Full opinion text
MIZE, District Judge. This lawsuit involves a controversy between the plaintiff, Plumble Oil & Refining Company, hereinafter referred to as Humble, and Standard Oil Company of Kentucky, hereinafter referred to as Kentucky and grows out of a contract between the two, entered into on the 27th day of January, 1955, involving the right to use the trade name ESSO. Involved also are two other contracts. The first contract was executed on March 24, 1934 between Penóla, Inc., plaintiff’s predecessor, and defendant, and by its terms appointed defendant the sole distributor in the 5-state area here involved of ESSO marine lubricants and other petroleum products supplied by or under authority of plaintiff’s predecessor. This contract is an exhibit to the amended complaint. The second contract, an exhibit to the amended complaint, was executed on September 15, 1938 and was between Standard Oil Company of New Jersey, the plaintiff’s predecessor, and the defendant, Kentucky, by which Kentucky was granted the privilege of using the trade mark ESSOTANE in the 5-state area here involved. The 5-state area here involved consists of the states of Alabama, Georgia, Florida, Kentucky and Mississippi. The last contract, and the controlling contract, was executed on the 27th of January 1955 between Esso Standard Oil Company, a Delaware corporation, plaintiff’s predecessor, and the Standard Oil Company of Kentucky, the defendant herein, and is set out hereinbelow first. In order to reach a correct solution of the problem involved it is necessary to consider each and every sentence and paragraph of the contracts, and for that reason they are set out verbatim. “TRADEMARK LICENSE AGREEMENT This Agreement made this 27th day of January, 1955 by and between ESSO STANDARD OIL COMPANY (hereinafter called ESSO STANDARD), a Delaware corporation having an office at 15 West 51st Street, in the City and State of New York; and STANDARD OIL COMPANY (KENTUCKY) (hereinafter called KENTUCKY), a Kentucky corporation having an office in the Starks Building, City of Louisville, State of Kentucky: WITNESSETH: Whereas ESSO STANDARD is the owner of the trade marks listed in the attached ‘Schedule of Esso Standard Trade Marks’ together with the good-will of the business appertaining thereto; and Whereas, KENTUCKY for many years has marketed products purchased from ESSO STANDARD in Alabama, Florida, Georgia, Kentucky and Mississippi under these Esso Standard trade marks without giving rise to any confusion with KENTUCKY’S trade marks which during the same period have been actively used by KENTUCKY in the same states; and Whereas, it is now desired by ESSO STANDARD and KENTUCKY to set forth specifically the terms and conditions governing KENTUCKY’S use of these Esso Standard trade marks or any other Esso Standard trade marks used hereafter by KENTUCKY in connection with products supplied by or on behalf of ESSO STANDARD: ESSO STANDARD and KENTUCKY agree as follows: (1) KENTUCKY recognizes ESSO STANDARD’S ownership of and the exclusive right to the use of these Esso Standard trade marks in the States of Alabama, Florida, Georgia, Kentucky and Mississippi. KENTUCKY recognizes also the validity of the registrations of these Esso Standard trade marks at the U. S. Patent Office and in the States named above. KENTUCKY agrees that neither while this agreement is in force nor at any time thereafter will it claim any right, title or interest in or to any of these Esso Standard trade marks. Advertising or other representations by KENTUCKY referring to these Esso Standard trade marks, products or otherwise shall be conducted and made in such manner as will not impair or endanger ESSO STANDARD’S ownership of or right to use these trade marks in Alabama, Florida, Georgia, Kentucky and Mississippi or the validity of its trade mark registrations during or after the termination of this agreement. (2) KENTUCKY agrees to cooperate with ESSO STANDARD in the protection of these Esso Standard trade marks in the States referred to by promptly informing ESSO STANDARD of any encroachments or misuses of these Esso Standard trade marks which come to KENTUCKY’S attention and KEN-TYCKY agrees also to notify ESSO STANDARD promptly of any pending or threatened litigation involving the trade marks. Any litigation involving these Esso Standard trade marks shall be at the expense of and under the complete control of ESSO STANDARD. (3) ESSO STANDARD shall furnish KENTUCKY current information and instructions regarding the labeling, marking, package designs and color schemes to be used by KENTUCKY in the sale of products under these Esso Standard trade marks, including instructions regarding trade mark registration notices where considered necessary by ESSO STANDARD. During or after the life of this agreement, KENTUCKY will not sell or offer for sale products under trade marks, labels, markings or package designs, confusingly similar to any of these Esso Standard trade marks, labels, markings or package designs used by KENTUCKY under the terms of this agreement. (4) KENTUCKY agrees to take all reasonable steps to insure that all products supplied to it in bulk for resale under these Esso Standard trade marks, labels and markings are not in any way contaminated or adulterated and that all packaged products sold by KENTUCKY under these Esso Standard trade marks are of the same quality as the bulk products supplied by ESSO STANDARD or comply with ESSO STANDARD’S specifications for products bearing the, particular ESSO STANDARD brand. ESSO STANDARD or its designated inspector shall have the right to inspect KENTUCKY’S plants and methods of packaging and draw samples at stations, bulk plants or otherwise where products to be sold under these Esso Standard trade marks are being filled into containers by KENTUCKY or its representatives to insure that the quality of the branded products are maintained throughout the packaging operation and to verify that the labeling and packaging is in accordance with the program adopted or approved by ESSO STANDARD. (5) KENTUCKY agrees that whenever any of these Esso Standard trade marks are used by KENTUCKY in advertising copy or promotional material the status of the brand as a registered trade mark of the manufacturer shall be indicated. This shall be done by use of the statutory trade mark registration notice — ‘®’. (6) No products shall be sold by KENTUCKY under these Esso Standard trade marks, labels or markings unless such products shall have been supplied by ES-SO STANDARD or under its authorization. (7) The permission to KENTUCKY to use these Esso Standard trade marks, labels and markings herein granted is personal to KENTUCKY and shall not be transferable, assignable or inure to the benefit of any successor or assignee of KENTUCKY without the written consent of ESSO STANDARD first had and obtained. (8) This agreement shall be subject to cancellation at any time by either party giving to the other not less than ninety (90) days’ wx-itten notice in advance. (9) Upon the termination or cancellation of this agreement, KENTUCKY agrees to discontinue promptly all use of these Esso Standard trade marks and KENTUCKY agrees also that any and all rights to the use of these trade marks as authox-ized by this agreement shall upon the termination or cancellation of the agreement revert to ESSO STANDARD. (10) Nothing contained herein shall be construed to limit or restrict the right of KENTUCKY to