SMITH, Circuit Judge:
This appeal involves an action for trademark infringement and unfair competition in which the plaintiff, Clairol Incorporated, sought a preliminary injunction restraining The Gillette Company from using the term "Innocent" on any hair dye product. The District Court, Weinstein, J., concluded for a number of reasons that the award of a preliminary injunction would be inappropriate. Clairol Incorporated v. Gillette Company, 270 F.Supp. 371 (E.D.N.Y.1967). A second motion for a preliminary injunction was denied by Judge Dooling. Clairol has appealed from these two actions of the District Court, and the question before us is whether or not the judges below clearly abused their discretion. Societe Comptoir De L'Industrie, etc. v. Alexander's Department Stores, Inc., 299 F.2d 33, 1 A.L.R.3d 752 (2 Cir. 1962); Imperial Chemical Industries Ltd. v. National Distillers and Chemical Corp., 354 F.2d 459 (2 Cir. 1965).
The award of a preliminary injunction is an extraordinary remedy, and will not be granted except upon a clear showing of probable success and possible irreparable injury. Societe Comptoir De L'Industrie, etc. v. Alexander's Department Stores, Inc., supra, 299 F.2d at 35. See also W. E. Bassett Company v. Revlon, Inc., 354 F.2d 868, 871 (2 Cir. 1966). Since we agree with Judge Weinstein that the likelihood that the plaintiff's trademark is valid and worthy of protection is not sufficiently high to warrant granting a preliminary injunction, we find it unnecessary to consider the other grounds upon which he denied the first motion.
Clairol claims that by using the word "Innocent" in shade designations on its hair dye products, it has gained exclusive rights to use of that word in marketing
The application was then converted to one for registration on the Supplemental Register, and as such was accepted in May, 1965.
There is no question but that Clairol used "Innocent Ivory" and "Innocent Beige" for purposes of designating color. Judge Weinstein found:
270 F.Supp. at 374-376. (Exhibit A is at 375.)
Clairol claims that beginning in early 1966 it initiated steps preparatory to the marketing of a new line of hair dyes, and states in its brief that "By August 3, 1966, there was agreement in the company — as high up as the Vice President in Charge of Marketing — and in the agency that the products should be given the trademark `Innocent' in the form `Innocent Blonde.'" An application to register the mark was filed on September 15, 1966.
In November, 1965, the defendant Gillette Company considered using the term "Innocent Color" in connection with a proposed new hair coloring product. A search of the Patent Office records disclosed the presence of plaintiff's "Innocent Beige" on the Supplemental Register, and the application to register "Innocent Ivory." Advised by counsel that these terms were being used as shade designations, Gillette went ahead with its plans, deciding to use "Innocent Color" as part of a descriptive phrase ("Toni Shampoo — easy Haircoloring for Innocent Color") to be used on its packaging and its advertising for the new line.
Clairol, according to its account, first learned of Gillette's plans on August 23, 1966. This action was instituted on October 13, 1966. Both parties continued to prepare their respective products, Innocent Color (Gillette) and Innocent Blonde (Clairol), for market.
Judge Weinstein assumed for purposes of the preliminary injunction motion that the allegations in the complaint specifying federal registration of Innocent Beige were sufficient to vest the District Court with jurisdiction. He expressed some doubt on the matter, however, because of Clairol's concession that it was relying solely upon the common law rights acquired by prior use of the marks and that it had no rights by virtue of the registration of "Innocent Beige" on the Supplemental Register. Registration of a mark on the Supplemental Register does nothing to enlarge the substantive rights of the registrant. The Supplemental Register was established by Section 23 of the Lanham Act, 60 Stat. 435, 15 U.S.C. § 1091, as a continuation of the register provided for in section 1(b) of the Trademark Act of March 19, 1920, 41 Stat. 533. The Act of 1920 was for the purpose of enabling persons in this country to register trademarks so that they might obtain registration under the laws of foreign countries. Kellogg v. National Biscuit Co., 71 F.2d 662, 666 (2 Cir. 1934). Registration under that act created no substantive rights. Armstrong Paint & Varnish Works v. NuEnamel Corp., 305 U.S. 315, 322, 59 S.Ct. 191, 83 L.Ed. 195 (1938); Charles Broadway Rouss v. Winchester Co., 300 F. 706, 712-714 (2 Cir.), cert. denied 266 U.S. 607, 45 S.Ct. 92, 69 L.Ed. 465 (1924). The Lanham Act did not provide that registration on the Supplemental Register should differ in this respect from registration under the Act of 1920.
