Chemical |

_ - Mfg. Co., 113 Fed. 468 (8th Cir, 1901 Fo. .eaienneencecoog 16 -

Manhattan Medicine Co.-v. Wood, 108 U. &. 218 Pee

(GBB) 2 -neecroceconssosnsernncessnsernssesnsecenvesensernsscnnsssenesecsnreenee , 18.

Mishawaka Rubber &s.Woolen Mfg. Co. v. S. 8.

Kresge Co., 316 U. S. 203 (1942). so eae) ..

reagent

fori!

/ . ° r P ’

iv

. PAGE |

SM, } Me Mfg. C6, v. Spencer, 319 Mass. 331, ee

tM & ge _ ; ARRees Ce oh Cee 8

Societe Comptoir de L’ Industrie Cotonaiere Etab-

_ lissements Boussac vy: Alexander's Department |

Stores, Inc., 299 F. 2d 33 (2d Cir. 1962)........... aa 17

Stark v.Btarks Bred. Nurseries € Orchards Co.,257 ~~

Fed. 9 a Cir. 1919), aff"a, 255 U.S. 50 (1921) 12

Steele v. Bulova Watch Co., 344 U. S. 280 (1952)... 13

; ff | Stern Furniture Co. v. Stern, 52 Ohio L. Abs. 527,

es 83 N. E. 2d 804 (Ct. App. 1948), aff’d, 152 Ohio

St. 191, 87 N. FE. 24° 351 (1949). dipindicnindaetabasgiipits 8

Stix, Baer & Fuller Dry Goods Co. vi American |. *

Piano Co., 211 Fed. 271 (8th Cir. 1913)... - : 38.

Thaddeus Davids Co. v. Davids, 233 'U..S. 461

(1914) Bete sai sessseseesDy 6; 8, 9, 10, 12, 13.

' Werner Bres.-0d. 9, Wieser, 218 Fed. 635 (24.

Cir. sais 2 seeing “ saooon 11 «.

| Statutes:

_c Trademark ‘Act of 1946 (Lanham Act)

. $115 U.S. €. § 1051 oe ion

§ 2(e), 15 U.S. C. §1052(e) | ees

- " § 2(f), 15 U. 8. Cr§ 1052(f)..... ibaa, te

peace § 5, 15 U. 8. C. $ 1055 1 <A OE COR TD NE ) 3,17

eat oa § 7(b), 15 U. 8. ©. § 1057(b)......... , 3

- § 14, 15 U. S.-C. §°1064 18

§ 32(1), 15 U. S.C. § 1114(1) 2 s.

§ 33(a), 15 U. S. C. § 1115(a) ~ :8

§ 33(b) (4), 15 U. 8. C. § 1115(b)(4)..............3, 8, 9

§ 45,15 U. 8. C. § 1127.13, 9, 14, 17, 18

, ‘Trademark Act of 1905 peaare ree a?

§ 5(b), 15. U. 8. ©. § nex nintneentaicnineredy' Sy G; 6;-18'

_ Judicial Code ;

28°U. 8. C. § 1254(1) 3 eds: &

, | Aes ey faa

“ik ag ee SOS Pies Bee "PAG

< ~~ Miscellanedus: Acad —

4 Callmann, Unfair ¢ ‘ompetition and Trade- Marks eit

5 SEE EI Ns Rese soniceienpienaniancaegybomeqenpenceqais cate oie

* Derenberg, Trade-Ma-k Protection a: Unfair. a

; _ Trading 356-57. (1936)........ LANE Bonn Sitter 10

.2 Nims, Unfair Competition and Trade-Marks 789 |

r _ th kg | BRN SESS et acetee rh ONE SPREE ~

- Ais Restatement, Torts §§ 740, 144, aeaacc "ce a oY:

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De. MMM IN

supreme Court of the United States

Ocrosen Team, i peas °

Scuentey Distiuers, Ixc., ° Ee

. e i]

| Petitioner, -

v.

Jouw P. Dant Disrizzay Co. and Joun Fr. Daxt, jn;

oe .

PETITION FOR A WRIT OF CERTIORARI TO THE”

_ UNITED, STATES COURT OF APPEALS |

FOR THE SIXTH CIRCUIT ©

,

To tHe Hoxyoraste Cur Justice aNp THE Associate

J USTICES OF THE: YUrremy Court or THE Usirep Srates:,

Petitioner prays that-a writ of certiorari issue to review ai

a judgment of the United States Court of apo for the

Sixth Citeuit. -

| The United States District: Court for the Western Dis

_— trict ‘of Kentucky did not render a formal opinion but filed

- a memorandum gecision incorporating findings of fact and

conclusions of law, which is reported at 189 F. Supp. 821°

‘and is printed as Appendix B to this Petition (pp. 25-35).

ex ~ Ss |

oes

3°

The per curiam opinion of the United States Court of

_ Appeals for the Sixth Circuit, affirming the District Court,

is reported at 297 F.2d 935 and printed as Appendix D.

to this Petition (PP. 37-38).

Jurisdiction ,

The judgment of the United States Court of ‘Appeals

for the Sixth Cireuit was entered on January 4,’ 1962

{Appendix K, p. 39). A timely petition for rehearing was_

denied on February 8,.1962 (Appendix F, p. 40). The

. jurisdiction of this Court is founded on 28 U.S.C. § 1254(1).

} :

\ aN : Questions Presented ~ “. a

1 Does the use by respondents of the trademark ‘John

P. Dant’’ for whiskey and the trade name ‘‘John P. Dant —

- Distillery Co.’’ constitute an infringement of and unfair

competition with petitioner’s celebrated: trademark ‘‘J.

~ W. Dant’’, for whiskey,. registered’ in the United States

_ Act of 1905 and republished under the Trademark Act of

Patent Office under the ten-year proviso of the Trademark

2.’ Does the fact. that the trademarks in suit consist

etymologically of personal nanies deprive. petitioner of the

right to relief against colorable. imitation to-which it other-.

wise would be entitled? eae

3: Are fespondents, Who received assignments in gross.

of the ‘trademark ‘‘John P. Dant’’ shortly prior to tlie

commencement of this action, without any accompanying ©

transfer of business assets or other indicia of good =)

enititled to rely on the equitable defenses of laches and

é !

'¢

>.

3 ®.

~. aequiescence predicated upon the failure of petitioner’s *—

predecessors to proceed against the minimal use of the

challenged mark by respondents’ assignors?

ee Statutes . Involved

*

The statutory provisions involved are Sections 2(e),

2(f), 5, 7b), 32(1), 33(a), 33(b) (4), and-45 of the Trade-

‘ mark Act of 1946 (Lanham Act), 15 U. S. C. $§ 1052(e), -

.1052(f), 1055, 1057(b),’ 1114(1), 1115(a), 1115(b) (4), 1127;

and Section 5(b) of the Trademark Act of 1905, 15 U.S. C.

§ 85. They are printed in Appendix A (pp. 20-24). F

_ Statement

This is a . trademark infririgement nition, Petitioner

seeks review of a ecision of the United States Court of

‘Appeals for the Sixth Cireuit which unanimously affirmed, :

per curiam, a judgment of the United States District Court

for the Westera District of Kentucky holding that the use

ae respondents: of the trademark. *‘John P. Dant’’: for

‘whiskey is not au infringement upon petitioner’s rights

* in the trademark “J. W. Dant’’ for whiskey, a trademark.

registered i in the United States Patent (Tice (147a, 149a).°

: Petitioner’s ‘J. W. Dant’’ trademark is. extremely valu-"

. able; if is the largest selling brand of -bonded Kentucky ,

bourbon in. the country, with sales amounting to more

than $30 ‘million per year (82a-83a):

’ The registered trademark ‘‘J. W. Dant”’ originated as °

the personal name of jetitioner’s predecessor, who went

‘into the business of distilling whiskey in Kentucky in

1836 (15a). Petitioner is the owner of two United States ©

; * Unless otherwise indicated, parenthetical references are =

saaennccs 8 printed igi in the court asadaldl

4

Patent Office registrations, one for a label design showin

“J. W. Dant”’ in the form of a faésimile signature (147a).

and the other for ‘J. W. Dant”’ alone (149a). Both of

these registrations have been republished under: the Trade- |

‘mark Act of 1946 and are now in full force and effect.

(147a, 149a).. The second of the two ‘registrations ; men- Ae

tioned is of particular importance because it was issued

pursuant to-the so-called, ten-year proviso of. the -Trade-

mark Act of 1905, under’ which personal names (otherwise -

- unregistrable except when displayed in some special man-

ner) were entitled to be registered on the same basis as

‘any other trademark if they had acquired a secondary .

meaning by exclusive and continuous use for the ten- -vear

period immediately preceding the passave of. the statute,

‘i. e., ten years: ira on sitar’ 20, — me. S. _C.

~ § 85(b).

This action was commenced in 1955, ‘after petitioner had

written a letter of complaint about the use-of ‘John P.

