(dissenting).
1. As to plaintiff’s first cause of action, which is for infringement of its federally registered trade-mark “POLAROID”, 15 U.S.C.A. §§ 1114(1) (a), 1116, 1117 and 1118, I note that, in an opinion by Judge Minton (later Justice Minton of the United States Supreme Court), concurred in by Judge Major, this court in California Fruit Growers Exchange v. Sunkist Baking Co., 166 F.2d 971 at 973 (7 Cir., 1947), remarked that “[fjruits and vegetables are not in the same general class of merchandise as bread,” and, at 974, we held:
“The unconscionable efforts of the plaintiffs to monopolize the food market by the monopoly of the word ‘Sunkist’ on all manner of goods sold in the usual food stores should not be sanctioned by the courts. The trade-marks should be confined substantially to the articles for which they were authorized, otherwise, why limit the marks at all? Before a trade-mark can be granted under the applicable Lanham Act, the application therefor must name the products to which it is to apply. 15 U.S.C.A. § 1051. * * * ”
*838This court resorted to common sense, 166 F.2d at 973, when it said:
“Unless ‘Sunkist’ covers everything edible under the sun, we cannot believe that anyone whose I. Q. is high enough to be regarded by the law would ever be confused or would be likely to be confused in the purchase of a loaf of bread branded as ‘Sunkist’ because someone else sold fruits and vegetables under that name. The purchaser is buying bread, not a name. If the plaintiffs sold bread under the name ‘Sunkist,’ that would present a different question; but the plaintiffs do not, and there is no finding that the plaintiffs ever applied the word ‘Sunkist’ to bakery products.”
Further, the qourt, 166 F.2d at 976, said:
“ * * * The mere use of a name which the defendants had a right to use does hot.'in and of itself constitute unfair competition. Kellogg Company v. National Biscuit Company, 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73; Quaker Oats Co. v. General Mills, Inc., 7 Cir., 134 F.2d 429.”
The'weakness of plaintiff’s contention as to its cause of action for trade-mark infringement has resulted in its practical abandonment, as evidenced by Judge Major’s withholding of approval of that contention, page 833, ante.
2. As to the charge of unfair competition in the appropriation and use of plaintiff’s corporate and trade-name (to quote from plaintiff’s brief), we said in Independent Nail & Packing Co. v. Stronghold Screw Products, 205 F.2d 921 at 926 (1953):
“We think that the test under the Illinois law is whether the adoption and use of a name by defendant is likely to cause confusion in the trade as to the source of products, or is likely to lead the public to believe that the defendant is in some way connected with the plaintiff. * * ”
Plaintiff produces and sells optical devices, photographic products, projectors, television and electrical devices and many other products, to which Judge Major refers. Its trade-name is “POLAROID”.
Defendant designs and installs refrigeration and heating systems. For instance, it makes and services skating rinks and cold storage equipment for industrial plants. Defendant buys equipment from manufacturers, assembles and installs it, and then sometimes furnishes a maintenance service therefor.
Defendant’s sales volume for the fiscal year ending August 31, 1960 was $710,-000. Since its incorporation in Illinois in 1953, as “POLARAID, INC.”, its principal office and place of business have been in Chicago, Illinois. It has spent about $1000 per year in advertising and promotional literature. It has advertised in skating rink magazines and in trade journals.
Four examples of defendant’s advertisements are in evidence.
One, which was apparently taken from “Arena, Auditorium & Stadium Guide”, shows at the left-hand upper corner of a rectangular print a reproduction of a smiling solar face, with a figure of a polar bear in the foreground and a horizontal line intersecting a large inclined capital “P”. At the right end of the line is the inscription “inc.” and to the right of this complex appears the following printed language:
Quality Ice Rinks P OLARAID
3840 No. Harlem Ave., Chicago 34, Ill.
The second example is as follows:
In the right-hand upper corner is a repetition of the complex referred to in the corner of the first example. At the left thereof appears the following material :
Quality
POLARAID Ice Rinks
*839Below appears the following printed matter:
TO MEET YOUR REQUIREMENTS
There Is No Substitute
For Knowledge & Experience
Let our experience guide you in selection of location, type of installation, kind of refrigeration, engineering; your entire project from start to finish.
PERMANENT and PORTABLE ICE FACILITIES All Sizes ICE STUDIOS
POLARAID inc. 3840 No. Harlem Ave., Chicago 34, Ill.
The third example is as follows:
POLARAID INC. Refrigeration
Air Conditioning * Process Piping Industrial — Commercial 1606 N. Meade Ave.
Chicago 39, Ill.
NAtional 2-7220
The fourth example is a reproduction of the business card of defendant’s president. In reduced size it contains the same complex heretofore referred to in the first two examples and has the following addition:
Refrigeration * Air Conditioning * Process Piping 3840 N. Harlem Ave.
Ralph A. Gotlund President
Chicago 34, Illinois. Phone NAtional 2-7220
*840The majority opinion relies on Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495 and Metropolitan Life Insurance Co. v. Metropolitan Insurance Co., 7 Cir., 277 F.2d 896, as well as National City Bank of Cleveland v. National City Window Cleaning Company, Ohio App., 180 N.E.2d 20.