sell petroleum or other products under trade marks, labels and markings not confusingly similar to these Esso Standard trade marks, labels and markings. IN WITNESS WHEREOF, the parties hereto have caused these presents to be executed by their duly authorized officers the day and year first above written. ESSO STANDARD OIL COMPANY By R. H. SCHOLL R. H. SCHOLL VICE PRESIDENT STANDARD OIL COMPANY (KENTUCKY) By W. G. VIOLETTE - 0 - Schedule of 'Esso Standard Trade Marks Trade Mark U. S. Pat. Off. Reg. No. Goods ACTO 550,625 Petroleum Sulfonates ACTOL 198,782 Motor Oil ANDOK 310,097 Lubricating Grease ARACAR 303,931 Lubricating Oil ARAPEN 324,745 Lubricating Grease AROX 315,950 Lubricating Oil BAROSA 340,393 ft tt BASEKOTE 514,173 “ Grease Trade Mark U. S. Pat. Off. Reg. No. Goods BAYOL 320,815 White Oil BAYOL 320,899 tt BAYOL 322,111 tt BEACON 114,684 Lubricating Grease BEACON 232,598 tt tt BRYMUL 315,952 tt tt CALORIA 88,392 “ Oil CAMBAR 315,953 “ Grease CANTHUS 162,379 “ Oil CANTONA 305,427 tt tt CARUM 176,079 Lubricating Grease CASTAN 162,371 “ Oil CAZAR 315,585 “ Grease COBLAX 305,426 “ Oil CORAY 307,884 “ Oil CYLANTO 305,423 tt tt CYLESSO 305,424 it tt CYLMAR 305,437 tt tt CYLOTTE 305,422 tt tt DIOL 235,482 tt ft DORTAN 318,951 Cutting Oil DRAW-EX 187,284 Lubricating Grease DRUID 162,378 Lubricating Oil ELCMA 315,954 Rust Preventive and Protective Coating EPIC 314,675 Lubricating Grease Lubricating Oil ESSO 176,408 Motor Oil ESSO EXTRA • Aviation Oil Turbine Oil ESSOFLEET Not Registered Motor Oil ESSOLUBE 285,285 Motor Oil ESSOTEX 323,839 Textile Treating Oils and 324,244 Textile Machine Lubricant ESSTIC 305,436 Lubricating Oil ESTAN 315,502 Lubricating Grease FANOX 162,375 Lubricating (Cutting Oil) FEBIS 162,374 tt tt tt FRACTOL 149,248 Refrigeration Oil FYBROLEUM 315,567 Lubricating Grease KUBOLA 315,470 tt tt KUTWELL 235,449 Cutting Oil 520,206 tt ft LADEX 316,087 Lubricating Grease LUSTAN 356,944 Lubricating Oil MARCOL 161,305 White Oil 235,373 tt tt 235,645 it tt 261,793 it it Trade Mark U. S. Pat. Off. Reg. No. Goods MENTOR 307,850 Lubricating Oil MILL COT 190,978 tt it MORNOP 316,088 “ Grease MUNTAN 316,089 tt it NATOR 316,663 Lubricating Oil NORVA 307,883 Lubricating Grease NUSO 162,896 Lubricating Oil and 187,777 Ink Reducer NUTO 307,887 Lubricating Oil OBRA 315,547 “ Grease PALUBCO 87,796 Lubricating Grease and 350,607 Paints and Paint Oil PEETAL 315,548 Lubricating Grease PENNEX 223,202 Cutting Oil PENOLA 162,576 Lubricating Grease PEN-O-LED 367,419 tt tt PRIMOL 250,426 Heavy White Oil 252,537 tt tt tt ROXTONE 162,380 Lubricating Oil RUST-BAN 290,218 Rust Preventives and 359,310 Protective Coatings 360.803 360.804 364,370 SEALOL 168,137 Refrig. Oil 444,206 tt tt SOLNEK 316,093 Lubricating Grease SOLVESSO 318,870 Solvents 318,875 324,419 SPINESSO 325,863 Lubricating Oil TFLURA 307,885 tt tt TERESSO 305,438 tt tt TERVAN 378,570 Wax THREDKOTE Lubricating Grease UNIFLO 312,296 Motor Oil UNIVIS 162,372 Lubricating Oil and Hydraulic Medium UNIVOLT 319,614 Transformer Oil VAN CALORIA Lubricating Oil VAN DRUID “ Grease VAN ESTAN “ Grease VAN TALGAR 359,979 if tt VARSOL 244,001 Solvents 250,562 if 250,866 tt VELNER 317,421 Lubricating Grease WYROL 150,122 White Oil 154,393 Trade TJ. S. Pat. Off. Mark Reg. No. Goods BARS AND CIRCLE DESIGN 194,116 Lubricating Oils and Greases ESSO OVAL 347,466 tt tt tt t< ESSO OVAL 347,467 tí tt ft ti (in colors) FAX AM 162,373 Lubricating Oils NECTON 310,082 tt tt VALESSO 305,428 tt tt ALERT 315,949 Lubricating Greases CASTROLEUM 174,898 tt it COMAL 335,189 it it ESSOROD 325,486 Lubricating Greases FIRMAX 305,425 ft tt NAKTA 315,546 it it NEBULA 316,090 it tt SURETT ] 316,094 tt t* VAN SURETT J VAN PEETAL Covered by No. 315,548 tt tt TOCAR 315,485 tt tt PARMO 153,870 Petrolatums OYLO-MAR 316,668 Marine Oils ESSO-MAR 307,919 ti tt MARINEX 316,100 tt it MARMAX 307,849 tt a STER-MAR Applied for it it TELO-MAR 316,101 tt tt TEROLA 316,098 tt tt TRO-MAR 538,259 it it ZERO-MAR 316,099 tt it MAROLEUM 319,621 Marine Grease The first contract was dated March 24, 1934 and reads as follows: “AGREEMENT, made in duplicate, this 24th day of March, 1934, between PENOLA INC., a Delaware corporation, of Pittsburgh, Pennsylvania, hereinafter called ‘PENOLA’, and STANDARD OIL COMPANY (KENTUCKY), a Kentucky corporation, of Louisville, Kentucky, hereinafter called ‘KENTUCKY’, WITNESSETH; WHEREAS, PENOLA owns the ES-SOMARINE trademarks shown on the attached schedule ‘A’ which is hereby made a part hereof together with the business and good will pertaining thereto; and WHEREAS, KENTUCKY maintains a marketing organization and markets marine lubricants and other petroleum products in the States of Kentucky, Alabama, Florida, Georgia and Mississippi; and WHEREAS, PENOLA proposes to establish and maintain such formulae and specifications, tests, processes and requirements as may be necessary to insure sale over as wide a territory as practicable under said ESSOMARINE trademarks of products of uniformly high quality especially suitable for marine purposes, and to require said products sold under said ESSOMARINE trademarks everywhere to conform to said formulae and specifications, tests, processes and requirements: and WHEREAS, ESSOMARINE products as used herein refers to products sold by PENOLA under ESSOMARINE trademarks, which products are designed especially for marine purposes: and WHEREAS, PENOLA and KENTUCKY wish to cooperate for the purpose of making said products available in said States under the ESSOMARINE trademarks to all who may require them, NOW, THEREFORE, in consideration of the premises and of the mutualities hereof, it is agreed as follows: 1. PENOLA hereby appoints KENTUCKY sole distributor for the States of Kentucky, Alabama, Florida, Georgia and Mississippi during the term hereof, of said ESSOMARINE products, and KENTUCKY accepts such appointment and agrees to act as such sole distributor upon the specific understanding that PENOLA is and shall continue to be the owner in said States of any and all right, title and interest in and to said ESSO-MARINE trademarks, and that KENTUCKY will claim no right, title or interest in or to any of the same either during the life of or after the termination of this agreement, and will not use said ESSOMARINE trademarks upon any except said ESSOMARINE products conforming to PENOLA’S said specifications and will not buy such products from other sources except with PENOLA’S specific approval. KENTUCKY agrees to cooperate with PENOLA in maintaining and protecting said trademarks and PENOLA’S ownership thereof. 2. PENOLA will not authorize any other distributor to sell said products or any of them in said States during the term hereof without written consent of KENTUCKY. 3. In connection with said appointment PENOLA hereby agrees to sell and deliver to KENTUCKY, and KENTUCKY agrees to purchase and receive from PENOLA said products delivered on board cars or other means of transportation at such points of origin as PENOLA may elect, it being understood that title to said products shall pass to KENTUCKY at that time and place and all risk and responsibility thereafter shall be in KENTUCKY. A list of said shipping points with the prices for each product delivered at such points, are listed in Schedule ‘B’ attached hereto and made a part hereof. It is understood that the prices which KENTUCKY shall pay PENOLA are subject to change by PENOLA from time to time. 4. When defivesy ef said predncfa is made in eafeead lets KENTUCKY shall safes payment therefor within thirty -(39)-days fsom date ef shipment and when delivery is made in less than easlead lets Payment shall be made within thirty days from date of shipment, es es feef-ese fee fifteenth day ef the month following that in which delivery is made, (GHT) 5. It is agreed that any duty, tax or other charge PENOLA or other supplier designated by PENOLA may be required by any Federal, State, municipal or other law now in effect or hereafter enacted, to collect or pay with respect to the sale, delivery and/or use of the commodities covered hereby will be added to the prices provided for herein and be paid by Kentucky. 