‘Dant’’ as a trademark for whiskey (12a). The respondent ~

_ corporation thereupon brought suit against petitioner,

seeking a declaratory judgment of ‘non- -infringement, and .

incidental injunctive relief (6a-13a). Petitioner counter-—

claimed for infringement of its. registered trademark ‘‘J. W.,

Dant”’ and for unfair competition; and brought the indi-

vidual respondent, John P. Dant, Jr., into the action as a

third-party defendant (14a-33a). &

- The District Court denied relief#holding that the side.

mark “John P. Dant”’ is not confusingly “similar: to ‘peti.

_ tioner’s trademark ‘J. W. Dant.”? ‘The District Court” pro-

_ eéeded on the theory that a different test-of_trademark

infringement i is applicable i In cases where the marks ks consist

_ etymologiaally of personal names, thus reaching the star- |

tling conclusion that the two almost identical trademarks

in controversy are not confusingly similar.

i, Bio

The Court of Anal ‘composed - of line: C. J.

(retired), Martin, C. J. and Darr, dD. J. (retired), affirmed

ina brief per curiam opinion which approves the District -

Court’s findings of fact and conclusions of law and, repeats

the portion of the judgment of the District Court which

held ‘that the trademark ‘ John P..Dant’ is not confusingly

similar to appellant’ s [petitioner’s]’ trademark ‘J. W.

Dant.’ ’? The Court ef Appeals went on to say that the dis-

telet judge had ‘set forth succinetly the basis upon which.

he reached his conclusion.’? However, far from any rea:

soned discussion by the District Court, this fundamental

conclusion on the central issue in the case is mentioned

- only in the judgment;.the question of confusing similarity.

is not referred to anywhere in the memorandum, findings of

fact or conélusions of law “filed by the. District Court. .

The per curiam, opinion of the Court of Appeals also

< states that the District Court’s conclusions of law ‘‘are

”

documented with appropriate authority.’” ' But an exam-—

ination of the authorities cited by the District C ourt shows

that all the personal name cases to w hich it referred granted —

relief to. the complaining party. There is no documentation:

of ‘‘appropriate authority’’ denying ; all relief, as was done

here. Both courts below failed to consider the controlling

authority, including this Court’s decision in Thaddeus

_ Davids Co. v. Davids, 233 VU. 'S. 461 (1914), which deals with

“the identical issue of a personal name registered as a trade-

mark. ander the ten-year proviso of the Trademark Act of

1905 and’ infringed by another personal name used on the °

identical type of goods, and which holds that effective: equi-

table relief should be granted against such infringement.

- Neither the District Court nor the Court of Appeals so much

as mentioned that case. This is all ‘the more remarkable |

ee ae is on all fours with the instant case.

/

f

“

_ Reasons for Granting the Writ

A. This case raises’ important questions concerning

the construction and application of the Trademark Act pf

1946, 15 U, S. C. §§ 1051-1127, whieh have not been, but

should be, passed upon ‘by this Court. The failure of

' the. Court, to exercise its discretionary jurisdiction to

‘Teview the decisions of the lower federal courts in trade-

_ mark litigation has left this branch of the law in hopeless -

confusion, ‘to the signal disadvantage of litigants and the i

detriment of the purchasing public.

B. The basic issues of law. in this case were decided -

by the courts below. in a way which conflicts with con-

trolling decisions of this Court and also conflicts with

decisions of other circuits. |

I.

; The decision below is at direct variance with the holding

of this Gourt in Thaddeus Davids Co. v. Davids, 233 U. S.

461. (1914), and with decisions in other circuits. It denies

protection. to a personal name trademark in the face of a

plain infringement.

The Davids case ‘is directly in point. ‘The thark there,

like the petitioner’s here, was a’ personal name that had

been registered under the ten-year proviso of the Trade-

mark Act of 1905. This Court, reversing the Court of

Appeals for the Second Circuit, reingtated a District Court |

decree that enjoined the use of ‘‘Davids’’ for ink on the |

ground that it infringed upon. the registered trademark ;

7 ‘‘C, L.Davids”’ for the same type of goods.

The Davids case establishes two converse propositions.

- A personal name, once’ registered under the ten-year pro- .)

——*,

—_— ’

7

. ; : a

viso of the Trademark Act of 1905, is to be protected against

, infringement on exactly the same basis as any other trade- e

mark. And it is.no defense to the use of a confusingly

similar trademark that it consistséof the personal name of

_ the. infringer. 7

The Trademark Act of. 1905 represented a substantial

advance. in the law. Prior registration législation’ had on

provided no protection for personal names beyond that

which they enjoyed under unfair competition principles at |

“common law. The courts in the early common law cases

were reluctant to grant relief and protection was afforded

initially to personal names and descriptive terms ‘only:

_where there was proof of some extrinsic act. of unfair

competition in addition to the use of a confusingly similar .

mark. See Howe Scale Co.v. Wyckoff, Seamans & Benedict,

198 U.-S. 118, 135-36, 140 (1905); Brown Chemical Co. v.

*~ Meyer, 139 U. S. 540, 543-44, 547 fipeing. see also Singer

Mfa. Co. v. June Mfg. Co., 163 U.S. 169, 187 (4896). , That.

view has long since been iaedil It has been rejected

by the Restatement of Torts (&§ 740, 744 comment d),and

by the weight of authority. Regardless of its etymological

origin, a tradémark that prima facie would be incapable

of exclusive appropriation by a manufacturer or merchant’

because it ¢onsists of a personal name, or a descriptive or —

geographical term, is entitled to protection on the same

basis as any.other trademark if ‘as the result of substantial

_and exclusive use it has acquired a secondary meaning; i.*t.,

its primary etymological character -has been submerged

so. that it functions as a distinctive symbol identifying

goods emanating from a particulat source and impregnat-

ing them with its commercial -magnatism. See, e. g., - Cook

Chemical Co. v. Cook Paint & Varnish Co.; 185 F. 2d 365,

cul

. *

°

367 (8th Cir. 1950) ; 8. M, Spencer Mfg. Co. v. Spencer, 319 -

Mass. 331; 66 N. E. 2d 19 (1946); Stern Furniture Co. v.

‘ Stern, 52 Ohio L. Abs. 527, 83 N. E. 2d 804 (Ct. App. 1948),

afd, 152 Ohio St. 191, 87 N. E. 2d 351 (1949).

- The Trademark Act of 1965 made it clear that if such

a mark had been ‘‘in actual and e nd exclusive use** for the par-.

__ ticular period of ter years immediately preceding February

20, 1905 (the date of the statute), it was deemed to have

_ aequired a -secondary meaning and, was entitled to regis-

tration. 15 U. 8. C. § 85(b). Once registered, it it was to be

treated like any other trademark and was entitléd to full °

protection even as against use by another of his personal

hame, as in Thaddeus Davids Co. v. Davids, 233 We S. 461

(1914). one ie

The Trademark Act of 1946 carried the sili further.

Once registered, a personal name tradémark is measured

by the same rules as all other register réd marks, but five

years ‘of ‘‘substantially . exclusive and “continuous use”?

immediately prior to the filing of the application i is now

prima facie evidence of secondary meanirg and a sufficient

prerequisite for registration. 15 U. S. C. § 1052(f). The

peculiar limitation to a specific ten-year period, as. eee

by the Act of 1905, no longer applies. .

It is. thus plain that Congressional policy is to ace ord

: full rights to a ‘personal name registered as a trademark

regardless of its etymological character. The right of an -

-individual to use his own peérsonal name. to ientify: his.

business i is safeguarded by 15 U. S. C. § 1115(b)(4), which

lists as a specific defense t : a trademark infringeme nt claim

the following: ‘‘That th. use of ‘the name, term, or device |

charged to be an inftingement i is a use, dthe rwisé than as a

. trade or service mavk, of the party ’s individual name in

his own business . . .’’ (emphasis added).

re

The quoted passage from the-Act-of 1946 points up-an -

essential -distinction between trademarks and. business .or

trade names, A trade nanie. identifies the business, likey.

“John PB. Dant Distillery Co.,"’ while a trademark is Mie

identifying symbol fer the merchandise itself, like “Sohn

-P.Dant”’ bourbon whiskey. (The terms are de igd in the °

statute, 15 U.S.C. ¢ 1127.) rb is ho reason Why a com-

‘pany named ‘John PB: Dant “Distillery, Co."’ cannot put

*?

out Ww hiskey under tradenjurks such as ** Meadow Springs,

Old Hardesty,” “White Seal,” r **Bonbrook’——as the.

alleged predecessors of the wre ee corporation actually

hayé done (1%a- 117a, 127a-129a, 158a)—which. of course -

would not-infringe upon petitioner's trademark “J. W.

. Dant.’’ . ye es

What the courts below. wholly failed to apprehend | is "9p :

that the right of a man to use dus *own name ik bmnsitess

is a dloctrine that applies, if at all, only to the yame of the

business (the commercial or trade namie) and not fo the

brand name for a product. (the trademark). That is. the

(listinction so plainly written into the statute by Congress,

15 U.S.C. ¢ 1115(b)(4), supra. In other words, assuming

some need for the law to ac commodate every man in his

desire to use his own name as the name ‘of his business, it

does not follow that he is entitled to any special considera-

tion when it comes to using his own name as*a trademark

for his goods if someone else has priority in the adoption:

and use of that nanie. asa trademark

The leading: commentators all have approved the hold-

Ing and underlying principles of the Davi s case. Thus,

2 Nims, Unfair Competition and Trade-Marks 789 (4th ed.

1947 ), states : 8 |

ne ‘ ine

A ‘mark registered under the ten-year clause is

entitled to-protection from infringement just as is

any other trade-mark. .... This protection is not

~

Oe a : hi, :

restricted to the use of a aunt | in the. same form in -

which it is registéred. Any colorable imitation } will *

be considered an infringement.’’

