Before BIGGS, Circuit Judge, and FORMAN and LEAHY, District Judges.
Appellant, Frances Denney, is the manufacturer of a cosmetic preparation sold under the registered trade-mark "Over-Tone," issued January 21, 1941, as No. 384,464. The product consists of a solid dry cake packaged in a round flat compact, distinctive in color and design.
Appellee, House of Westmore, Inc., is the manufacturer of a cosmetic preparation sold under the registered trade-mark "Overglo," issued January 5, 1943, as No. 399,428. Its product is in liquid form and is packaged in a bottle distinctive also in color and design.
The parties will be referred to in this memorandum by the name of their product for the purpose of simplifying what appears to be a complicated history of the case.*fn1
On May 4, 1943, Overglo filed its amended complaint seeking a declaratory judgment of invalidity, and of non-infringement, of the trade-mark Over-Tone; an injunction restraining Over-Tone from asserting that a use of the product Overglo constituted an infringement of the mark Over-Tone and restraining Over-Tone from threatening Overglo's customers with legal action for such use of the product Overglo; and for damages by reason of said unfair competitive practices.
Over-Tone answered the amended complaint by denying that it intimidated the customers of Overglo and that its trade-mark is invalid, but asserted that the trade-mark Overglo is invalid in that it is confusingly similar to the trade-mark Over-Tone; that it notified Overglo and its customers of its rights under its mark and that it intended to bring suit if there was a continued violation of its rights; and that its mark is valid, distinctive and of great value to it. Along with its answer Over-Tone counterclaimed for an injunction restraining Overglo from the use of its product under that name, and for damages caused by Overglo's infringement of the mark Over-Tone and by its unfair competition.
Overglo filed a general denial in reply to Over-Tone's counterclaim, and alleged that the mark Over-Tone is invalid and not infringed by the mark Overglo.
At the trial it was brought out that the appearance of the two products and their containers are distinctly dissimilar; that both products are used for the identical purpose, i.e., as bases or foundations to which other cosmetics are to be subsequently applied; and that both products retail for the same price. It appeared that upon the disagreement of the parties concerning the questions of infringement and unfair competition, Over-Tone wrote letters to approximately all of the customers of Overglo stating that it believed that the name Overglo infringed its trade-mark and urged these customers to discontinue its sale. Evidence was admitted relating to the history of the manufacture and sale of the two products and the extent to which they were sold and advertised. Several paid investigators testified on behalf of Over-Tone to show the confusing similarity between the names of the two products.
The trial court found that the combination of words contained in the mark Over-Tone was descriptive of a quality or characteristic of the article sold, and concluded that the trade-mark was invalid.It also found that if Over-Tone was held to be a valid trade-mark, Overglo infringed.*fn2
The court found, in addition, the following:
"I find that the defendant was not guilty of bad faith in sending out the notices of infringement, that it did so not for the purpose of destroying the plaintiff's business but for the purpose of protecting its trade-mark."
The judgment of the lower court follows:
"This cause having come on to be heard on final hearing upon the pleadings and proofs taken on behalf of both of the parties hereto, and counsel for the respective parties having been heard, and due consideration having been had, and the Court's ...