Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; Charles E. Woodward, Judge.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
This appeal is from an order dismissing, after trial, the complaint of appellant which sought an injunction against use by appellees of labels alleged to infringe appellant's trade-marks and also to prevent certain alleged unfair trade practices and for damages because of such practices, and for an accounting of profits arising out of the infringement of the trade-marks.
Appellant's registered trade-marks were "O-Cedar" and "Cedarine." "O-Cedar" was registered in the Patent Office August 18, 1914, for floor polish, and as to brooms and brushes, on July 2, 1912. It was registered in Illinois, January 15, 1914. Appellant's trade-mark "Cedarine" was registered in the Patent Office, June 7, 1887; reregistered on August 22, 1905; and again registered in the Patent Office on February 19, 1924. Appellant, on February 7, 1908, acquired from the owner of the trade-mark "O-Cedar" the right to use the name which had become established in trade, and, at the same time, the good will of the owner.
Appellant charged that appellee, Midway Chemical Company, infringed the trade-marks "O-Cedar" and "Cedarine" by marketing its product under the name "Radiant Cedar Oil Polish" and other phrases of which the words "cedar" and "oil" form a component part and have simulated labels and containers for the purpose of deceiving the public into believing that they are O-Cedar products. Midway's product was sold in stores operated by appellee Woolworth Company.
Appellant expended over five million dollars advertising the trade-marks "O-Cedar" and "Cedarine." It contends that as a result of its extensive campaign of advertising and the wide sale of its polish, the public has identified its polish with the word "cedar." Neither oil of cedar leaf nor of cedar wood are of utility in polishes. Less than two percent. of the polish is cedar oil, and its use is limited to imparting an odor or perfume to the product and destroying the otherwise objectionable odor of the polish.
Woolworth Company denies unfair competition by the sale of an article bearing labels allegedly infringing upon trade-marks "O-Cedar" and "Cedarine," and asserts the right to use the term "cedar" upon its labels when it is used in polish. It asserts that cedar oil when used in polish has valuable qualities. It also claims that appellant entered the court with unclean hands in that it has deceived the public into believing that a substantial part of the contents of its polish is cedar oil, whereas it only contains from one to two per cent. of this ingredient.
Appellee, Midway Chemical Company, also denies infringement of the appellant's trade-marks, as well as all the other material allegations of the complaint.
Some years prior to this suit, a distributor of appellant's goods was sued by the Cedarine Company and lost the suit. Allen v. Walker & Gibson (D.C.) 235 F. 230. Appellant thereupon acquired by purchase from Cedarine Company the trade-mark "Cedarine."
On December 9, 1925, a consent decree was entered in a suit between the Channel Chemical Company (now O-Cedar Company, appellant), plaintiff, and F. W. Woolworth Company and the Visco Chemical Company, defendants, wherein it was stipulated that the following labels might be used:
Material portions of the decree read as follows:
"In consideration of the foregoing, it is by consent hereby Ordered, Adjudged and Decreed, that:
"First: The plaintiff is the owner of the Trade Mark 'O-Cedar' for furniture and similar polishes, and of the Certificate of Registration thereof, No. 99,142, dated August 18, ...