In 4 Callmann, Unfair Competition and ‘Trade. Marks

2107 (2d ed. 1950), the author states : :

‘**The owner of a mark vested with secondary mean-

ing and registered pursuant to the ten-year clause are

was entitled to the’same protection that any other

trade-mark owner could claim.’’

Professor Derenberg i in his treatise,- Trade-Mark Pro-

tection and Unfair-Trading 356-57 (1936), wrote:

_ ** Wherever [a family] name has acquired an indisy, u-

table ‘secondary meaning’...no other person, regard- wore

less of whether he bears‘the same name, may use the

name in a trade-mark sense for the same class’ of

goods. This principle was-laid down by the Supreme

Court in the Darids case which concerned the family

name “Davids,’ registered ‘under ‘the ten year

clause.’’. re § Ae

_ The courts below completely ignored Davids and peti-

tioner’s rights under the federai trademark statute. _They

religd on ancient precedénts of this Court, such as Good-

year’s India Rubber Glove Mfg. Co. v. Goodyear Rubber

Co., 128 U. 8. 598 (1888) ; Brown Chemical Co. v. Meyer, 139 aa

U.S. 540 (1891); and Howe Scale Co. v. Wyckoff, Seamans

& Benedict, 198 U.S. 118 (1905). They paid no attention to

the fact that the Court had specifically repudiated Howe

_ Scale and other ‘earlier cases’ in L, E. Waterman Co, v.

Modern Pen Co., 235 U. S. 88, 94.(1914), so that they have.

not mpranetee good trademark law for almost fifty

_years.* In the cited ease, Mr. Justice ilolmes, writing for

the Court, stated (235 U.'S. at p. 94): é A a | i

| n requir- |

* The Waterman case granted only a qualified injunet

ing the use of an explanatory ‘phrase, but the complainant's mark

had been registered under the Trademark Act. of 1881, which,

unlike the Trademark Act of 1905 construed in Davids, provided no ~

protection over and above the common law. Moreover, pétitioner

in this case has received no relief whatsoever. .

11 |

Peas defendant lays hold of language tn Howe Seale

Co v. Wyckoff, Seamans & Benedict, 198 U.S. 118, 140,

and in other books, to the effect that courts will not

interfere with the use of a party’s own name ‘where

the only confusion, if any results from a sunilarity

of the names, and not from the manner of the use.’

But, whatever generality of expression there may

' have been in, the earlier cases, it is now established

that when th* use of his own name by a later competi-

tor will and does lead the public to understand that

those goods are the product of. a eorcern already.

established and well known under.the name, and

when the profit of the confusion is.known ¢, and, if

that be material, is intended by, the later man, the: _

law will réquire him to take reasonable precautions

to prev ent the mistake. |

The Sethi below also is in conflict with numerous *

poremmes name cases in other circuits, 0.g.:

John B, Stetson Co. v. Stephen L. Stetson Co.;

85 F. 2d 586. (24° Cir. 1936), cert. denied, 299

U.S. 604 (1934);

hen Coty, Inc. v. Parfums de Grande Luze, Inc., 298

Fed. 865 (2d-Cir. 1924) ;

| Warner Bros. Co. ve Wiener, cate tea ‘635 (2d.

Cir. 1914) ¢

Browne-Vintners Co. v. National Distillers &

Chemical Corp., 151 F. Supp. 595 (S. D. N. Y.

~ 1957); .

_* Hat Corp. of America wD. L. Davis Corp. 4F.

oe Supp. 613 (D. Conn. 1933) ;

J. F. Rowley Co. v: Rowley, 18 F. 2d 700 (3d

‘ Cir. 1927);

Gamlen Chemical Co. v. Genin, 79 F. Seon 622

' (W. D. Pa. ¥948);

- Henderson v. Peter Henderson & Con, 9 F. 2d -

- 787 ( 7th — 05)

e._

L @

.

ie,

4

,

Stark v. Stark Bros. Nurseries & Orchards Co.,

anes 257 Féd. 9 (8th Cir. 1919), aff'd, 955 U. S. 50

(1921). '

“The District Court i in the instant case relied upon Stir,

Baer € Puller Dry Goods Co. v: American Piano Co., 211

Fed, 271 (8th Cir. 1913), which cites Goodyear and asso’

Scale/repudiated by this Court in Waterman the following

on furthermore, the Stix case was decided prior to this

Court’ 8 decision i in the Davids case and did not even mention

whéther the complaining party’s mark was registered.

The decision below takes the benefits of a valuable mark

away from petitioner end makes a shambles of the law

of trademarks in the Sixth Circuit. This is not an isolated;

instance; in two other very recent cases thie Sixth ‘Circuit

denied relief for trademark infringement and unfair com-

petition on the basis of reactionary reasoning that is com-

pletely out of step with current developmgnts in’ this field.

of the law. Crane Co. v. Crane Heating & Air Conditioning

Co., 299 F. 2d 577 (6th Cir. 1962) ; Jack Daniels Distillery

’ Inc.v. Hoffman Distilling Co., 298 F. 2d 606 (6th Cir. 1962).

See also S. C. Johnson & Son, Inc. v. Johnson, 266 F. 2d

129 (6th Cir: 1959), cert. denied, 361 U. S. 820 (1959).

_ We repeat that the apes below is in direct conflict

with the only decision of ‘this Court that is precisely in

point because it involves a personal name registered as

' ©The same principle i is applied im the cases denying the right

/ to registration in the Patent Office of confusingly similar personal

‘+ names, e. g.: J. B. Williams Co. v. Williams, 48 F. 2d 398 (C. €.

‘P. A. 1931) ; In re Hoover, 123 U. 8. P. Q. 394 (T. T. A. B. 1959) ;

Gir. rd-Perregaur & Cie., 8S. A. v. Perregaur, 122 U.S. P. Q. 95

(Cem 1959) ; Gerber Products Co. v. Gerber, 109 U.S. P. a. in

r 1968). j

\

>.

\

13

a trademark*under the ten-year provisio of the Trademark

Act of 1905, Thaddeus Davids Co. v. ere 233 U. S. 461

(1914).-

II

Since this Court ‘so rarely accepts a trademark case

for review, its old precedents are out of line with fhe eur-

rent.state of the law as it has developed in the lower federal

courts to meet the complex needs of a constantly growing

economy. It is of the utmost commeréial importance that

the Court deal with the substantive issucs of trademark

law under the Act of 1946, which have not had the benefit ;

‘of any elucidation whatever by the: Supreme Court.® Only

this Court can dispel the confusion which now prevails,

to the lasting injury of the business community and the

consuming public, callously deceived by the unethical [pene '

tices of deliberate and wanton infringers.

* This C ourt never ve passed upon.a substantive question under

the Trademark Act of 1946. The only case under this ‘Act’ that

the Court has aceepted for review involved the technical questiori

of extraterritoria} jurisdiction. Steele v. Bulova Watch Co., 344

U.S. 280 (1952). During .the past twenty years, the Court has

decided only four trademark casts, -none of which. dealt with the

basie substantive questions of the law of trademarks. In addition

to Steele, these cases were: Champion Spark Plug Co. v. Sanders, |

331 U. S. 125 (1947) (right to selk reconditioned products under

original manufacturer’s trademark) ; Mishawaka Rubber & Woolen

Mfg. Co.v. 8.8. Kresge Co., 316 U. S. 203.(1942) (accounting of ©

profits) ; and Pecheur ‘Lozenge Co. v. National Candy Co., 315 U. S.

666 (1942) (choice of state as against federal law). .

The last time this Court passed upon the merits of a trademark

infringement action was almost 25 years ago, in Armstrong Paint &

Varnish Works v. Nu-Enamel Corp., 305 U. 8. 315 (1938).; The

most recent eases in this Court dealing: with trademarks that con-

sist of personal names—the kind of mark involved , in the instant

case—were decided almost 50 Bg ago: I. E. Waterman Co. v.

Modern Pen Co., 235 U. 8. 88 (1914) ; Thaddeus re

Davids, 233 U: 8. 461 (1914). ~ 1:

Co. v. -

14

3 The dedialén below sebvesents such a sharp departure

‘from the great weight of authority in personal name cases

as to call \for: corrective action by this Court. A failure -

'_ to act in this easé to bring the law up to date would result

in the deprivation of equity from trademark owners in the ;

Sixth Cireuit and those other circuits which ‘still eling to .

the same archaic notions. *

The importance of this field of the ie is 5 indicated by

the large number of personal name trademarks that are so

‘ well-known that they come instantly to mind from industry

after industry, for example: ‘‘Chrysler’’ and ‘‘Ford”’

automobiles ; “du Pont”’ and ‘‘Dow”’ chemicals ; ‘*Parker’’

‘and “Waterman” pens; “Squidb”’ and ‘‘Merck’’ drugs;

Steinway’? and |‘Knabe”’ pianos; ‘‘Stetson” ‘and .