6. Said products shall always be sold under said ESSOMARINE trademarks and the containers and labels shall be as nearly uniform everywhere as conditions permit, PENOLA keeping KENTUCKY informed from time to time of any changes. 7. All orders shall be filled with reasonable promptness except that in case of fire, riots, strikes or accidents or other conditions whether or not similar in character to those specifically named, which unavoidably stop the making of deliveries, deliveries contracted for maybe cancelled or partially cancelled as the case may require upon written or telegraphic notice to KENTUCKY. Such interruption of deliveries however, shall not invalidate the remainder of this agreement but upon removal of the cause of the interruption deliveries shall be continued as before. 8. KENTUCKY agrees to carry continuously and have readily available, reasonable -síáSeient quantities of said products, to enable it to meet promptly current demands of the trade in said States, and to make every reasonable effort and use proper means to develop as far as practicable the trade where in said products both wholesale and retail. 9. Te c-aahle PBNQ-LA: to feo infeaffitsd oá ths situataoB fe said States KENTUCKY -agseos to fosaisfe PENOLA at sach timos as PENOLA may -reqsestj set efteeoa tfeaa -3aontMyT reports shewing the qsaatity e£ -each size ©L eaefe pseAttsfe whis-h Las feeea «eié during tfes pooeAiag meatfe ea= sfeee the previous sepeofe- 10. PENOLA will conduct such national publicity as it may deem fit and bear all expense therefrom, it feeisg as--Ae-rsteod,' feewever7 that KENT¥CK¥j is -m-afelBg every reusonafelo effort aad ssisg aH -proper meass to Aevel-ep trade ie said peod--Bot% will oesdaet appropriate leeal pafe-Estty and advertising at its ©wa eapesser 11. KENTUCKY will pay or assume all expenses connected with the sale and distribution of said products to the trade -and to the public generally in said States. 12. In the event any Federal, State •or Municipal government or anyone holding authority therefrom or anyone holding authority under the National Industrial Recovery Act or any approved code ■applicable to the oil industry fixes prices for products on which prices are quoted therein, which fixed prices shall be an increase of the prices quoted herein, it will be necessary to abide by such stipulations and obey the law. If any such Federal or State government shall fix the price or value of any crude oil or whatever material is used in the production of the commodities deliverable hereunder at higher prices than those now prevailing, or shall restrict the hours of labor at less or fix the wages to be paid therefor at more than were prevailing on the date of this agreement, prices provided or permitted herein shall be increased by the amount of the resulting increased cost to PENOLA and those furnishing it with commodities sold hereunder, or with material from which such commodities are manufactured. If any such government or state authority shall establish conditions of delivery different from those provided hereunder then appropriate changes shall be made in the conditions of delivery specified hereunder. Appropriate changes shall be made in the prices specified or permitted hereunder to compensate PENOLA for any increased cost of such new conditions of delivery. If such Federal government or State authority fixes prices, costs or conditions of delivery as contemplated hereunder, and thereafter refixes them at other levels or under other conditions, then the prices and conditions hereunder shall be again changed to conform thereto. In the event of the depreciation of the currency of the United States by inflation, reduction of the gold content of the dollar, issuance of fiat money, extension of credit or otherwise, the prices provided or permitted hereunder may at PENOLA’S option be increased proportionately to the depreciation of the currency and/or the increase of PENOLA’S cost respectively. Naturally, in the event of difference of opinion regarding the application or effect of the previous provisions, or in the event of any increase in PENOLA’S price to KENTUCKY resulting therefrom KENTUCKY may terminate this agreement on fifteen (15) days’ written notice. 13. This agreement shall be for a term of five (5) years from the date hereof and continue from year to year thereafter until either of the parties shall give six (6) months’ written notice to the other prior to the end of any such term that this agreement shall not be renewed. 14. In case either one of the parties hereto fails to carry out any conditions of this agreement the other party reserves the right to cancel the same after due demand in writing addressed to the first party. If at the end of thirty (30) days from the date of the receipt of such demand, or the date when said demand should be received in the normal course of the mails, the party violating the agreement has not complied with the demand the agreement shall immediately end. The above formalities duly carried out shall ipso facto cancel the agreement without the necessity of any other steps being taken. 15. In case either party wishes to terminate this agreement for other than violations thereof it may do so by serving six (6) months notice in writing upon the other party of the intention to terminate ; such notice to specify the reason therefor. If the specified reason for such intention to terminate shall be removed, in the judgment of PENOLA, and KENTUCKY, before the expiration of the period of said notice, said termination shall not become effective and the notice shall be withdrawn; but if the reason for intention to terminate is not so removed such termination shall become effective upon the expiration of the period of said notice and this agreement terminate ipso facto without further action by either party. 16. It is further understood and agreed that even though this agreement is terminated pursuant to either of said two preceding paragraphs KENTUCKY’S obligation to pay in full for all products delivered hereunder to KENTUCKY in accordance with KENTUCKY’S directions shall not be affected. 17. Upon the expiration or termination of this agreement KENTUCKY shall have no further rights to the use of ES-SOMARINE trademarks and shall make no claim thereto or against the use thereof in said States by PENOLA or other duly authorized distributors of said ESSOMARINE products. 