INDEPENDENT NAIL & PACK. CO. v. STRONGHOLD SCREW PROD.

• Decision Date: 01 October 1952
• Docket Number: No. 48 C 565.,48 C 565.
• Citation: 107 F. Supp. 969
• Court: U.S. District Court — Northern District of Illinois
• Parties: INDEPENDENT NAIL & PACKING CO., Inc. v. STRONGHOLD SCREW PRODUCTS, Inc.

107 F. Supp. 969

INDEPENDENT NAIL & PACKING CO., Inc. v. STRONGHOLD SCREW PRODUCTS, Inc.

No. 48 C 565.

United States District Court N. D. Illinois, E. D.

October 1, 1952.

Thomas F. McWilliams, Chicago, Ill., Herbert A. Baker, Boston, Mass., for plaintiff.

Casper W. Ooms, Robert C. Williams, Chicago, Ill., for defendant.

PERRY, District Judge.

This action was filed on April 26, 1948, by the Independent Nail and Packing Company, Inc., a Massachusetts corporation, which has its principal place of business in Bridgewater, Massachusetts. It is engaged in the manufacture and production of nails. The defendant, Stronghold Screw Products, Inc., is an Illinois corporation, with its principal place of business at Chicago, Illinois, which manufactures and merchandises screws, bolts, washers, eyelets, rivets, etc. It is a successor in business to a partnership known early as Manufacturers' Screw and Supply House and later as Manufacturers' Screw Products.

The complaint charges infringement by defendant of plaintiff's registered Trade-Mark No. 367,448, infringement by the defendant of plaintiff's alleged common law Trade-Mark in the use of the word Stronghold, and unfair competition on the part of the defendant.

In 1934, the plaintiff began to manufacture a new nail with an annular thread, which was later disclosed and claimed in Stone Patents Nos. 2,025,961 and 2,126,585. At that time, the word Stronghold alone was used to identify the contents of those shipping cartons, which contained this particular nail.

The plaintiff is the owner of Registered Trade-Mark No. 367,448, which was registered in the United States Patent Office on May 16, 1939. There is evidence that plaintiff began to use the design of its registered trade-mark as early as July 1, 1936. This registered trade-mark comprises a representation of a castle or stronghold, enclosed in a triangular frame, two sides of which are formed by representations of the annularly threaded Stronghold nail. The bottom of the triangle bears the word Stronghold above the word "Nails", while a decorative ribbon extends from the sides of the triangle, and the words "They hold forever" appear on the ribbon. The plaintiff has disclaimed the words "They hold forever", "Nails" and the representation of the annularly ribbed nails themselves.

The evidence tends to show that the defendant's predecessor began to use the word Stronghold in its business as early as October, 1938, when it purchased 5,000 copies of a catalogue, bearing the word Stronghold and distributed them throughout the country. It began to use its Stronghold logotype as a technical trade-mark in 1940. In this logotype, the letters of the word Stronghold appears to be threaded on a bolt, while the words "Screw Products" are printed on a washer into which the bolt appears to be inserted. Since that time, the defendant's business forms, including packing boxes, sample envelopes, labels, stationery, catalogues, purchase orders, and requests for quotations have continuously employed the logotype. The word Stronghold did not appear in the defendant's corporate name until the summer of 1946.

Both the plaintiff and the defendant normally sell their goods in large quantities, the goods being ordered from the parties by trained industrial purchasing agents who are discriminating buyers. Neither party packages its goods for the shelf hardware trade, and neither party sells goods in the impulse buying market.

Section 32(1) of the Trade-Mark Act of 1946, 15 U.S.C.A. § 1114(1), provides in part: "Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark * * * which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods * * * shall be liable to a civil action * * *."

It is the view of this Court that the evidence fails to sustain the allegation of infringement by the defendant of the plaintiff's registered trade-mark. The logotypes, in their respective combinations, bear no resemblance to each other. As the Court examines them, it fails to find any such similarity or colorable imitation as would likely cause confusion or mistake as to the source of the goods.

The Court finds a similarity in each logotype only after it separates the combinations into their individual features. That similarity is the use of the word Stronghold in both emblems which is the only similarity apparent. This fact however does not aid the plaintiff's position. The plaintiff, in effect, is attempting to monopolize an individual feature of the combination, upon which it obtained a federal registration. The Court, through the exercise of its injunctive powers, will not aid such an attempt when, as in the case before the bar, another does not use the individual feature in combination with a colorable imitation of the complete trade-mark. A mark must be considered in its entirety and not be dissected into its respective elements. Beckwith's Estate, Inc. v. Commissioner of Patents, 252 U.S. 538, 40 S.Ct. 414, 64 L.Ed. 705. Life Savers Corp. v. Curtiss Candy Co., 7 Cir., 182 F. 2d 4.

If the plaintiff is to prevail in this action, it must do so on the basis of a common law trade-mark in the use of the word Stronghold. "The general proposition is well established that words which are merely descriptive of the character, qualities, or composition of an article, or of the place where it is manufactured or produced, cannot be monopolized as a trade-mark". Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 S.Ct. 625, 626, 35 L.Ed. 247. See also: Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 44 S.Ct. 615, 68 L.Ed. 1161; Life Savers Corp. v. Curtiss Candy Co. supra. In the case of Rosenberg v. Shakeproof Lock Washer Co., 20 F.Supp. 959; affirmed 3 Cir., 100 F.2d 811, the expression "Self-Tapping" used in connection with the sale of a particular type of sheet metal screws and incorporated, as in the case before the bar, in combination with a number of other features in an emblem, was denied the protection of the court against its use by another in the sale of the identical article. When a party seeks protection of a descriptive term as a trade-mark, it must prove a secondary meaning of the descriptive term in the term in the trade in which it is sought to be enforced. "The plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer." Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 113, 59 S.Ct. 109, 113, 83 L.Ed. 73. If the plaintiff fails to make such showing, it is not entitled to the exclusive use of the term in question; but it can merely "require that the defendant use reasonable care to inform the public of the source of its product." Kellogg Co. v. National Biscuit Co., supra.

It is the view of this Court that the word Stronghold, as used by the plaintiff, is solely a descriptive classification of one of several nail products, which are manufactured by the plaintiff corporation. The evidence does not warrant the inference that the term Stronghold, as it was used by the plaintiff in the trade, acquired any secondary meaning so that it might be accorded the dignity of trade-mark status and be granted legal protection by the courts.

In 1934, the Ruberoid Company required a nail with increased holding power to be used in the application of a new asbestos siding. The plaintiff developed the specific...