‘‘Dobbs’’ hats; “Coty” and ‘‘Chanel’’ perfumes ; ‘*Kel-

loge’? and ‘‘Post’’ cereals; ‘‘Campbell’s”’ soups and

) ‘*Heinz’’ foods; ‘‘Johnson’s’”’ waxes ; “Crane” plumbing

- equipment; ‘‘ Williams”? shaving cream; ‘‘Remington”’

typewriters ; and “Smith Bros.” cough drops. . And, of

course, there are many personal names used as trademarks

in. the alcoholic’ beverage industry, in addition to peti-

tioner’s ‘J. W. Pant.’’* The great weight of authority, |

- favors adequate protection for trademarks in this category,

even as against other individuals bearing the same or con-

fnsingly similar names. We respectfully submit that it, is

incumbent upon this Conit to dispel the confusion i in this -

field by instructing the cirenits how they shall apply the

rule of law which Congress’ obviously intended to be

‘uniform thronghont the country. (See 15 U.S.C. 6 1197,’

definitions of “Intent of Act”’ and “‘Commeree. bd

e Indeed, some of the best aeek aleoholie beverage trademarhe

consist of personal names, snch as “‘T. W. Harper.”’ “Hiram “© ”

Walker. ” ‘! Seagram’s, %” **Dewar’s,’’ “*Gordon. ”” “Gilbev: ” ‘Haig ey

& Haig,”’ ‘‘Barton,’’ **Henblein,”’ “*Pabst, ”” “*Sehlitz,’’ ‘‘Ballan-

tine, "” and many. others.

M1 _?

The judgment below cannot be gustained on the ground “°

of laches-and agquiescence suggested by the District Court

(48a-49a),. because of several settled principles | of trade-

~ mark law that-the courts below failed to’ apply.

’ The corporate respondent acquired its alleged rights

-*,. inthe trademark ‘‘John P. Dant’? by means of an assign-

ment dated only a few weeks before’it commenced this

action for a declaratory judgment (139a-140a) and when

it already was on notice from petitioner of its claim of in-

fringement (12a). For a périod of less than two years,

the title to the ‘John P. Dant”’ trademark had been

held by John P. Dant, Jr., the individual respondent. His

‘assignor Was a corpcrniion of similar name, which had been -

‘owned by John P. Dant, Jr. and his two sisters. Sliortly |

prior to the sale’ of the stock of this corporation (to an

- itidividual who. had been its principal customer and who

. changed its corporate. name), a purported assignment of

the trademark to John’ A Dant, Jr. was a weasel (157a-

138a)..

* John.P. Dant, Jr., was not engaged individually i in the

} whiskey. business ‘at any time during the period he allegedly .

held title to the mark, and the corporate respondent never

has owned a whiskey distillery or beeri engaged in distilling

whiskey (77a-78a).* The purported assignmetts. of rights ©

in “John P. Dant” as a trademar —first from the corpora-

tion now known as Old Boone Distillery Co. to John P, Dant,

Jr., and then from John P. Dant, Jr. to the ee

og + O'R he Court of Appeals demonstrated its total lack of compre-

‘ hension of this case by stating in its opinifn that respondents _

‘‘assert their right to use the trade-mark nnder which the whiskey”.

“of appellee’s distillery is is marketed.’ The appellee below is the

- respondent corporation here; this is the corporation that jst ilis

no whiskey and never hts owned any whiskey distillery.

ae og

ame 16 >”

eorporation—were naked transfers unaccompanied by any . |

physical assets or other indicia. of the goodw ill of the busi- ©

‘ness in connection with which the trademark allegedly’

- was used. Such a transfer is an assignment -in; gross, |

‘which is wholly ineffective to vest any rights in the. pur--

ported assignee, regardless of a.formal recital of goodwill.

Kidd v. Johnson, 100 U. S. 617 (1880) ; Bulte-v. Igleheart

Bros., 137 Fed. 492, 499 (7th Cir. 1905) ; MacMahen Phar

acal Co. v. Denver Chemicat Mfg. Co., 113 Fed. 468, ror

. (8th Cir. 1901). It i is the fact and not the recital that con-

trols; and it cannot be controvertéd on this record that the.

transfers were in gross.

\ The respondent corporation: therefore is not entitled -

“te the benefits of any rights that the former corporation

might have built up as the result of the failure of petitioner’s oe

predecessor to object to that corporation’s minor use of

‘John P. Dant”’ at anearlier date. The fact that a tradeé-

mark owner may have been guilty of laches with respect

to a different party is not an excuse on which an infringer

may rely. Anheuser-Buisch, Inc. v. Budweiser Malt Products

Corp,, 287 Fed. 243 (S. D, N. Y. 1921), aff’d; 295 Fed.*306"

(2d Cir. 1923); see also, National Lead Co. v. Wolfe, 223

F. 2d 195, 204 (9th , Cir. 1955), cert. denied, 390 U. S. 883

~ (1955); Great Atlantic & Pacific Tea Co. v: A: & P. Radio.

Stores, Inc., 20 F. Supp.-703. (E. D. Pa. 1937). Sinee the

respondent corporation’s alleged rights in the ‘‘John P.: '

‘Dant”’ trademark date back only to October 11, 1955, mani-

festly it is in no position to invoke the principles of laches,

acquiescence or estoppel against petitioner ‘in this aetion,

which was “commenced six weeks later, on November 21, |

1955. ee ee, ao oe |

' Furthermore, the judgment describes the individual '

respondent as the ‘‘owner”’ of the trademark “John P.

Dant’’ and the corporate respondent as his ‘texclusive _

PP

17

licensee.’’ Although a trademark may be licensed, super-’

_ Vision and control by. the licensor are essential prerequi-

sites to the validity of the license. Everett O. Fisk & Co.

v. Fisk Teachers’ Agency, Inc., 3 F. 2d 7 (8th Cir. 1924) ;-

Lea v. New Home Sewing Mach, Co., 139 Fed. 732

(E.D.N.Y. 1905). ‘‘[A] bare license is a fraud upon the

public and unlawful.’ Societé Comptoir de L’ Industrie

Cotonniere- Etablissements Boussac. v. Alexander’s De-:

partment Stores, Inc., 299 F. 2d 33, 35 (2d Cir. 1962).. The.

Trademark Act of 1946, which is declaratory of the com-

mon law of trademarks in this respect, requires control

over ‘‘tlie nature and quality of the goods... in connection

with.which the mark. is used.’’.15 U. S. €.°¢§ 1055, 1127.

The record of this case -is totally devoid of any evidence _

whatever to show even an attempt by John P. Dant, Jr. °

to exercise the required control over the goods of the-re- ,

_ spondent corporation; indeed, the ease was tried on the

theofy that the. respondent corporation was the owner:

rather than the licensee and the judgment is the ‘only place

_ where the District Court described it as a licensee.*. .

_ Finally, the corporate respondent’s alleged .‘‘use’”’ of

“John P. Dant’’ as a trademark is fraudulent, thus for:

. feiting any-right to relief it might otherwise have had, |

because the trademark is applied to goods that the eorpora-

; pe : seen

* The corporate respondent sued as- owner 6f the- trademark

“*‘John P. Dant,’” even seeking an order from the coutt directing

registration of the mark. (9a) which only the ‘‘owner’’ may do

-under the statute. .15 U.S. C. § 1051. The findings and conclusions

of the District Court recited the assignments and upheld the eor-

porate respondent’s rights. In the judgment, however, the Dstrict

Court decreed. that the individual respondent John /’. Dant, Jr. #

is the ‘‘owner”’ of the trademark and that the corporate respondent

is his ‘‘exelusive licensee.’? The Court ‘of Appeals again demon-

strated its failure to understand the issues in the case; it- repeated

the characterizations of ‘‘owner’’ and ‘‘licensee’’ set forth in the

- judgment, ‘but simultaneously approyed the District - Court’s

- “appropriate and correct’’ conclusions of law despite the fact that

they say nothing whatever about a license and treat the corporation —

_ as the owner of the mark. —

18

tion does not make or own. The statutory definition, of a

‘trademark (again declaratory of tlie common law) includes

names, symbols and the like that are ‘‘adopted and used. .

by a manufacturer or merchant to identify his goods and

. distinguish them from those manufactured or. Sold by

others.’’ 15 U.S. C. § 1127 (emphasis: added). The whis-

key’ to which the respondent corporation, affixes. labels

bearing the trademark ‘‘John P. Dant’’ is owned by the

same individual who purchased the stock of Old Boone

Distillery Co. and ‘who -was ‘that eorporation’s principal

«customer when it was still owned by J ohn P. Dant, Jr. and.

mémbers of his family; the whiskey is simply sent to the

respondent corporation for bottling and the affixation of

‘labels bearing the trad@ark (64a, 67a-73a). ° This is a

perversion of the function of a trademark and nullifies’

any rights. that otherwise might have been acquired in it.

In re Toleilo Porcelain Enamel Products Co., 58 F. 2d 423 .

(C..C. P. A. 1932); National Comics Publications, Inc. vy.