18. This agreement shall not be assigned or transferred by KENTUCKY directly or indirectly without the written consent of PENOLA. Upon KENTUCKY’S selling, leasing or otherwise disposing of or merging or consolidating with another this agreement, if PENOLA so elects, shall immediately terminate and PENOLA shall not be under any obligation to deliver to KENTUCKY further quantities of the products herein agreed to be sold and delivered to KENTUCKY. IN WITNESS WHEREOF, the parties hereto have caused these presents to be duly executed the day and year first above written. PENOLA INC. C. C. LUCAZETTE By - President STANDARD OIL COMPANY (KENTUCKY) W. E. SMITH By President Attest: M. H. RAINES Secretary Attest: THOS. C. M. GOODWIN Secretary” The Agreement dated September 15, 1938 reads as follows: “AGREEMENT 1. The STANDARD OIL COMPANY OF NEW JERSEY, a Delaware Corporation, with offices at 26 Broadway, New York, New York (hereinafter called JERSEY), hereby grants to STANDARD OIL COMPANY (KENTUCKY), a Kentucky corporation with offices at Louisville, Kentucky (hereinafter called KENTUCKY), the privilege of using in marketing and advertising the trade mark or brand name ESSOTANE (registered by JERSEY in the United States Patent Office under No. 331,486 dated January 7, 1936) in the territory wherein KENTUCKY now markets petroleum products, in connection with the sale of ESSO-TANE (commercial propane) purchased by KENTUCKY from JERSEY and from those authorized by JERSEY to sell ESSOTANE. 2. KENTUCKY agrees that it will use said brand ESSOTANE only in connection with the sale of ESSOTANE (commercial propane) purchased from JERSEY or from those authorized by JERSEY to sell ESSOTANE. 3. KENTUCKY agrees that it will make no claim to the right to use said brand ESSOTANE except in connection with the sale of ESSOTANE (commercial propane) purchased as aforesaid. 4. KENTUCKY agrees that it will make no objection to the use by JERSEY •or those authorized by JERSEY to sell ESSOTANE, or their customers, of said brand ESSOTANE in connection with their sale of ESSOTANE (commercial propane). 5. KENTUCKY agrees that the privilege above granted to KENTUCKY by JERSEY to use said brand ESSOTANE shall be withdrawn by JERSEY whenever and to the extent that KENTUCKY •discontinues sales of ESSOTANE (commercial propane) purchased as aforesaid by KENTUCKY. 6. KENTUCKY agrees that it will promptly discontinue use of said brand TSSSOTANE whenever and to the extent that KENTUCKY discontinues sales of ESSOTANE (commercial propane) purchased as aforesaid by KENTUCKY. 7. KENTUCKY shall not permit its sub-distributors or customers to market or advertise said ESSOTANE for sale, •or authorize or permit others to whom they sell to market or advertise ESSO-TANE in any territory other than within that hereinabove referred to. KEN-TYCKY agrees that after receipt of said ESSOTANE in tank cars or otherwise, KENTUCKY shall place or cause to be placed said ESSOTANE in appropriate cylinders for sale to the trade, KENTUCKY providing, or causing to be provided, said cylinders at its own expense, but the type and quality of cylinders are to meet specifications prescribed by the Interstate Commerce Commission. Said product ESSOTANE (commercial propane) shall be sold under said trade mark or brand ESSOTANE, and the labels on the cylinders containing said ESSOTANE shall show said trade mark or brand ESSOTANE by stencilling, painting or otherwise marking, the word ESSOTANE on each and every one of the cylinders. 8. KENTUCKY agrees, and agrees to require its sub-distributors to agree, not to claim any right, title or interest in or to said trade mark ESSOTANE, the labels, trade marks, and designs, or any of them, pertaining to said trade mark and product, during the life of or after the termination of this agreement. KENTUCKY agrees, and agrees to require its sub-distributors of ESSOTANE to agree, to discontinue the use in any manner of said trade mark, legends, labels and designs upon the expiration or earlier termination of this agreement, or in the case of the sub-distributors to discontinue such use upon the termination of KENTUCKY’S agreement with sub-distributors. KENTUCKY shall include in its agreements with each of its sub-distributors the right to repurchase from each of such sub-distributors stock of ESSOTANE remaining on hand with the sub-distributor at the time of the termination of the sub-distributor’s agreement, the price to be paid by KENTUCKY for any such re-purchased stock of ESSOTANE to be the price previously paid KENTUCKY by its sub-distributor. 9. The ESSOTANE (commercial propane) to be delivered hereinunder shall at least equal the current specifications for commercial propane. 10. This agreement shall continue for a period of five years from the date hereof with the understanding that it shall continue thereafter for periods of one year each, unless and until terminated by either party giving the other party six months notice in writing of such termination ; it being understood that there shall be no termination within the first five-year period, except as otherwise provided herein. In the event of violation of any of the provisions hereof by one party, the other party may terminate this agreement upon thirty days written notice with the understanding, however, that if the violation or other failure causing the notice of termination shall have been cured prior to the expiration of said thirty day period, such notice of termination shall not become effective. 11. This agreement is not assignable or transferable directly or indirectly without the written consents of both JERSEY and KENTUCKY. In witness whereof, the parties hereto have caused these presents to be executed this 15th day of September, 1938. (SEAL) STANDARD OIL COMPANY OF NEW JERSEY By E. A. HOLBEIN (C.D.P.) Vice President (G.H.T.) (SEAL) STANDARD OIL COMPANY (KENTUCKY) By W. G. VIOLETTE Vice President ATTEST: W. F. QUICK Asst. Secretary ATTEST: DAVID F. COCKS Secretary” -O- The pleadings consist of the original complaint, the amended complaint, the answer of the defendant and counterclaim of the defendant and the answer of the counter defendant to the counter complaint, and in order to grasp all the issues, they can be stated best by quoting in full, omitting the formal parts, the above pleadings, as they bring into view the entire picture in so far as issues are concerned: “COMPLAINT 1. Plaintiff is a Delaware corporation and has its principal office and place of business at No. 1216 Main Street, Houston, Texas. 2. Plaintiff is informed and believes and therefore avers that defendant is a Kentucky corporation and has an office and place of business and does business, at No. 200 North State Street, Jackson, Mississippi, in the Southern District of Mississippi, Jackson Division. 3. This action is brought under the Federal Declaratory Judgment[s] Act, 28 U.S.C. Sections 2201 and 2202, for a declaration and judgment as to plaintiff’s rights in an actual controversy between plaintiff and defendant within this Court’s jurisdiction. The jurisdiction of this Court rests upon the ground that this is a civil action arising between citizens of different states wherein the amount in controversy exceeds the sum or value of ten thousand dollars ($10,-000.), exclusive of interest and costs, and also upon the ground that this civil action arises under the trademark laws of the United States, viz., the TradeMark Act of July 5, 1946, 60 Stat. 427, 15 U.S.C. Section 1051 et seq., and under the Judicial Code, 28 U.S.C. Section 1338. 4. Since long prior to any of the acts of defendant complained of in this complaint, plaintiff (which term includes its predecessors) has been and now is manufacturing, and has been and now is selling various petroleum products in interstate commerce including sales into the States of Mississippi, Alabama, Florida, Georgia and Kentucky. 