FW Fitch Co. v. Camille, Inc.
| Decision Date | 16 October 1939 |
| Docket Number | No. 11506.,11506. |
| Citation | 106 F.2d 635 |
| Parties | F. W. FITCH CO. v. CAMILLE, Inc. |
| Court | U.S. Court of Appeals — Eighth Circuit |
W. P. Bair, of Chicago, Ill. (Bair & Freeman and Will Freeman, all of Chicago, Ill., on the brief), for appellant.
A. W. Murray, of Chicago, Ill. (William N. Plymat, of Des Moines, Iowa, on the brief), for appellee.
Before GARDNER, SANBORN, and WOODROUGH, Circuit Judges.
Appellant, defendant below and hereinafter so named, appeals from a decree which enjoined it from alleged acts of unfair competition.
Plaintiff, in its bill of complaint, alleged that for many years it had continuously engaged in the manufacture, advertising, distribution and sale throughout the United States of a preparation for stopping runs in hosiery, on which merchandise it applied the fanciful term "Run-R-Stop" as its distinguishing trade-mark; that due to the skill and expert workmanship and high quality of its preparation bearing such trade-mark, and by reason of the integrity, progressiveness and ability of its management, and the extensive and continuous national advertising in many magazines of wide distribution throughout the United States, its trade-mark "Run-R-Stop" had acquired a secondary signification throughout the trade and the public generally, as an understood reference to and indicating a preparation for stopping runs in hosiery originating exclusively with plaintiff and that its said trade-mark was a substantial part of its valuable good will. That on or about July 19, 1938, it received a certificate of registration for its trade-mark; that the defendant had been and still was infringing its trade-mark and was competing unfairly with plaintiff by making, advertising, and placing upon the market, long after plaintiff's prior adoption, use and registration of said trade-mark, a preparation for stopping runs in hosiery bearing the infringing mark "Stop-A-Run," which it was alleged is a colorable imitation and simulation of plaintiff's registered trade-mark "Run-R-Stop"; that said mark was affixed by defendant to a preparation for stopping runs in hosiery; that defendant's product bearing such infringing trade-mark was being sold in the same retail stores as plaintiff's product and to the same class of customers; that the defendant thereby enabled unscrupulous dealers to substitute its product for plaintiff's product; that defendant had not done any advertising to consumers but was endeavoring to and had unlawfully appropriated to itself the good will theretofore established by plaintiff in said trade-mark and distinctive design, color and dress of package or container; that the term "Stop-A-Run" used by defendant so nearly resembles the registered trade-mark "Run-R-Stop" owned and in long prior extensive use by plaintiff on preparations for stopping runs in hosiery, as to be likely to cause confusion or mistake in the mind of the public or to deceive and mislead purchasers as to the source or origin of such goods. It was also alleged that since about October, 1932, plaintiff packaged and placed upon the market in a distinctive dress and style of container, which, due to the new, original and ornamental appearance, had distinguished its package or container from other goods marketed, and that such distinctive design or appearance had become associated in the minds of the trade and consumers as identifying the product of plaintiff, but that defendant with knowledge of plaintiff's prior use of such dress and design, had copied or imitated the general style, appearance and design of plaintiff's package, thereby assisting dealers to substitute or palm off defendant's infringing preparation as and for plaintiff's preparation, and by such unlawful acts defendant had competed and was competing unfairly with the plaintiff to its great damage. Plaintiff also alleged that it was the owner of a United States patent for an ornamental design for containers, which defendant was infringing. Plaintiff asked decree enjoining defendant from the alleged acts of unfair competition and of infringement.
The lower court determined the issues as to unfair competition in favor of the plaintiff and entered findings sustaining all the substantial allegations in plaintiff's bill of complaint on that issue. It found against the plaintiff on the issue of infringement of patent and as no appeal has been taken from that part of the decree by the plaintiff, that issue need be given no further mention. The court entered quite elaborate and detailed findings sustaining all the material allegations of the bill of complaint.
Plaintiff manufactures a liquid preparation, a sticky material, which when applied to a run in a stocking, dries and holds the thread. Vera Camille Grote organized plaintiff in 1932 and has been the active party in promoting and marketing this product. In developing the product, she first worked with chemical assistants to develop a formula and then devised the trade-mark "Run-R-Stop" for it. In order to provide a small container that could be carried by women to be instantly available should a break in the stocking occur, and to avoid the escape of fluid from an ordinary tube, she adopted a form of small bakelite case, large enough to carry the tube wrapped in paper and small enough to meet the requirements of her idea. She created an ornamental design with which her container was decorated, on which she was granted a patent October 5, 1933. The lower court found that defendant did not use this particular "rib" design, and hence, was not guilty of infringement, but found that it had "contented itself with the use of a container or vanity similar in size, coloring and general appearance" to the plaintiff's container. All of plaintiff's containers have a black body portion, with a cap or top in the colors, red, white, orchid or lettuce green. Before its product was put on the market in 1932, there was no similar product. Great success attended commercial development, and the product was extensively advertised in national magazines and newspapers, the total number of individual advertisements exceeding 200,000,000 copies. Over 8,000 display racks were placed in use and are now in use in stores in the United States. Advertising expenditures have exceded $150,000. Sales have increased from 1933 to the extent that 10,000,000 individual packages have been sold.
Until defendant entered the field in June, 1938, plaintiff was without competition. The lower court found that by reason of the integrity, progressiveness and ability of its management and its extensive and continuous advertising, plaintiff's trade-mark "Run-R-Stop" "had acquired a secondary signification throughout the trade and the public generally, in the State of Iowa and elsewhere, as an understood reference to and indicating a preparation for stopping runs in hosiery originating exclusively with the plaintiff, and said trade-mark is a substantial part of the good will of plaintiff"; that plaintiff's product, since about October, 1933, had been "packaged and placed upon the market in a distinctive dress and style of container * * * which, due to the new, original and ornamental appearance thereof, has readily distinguished plaintiff's said container or package from other goods theretofore marketed, and such distinctive design or dress or appearance of plaintiff's package has become associated in the minds of the trade and consumers as identifying the product of the plaintiff, and that defendant knew of plaintiff's prior use of said distinctive dress or design of container."
The defendant put out its product to the same character of trade as plaintiff, through chain stores and department stores. It did not mark the product under its corporate name of "F. W. Fitch Company," but used the assumed name of "Clem Chemical Company," and for its product it used the name "Stop-A-Run." There was evidence of similarity of design and style of defendant's package to that of plaintiff, and that dealers commented upon the similarity in appearance. Plaintiff introduced testimony showing fifteen specific instances wherein persons had called for "Run-R-Stop" in retail stores and were given defendant's product. Plaintiff's sales have fallen off since the defendant commenced marketing its product.
The lower court entered a decree enjoining defendant (1) from infringing plaintiff's trade-mark and from imitating the general appearance or dress of the container, and from using advertising display cards simulating the general appearance of plaintiff's advertising display cards; (2) from using, under the trade name "Clem Chemical Company," the trade-mark "Stop-A-Run" for a product similar to plaintiff's product, in a container simulating the general appearance or dress of plaintiff's "Run-R-Stop" package, and from using in connection therewith advertising display cards simulating the general appearance of plaintiff's advertising...
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