Sive, 115 U.S. P. Q. 393 (Comm’ r. 1957). Admittedly. the

‘individual who is described in the judgment, as the owner of

'. the mark has made no trademark use of it since the assign-.

_ ment. Thus no trademark use whatever is made of the term

claimed by —* either ead the corporation or by the

individual. - /

Even if tlie assignments of. the “John P. Dant”’ mans.

mark were considered valid, the respondent corporation

still could claim no rights in it because it i being used so

as to misrepresent the source of the goods; nar it suggests

that the respondent corporation vouches for ‘the goods

either as manufacturer or merchant when in fact it neither ~

makes nor sells them. This, too, is a basic principle of

_ trademark law which was completely ignored below: ‘Man-

hattan Medicine Co. v. Wood, 108 U. S. 218, 223 (1883) ;

[. 4 writ S. C. § 1064.

Fn summary, respondents had no standing aioe er to

support a judgment ‘gTanting affirmative rights to use the

| trademark ‘John ‘P. Dant”’ as against petitioner; and

| neither of the. respondents had any basi& -for asserting

equitable — ies net petitioner’s claim of infringe-

ment.”

Conclusion.

For the hoitnapeteie reasons the writ of certiorari should

_ be premen. ;

Respectful, submitted, ©

Mitton Hanpier, —

_ Srpney A. Diamonpn,

425 Park Avenue

New York 22, N.\Y.,

‘Attorneys for Petitioner.

‘Kayr, Scnoten, FierMAN, Hays & HANDLER | ee

, 425 Park — Nee ana SG oo Rays

- New York 22, N. Y. '

NicHois, Woops, Mani & GINTER

900 Tri-State Building _

Cincinnati 2 2, Ohio

Josern J. Kaptan

Ben F. Wasuer .

Marion E. Taylor Building ;

Louisville 2, Kentucky

Of Counsel

‘May 4, 1962

20 -

" Appendix A

STATUTES INVOLVED

- Trademark Act of 1946 (Lanham Act), 60. Stat. 427 7 (1946)

See. 2, 15 U.S. C. § 1052. No trademark by which the

goods of the applicant may be distinguished from the goods

of others shall be refused registration on the principal.

register on account of its nature unless ane |

'

. * * > eo -*

(e) consists of a mark which, (1) when applied to the goods *

_ of the applicant is merely descriptive or deceptively mis-

descriptive of them, or (2). when applied to the goods of

the applicant is primarily geographically ‘deseriptive or.

deceptively misdescriptive of them, except.as indications

of regional origin may be ‘registrable under section 4

hereof, -or (3) is primarily merely a surname;

(f) éxeept as expressly excluded in paragraphs (a), (b),

(¢), and (d) of this section, nothing herein shall prevent

the registration of a mark utbed by the applicant which has

become distinctive of the applicant’ s goods in commerce, -

The Commissioner may accept as prima facie evidence

that the mark has become distinctive, as applied to the

applicant’s goods in commerce, proof of substantially exelu-

‘sive and continuous-use thereof as a mark by the applicant

in commerce for the’S years next preceding the date of the

filing of the-application for, its registration.

See. 5, 15 U. S. C. § 1055.. Where a registered nel or

a mark sought to be registered is or may. be used legiti-

mately by related companies, such use shall inure to the

benefit of the registrant or applicant for registration, and |

such use shall not affect the validity of such mark or of its’

registra‘ion, provided such mark is not used in such a

manner as to deceive the public.

eo

See. 7(b), 15 U. S.C. § 1057(b). A, certificate of registra-

tion of a mark upon the principal register provided by this

‘©. 21. ye. 9S nee

Act shall be prima facie evidence of. the validity. of the

registration, registrant’s ownership of the mark, and “at

-registrant’s exclusive right to use the mark in commeree

in connéetion with the. goods or services specified in’ the

certificate, subject to any conditions and limitations stated

therein.

See. 32(1); 15 UL S.C. S1114(1).) Any person who shall,

in commerce, (a) use, without the consent of the registrant,

any reproduction, counterfeit, copy, or colorable imitation

of any registered mark in connection with the sale, offering

for sale, or advertising of any goods or services on or in -

conncetion with which such use is likely to cause confusion

“or mistake or to deceive pufehasers as to the source of

origin of such goods or services; or (b) reproduce, coun- °

terfeit, copy, or colorably imitate any such mark and apply

such reproduction, counterfeit, copy, or coldrable imitation

to labels, signs, prints, packages, “wrappers, receptacles,

or advertisements intended to be used aper or in connection”

With the sale in commerce of such voods or services, shall He

liable to a-civil action by the registrant for any or all of the -

‘remedies hereinafter provided, except that under subsec-

tion (b) hereof the registrant shall not be entitled to recover

profits er damages unless the acts. have been eonmnitted

with knowlé dee that sueh mark is intended to be usi d. to

cause confusion or niistake or to deceive purchasers.

See. 33(b), 15 UU. &- €. 1115(D). If the right

_to use ‘le hist os mark lias become iticontestable under:

section’ 15 hereof, the certificate shall be conelusive ev idence.

of the registrant’s exclusive ‘right to use the registered

-mark'in-commeree on or in connection with the goods or

services Specified in the certificate subject to any conditions

ov limitations stated therein except When one of the follow-

-ing defenses or defects iv established :

; .

-

* e * oe + .

. ‘

(4) That the use of the name, term, or device charged

to be an infringement is a use, otherwise than as a trade’

or service mark, of the party's individual name in his

x, 4 —5

’ hn

ra

*

- .gwn business, or of the individual name of anyone in

privity with such party, or of a term or device which 4s __

descriptive of and used fairly and in good faith only to

describe to users the goods or services of such party, or

their geographic origi , 3

: -. *- * oe * . fe

_ See. 45, 15 U.S. C) 6.1127. In the construction of this

Act, unless the contrary is plainly apparent from the con-

text:

r e- . 2 , ° ‘ e

Commerce. Phe word **commerce’? means all commerce

_which may lawfully be regulated-by Congress. .

o . — ; i . * eo 32 o

Related company. The term ‘‘related company’ means

any person’ who legitimately controls or is controlled by -

the registrant or applicant for registration in respect to the,

nature and quality of the goods or services in connection

with which the mark is used.

Trade name, comme rcial ‘name. The terms ‘trade -

name’? and ‘‘commercial name”’ intlude individual names

and surnames, firm names and trade names used by manu-

facturers, ‘industrialists, merchants, agriculturists, and

others to identify their businesses, vocations, or occupa-

tions; the names or titles lawfully adopted and used by per-

sons, firms, associations, corporations, companies, unidns,

and any manufacturing, industrial, commercial agricultural,

or other organizations engaged in trade or commerce and

capable of suing and being sued in a court of law.

Trade-mark, The term ‘*trade-mar ”* includes any

word; name, symbol, or device or any combination thereof

adopted and used by a manufacturer or merchant to

- identify his goods ‘and distinguish them from those manu-

| factured or sold by pthers. ig

Colorable’ imitation... The term ‘‘colorable imitation”

includes any mark which so recembles a registered mark as

7

4>-¢ ~

¢

. qQ. - -

23

to be likely to cause confusion or mistake or to deceive pur-..

chasers. | : <a

. . * , ae ° E *, .

Inte nf of Act. The intent of this Act is to re vulate ¢ com-

“mere ‘oe wifhin the contro] of Congress by making actionable

the deceptive and misleading’ use of marks in such com.

“merc®; to eeilnes registered marks ised in sueh com-

merce from interference by State, or terriforial legislation ;

te protect persens engaged in such commerce against unfat:

- competition; to prevent fraud and deception in sueh eom-

meree by the use of reproductions, copies, counterfeits, or —

colorable imitiétions of registered marks;.and to provide

rights and -remedies stipul: ited by treaties and conventions

respecting trademarks, trade names, and unfair competi

tion entered into hetween the United States and foreign

mations. :

ee Act of 1905, 33 Stat. 724 (1905)

See. 5,15 UL S.C. 085. That no mark by which the

goods of the owner a the mark may be distinguighed from |

-

other goods of the same class shall be refused registration

as w trademark on account, of the nature of such mark

unless such mar k

‘ . J o. 2th on :

(b) Consists-of or comprises the flag or coat of arms or

other insignia of the United States: or any simulation

thereof, or of any State or municipality or ef any foreign — .