5. Since long prior to any of the acts-of defendant complained of in this complaint, plaintiff has been continuously and now is using its trademark ESSO and other trademarks which include ESSO on or in connection with the sale, offering for sale and advertising of such products. 6. From the time of the introduction on the market of the said products bearing the trademark ESSO and bearing other trademarks which include ESSO, said products of plaintiff have become and now are widely known and recognized in Mississippi and elsewhere by the trademark ESSO and by other trademarks which include ESSO which trademarks are closely and universally associated with plaintiff and its said products and by which plaintiff’s said products are known to the public and by which their source and origin are identified. 7. Plaintiff is the owner of the following United States trademark registrations, among others, which were duly issued by the United States Patent Office and which are presently outstanding, validly subsisting and uncancelled: Trademark Registration No. Date Issued ESSO 176,408 November 27, 1923 ESSOLUBE 285,285 July 21,1931 ESSOMARINE 307,919 November 14, 1933 ESSO-MAR 316,711 September 4, 1934 ESSOTEX 323,839 May 7, 1935 ESSOTEX 324,244 May 14, 1935 ESSOROD 325.486 June 25, 1935 ESSOTANE 331.486 January 7, 1936 ESSO in Oval 347.466 June 29, 1937 ESSO in Oval 347.467 June 29, 1937 8. Plaintiff is the owner of the following registrations which were duly issued by the Department of State of the state of Mississippi and which are presently outstanding, validly subsisting and un-cancelled: Trademark Registration No. Date Issued ESSO None July 1, 1938 ESSO in Oval None July 1, 1938 ESSOLENE None July 1, 1938 ESSOLUBE None July 1, 1938 ESSOTANE None July 1, 1938 OVALE R-39 March 11, 1946 9. Under date of March 24, 1934, Penóla, Inc., a predecessor of plaintiff, •and defendant, entered into an agreement in writing wherein Penóla Inc. appointed ■defendant and defendant agreed to act as distributor in the States of Mississippi, Alabama, Florida, Georgia and Kentucky, of products purchased by defendant from Penóla Inc., and sold by defendant under Penóla Inc.’s trademarks, including ESSOMARINE. In the said agreement, defendant agreed that Pen-óla Inc. was and would continue to be the owner in the said states of any and all right, title and interest in and to the said trademarks, and that defendant would claim no right, title or interest in or to any of the said trademarks either during the life or of after the termination of the said agreement. 10. Under date of September 15,1938, Standard Oil Company of New Jersey, a predecessor of plaintiff, and defendant, entered into an agreement in writing wherein defendant was granted the privilege of using the trademark ESSOTANE in connection with commercial propane purchased by defendant from said Standard Oil Company of New Jersey and sold by defendant In the States of Mississippi, Alabama, Florida, Georgia and Kentucky. In the said agreement, defendant agreed that it would make no objection to the use by said Standard Oil Company of New Jersey or those authorized by said Standard Oil Company of New Jersey to sell commercial propane under the trade mark ESSO-TANE or their customers, of the said trademark ESSOTANE in connection with their sale of commercial propane, and defendant further agreed not to claim any right, title or interest in or to the said trademark ESSOTANE either during the life of or after the termination of the said agreement. 11. Under date of January 27, 1955, Esso Standard Oil Company, a predecessor of plaintiff, and defendant, entered into an agreement in writing wherein defendant was granted permission to use the trademark ESSO and other trademarks which include ESSO in connection with products supplied to defendant by said Esso Standard Oil Company and sold by defendant in the States of Mississippi, Alabama, Florida, Georgia and Kentucky. In the said agreement, defendant recognized said Esso Standard Oil Company’s ownership of and exclusive right to the use of the trademark ESSO and the other trademarks which include ESSO in the said states and agreed that neither while the said agreement was in force nor at any time thereafter would it claim any right, title or interest in or to any of the said trademarks of said Esso Standard Oil Company. 12. Plaintiff is informed and believes and therefore avers that the agreements of March 24, 1934, September 15, 1938 and January 27, 1955, which are referred to in Paragraphs 9, 10 and 11 above, are now in full force and effect, and plaintiff, by virtue of mex*ger or assignment or both, is now the contracting party with defendant with its consent in each of the said agreements. By virtue of the said agreements, defendant has recognized plaintiff’s ownership of and exclusive xúght to the use of the trademark ESSO, either alone or in combination with other language, on and in connection with petroleum px'oducts, in the States of Mississippi, Alabama, Florida, Georgia and Kentucky. 13. Plaintiff is informed and believes and therefore avers that defendant has been and now is using plaintiff’s trademarks ESSO, ESSOMARINE, ESSO-TANE and other trademarks which include ESSO pursuant to the agreements which are set forth in Paragraphs 9, 10 and 11 above on and in connection with the sale, offering for sale and advertising, in the States of Mississippi, Alabama, Florida, Georgia and Kentucky and in interstate commerce of various petroleum products which it has purchased from plaintiff or its affiliated companies. 14. The actual controversy between plaintiff and defendant is that defendant claims that plaintiff may not sell, offer for sale, or advertise petroleum products of any kind under the trade-max-k ESSO in the States of Mississippi, Alabama, Florida, Georgia and Kentucky; whereas, plaintiff claims that it has the right and the privilege to sell, offer for sale and advertise petroleum products of any and every kind under the trademark ESSO in the said states. Defendant has threatened plaintiff that, if plaintiff were to sell any ESSO products in any of the said states, defendant would be obliged to and would institute suit against plaintiff. WHEREFORE, plaintiff prays that this Court will declare the rights and legal relations of the parties in respect of the controversy hereinabove set forth and to that end demands that this Court adjudge and decree: 1. That plaintiff has the right to sell, offer for sale and advertise petroleum products of any and every kind under its trademark ESSO and any of its other trademarks which include ESSO in the States of Mississippi, Alabama, Florida, Goergia and Kentucky. 2. That defendant has no right or pxdvilege to sell, offer for sale or advertise petroleum products of any kind under the trademark ESSO or any other trademarks which include ESSO, except as it is expressly permitted to do so in the States of Mississippi, Alabama, Florida, Georgia and Kentucky, pursuant to the terms and conditions of the agreements in writing which are set forth in Paragraphs 9, 10 and 11 above. 3. That the sale, offering for sale and advertising by plaintiff of petroleum products of any and every kind under its trademark ESSO or any of its other trademarks which include ESSO in the States of Mississippi, Alabama, Florida, Georgia and Kentucky, does not constitute a breach of any of the agreements in writing which are set forth in Paragraphs 9, 10 and 11 above. 