Saxony Products, Inc. v. Guerlain, Inc.

Before DUNIWAY and ELY, Circuit Judges, and JAMESON, District Judge.

Defendant-appellant, Guerlain, Inc., appeals from an order granting the motion of plaintiff-appellee, Saxony Products, Inc., for summary judgment and holding that (1) the use of appellant’s registered trademark SHALIMAR in ap-pellee’s advertising did not constitute trademark infringement and unfair competition, and (2) appellant was guilty of unfair competition by threatening appel-lee with legal action based on unfounded claims.

I. BACKGROUND

Guerlain, a New York corporation and 'well known perfumer, is the owner of a trademark on the name SHALIMAR used in connection with unpatented perfumery products since 1926. Saxony, a California corporation, produces toiletry items and distributes them throughout the United States.

Saxony produces and markets a line of toiletries called “LIKE COLOGNES” and “LIKE PERFUMES”, which they advertise as being similar to high-priced colognes and perfumes identified as AR-PEGE, CHANEL No. 5, ESTEE LAUDER, MY SIN, WHITE SHOULDERS, SHALIMAR, JOY and TABU. The Saxony product is sold for a fraction of the selling price of the cologne or perfume it simulates.

In its…