Although registration under the Act of 1920 gave the registrant no substantive rights, it did entitle him to proceed in the federal courts to protect whatever common-law rights he might have in the mark. Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra, 305 U. S. at 333-336, 59 S.Ct. 191, 83 L.Ed. 195. Moreover, in a case where federal jurisdiction was bottomed upon a substantial allegation of registration under the Act of 1920, and a claim of unfair competition
Turning to the merits, it is clear that Clairol cannot ultimately succeed in this litigation unless it shows that Innocent Ivory and Innocent Beige are terms in which it has acquired trademark rights worthy of protection. As we have said, the probability of such a showing does not reach that degree of likelihood of success necessary to warrant the granting of a preliminary injunction.
Much stress is laid on the "fancifulness" of "Innocent Beige." But that is not the issue. Were the term for which Clairol seeks protection "Beige," rather than "Innocent Beige," the invalidity of the term as a trademark would of course be patent. The word beige is such a descriptive word as will receive less protection than a fanciful or coined word, on the familiar principle that words in the general vocabulary which all can use to describe products or services should not be unduly limited. See Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 498 (2 Cir. 1962). Clairol contends that by adding the word "Innocent" to the word "Beige," it has come up with a term which is fanciful and thus deserving of protection, citing Douglas Laboratories Corp. v. Copper Tan, 210 F.2d 453 (2 Cir.), cert. denied 347 U.S. 968, 74 S.Ct. 779, 98 L.Ed. 1109 (1954). But there is a fundamental difference between that case and this one. The fanciful term "Coppertone" was used in that case as the name of the product being marketed, and there was no question but that it served to indicate the product's origin. Here, the very question at issue is whether or not the term "Innocent Beige," which is used not as the name of a product, but instead to designate one of many colors in which the product is marketed, is indicative of origin.
We find on the Clairol trademarks list of April 1, 1966 eighty-four terms claimed
Clairol points out that a term which serves to indicate the grade or style of a product may also indicate origin, and thus merit trademark status, and contends that a term designating color should receive the same treatment. We are referred to Kiekhaefer Corporation v. Willys-Overland Motors, Inc., 236 F.2d 423 (C.C.P.A.1956) and five cases decided by the Trademark Trial and Appeal Board of the Patent Office.
Assuming that color marks and grade marks should be treated alike, we find no abuse of discretion in Judge Weinstein's determination that Clairol has not made a sufficient showing of trademark use of "Innocent Beige" to warrant a preliminary injunction.
It may be that the names chosen to designate colors are more significant in marketing hair dye products than in marketing many other products, and that in some instances the purchasing public will come to identify a particular term used as a color description with a particular manufacturer. If it can be shown that the term is identified with the manufacturer, that the public is motivated to buy the product because of its source, and that a competing use of the term is likely to produce confusion on the part of consumers, then the manufacturer will have a remedy. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra, 305 U.S. at 335-336, 59 S.Ct. 191, 83 L.Ed. 195; cf. Chas. D. Briddell, Inc. v. Alglobe Trading Corp., 194 F.2d 416, 419 (2 Cir. 1952). Just as a word which is originally descriptive within the general vocabulary may take on a secondary meaning (see, e. g., Safeway Stores, Inc. v. Safeway Properties, Inc., supra, 307 F.2d at 498-499), so may a word which is originally indicative of color, style, or grade, and not of origin.
Judge Weinstein found, however, that there was nothing in the record to show that the term Innocent Beige distinguishes Clairol's products so far as the general consuming public is concerned — or, in other words, nothing to show that the term had acquired the requisite secondary meaning. We see no error in that determination.
After oral argument, Clairol requested that the record on appeal be opened to receive newly discovered evidence on defendant's decision to use "Innocent Color," or that the cause be remanded to the District Court for consideration of this newly discovered evidence. We denied the request. Neither that action nor anything we have said here precludes Clairol's use of this allegedly newly discovered evidence at trial.
Under 15 U.S.C. § 1094, registrations on the Supplemental Register are explicitly excluded from numerous advantages which may be gained by registration on the Principal Register. Among these are the following: under 15 U.S.C. § 1057(b), a certificate of registration on the Principal Register is prima facie evidence of the validity of the mark, the registrant's ownership, and the registrant's exclusive right to use the mark in interstate commerce (cf. 15 U.S.C. § 1115 (a)); under 15 U.S.C. § 1065, the right of the registrant to use a mark registered on the Principal Register in commerce for goods or services in connection with which it has been in continuous use for five consecutive years subsequent to the registration is (with certain exceptions) incontestable; and under 15 U.S.C. § 1072, registration on the Principal Register is constructive notice of the registrant's claim of ownership.