4. That the sale, offering for sale and advertising by plaintiff of petroleum products of any and every kind under its trademark ESSO or any of its other trademarks which include ESSO in the States of Mississippi, Alabama, Florida, Georgia and Kentucky, does not constitute infringement of any rights of defendant or unfair competition with defendant. 5. That defendant be permanently enjoined and restrained from interfering in any manner with plaintiff’s exercise of its rights to sell, offer for sale and advertise petroleum products of any and every kind under its trademark ESSO or any of its other trademarks which include ESSO in the States of Mississippi, Alabama, Florida, Georgia and Kentucky. 6. That plaintiff have and recover the costs and disbursements of this action, together with reasonable attorneys’ fees herein. 7. That plaintiff have such other and further relief as to the Court may seem just and proper. M. M. ROBERTS M. M. Roberts Of Attorneys for Plaintiff Citizens Bank Building Hattiesburg, Mississippi JOE A. THOMPSON Of Attorneys for Plaintiff Hattiesburg, Mississippi Of Counsel: Forrest Darrough Carl Illig 1216 Main Street Houston, Texas Dillard W. Baker Box 2180 Houston, Texas Francis X. Clair 30 Rockefeller Plaza New York 20, New York Leslie D. Taggart Leslie D. Taggart Nicholas John Stathis of Watson, Leavenworth, Kelton & Taggart 100 Park Avenue New York 17, New York” -O- “MOTION TO AMEND COMPLAINT Plaintiff moves the court for authority to amend the complaint herein as follows: 1. Add to paragraph 9, the following sentence: ‘A copy of said agreement (omitting Schedules A & B thereof) is attached hereto and made a part hereof as plaintiff’s Exhibit 1.’ 2. Add to paragraph 10, the following sentence: ‘A copy of said agreement is attached hereto and made a part hereof as plaintiff’s Exhibit 2.’ 3. Add to paragraph 11, the following sentence: ‘A copy of said agreement is attached hereto and made a part hereof as plaintiff’s Exhibit 3.’ JOE A. THOMPSON M. M. ROBERTS Of Attorneys for Plaintiff Hattiesburg, Mississippi” "NOTICE OF MOTION TO: Honorable Pat H. Eager Messrs. Watkins & Eager 800 Plaza Building Jackson, Mississippi Honorable Beverly W. Pattishall 2430 Prudential Plaza Chicago 1, Illinois Messrs. Middleton, Seelback, Wolford, Willis & Cochran 501 South Second Street Louisville 2, Kentucky Please take notice that the undersigned will bring the above motion on for hearing before the Honorable S. C. Mize, United States District Judge, at time and place agreeable to the court and the attorneys in interest. WITNESS MY SIGNATURE on the 8th day of July, A.D., 1961. M. M. ROBERTS Of Attorneys for Plaintiff Hattiesburg, Mississippi” (The Agreements are not set forth here because they already have been included in this Opinion.) -O- ANSWER AND COUNTERCLAIM “ANSWER Defendant (which term includes its predecessor) answers plaintiff’s amended complaint as follows: 1-8. Defendant admits the allegations of paragraphs 1 through 3. 4. Defendant denies that plaintiff, since long prior to any of the acts of defendant complained of in the Complaint, has been selling various petroleum products in or into the States of Mississippi, Alabama, Florida, Georgia and Kentucky except for certain petroleum products sold to defendant and, more recently, certain petroleum products marketed under the name of OKLAHOMA through plaintiff’s eight ‘Oklahoma’ service stations in Louisville, Kentucky. 5. Defendant denies that plaintiff, since long prior to any of the acts of defendant complained of in the Complaint, has been continuously using its trademark ESSO in the sale of various petroleum products in the States of Mississippi, Alabama, Florida, Georgia, and Kentucky except in connection with lubricants marketed by defendant. 6. Defendant denies the allegations of paragraph 6. 7-8. Defendant admits the issuance of the registrations alleged but is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of paragraphs 7 through 8 and therefore denies said allegations. 9. Defendant is without knowledge or information sufficient to form a belief as to the truth of the allegations of paragraph 9 and therefore denies said allegations. 10. Defendant denies that the alleged agreement referred to in paragraph 10 is now in force or effect and further denies that the intent or effect of said alleged agreement was to confer upon plaintiff or any of its predecessors any right to use the trademark ESSOTANE in the States of Florida, Georgia, Alabama, Mississippi, or Kentucky in connection with commercial propane marketed subsequent to the termination or expiration of said alleged agreement. 11. Defendant denies that the alleged agreement referred to in paragraph 11 pertained to or encompassed the marketing of ESSO gasoline or the operation of ESSO service stations or the marketing of any products other than lubricants- and defendant further denies that the intent or effect of said alleged agreement was to confer upon plaintiff or any of its predecessors any right to use the name or trademark ESSO in the States of Florida, Georgia, Alabama, Mississippi, or Kentucky except in connection with lubricants marketed by defendant or its authorized distributors or dealers. 12. Defendant denies the allegations of paragraph 12 except insofar as pleaded in paragraph 11 hereof. 13. Defendant denies the allegations of paragraph 13 except defendant admits that it has been and now is marketing lubricants, solvents, and waxes, purchased from plaintiff under the trademark ESSO and other trademarks which include ESSO, but not including ESSO-MARINE or ESSOTANE, in the States of Mississippi, Alabama, Florida, Georgia, and Kentucky and in interstate commerce. 14. Defendant denies the allegations of paragraph 14 except that defendant admits that representatives of plaintiff were informed by defendant that defendant would object to the use by plaintiff of the name and trademark ESSO in Mississippi, Alabama, Florida, Georgia, and Kentucky to identify plaintiff’s service stations, services and products not authorized or distributed by defendant in said States and that defendant would be obliged to and would institute suit against plaintiff to enjoin said acts were they to occur. AFFIRMATIVE DEFENSES For its FIRST Affirmative Defense to the Complaint, defendant avers: Intent and Effect of Alleged ESSO Agreement. 15. The intent and effect of the alleged agreement, Exhibit 3 attached to the amended Complaint, were to set forth specifically the terms and conditions governing defendant’s use of plaintiff’s trademarks in connection with products supplied defendant by plaintiff and marketed by defendant and to provide specifically for packaging and labeling procedures so as to avoid a claim, defense or attack by others as to the validity of the trademark ESSO on the ground that plaintiff had licensed the use of said trademark to defendant in gross, and to preclude defendant from later asserting a right to the use of the trademark ESSO in Mississippi, Alabama, Georgia, Florida, and Kentucky to identify defendant’s lubricants after the termination of the alleged agreement. 