nation, or of any design of picture that has been or may

hereafter be adopted by any fraternal society as its emblem,

or of any name, distinguishing mark, character, emblem,

colors, flag, or banner sdopted by any institution, organiza-

tion, elub, or society which was intorporated in any State

in the United States prior to the date ‘of the adoption and

‘use by the applicant: Provided; That said name, distin-

guishing mark, tharacter, emblem, colors, flags or banner

was adopted and publi¢ly used by said institution, organi-

zation, club, or society prior to the date of adoption and use

4 ,

by the applicant: Prorided, That trade-marks which are

identical with a registered’or known trade-mark owned and

in ase by another and appropriatedto merchandise of the

same descriptive properties, or which’so nearly resemble

a registered or known trade-mark owned and_in ase by

another and appropriated to merchandise of the same

deseriptive properties as to be likely to cause confusion

or mistake in the mind of the public or to deceive pureha-

sers shall not be registered: Provided, That no mark which

consist¢ merely in the name of an individual, firm, corpora-

tion, or associatjon not written, printed, impressed, or

woven in some particular or distinctive manner, or in asso-

ciation with a portrait of the individual, or merely in words

or Jevieés which are descriptive of the goods with which

they are used, or of the character or Gvality of such goods,

or merely a geographical hame or term, shall be registered

under the terms of Ahis act: Provided further, That no

portfait of a living individual may be registered as a trade-

‘ mark except by tlie consent of such individual, evidenced

by an instrument in wrifing,“nor may the portrait of any

deceased President of the United States be registered dur-

ing the life of Iris widow, if any, except by the consent of the

widow evidenced in sueh manner: And provided further,

That nothing herein shall prevent the registration of any

mark used by the applicant dr his predecessors, ontby those

from whom title tothe mari: is derived, in commerce with

foreign nations or among the several States or with Indian

tribes which was: in actual and exclusive use as a trade-

mark of the applicant, or his predecessors from whom he

derived title, for ten’ years next: preceding - February

twentieth, nineteen hundred and five: Provided further,

That’ nothing herein shall prevent the registration of a

trade-mark otherwise registerable beeause of its being the

name of the applicant or a portion thereof. © Sate

Appendix B

Memorandum Opinion of the United States District Court

for the — District of Kentucky

\IN THE ne

vu NITED ST aTés DISTRICT COURT

ror THE W EXTERN Distaeicr og Kew NTUCKY

at Louisville

Joux P. Daxr Distinzeny Co.

Plaintiff, = fla

v8, ; 9

SénENtey Distitiers, Ixc.,

Defendant and Third-Party No. 3044

Plaintiff,

vs. .

Jonn P. Danty Jn., ‘

‘Third-Party Defendant.

MEMORANDUM

This action was instituted by John P. Dant Distillery”

(o., against Schenley. Distillers, Inc., by the filing of a com-

plaint November 21,°1955. Plaintiff inveked jurisdiction

of this Court on diversity of citizenship between the plain-

1iff and the defendant.. Plaintiff sought a ‘declaration of

rights with respect to the trade-mark under which it mar- ’

kets whiskey and its'corporate- name, and souglit injunctions -

_ protecting it in the continuation: of its alleged cient to use

the trade-4nark and its corporate ae

Defendant filed its answer April \4, 1957, initia in

detail the material averments. of the complaint and by

counterclaim it sought an injunction against plaintiff and

C

ex its labels in the sale of whiskey, an

against John P. Dant, dr. snialiei of plaintiff corpora-

tion, who was made a third- party defendant. The. injune-

tion sought py defendant on its counterclaim and third-

. party complaint would enjoin the alleged infringement upon

‘registered trade-marks of defendant and also enjoin plain-

“tiff and ‘third-party defendant from alleged unfair com-

petition with defendant by the use of the name ‘‘Jobn P.

‘Dant’’ or any use of the name ‘Dant’’, alone or in com-

bination, as trade-marks or trade names in connection

with the. distilling and marketing of, whiskey. |

--Plaintiff’s reply to’ defendant’s counterclaim and the

.answer of John P. Dant, Jr., third-party defendant, to the

" third- party complaint was filed February 12, 1958, and

contained two ‘defenses. Plaintiff admitted the facts con-

stituting jurisdiction of the counterclaim’ and denied the

reniaining material allegations of the counterclaim. Plain--

tiff alleged affirmatively that the defendant was secking

to appropriate to itself the exclusive use of the family

name ‘‘Dant’’; that ‘‘John P. Dant’’ ‘was a\ part of the

corporate name of plaintiff, the name of its trade-mark on

f | the persona nal name of

third-party defendant and its current president. It was

alleged that the- use of the common surname ‘‘Dant’’ by

the plaintiff, the third-party defendant, ‘and their. prede- -

cessor users of said trade and corporate name was and jiad

~ always been reasonable, honest and fair, and that tle labels

and corporate name were not identical with or an imitation

of defendant’s trade-mark “J. W. Dant.’’ It was alleged ©

that concurrent and competing use of the marks ‘‘Jolin P.

Dant’’ and ‘‘J. W. Dant’’ had existed in the whiskey busi-

ness for 50 years without protest. In the second defense it

was alleged that, by reason of the business relations and

the ownership of stock of the Plaintiff's predecessor by

George W. Dant, the president and principal owner of the

stock of defendant’s predecessor corporation, the defend-

ant was estopped to noW question the, of the plaintiff

and the third-party defendant to use and continue to use the

corporate name ‘‘ John P. Dant Distillery Co.,’’ and to use

‘ the trade-mark ‘John P. Dant”’ on its whiskex,

The case was tried to the Court without a jury. on

December 17 and 18, 1958, and final briefs were submitted

~-

-

by counsel for the parties on June 3, 1960. |,”

Fixpines or Fact.

From the testimony. heard @t the trial, the exhibits, and.

_. the exhaustive briefs fil y. counsel, the Court makes the

following: findings of fact: |

-Y. The plaintiff, John P. Dant Distillery Co., is accor-

poration created under the laws of the State of Kentucky,

and was incorgprated February 25, 1946, under the cor-

porate mame of ‘‘John’ P. Dant Distributing Co.’*; by

amendment, its corporate name was changed to ‘‘ Jolin P.

Dant Distillery Co.,** bn December 15, 1954. It has used

aud as a trade-mark in advertising and packaging \its

the name ‘“John P. Dant’’-as a part of its “teeing name

products during its entire corporate existence

2. John P. Dant; Jr., president of plaintiff corporation -

since its organization and third-party defendant: in this

- action, is the son of John P. Dant, Sr., and the grandson

of Joseph Washington Dant (hereinafter referred to as

J. W. Dant). He became associated with his father in the

whiskey business jin Louisville, Kentucky, in 1913. . When

the ‘John P. Dant Distillery Company, Ine., “located at

. Meadowlawn, Jefferson County, Kentue ‘ky, was organized

November 28, 1933, John P." Dant, Jr., was one of the

incorporators ‘and vice-president of the corporation, wv pon

Ky

the death of his father’on April’ 1871944, ‘he betame presi- _

dent.of the John P. Dant Distillery Company, Ine., which —

office be held until February, 1954, when he and his two

sisters. sold their interest in the corporation to R. L. Buse

of Cincinvati, Ohio. John P. Dant, Jr,,~was one of the

ineorporators of the John P: Dant Distributing Co., in

1946, which later became the John P. Dant Distillery Co.,

plaintiffin ‘action.

\

.

x.

3. John P. Dant, Sr., was ore of the seven sons of

” J. W. Dant and a brother of George W ashington Darit |

_ (referred to herein as George W. Dant). - From’ 1875 to

'* 1883, he worked as a distiller, for his- father at the J. W.

-Dant Distillery at Dant, Marion County, Kentucky. In.

1890, he began operations in Louisville as the ‘Pioneer

Bottling House,’’ later changed to ‘John P. Dant,’’ and

shortly afterward became a partner in the firm of Dant

and Carter. From 1912 to 1922, he was connected with the

Smith Distillery Company at Chicago, Marion County,

Kentucky; he was president and a major stockholder of

the company. When the John P. Dant Distillery Company, *

Ine., ‘was organized in 1933, he.was one of the incorpo-

rators, became president, and remained | in that. Position

until his death in April, 1944. .

4. The John P. Dant Distillery Uiaeie, lee. ‘was

incorporated November 28, 1933, and operated a distillery

at Meadowlawn, Jefferson County, Kentucky. Following

the sale of the interest’ of John P. Dant, Jr., and his two

sisters in the corporation in February, 1954, its articles :

of incorporation- were amended and its corporate name

became “Old Boone Distillery Co. ,”? on December 10, 1954.

a By a written assignment datéd February 15, 1954,

the John P. Dant Distillery Company, Inc., transferred to

John P. Dant, Jr., the trade- mark ‘‘ John P. Dant”, together

_ with the good will of the business of the John P. Dant

Distillery Company, Inc., ,in connection with which the

-frade-mark ‘‘John P. Dant’’ was used. —

By a writing dated October 11, 1955, John P. Dant, Jr.,

; _transferred/ and assigned to the John P. Dant: Distillery

Co. (formerly John P. Dant Distributing Co.) the trade-

imark “‘John P. Dant’ and the good will of the business |—

with which that mark was used, with the provisioh that

upon the termination of the conneetion of John P. Dant,

Jr., with the John P. Dant Distillery Co., or upon his

death, the corporation was to transfer and assign the

trade-mark to John P. wail Jr., or Me personal repre-

sentative.

