United States District Court for the Southern District of New York

“ It must be admitted, even if it were to be held that the defendants infringed complainant's trade-mark, that the question involved is seriously debatable.
I am of opinion that equity as applied to modern business developments requires that, in this particular case, injunctive relief in any event be denied. No satisfactory explanation is given for the delay, and, during that time, the defendants have spent thousands of dollars to create a valuable asset in the word "Havoline." Complainant is not uninformed, as in Mosler [5] , but is a business corporation in this very same kind of business. ”

“ Complainant does not confine its mark to lubricating oils, but also uses it on illuminating and tempering oils, while defendants' mark "Havoline" has always been confined to automobile and gas engine lubricants. ”

“ The Maine corporation owns all the stock of a New York corporation of like name which is a defendant here.
The testimony establishes a course of business by the owners of "Havoline" which demonstrates that they were developing their product on its own merits and seeking to acquire a trade individuality for "Havoline" as against competitors, including complainant. With a single exception (to be later commented upon) , there is nowhere in this record that evidence which is so often found in trade-mark or unfair competition cases. ”

“ There are cases where delay is excusable because it is necessary to obtain essential testimony or because a person unfamiliar with the subject-matter is ignorant of his rights, or where there is some situation that shows that a defendant should not be permitted to go on with his own wrongful conduct just because he has continued it for a long time. ”

“ There is no invasion of the other's territory by tricky or unfair means, no misleading by similarity of appearance in the packages or containers in which the product is put up, no specious effort at artificial differentiation when the real purpose is to appropriate another's ability, effort, and commercial success. ”

“ Complainant has done a considerable business throughout the United States and in other parts of the world in its oils generally, and "Valvoline" has been exhibited and displayed at various expositions and has received awards and medals for excellence. In 1904 Havemeyer Oil Company, defendants' predecessor, adopted the mark "Havoline." ”

“ Holding these views, it is not necessary to discuss at length the question of laches. However, in a case so thoroughly prepared as this by both sides, counsel are entitled to the view of the trial judge on an important question. ”