Friday, July 14, 2017

Hydrox and trademark

The post The Sad History of Hydrox Cookies, Which Were Probably Doomed Because They Were Called Hydrox illustrates some interesting points about IP law.

The history of Hyrox (compared to Oreo) shows that "first mover" advantage does not always prevail.

As to trademarks related to "Hydrox", note a 1913 case, 40 App. D.C. 284; 1913 U.S. App. LEXIS 2081

January 7th, 1910, the Hydrox Chemical Company applied for the registration of "Hydrox" as a trademark for peroxide of hydrogen. The mark having been allowed for publication, the Consumers Company filed an opposition thereto.

The opposition alleges that a predecessor under whom it derives title coined the fanciful word, "Hydrox," January 1, 1892, as a trademark for distilled and carbonated waters, and applied the same to bottles, boxes, and other forms of containers for said waters. Said word was the only name or mark used to designate its said products, and large sums of money were expended in advertising and popularizing said mark as a symbol of purity for its said products. The mark is the distinguishing trademark for the products of opponent, and has [p. 286] been used as a trademark for distilled and carbonated waters and allied products from January 1, 1892, to present date.

Distilled water being the basis of many other products, opponent added new products which would naturally come within the same class. Those named are "Hydrox" beverages, such as Birch Beer, Ginger Ale, Lemon Soda, Root Beer, and Sarsaparilla, in 1898; metal coolers for holding Hydrox water and artificial ice in 1906; "Hydrox" ice cream in 1910; peroxide of hydrogen in 1908, under the trademark, "Hydrox." Peroxide of hydrogen would naturally come within the line of articles manufactured by opponent, as the basis of such product is substantially 96 per cent distilled water. The opposition was demurred to by the Hydrox Chemical Company, and this appeal is from a decision sustaining the same.

It appears from the opposition that "hydrox" is a word coined by the opponent January 1, 1892, and was then adopted and used by it as a trademark for distilled and carbonated waters. This was extended to Birch Beer and other "soft drinks" in 1898. It was extended to nothing else prior to the use of the word as a trademark by the Hydrox Chemical Company, July 19, 1905, for peroxide of hydrogen.

It is settled law in this court, that a trademark is not acquired by the invention or discovery of a word or symbol, or by advertisement. It only becomes a trademark by attaching or affixing it to certain articles of merchandise. Battle Creek Sanitarium Co. v. Fuller, 30 App. D.C. 411 at 411-416; Illinois Match Co. v. Broomall, 34 App. D.C. 427 at 427-429; Hump Hairpin Co. v. De Long Hook & Eye Co. 39 App. D.C. 484 at 484-489. The trademark so acquired does not apply to other articles not of the same descriptive properties. The question is whether peroxide of hydrogen is a product of the same descriptive properties as distilled and carbonated waters and the beverages before mentioned? Does it belong to the same class of goods?

Peroxide of hydrogen is a pharmaceutical preparation; its use is as a disinfectant. The products of the opponent are for [**4] use as beverages. The fact that the peroxide may consist of 96 per cent distilled water does not bring it within the class [*287] of goods manufactured and sold by the opponent; nor is it a preparation that would reasonably come within the natural expansion of opponent's business. Many other pharmaceutical preparations contain large percentages of distilled water.

The opposition does not show that the opponent would sustain any legal damage by the registration of "Hydrox" as a trademark for peroxide of hydrogen; and the Commissioner was right in dismissing the opposition.

Without discussing the question further, it is sufficient to refer to the following cases for the principle controlling this case: Muralo Co. v. National Lead Co. 36 App. D.C. 541 at 541-543; Johnson Educator Food Co. v. Smith, 37 App. D.C. 107; Hump Hairpin Co. v. De Long Hook & Eye Co. 39 App. D.C. 484-488.