16. The aforesaid alleged agreement, Exhibit 3 attached to the amended Complaint, was not intended to and did not recognize in, or convey to, plaintiff or its predecessors any right to use the trademark ESSO, or any trademarks which include ESSO, in Mississippi, Alabama, Georgia, Florida, and Kentucky except when said trademarks are used on products distributed and sold by or through defendant or its authorized distributors or dealers in said States; wherefore, plaintiff is not entitled to judgment herein respecting said alleged agreement. For its SECOND Affirmative Defense to the Complaint, defendant avers: Plaintiff’s Construction Of Agreements Violates Public Policy. 17. Defendant hereby incorporates by reference herein the averments of paragraphs 15 and 16 of its First Affirmative Defense. 18. Plaintiff’s construction, as alleged in paragraphs 9 through 12 and 14 of the Complaint, of the alleged agreements, Exhibits 1 through 3 attached to the amended Complaint, violates the public policy of the States of Mississippi, Alabama, Georgia, Florida, and Kentucky and the criminal statutes of the States of Mississippi (Miss.Code, Tit. 20, Sec. 5092), Alabama (Code of Ala., Tit. 2, Sec. 416-425), and Florida (F.S.A. Sec. 526.01-526.11), in that said construction would require that this Court declare as lawful the simultaneous use of related trademarks by unrelated companies in the same territory for the same goods and services, despite said trademarks’ having been finally adjudicated to be likely to cause, and being likely to cause and having caused, public confusion respecting the origin of said goods and services; wherefore, plaintiff is estopped from asserting said construction and from maintaining this action thereupon and is not entitled to judgment herein. For its THIRD Affirmative Defense to the Complaint, defendant avers: Plaintiff Is Guilty Of Unclean Hands. 19. Defendant hereby incorporates by reference herein the averments of paragraphs 17 and 18 of its Second Affirmative Defense. A. Criminal Statutes 20. Plaintiff’s use of the name and trademark ESSO for automotive service stations, gasoline and various petroleum products in defendant’s aforesaid territory violates the criminal statutes of the States of Mississippi (Miss.Code, Tit. 20, Sec. 5092), Alabama (Code of Ala., Tit. 2, Sec. 416-425), and Florida (F.S.A. §§ 526.01-526.11), prohibiting the use of deceptive names, trademarks or brands in marketing gasoline and other petroleum products in said States; wherefore, plaintiff is guilty of unclean hands and is estopped from maintaining this action. B. Plaintiff’s STANDARD, STANDARD OIL, and ESSO Registrations 21. With full knowledge of the exclusive rights of defendant in and to the names and trademarks STANDARD OIL, STANDARD, and KYSO, and abbreviations and derivations thereof, for automotive services, service stations, gasoline, and other automotive service station products, in Mississippi, Alabama, Georgia, Florida, and Kentucky, and will full knowledge of the exclusive rights of others in and to the names and trademarks STANDARD OIL and STANDARD, and abbreviations and derivations thereof, respecting said goods and services in other states, and being privy to a final decree prohibiting the use of ESSO respecting said goods and services in other states, plaintiff has maintained federal trademark registrations of ES-SO, and variations thereof, without having limited said registrations as to their incorrect manifestation and assertion of an exclusive right to use said trademark throughout the United States for automotive service station products, pursuant to the concurrent use registration provisions of the United States Trademark Statutes, 15 U.S.C. § 1052. 22. With full knowledge of the exclusive rights of othei’s in and to the names and trademarks STANDARD OIL and STANDARD in various States of the United States, including defendant’s exclusive rights in and to said names and trademarks STANDARD OIL and STANDARD in the States of Mississippi, Alabama, Georgia, Florida, and Kentucky, plaintiff has wrongfully procured and subsequently maintained unlimited and unrestricted federal registrations for the trademarks STANDARD OIL and STANDARD by knowingly making false declarations and representations of an exclusive right to use said trademarks throughout the United States, including the States of Mississippi, Alabama, Georgia, Florida, and Kentucky; wherefore, plaintiff is guilty of unclean hands and is estopped both directly and collaterally from maintaining this action. WHEREFORE, defendant prays that the Complaint be dismissed with judgment for defendant, and that defendant be awarded its costs, disbursements, and reasonable attorneys’ fees herein.” “COUNTERCLAIM Standard Oil Company, defendant-counterclaimant, counterclaims against Humble Oil & Refining Company, plaintiff-counterdefendant, and states: COUNT I — TRADEMARK INFRINGEMENT 1. Standard Oil Company, counter-claimant (which term hereinafter includes its predecessor), is a corporation of the State of Kentucky with its offices and principal place of business located at Starks Building, Box 1446, Louisville 1, Kentucky. 2. Humble Oil & Refining Company, counterdefendant (which term hereinafter includes its predecessors and parent corporation and other subsidiaries thereof), is a Delaware corporation with its offices and principal place of business located at 1216 Main Street, Houston, Texas. 3. This Court has jurisdiction because this is a civil action arising between citizens and residents of different states wherein the amount in controversy exceeds the sum or value of ten thousand dollars ($10,000.00) exclusive of interest and costs, and also because this action arises under the trademark laws of the United States, Title 15 U.S.C. Sections 1051 et seq., and under the Judicial Code, Title 28 U.S.C. Section 1338. 4. Counterclaimant is, and for many years past has been engaged in the business of leasing, licensing, and operating automotive service stations, and in the business of selling gasoline and other petroleum products and motor vehicle services in the States of Mississippi, Alabama, Georgia, Florida, and Kentucky, hereinafter referred to as counterclaim-ant’s territory. 5. In 1886 counterclaimant adopted the corporate name and business style ‘Standard Oil Company’ and counter-claimant, for many years past, has been and now is known by the trade and public throughout counter claimant’s territory as ‘Standard Oil,’ ‘Standard,’ ‘S.O.,’ ‘Kyso,’ and abbreviations and derivations thereof. 6. The aforesaid service stations which counterclaimant leases, licenses, and operates in its territory are identified by counterclaimant’s names, service marks, and trademarks ‘Standard Oil,’ ‘Standard,’ ‘S.O.’, ‘Kyso’ and abbreviations and derivations thereof, and said service stations are identified and known by the trade and public in said territory as STANDARD OIL, STANDARD, and KYSO stations, and the aforesaid products sold and services rendered at coun-terclaimant’s said stations are known in the territory as STANDARD OIL, STANDARD, and KYSO products and services. 7. The aforesaid sales by counter-claimant of services, gasoline, and other petroleum products under counterclaim-ant’s aforesaid names, service marks, and trademarks have been in large and substantial amounts continuously and annually for many years past and have totaled many billions of dollars in value. 8. Counterclaimant has continuously advertised and promoted its aforesaid services, service stations, gasoline, and other petroleum products annually throughout its territory in various media with large and substantial expenditures amounting to many millions of dollars, and said advertising and promotion has featured prominently counterclaimant’s aforesaid names, service marks, and trademarks. 