All of these cases involved the use by a defendant of the same name as that used theretofore by the plaintiff, who brought suit. In the case at bar, not only were the businesses of plaintiff and defendant as different as black and white, but the defendant used a different name. It differed not merely in spelling but in meaning. Defendant’s use of the invented word “POLARAID” was an openly sincere effort to identify the user with a particular type of service and business in which it was engaged, which was essentially different from that which plaintiff was conducting. The use of the word “polar” to suggest cold was emphasized by inserting the figure of a polar bear, and the word “aid” was used in conjunction therewith. “Aid” is a common word and is a synonym for the word “service.”
Not only was the word “POLARAID” used in connection with express references to ice rinks, refrigerating and air conditioning, so as to fix in the mind of the reader the significance of the figure of a polar bear, but an actual contrast between “POLARAID” and the well-known “POLAROID” of plaintiff was accentuated and impressed upon even the most casual observer.
I enlist Judge Minton’s statement that “ * * * we cannot believe that anyone whose I. Q. is high enough to be regarded by the law would ever be confused” by defendant into buying, for instance, a skating rink when he intended to buy a camera.
3. As to the third cause of action, plaintiff relies on the Illinois Anti-dilution statute of 1955, § 22, ch. 140, Illinois Revised Statutes (1961) and Judge Major quotes from that act. While he finds no Illinois case which has construed its provisions, at page 836, ante, he says he feels that it lays a heavy hand upon one who adopts the trade-name or mark of another.
Undoubtedly the Illinois act is similar to a Massachusetts act on the same subject, which Judge Major admits at page 837, ante.
In Esquire, Inc. v. Esquire Slipper Mfg. Co., 1 Cir., 243 F.2d 540 (1957), plaintiff was the publisher of a monthly magazine called “Esquire”. Defendant was a corporation engaged in the manufacture of men’s slippers. Plaintiff in its suit sought an injunction restraining defendant from any use of the word “Esquire”, either in its corporate name, or on its product or in its advertising.
The court of appeals pointed out 243 F.2d at 542:
“This is obviously a dilution case, for clearly the parties are not directly competing with one another in the sale of similar goods. * * * ’’
The court pointed out 243 F.2d at 543 that the word “Esquire” is not a coined word áñd that it carries implications of gentility in an aura of wealth. The court recognized that, while plaintiff picked an already diluted name as the mark for its magazine, this did not mean that plaintiff was entitled to no protection for its name.
In referring to the Massachusetts statute, Mass.G.L. (Ter. ed.) ch. 110 § 7A, pertaining to dilution, the court said, 243 F.2d at 544:
“This statute might be read as requiring as a matter of law that in Massachusetts courts of equity in trade-mark infringement and unfair competition cases give the plaintiff injunctive relief no matter how weak the plaintiff’s mark may be, against a defendant whose actions create any likelihood of dilution of whatever distinctive quality the plaintiff’s mark may have. But so to read the statute would be to fly in the face of the general principle that courts are not to presume a legislative intention to rigidify the traditionally flexible equity practice of granting or with*841holding injunctive relief in the exercise of sound judicial discretion. Hecht Co. v. Bowles, 1944, 321 U.S. 321, 330, 64 S.Ct. 587, 88 L.Ed. 754 * * * ”
The court also said:
“For the reasons already stated we reject the plaintiff’s contention that it is legally entitled to all the injunctive relief it asked for in its complaint. The scope of the relief of that nature to which it is entitled under either the Lanham Act or the Massachusetts statute is primarily a matter for the District Court with which we would only interfere were we convinced that the trial court’s conclusion resulted from an error of law, or an abuse of discretion. We find neither here. * * * ” (Emphasis supplied.)
In the case at bar the district court made these findings:
6. There is no evidence from which the court could find that the name of defendant corporation was adopted with intent or purpose to infringe upon or dilute plaintiff’s rights in the name “POLAROID”, and the court therefore finds that the name of defendant corporation was adopted without such intent or purpose.
7. There is no evidence from which the court coud find that defendant’s selection and use of the word “POLARAID” as its trade name, trademark, and service mark, was with intent or purpose to infringe upon or dilute plaintiff’s rights in the word “POLAROID”, and the court therefore finds that the selection and use of the word
• for such purposes was without such intent or purpose.
8. There has been presented to the court no evidence or instances of confusion by the trade or by customers concerning the respective products or identities of the parties, and the court therefore finds that there has been no such confusion by the trade or by the customers.
9. There has been presented to the court no evidence showing directly, inferentially or otherwise, that any business or trade has been diverted from plaintiff to defendant, or that any such diversion is likely to occur, and the court therefore finds that no such diversion has occurred or is likely to occur.
The court also concluded as a matter of law:
7. Under the circumstances set forth in the findings of fact herein, the use by defendant of the trademark and service mark “POLAR-AID” does not render likely injury to plaintiff’s business reputation, and does not constitute the dilution of the distinctive quality of plaintiff’s Illinois trademark “POLAROID.”
For all of these reasons I would affirm the order entered by Judge Miner.