<>

29

6. J. W. Dant died i in 1902 and, in 0 part his will pro-

vided :

**I desire that after my death no whiskey Subse-

quently.made be branded with my name, the use.of

which as a brand for whiskey shall then’ cease,

except that any contracts previously made shall be-—

carried out in good faith, and even in the absence

of my outstanding contracts should F die during’ a

distilling season, the product of that season's run

may be branded as. heretofore.”' a

4

7. Upon the death of. his father, J. W. Dant, in 1902;

George W. Dant-became president of The Dant Distille ry

Co., Ine., ut Dant, Kentucky, and remained. as president

and controlling stockholder until his death on April 25,

1943. He was also # stockholder in the John P. Dant

‘Distillery Company, Ife., asd. his will, in part, provided: -

se7 desire thai all interest of value that may be *

found in my possession in the John P. Dant Distillery

‘Company, Inc., go to the living heirs of my brother

John, at cont or market, whichever is the lower,’’

"8. December 27, 1897, the J. W. Danit Distillery ai

Dant, Kentucky, was incorporated under the name of **The

Dant Distillery Co., Inc.,’’ with J. W. Dant as president.

The other inedrporators were four of his sons: Joseph

Bernard, Thomas Sidney, William Wallace, and George

W. Dant. As stated above, George W. Dant became presi-

_ dent in 1902. The Dant Distillery Co., Ine., obtained ‘two -

trade-mark régistrations. “The first. one was for the brand

name “J. W. Dan€’’ in seript form, No. 320,981, dated .

January 15, 1935, for whiskey, and ineluded a design of

four kernels of corn in which the name ‘* Dant’’ appeared

. and the words ‘‘ Est‘d in 1836, * The second registration

was for the brand name ‘‘J. W. Dant”’ in bléck form, No.

376, 057, dated March 12, 1940, for whiskey.

9. Subsequent to the death of George W. Dant in 1943,

the assets, stock, and trade-marks of The Dant Distillery

30

vo. Inc., were acquired by United Distillers of America, —

Ine., and United Distillers of America, Ltd. ‘

10. The defendant, Schenley Distillers *1¢., is a cor- -

poration created under the laws of the ¢ ute of: Delaware.

On March 5, 1953, defendant acquired*by assignment from

United Distillers of America, Ine.; and United Distillers of

America, Ltd., ail of the assets and good will of The Dant

Distillery Co., Ine., including the corporate name and the

trade-mark ‘J. W. Dant’’, the. registrations thereof, and

the good will of the business connected therewith.” Ort’the °

-same date, March 5 0, 1953, ‘the’cor porate name of The Dant

Distillery C o., Ine. .. Was changed to ‘*The A. A Corpora-

tion’’, and the defendant organized a new Kentucky } corpor-

' ation under the name of ‘Fhe Dant Distillery Company.?”

| The A. H. Corporation. was: ny dissolved. «

. * .

11. De Cecil in: ‘this action seo v4 that J. W. Dant

began the business of distilling and selling whiskey. in 1856

viider the trade-mark ‘J. W. Dant.”’ However, the Court

. is inclined to agree with the statement of an examiner of

‘the Patent Office in a report, which isa, part of Defendant’ $

Exhibit No. 10, wherein he said ;

‘*The petitioner (The. Dant Distillery. Co. Inc.)

- claims 1836 as its earliest date of use. The record,

» however, is deemed insufficient to support this claim.,

It does satisfactorily appear that the petitioner

throtgh predecessors i in business has had use ‘of this

aark since before the year 1890, * * *.’? _(Paren-

er al \ <eerenien added.) |

12. During the period George W. Dant was president of -

| The"Dant Distillery Co, Inc., from 1902 until his death in

1943, John P. Dant, Sr., and John P. Dant, Jr., after 1913,

‘were engaged in the whiskey business in Kentucky. From

the organization ofthe John P. Dant Distillery Company,

Inc., in 1933 until the death of George W. Dant in 1943, .

ee _ there were trade relations betw een The Dant Distillery Co.,

”

31

eae?’

ms oad the John P.-Dant Distillery Company, Inc., of

ich latter corporation George W. Dant was a- substantial

stockholder although he was president of the former corpo-

‘ration. At no time during the lifetime of George W."Dant

did The Dant Distillery Co., Inc., take any court action to —

terminate or make any shlnolea whatever, of which there -

~ is now evidence, to the use of the name ‘* Dant”’ by the John

P. Dant ‘Distiiery Company, Inc.,.as a trade-mark of its

whiskey or as a part of its corporate name. For some 40

years, at least John P. Dant, Sr., and George W. Dant were _

engaged in-the whiskey business, each and both using the

surname ‘*‘ Dant’’, cithér alone or in combination, as a trade-

mark or as a business or corporate nagne. i |

5 :

bad

13. ‘It is clearly shes by the ev wvidence that the volume

of the business conducted by the plaintiff corporation is .-

_small in comparison with the vclume of the ‘business of the 7

defendant's corporation. . Defendant’s gross sales of

_ whiskey sold under the brand names of ‘4J. W. Dant’’ and

“J. W. Dant Old Bourbon’? for the period from March 1,

19538, to Octoher 31, 1958, amounted to $150,000,000, The

com petition in sales is nesligible and ‘the-proof of confusion’

is unconvineing,

‘Coxcir SIONS OF Law

The Court makes the following conelnsions of biage

1, This Court haa jurisdiction of the matters involved —

im the complaint ‘of the olaintiff. 28 U.S.C. 6.1332. Tt also

has jurisdiction of the mgtters involved in.the counterclaim

and third- -party complaint filed by the defendant.’ 28 U.S.C.

~ §€ 1338(a) and (b). tes

2. The law of this case is practically the same olathe

controlled by the law of Kentucky or the federal law.

Compare Country Distillers Products. Ine. . Samuels, Ine.

(Country Distillers Products, Tne. . Old Samuels Distillery,

.Ine.), 309 Ky. 262, 217 S.W.2d 216; Churehill Downs Dis-

_ tilling Co. v. Churchill weer Ine., 262 Ky. 567, 90 S.W.2d :

, 1041; Kay Jewelry Co. v. Gay’s Jewelry, Inc., BYy., 277

‘ 32

S.W.2d 30, with Neuhoff, Ine. rv. Neuhoff Packing Co., 6 Cir.,

bd F.2d 459; National Distillers Products Corp. v. K. Tay-

-Jor Distilling Co., Ine., D.C.E.D.Ky., 31 F.Supp. 611, opin-

ion by Judge Ford; Yellow Cab Transit Co, v. Louisville . |

Taxicab & Transfer (o., 6 Cir., 147 F.2d 407 ; Old Lexington

Club Distillery Co. v. Kentucky Distilleries & Warehouse

Co., D.C.N.J:, 234 F. 464, and Procter & Gamble Co. v. J. I.

Prescott Co., 3 Cir., 102 F.2d 773. ” .

3. In Country Distillers Products, Inc. v. Samuels, Inc..

309 Ky. 262, 269, 217 S.W.2d 216, 220, the Kentucky Court

of Appeals quotes with approval from a Canadian case

cited in 107 A.I.R., p. 1282: :

‘* “Every man has the undeniable right to the use

of his patronymic name in his business and he can-

not be absolutely restrained from using -it, even

though another pet son bearing the same name, previ-

ously established in a business of the same charac-

ter, has adopted it; he can only be prevented from

making’ use of it in such a way as to cause con-

fusion.’ ”’

That opinion then quotes the following statement from

Stix, Baer & Filler Dry Goods Co, v. American Pi ano Co.,

8 Cir., 211 F. 971, Di4sy’

“Tt is’ now settled beyond controversy that a

family surname is ineapable of exclusive appropria-

tion in trade. The right of every man to use his own

name in his business was declared in the law before

the modern doctrine of unfair trade competition had

arisen. It is part of the law of trade-mark.* * *. If,

however, the name has previously become well known

in trade, the second comer uses it subject to three

important testrictions: (1) He.may@ot affirmatively

do anything to cause the public to’ believe that his

artide is made by the first’ manufacturer. (2) He -

_ must exercise reasonable care to prevent the public

P 33

from so believing. (3) He nmst-exercise-reasonable -

are to prevent the public from believing that he is

This duty to warn, however, must not be pressed so

far as to make it impracticalle for the second comer

to use his name. in trade.’ ”’

4. In Yellow ¢ ‘ab Transit Co. r. Louisville Taxieab &

~ Transfer Co., 6 Cir. 147 F. 2d 407, 414, a statenlent of Mr.

Justice. Holmes in the opinion in L. BE. Waterman Co. ;

Modern Pen.Co., 235 U.S. 88, 94235 S. Ct. 91, 59 L.Ed. 142,

is quoted: : py:

may have been in the earlier cases, it now is estab-

lished that when the use of his own name upon his

goods by a later competitor will and does lead the

public } to understand that those goods are the product |

.of a concern already established and wall known.

under that name, and when the profit of the confu-

sion is known to and, if that be material, is intendéd

by the-later. ‘man, the Jaw: will require him to take

reason: ible precautions to prevent the mistake.’ ”’

“There is no ; fixed rule by which to measure the degree of

laches which is sufficient to bar ihe enforcement of a right.

Each case must be determined | ACE ording to its own particu-

lar facts and circumstances.’ Richardson +. Blue Grass

Mining Co., D.C.E.D. Ky.,.29 F. Supp. 658, affirmed 6 Cir, °

27 F.2d 291, certiorari denied 317 UL S. 639, 63S. Ct. 30,

S7 13.Ed. 515. - : le

-

dD. It was stated in Anheuser- Busch rv. DuBois Brewing

Co., 3 Cir, 175 F.2d. 390, 377, that a party should not be

shied in equity by injunction where another has been per-

mitted to conduct a localized operation over a long period -

of time.

the successor iit business of the first manufacturer.