15 U.S.C. § 1121 reads:
The district and territorial courts of the United States shall have original jurisdiction and the courts of appeal of the United States shall have appellate jurisdiction, of all actions arising under this chapter, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties. 28 U.S.C. § 1338 reads:
(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, copyrights and trade-marks. Such jurisdiction shall be exclusive of the courts of the states in patent and copyright cases.
(b) The district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent or trade-mark laws.
Whatever the situation may have been before 1946, this court said in S. C. Johnson & Son, Inc. v. Johnson, 175 F.2d 176 (2 Cir.), cert. denied 338 U.S. 860, 70 S.Ct. 103, 94 L.Ed. 527 (1949), per Judge Learned Hand, that the Lanham Act of that year "put federal trade-mark law upon a new footing." 175 F.2d at 178. That act, we said, had "created rights uniform throughout the Union, in the interpretation of which we are not limited by local law." Ibid. It is now accepted, we think, that with respect to trademarks registered under the Lanham Act, all questions of validity, ownership, and infringement are federal ones. See Friendly, In Praise of Erie — And of the New Federal Common Law, 39 N.Y.U.L. Rev. 383 (1964), in Benchmarks (1967), p. 155, at 188-190 and cases cited n. 161; Callman, The Law of Unfair Competition and Trade-Marks (2 ed. 1950), § 93.1 (b); and Brown & Bigelow v. Remembrance Advertising Products, 279 App. Div. 410, 110 N.Y.S.2d 441 (1952), aff'd 304 N.Y. 909, 110 N.E.2d 736 (1953). Compare Campbell Soup Co. v. Armour & Co., 175 F.2d 795 (3 Cir.), cert. denied 338 U.S. 847, 70 S.Ct. 88, 94 L.Ed. 518 (1949). But see Time, Inc. v. T. I. M. E. Inc., 123 F.Supp. 446, 453 (S.D.Calif. 1954).
It would seem that marks registered on the supplemental register should be covered by this rule, even though such registration creates no substantive rights. Congress' chief concern in enacting the Lanham Act, as Judge Hand pointed out in S. C. Johnson & Son, Inc. v. Johnson, supra, was to ensure that registered marks receive uniform, national protection, and in this it did not distinguish between registration on the principal register and registration on the supplemental register. See S.Rep. No. 1333, U.S.Code Congressional Service, 79th Congress, 2d Sess. (1946), p. 1274, at 1276-1277.
Under 15 U.S.C. § 1091, a mark is registrable on the supplemental register if it is "capable of distinguishing applicant's goods or services and not registrable on the principal register * * *." Thus most marks registered on the supplemental register will not, prima facie, receive protection as valid trademarks, for their very presence on that register indicates a preliminary determination that they are not distinctive of the applicants' goods. Cf. Application of Simmons Company, 278 F.2d 517, 519 (C.C.P.A.1960). (We do not mean to imply that failure to contest a Patent Office determination that a mark is registrable only on the supplemental register is a concession that the mark is not, as used, distinctive of the applicant's goods.) But a mark registered on the supplemental register is not necessarily different in this respect from one registered on the principal register, for while registration on the principal register confers certain advantages (see, e. g., note 6, supra), it does not, taken alone, mean that the mark will be protected.
A mark which will not, prima facie, be protected may through use become distinctive of an applicant's goods, and thus receive protection (as well as eligibility for registration on the principal register — see 15 U.S.C. § 1052(f), and 15 U.S.C. § 1095). It may be that problems which arise in determining whether a mark has become distinctive of an applicant's or a registrant's goods will in some cases be similar to those which arise under claims of unfair competition (using "unfair competition" in its narrow sense), which, we have held, are governed by state law. Flexitized, Inc. v. National Flexitized Corporation, 335 F.2d 774, 780 (2 Cir. 1964), cert. denied 380 U.S. 913, 85 S.Ct. 899, 13 L.Ed.2d 799 (1965). But we are not aware that there is potential in this case for conflict between state and federal law, even though "Innocent Ivory" is not federally registered, whereas "Innocent Beige" is. See Note, Developments in the Law — Trade-Marks and Unfair Competition, 68 Harv.L.Rev. 814, 878 (1955).
Gillette requests that we dismiss the action at this point, but we are not sure, on the record before us, that Clairol could not show at trial that "Innocent Beige" has acquired a secondary meaning giving it trademark significance. Moreover, it appears that there may be state law unfair competition claims requiring further development. See 270 F.Supp. at 380.