# Petition for Writ of Certiorari — Schenley Distillers, Inc. v. John P. Dant Distillery Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_0368%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1962 - **Citation:** 371 U.S. 802 ## Text / }. / 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 ——$$___—___,—_ 7 - - - a > ° F 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 . 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 . \ 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. | : 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 \