9. As a result of the aforesaid sales and advertising under counterclaimant’s aforesaid names, service marks, and trademarks, said names, service marks, and trademarks have been and now are understood and used by the trade and public in said territory to identify the services, service stations, gasoline, and other petroleum products of counter-claimant and said names, service marks, and trademarks have become, since long prior to 1920, and now are distinctive of counterelaimant’s services, service stations, and products and have acquired, since long prior to 1920, a distinctiveness and secondary meaning signifying coun-terclaimant and its said services and products in said territory. 10. As a result of counterclaimant’s aforesaid sales and advertising of its services and products, counterclaimant, since long prior to 1920, has developed, acquired, and maintained a good will of great value among the trade and public in its territory and counterclaimant is the rightful and exclusive owner of said good will and of its aforesaid names, service marks, and trademarks STANDARD OIL, STANDARD, KYSO, and abbreviations and derivations thereof, which represent, identify, and symbolize counterclaimant’s said good will in said territory. 11. As a result of the aforesaid valuable good will owned by counterclaimant and represented and symbolized by coun-terclaimant’s aforesaid names, service marks, and trademarks, said names, service marks, and trademarks have been, since long prior to 1920, and now are of great value to counterclaimant. 12. For many years counterclaimant has purchased large quantities of gasoline and other petroleum products from counterdefendant, its predecessors and others and conterclaimant has marketed and sold said products under its aforesaid names, service marks, and trademarks through its aforesaid service stations. 13. Recently counterelaimant announced its intention eventually to decrease its purchases of gasoline and other petroleum products from counterde-fendant pursuant to the final judgment entered June 5, 1961, in a civil action in the United States District Court for the Western District of Kentucky, entitled United States of America v. Standard Oil Company (New Jersey), Humble Oil & Refining Company, and Standard Oil Company (Kentucky), Civil Action Number 3722. 14. Immediately following the entry of the foregoing final judgment, counter-defendant changed the name of its OKLAHOMA automotive service stations in counterclaimant’s territory to ESSO and acquired other service stations which plaintiff renamed ESSO, whereupon, for the first time, counterdefendant commenced selling, distributing, promoting, advertising, and offering for sale through said ESSO service stations in counter-claimant’s territory, gasoline, and other petroleum products and motor vehicle services under the name, service mark, and trademark ESSO, notwithstanding counterdefendant’s policy and program of employing and using the names and trademarks ‘Humble’ and ENCO in the territories of the other ‘Standard Oil’ companies not affiliated with counterde-fendant in conformity and consistent with the injunction decreed in Esso, Inc. v. Standard Oil Co., 98 F.2d 1 (8th Cir., 1938) restraining counterdefendant from using said ESSO name, service mark, and trademark in the territory of another non-affiliated ‘Standard Oil’ company on the ground that said ESSO name, service mark, and trademark are confusingly similar to the names, service marks, and trademai-ks STANDARD OIL and STANDARD. 15. On information and belief, coun-terdefendant intends greatly to expand the number of ESSO service stations and the sale, distribution, promotion, advertising, and offering for sale of gasoline and other petroleum products and motor vehicle services under said name, service mark, and trademark ESSO throughout counterclaimant’s territory. 16. The name, service mark, and trademark ESSO recently employed by counterdefendant in counterclaimant’s territory as aforesaid is associated with STANDARD OIL, STANDARD, S.O., KYSO, and abbreviations and derivations thereof in said territory and is understood and believed by many of the motoring public and others in said territory to be an equivalent, abbreviation, contraction, derivation, or simulation of counterclaimant’s aforesaid names, service marks, and trademarks and is known and understood to mean and to signify counterclaimant and its aforesaid services and products in counterelaimant’s territory. 17. Counterdefendant’s aforesaid recent adoption and use of ESSO in coun-terclaimant’s territory has caused and is likely to cause customers and prospective customers to assume erroneously that counterdefendant’s aforesaid ESSO services, service stations, gasoline, and other petroleum products in counterclaimant’s territory are the services or products of counterclaimant or of counterclaimant’s legitimate, authorized service stations and dealers. 18. Counterclaimant’s aforesaid use of STANDARD OIL, STANDARD, S.O., KYSO, and abbreviations and derivations thereof, designating and identifying its services, service stations, gasoline, and other petroleum products has continued since long prior to any use by counter-defendant of the name, service mark, and trademark ESSO for its aforesaid services and products in counterclaimant’s territory. 19. On information and belief, coun-terdefendant’s acts complained of herein are intended to and do pre-empt and appropriate counterclaimant’s aforesaid good will and secondary meaning represented and symbolized by counterclaim-ant’s aforesaid names, service marks, and trademarks in counterclaimant’s territory. 20. The acts of counterdefendant complained of herein were committed by counterdefendant with full knowledge of counterclaimant’s business, good will, rights in, and pxdor use of counterclaim-ant’s aforesaid names and marks. 21. The aforesaid use of ESSO by couxxterdefendant in counterclaimant’s territory is a colorable imitation of and is confusingly similar to counterclaim-ant’s aforesaid names, service marks, and trademarks. 22. The acts of counterdefendant complained of herein have caused and are causing counterclaimant substantial and irreparable damage, and said acts will continue so to damage counterclaimant unless restrained by this Court, and coun-terclaimant is without adequate remedy at law. 23. The aforesaid acts of counter defendant complained of herein constitute statutory and common law trademark infringement under the law of the States of Mississippi, Alabama, Georgia, Florida, and Kentucky and the United States (15 U.S.C. 1125a. COUNT II — UNFAIR COMPETITION 24. Counterclaimant hereby realleges and incorporates by reference herein the allegations of paragraphs 1 through 22 of Count I. 25. Long subsequent to counterclaim-ant’s aforesaid adoption and use of STANDARD OIL, STANDARD, S.O., KYSO, and abbreviations and derivations thereof, in counterclaimant’s territory, counterdefendant commenced use of and now uses the trade name and business style ‘ESSO’ and ‘ESSO STANDARD’ in said territory. 26. Counterdefendant’s aforesaid use of the trade name and business style ‘ESSO’ and ‘ESSO STANDARD’ in coun-terclaimant’s territory is likely to and has resulted in confusion and deception with counterclaimant as to the source of said automotive services and products in said territory in that members of the motoring public and others in said territor