(dissenting):
In my opinion, the application of principles of fundamental fairness and the protection of the public from deception call for the affirmance of Judge Anderson’s decision. The appellant, Aladdin Industries, Incorporated (Aladdin) seeks under the guise of modification to alter radically Judge Anderson’s original decree and our. unanimous affirmance thereof. 321 F.2d 577. A brief review of his original opinion is informative and necessary for a proper decision here.
Since 1908 King-Seeley has possessed trade-marks showing the word “thermos” in various forms, such as “Thermos,” “THERMOS” and “THERMOS.” The original opinion was based upon the conclusion that “The word ‘thermos’ has become a generic descriptive word in the English language as used in the United States” and “became a part of the public domain because of the plaintiff’s [King-Seeley’s] wide dissemination of the word ‘thermos’ * * 207 F. Supp. 9 at 14.
Equally important was the court’s recognition of King-Seeley’s existing trade-marks and the necessity of fashioning a decree so as “to eliminate confusion and the possibility of deceit of such consumers.” The court, therefore, restricted the use of the word “thermos” by Aladdin “in its literature, in its advertising and on its labels” except as limited in its Conclusion of Law, paragraph 5, subparagraphs (a) through (g). Essentially, these restrictions called for the use of “thermos” in lower case type and the addition of the possessive of “Aladdin” preceding its use. More specifically, the court construed its decree to “prohibit the use of an initial capital ‘T.’ ” (Namely, from invading the trade-mark “Thermos”). The court stated that in its opinion the likelihood of confusion “is a matter for the court to determine from the circumstances of each case.” 207 F.Supp. at 26. Although the court found that “reasons for permitting any generic use of ‘thermos’ under the circumstances of this case are to permit the natural enrichment of the language and to prevent the plaintiff from maintaining a monopoly of the word,” id. at 27, that “on a balancing of the considerations of competitive disadvantage to the defendant [Aladdin] against the risk that a minority of consumers who know, recognize and use ‘thermos’ as a trade-mark may be deceived, the latter must be given primary consideration and it is only in the event that the possibility of confusion engendering such deceit can be removed that consideration can be given to the danger of plaintiff's monopoly as a reason for allowing the defendant and others to use ‘thermos’ generically.” Id. at 27. To remove this possibility of confusion, the court imposed the restrictions.
Upon the appeal, this court carefully analyzed the restrictions imposed and unanimously affirmed, saying “These conditions provide a sound and proper balancing of the competitive disadvantage to defendants arising out of plaintiff’s exclusive use of the word ‘thermos’ and the risk that those who recognize ‘Thermos’ as a trademark will be deceived,” and held that “plaintiff is entitled to retain the exclusive right to all of its present forms of the trademark *37‘Thermos’ without change. ” 321 F.2d at 581.
In 1968 Aladdin sought to modify the 1963 decree by eliminating the injunction against use of the word “thermos” “in its literature, in its advertising” and confining the injunction only to use “on its labels.” The court (again Judge Anderson who as the author of the original decree was familiar with the situation) received the evidence which Aladdin offered, including many exhibits, considered Aladdin’s complaint that it could not challenge the buying public by the question “who makes the best thermos?” and the testimony of Aladdin’s advertising agent and concluded “that there is an insufficient showing of hardship to justify modification of the decree” ; that “Aladdin has not shown that the danger at which jf 5 was directed has been eliminated through changing circumstances”; and that “There is no evidence to show that the substantial minority which the court sought to protect has diminished in size, or that the use of ‘thermos’ generically for several years has removed the possibility that this group will continue to be confused.” Accordingly, Judge Anderson denied the motion to relieve Aladdin from the restrictions of the original decree.
The majority now not only substitute themselves for Judge Anderson in his fact-finding function but also overrule, in effect, the unanimous affirmance by another panel of this court of the original decree. Thus, they say that “where a better appreciation of the facts in light of experience indicates that the decree is not properly adapted to accomplishing its purposes,” a power in equity exists to modify. This can only mean-that the majority, as two judges, believe that they have a “better appreciation of the facts” than four other judges including, in particular, the judge who saw and heard the witnesses and who has been familiar with the case for over five years. Judge Anderson knew then, as they say now, that he was “free to grant relief if Aladdin could show that, in the light of experience, the detailed provisions of the decree seriously and needlessly impeded its exploitation of the generic term and that modification was necessary to achieve the results intended, even though this would take the form of reducing the restrictions imposed upon it.” [Emphasis added.] But Judge Anderson specifically held that their “if” assumption had not been established.
Nor did Judge Anderson acquire a “rigidity” of mind by a misconstruction of the Swift and United Shoe cases. To the contrary, his analyses of these cases demonstrate that he was fully aware of the extent of their holdings. Each dealt with an entirely dissimilar situation. Even their judicial generalities are inapplicable except for their teaching “that a decree * * * may not be changed in the interests of the defendants if the purposes of the litigation as incorporated in the decree * * * have not been fully achieved.” 286 U.S. at 117-118, 52 S.Ct. at 463.
Moreover, in the original decree restraining Aladdin’s use of “thermos,” Judge Anderson retained jurisdiction “for the purpose of * * * modification or termination of any provisions thereof * * It is thus apparent that he knew, and intended the litigants to know, that the decree could be changed, if change was in fact warranted. In Judge Anderson’s decision, he stated that the “central issue” in deciding whether to grant modification was “whether [the relief requested] can be made without prejudice to the interests of the class whom this particular restraint was intended to protect.” In light of all the evidence, he concluded that change was not warranted because the “substantial minority” who rely on the “thermos” trade-mark, and whom the court sought to protect, would be hurt by relaxing the restraints as Aladdin had sought. Judge Anderson, therefore, undertook precisely the careful and flexible approach which the majority claim he should have taken.
Naturally, Aladdin would like to undo Judge Anderson’s original decision and *38our affirmance thereof. To delete the restraint from “its literature” and from “its advertising” would, in substance, accomplish a reversal of these decisions. The purchasing public is induced by literature and advertising into a state of mind where it desires to have the object advertised. Only after physically acquiring the object is its proximity usually sufficiently close so that the label may be seen and inspected. Thus the very deception which the four judges here would endeavor to prevent will have been attained through literature and advertising.
Since I find no basis in law or in fact for disturbing Judge Anderson’s fair and equitable decision, I would affirm.