And from 2015, 2015 U.S. Dist. LEXIS 36276 :

The Court must begin by confronting Plaintiff's shifting theory of its case. Based on its Complaint, Plaintiff initially contemplated a typical theory of "forward confusion" trademark infringement wherein Defendant, as the junior user, sought to profit from the fame and reputation of Plaintiff's well-established products by passing its goods off as those of Plaintiff. (Compl., Dkt. # 1 at ¶ 26) (accusing Defendant of attempting to "profit from the goodwill and consumer [*12] recognition associated with Plaintiff's mark"); (id. at ¶ 29) ("Consumers are, therefore, likely to believe that Defendant's products that bear the Hydrox Trademark...are associated with Plaintiff, when that is not the case.") This is the traditional view of trademark infringement embodied in the Lanham Act. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992) ("Usually, the confusion alleged is 'forward confusion'...In such a case, the junior user attempts to capitalize on the senior user's good will and established reputation by suggesting that his product comes from the same source").

In the course of responding to Defendant's motion for summary judgment, however, Plaintiff for the first time reframes its argument as sounding in "reverse confusion" (Pl.'s Mot. Summ. J., Dkt. # 68, at 9.) Reverse confusion occurs when "a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user." Sands, 978 F.2d at 957. The harm a plaintiff suffers in such a case is not the risk of his reputation being undermined by poor-quality knockoffs, but rather that consumers come to assume "that the senior user's products are really the junior user's or that the former has become somehow connected to the latter" such that the [*13] smaller senior user "loses the value of the trademark—its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets." Ameritech, Inc. v. American Inf. Technologies Corp., 811 F.2d 960, 964 (6th Cir. 1987). In this case, the specific reverse confusion Plaintiff now asserts is that consumers will believe Plaintiff supplies Defendant with the hydrogen peroxide contained in Hydrox GPC. (Pl.'s Reply, Dkt. # 100, at 8) ("Hydrox is complaining that Diversey's use of the Hydrox likely to cause confusion as to whether Hydrox supplied the hydrogen peroxide for the product or was otherwise involved.")

This is more than simply a matter of labels; while the same seven likelihood of confusion factors are analyzed under both theories, several of them are applied differently in reverse confusion cases than in forward confusion ones. See Sands, 978 F.2d at 959 ("In a reverse confusion case, then, it may make more sense to consider the strength of the mark in terms of its association with the junior user's goods" rather than the senior user's goods); Christina P. Mott, Multifactors, Multiconfusion? Refining "Likelihood of Confusion" Factors for Reverse-Confusion Trademark Infringement Claims to Achieve More Consistent and Predictable Results [*14] , 47 Suffolk U. L. Rev. 421, 443 (2014) (noting that Seventh Circuit reverse confusion cases typically analyze "the commercial strength of the junior user's mark, rather than the senior user's" and turn the intent inquiry into "a bad-faith test to determine whether the junior user knew of the senior user's similar mark but proceeded anyway"). Moreover, even if the seven factors were applied in the same way in a reverse confusion case, "which factors are most important may differ." World Wide Sales, Inc. v. Church & Dwight Co., No. 08 C 1198, 2009 U.S. Dist. LEXIS 104741, 2009 WL 3765881, at *4 (N.D. Ill. Nov. 9, 2009).

A plaintiff, however is required to plead only "claims, not facts or legal theories." Vincent v. City Colls. of Chi., 485 F.3d 919, 923 (7th Cir. 2007). Plaintiff's complaint adequately alleged consumer confusion; the precise nature of that confusion is not required, and may shift throughout the course of litigation. The few federal courts that have confronted the propriety of a shift from a forward to a reverse confusion theory have permitted plaintiffs to switch theories even after the close of discovery. See, e.g., Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453, 462 (E.D. Pa. 2012), aff'd, 490 F. App'x 491 (3d Cir. 2013); Birmingham v. Mizuno USA, Inc., No. 09—566, 2011 U.S. Dist. LEXIS 34696, 2011 WL 1299356, at *17, n.20 (N.D.N.Y. Mar. 31, 2011); Trouble v. Wet Seal, Inc., 179 F. Supp. 2d 291, 296 (S.D.N.Y. 2001). The Court, therefore, applies the seven factors in light of Plaintiff's new reverse confusion theory.


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