Plough, Inc. v. Kreis Laboratories, a Corporation

Appellant brought suit below chargingappellees with the infringement of its trademark “Coppertone,” a word which had acquired an established secondary-meaning in other litigation. Cf: Douglas Laboratories Corporation v. Copper Tan, Inc., 2 Cir. 1954, 210 F.2d 453 . Appellant sought an injunction and an accounting. Various defenses and counterclaims appeared in the answer, such-as (a) allegations of a prior use by appellees; (b) a prior state trademark registration by appellees of “Copatint” in New York, Florida and California, and the prior registration of “Copper Tan”' in California; (c) the lack of competition between the parties; and (d) the-lack of confusion between their products.

Thereafter a consent judgment was entered on November 12, 1959 in the United States District Court, Southern District of California, decreeing (1) the ownership of the trademark Coppertone in appellant; (2) that use of the words Copa Tan, Copa Cream and Copa Tint by appellees was likely to cause-confusion; (3) that appellees were per *637 petually restrained from using the names Copatan, Copatint or Copacream, “or any other names confusingly similar thereto,” or to use Coppertone, or “to use the…

314 F.2d 635 PLOUGH, INC., Appellant, v. KREIS LABORATORIES, a Corporation, et al., Appellees. No. 17719. United States Court of Appeals Ninth Circuit. February 20, 1963. Rehearing Denied March 26, 1963. Lyon & Lyon, Charles G. Lyon and Frank E. Mauritz, Los Angeles, Cal., for appellant. Kendrick & Stolzy, Elwood S. Kendrick and John P. Scholl, Los Angeles, Cal., for appellee. Before POPE, BARNES and JERTBERG, Circuit Judges. BARNES, Circuit Judge. 1 Appellant brought suit below charging appellees with the infringement of its trademark "Coppertone," a word which had acquired an established secondary meaning in other litigation. Cf: Douglas Laboratories Corporation v. Copper Tan, Inc., 2 Cir. 1954, 210 F.2d 453 . Appellant sought an injunction and an accounting. Various defenses and counterclaims appeared in the answer, such as (a) allegations of a prior use by appellees; (b) a prior state trademark registration by appellees of "Copatint" in New York, Florida and California, and the prior registration of "Copper Tan" in California; (c) the lack of competition between the parties; and (d) the lack of confusion between their products. 2 Thereafter a consent judgment was…

(dissenting).

I am in complete accord with the ma^ jority opinion’s notation that the initial fact in this case is the consent judgment which we are required to respect and enforce. As stated in Artvale, Inc. v. Rugby Fabrics Corp., 2 Cir., 303 F.2d 283, 284 , which is cited in the opinion, “A consent decree represents an agreement by the parties which the court cannot expand or contract.”

We must note also that in a ease of this kind the question of likelihood of confusion is one for this court to decide. As Judge Barnes well stated in Sleeper Lounge Company v. Bell Manufacturing Co., 9 Cir., 253 F.2d 720 , 723, “we are ‘in as good á position as the trial judge to determine the probability of confusion’ ” citing Miles Shoes, Inc. v. R. H. Macy & Co., 2 Cir., 199 F.2d 602 , from which the last quoted language was taken. This is the rule of this circuit, as settled in a long line of decisions, and it is the prevailing rule in other circuits as well. See The Fleischmann Distilling Corp. v. Maier Brewing Company, 9 Cir., 314 F.2d 149 , (Feb. 12, 1963) and cases there cited. I think that such probability of confusion is demonstrated by this record.

Initially, in explaining my…