‘* * But, whatever generality of expression there -

o at, e

6. In Old Lexington Club Distillery Co. v. Kentucky

Distilleries & W aire ‘house Co. D. C.N. J., 234 ‘F. 464, 469,

the Court said:

‘*For one to permit another to build up a repute- |

tion for one’s goods under a tradé-name fora long .

. period of time, and then to assert an exclusive right

to that name and thereby acquire the benefit of the

reputation and trade the other has built up, when it

lay in the power of the former at any time to, have ;

arrested the use of the trade- name by the ‘latter,

seems to me most inequitable, because, if the right

had been asserted before the reputation was acquired,

the infringer could have adopted another name and

built his reputation on it.’’

This wile was reaffirmed in Procter & Gamble Co. v.’J. L.

- Preseott Co., 3 Cir., 102 F.2d 773,,780.

7. George W. bant’s ownership of stock in the plain-

tiff’s predecessor did not of itself estop the defendant to

challenge plaintiff’s right to the use of the trade-mark

‘*John P: Dant’’ on its whiskey or to. use the surname

—“Dant’? in its corporate name. However, George W. Dant,

as president of the Dant Distillery Co., Ine., not only stood

by and observed John P. Dant, Sr., and John P. Dant, Jr.,

engage jn business under the corporate name ‘‘ John P.

Dant Distillery Company, Inc.,’’ but he failed to take any

affirmative action to cireumscribe or limit the use of the

name ‘‘Dant”’’ in connection with the conduct of their whis- -

key business. It indicates.to the Court either.that George’

W. Dant did not regard the competition of the John P.

Dant Distillery C company, Inc., as sufficient to justify the

effort and expense incident to a court proceeding, or that

the two brothers regarded the use of the family. surname

‘‘Daut’’ as a mark of their products and as a part of their

business or corporate name as a legitimate right of each.

The fact that neither John P. Dant, Sr., nor John P. Dant, ~ -

Jr., sought to register the trade-mark ‘‘ John P. Dant”’ indi-

. s A 35 . x

cates a feeling of security in ihe u use of the surname “Dant”

in’ connection with the conduct of their business, s

"8. The Court * not convinced that the evidence UR

any reason to conclude that the plaiatiff, John P. Nant

Distillery Co., or the third party de ‘fendant, John P. Dant,

"Jr, bas tried to substitute the products of the plaintiff cor-

poration for the produets of the defendant. The essence of

unfair competition is in palming off one person's goods for —

those of another’ and nothing less than‘conduct tending to

show, by direct or cire umstantial evidence, the intention

to so palni off anerchantlise will constitute. unfair eompeti-

tion. Goodyear’s India Rubber Glove Mfg. c ov. Goodyear

Rubber Co., 128 U.S. 508,°0 SL ¢ '. Pats 32 1. Ed. 534;

Socony Vacaum Oil Co. 7. Rosen, 6 ¢ 108 F.2d 632, 635.

9 The Court concludes that the use of the name ,

**Dant’’ by the plaintitf and third. party defendant in the

whiskey business is legitimate, and that it would be i inequi-

table at this late date in the history of their operations to

enjoin or to attempt to curtail by injunction the continua-

tion of their operations.

x "+ CéNcLUSION

It i is, therefore, concludell hy the’ Court that a judgment,

declaring the rights of the plaintiff to use the trade-mark

‘John .P. Dant”’ and the corporate name “John P. Dant

Distillery Co.,”’ as presently adopted and used, and dis-

missing the counterclaim and third-party complaint of the

defendant, will be. tendered by the plaintiff... ;

1. + gfe Roy M. SHELBOURNE

ie Roy M. SxHepourne

‘United States District Judge -

on: e

oteas

Appendix

‘Tudgment of the United States District Court for the

ee ee eee

/

- 9

[Carrion Omitrep]

JUDGMENT.

- ‘Tp action came on to be tried by the Court, without

a jury, the evidence adduced by the parties was heard, the

case taken under advisément by the Court,. briefs filed by

counsel for the parties and the Court being advised in the —

premises and having filed and entered of record its findings

of fact and conclusions of law, it is hereby

ORDERED, ADJU bur AND DECREED, as follows:

1. The plaintiff, Jobu P. Dant Distillery Co.,, is entitled

to use the naine ‘‘John PV’. Dant’’ in its corporate haine ;

and the third-party defendant, John P. Dant,.Jr., owner

of the “John P. Dant’? mark for Kentucky Bourbon W his-

key, aud plaintiff, exclusive licensee of the owner John P.

Dant, Jr., are entitled to use the naic.e and mark’‘‘Jokn P.

Dant’’ in the manner and style said pame and mark has

been used in the whiskey business for many years,

2. As used to identify the goods of the plaintiff, John PL

_Dant Distillery Co., the trademark ‘‘ John P. Dant’’ is not

“-eonfusingly simjlar to defendant’s mark ‘‘J. W. Dant’’.

3. The coun’ ‘/elgim and third- “party complaint of thie

defendant re hereby dismissed.

4, The plaintiff and third- -party defendant recover of

the defendant their costs herein expended.

my, Roy M. Smxiaovext

Rox M. Suetsovrne

United States District Judge

December 19, 1960, .

/

Ee gos

oe Appendix D eX ec

“Opinion of the United States Conr+ of Appeals

for the Sixth Circuit

IN THE ;

UNITED STATES COURT OF APPEALS wo

. ‘ fs ; ol /

\

J ‘ \

Kon roe Sixta Creecer

No. 14,549.

i : ;

Jous P. Dass Distittery Co. | -

Plaintiff. Appellee,

vs.

Seuexecey | <pMarkirs, Juc.,

Defendant and Third Party — - a

Plaintiff-Appellant,

vs. } id

Jous P. Daxr, Jn,

Third Party Defendant- Appellee.

e-.

Decided January 4, 1962

“APPEAL FROM THE UNITED STATES DISTRICT COURT FOR TUE

WESTERN DISTRICT OF KENTUCKY, AT LOUISVILLE

. “n

Before Simons and Martis, Circuit Judges, and “Darr,

District J — ;

~ ¢

Per Cr RIAM.

‘The appellant, Rites Distillers,

“in title to the trade-mark ‘J. W.

Keritucky whiskey from way back in 1836.

Ine., is suceessor

Dant,’ ’’ distiller of

“The. appellee,

affirmed.

oe

John P. Dant Distillery Co., and the third-party defendant-

appellee, John’P. Dant, Jr., its president, assert their right

‘to use the trade-mark under which the whiskey of appettee’s

distillery is marketed and to use its corporate name. John

P. Dant, Jr., is 4 grand-son of J. W. Dant anda nephew

of the latter's’ son, George W, Dant—the family’ s early

Kentucky disfillers, ar

‘In this a¢tion, tried without the intervention of a jury,

the United States District Court held that the appellee is

‘entitled to axe the name “Jobn P. Dant’’ in its corporate

name, and is entitled, as exclusive licensee of the owner

John P. Dant, Jr., to use the name. and mark ‘‘John P.—

Dant”’ in the’ aonaer: and style in which such name and

mark have been used in the whiskey business for many

yeais, The Court held further that the trade-mark ‘John

P. Dant”’ is not confusingly similar fo appeltant’s trade-

mark “J. W. Dant.” *

District Judge. Shelbourne, in a Netsncsedien (pub-

Jished in 189. F. Supp. 821) consisting of Findings of

Fact, supported. by substantial evidence and not clearly

erroneous, and appropriate and correct Conclusions of

~ Law, set forth stecinetly the basis upon which he reached

his conclusion. The Conclusions of Law are documented

' with appropriate authority, including several decisions of

this court. .

Inasmuch as the findings. and conclusions are published,

as shown; supra,°“and are entirely adequate, we find no

pecasion to re-write or add to Judge Shelbourne’ 8 excellent

work.)

Aécordingly, ‘the judgment of the. District Court ‘is

Appendix. E:

Judgment of the United States Court of Appeais

_ ee Oe ath Greet 3 ;

btsiaas Onirrep]}

Aprpra. from the United States District Court for the

- Western District of Kentucky.

Tis Cause came on to be heard on the transer ipt of.

the reeord from the United States District Court for the

Western District of Kentucky, and was argued by counsel.

On Consiprration Witenror, It is now here ordered

and adjudged y this’ Court that the judement of the said

District Court in this cause be and the same is hereby

affirmed,

Approved for entry: -

6 / Joun J). Martin *,

United States Circuit Judge

40

Appendix F

Order of the United States Court of Appeals for the

Sixth Circuit Denying Petition for

[Caption Omittev]) La %

‘ORDER.

— el

Fesrvary 9, 1962

” + r

es

- Before Simons and Martix, Circuit Judges; Darr, District

Judge.

The Petition for. Rehearing en banc and request for |

oral argument thereon, filed by the Defendant and Third

Party Plaintiff-Appellant shall be, and the same is hereby,

Denrep. j

.

Enter:

/s/ Jous D: Mantix | |

United States Circuit-Judge-