Clifton Mfg. Co. v. Crawford-Austin Mfg. Co.

• Decision Date: 03 January 1929
• Docket Number: (No. 710.)
• Citation: 12 S.W.2d 1098
• Parties: CLIFTON MFG. CO. v. CRAWFORD-AUSTIN MFG. CO.
• Court: Texas Court of Appeals

12 S.W.2d 1098

CLIFTON MFG. CO. v. CRAWFORD-AUSTIN MFG. CO.

(No. 710.)

Court of Civil Appeals of Texas. Waco.

January 3, 1929.

Appeal from District Court, McLennan County; Richard I. Munroe, Judge.

Suit by the Crawford-Austin Manufacturing Company against the Clifton Manufacturing Company, a partnership composed of A. T. Clifton and W. R. Clifton, to enjoin defendants from manufacturing certain articles of a certain color, and for damages. Temporary injunction granted, and defendants appeal. Affirmed.

Sleeper, Boynton & Kendall and Nat Harris, all of Waco, for appellants.

Spell, Naman & Penland, of Waco, for appellee.

GALLAGHER, C. J.

This suit was instituted by Crawford-Austin Mfg. Company, a corporation, appellee herein, against Clifton Manufacturing Company, a partnership composed of A. T. Clifton and W. R. Clifton, appellants herein, to enjoin appellants from continuing to manufacture and sell tents, tarpaulins, and wagon covers of the distinctive russet or reddish brown color used by appellee in the manufacture and sale of such articles, and for damages resulting from the manufacture and sale of such articles by appellants prior to the filing of this suit in the sum of $50,000. Appellants and appellee are both large manufacturers of said articles, and sell them in approximately the same trade territory. Prior to June, 1926, appellee was engaged in manufacturing and selling canvas tents, tarpaulins, and wagon covers. Its factory was, and is still, located at Waco, Tex. The canvas used by it in the manufacture of said articles was first treated with a special waterproofing process. In the course of such treatment, but not as a functional part thereof, the canvas was colored what is termed in the record a bright yellow or khaki. Appellee stamped on each of the articles so manufactured and sold its registered trade-mark, which consisted of the picture of a duck, with the words "Dux-bak" printed above the same in the form of an arc. Neither appellants nor appellee claim any exclusive rights to the use of said color in the manufacture and sale of such products. Appellants had for many years prior to said time been engaged in the manufacture and sale of such articles. Their factory was, and still is, located at Waco. For about two years prior to June, 1926, appellants used in such manufacture canvas which had been treated by them with a waterproofing process similar to that used by appellee, and, in the course of such treatment, but not as a functional part thereof, the canvas was colored yellow, of substantially the same hue as the canvas waterproofed and used by appellee in the manufacture of its said products. Appellants stamped on each of the articles so manufactured and sold a trademark, consisting of the picture of a duck, with the words "Dry Dux" printed above the same in the form of an arc. The use of said trade-mark was enjoined by appellee as an infringement of its own. Since said injunction appellants have used on their tents, tarpaulins, and wagon covers manufactured out of such bright yellow or khaki colored canvas, a trade-mark consisting of the picture of a seal, with the words "Seal-Tex" printed in connection therewith. They were, at the time of the hearing below, still manufacturing and selling such products in such color and under such trade-mark. The right to continue to do so is not questioned in this case.

Appellee, for the purpose of making its said products more readily distinguishable from like products manufactured by appellants and others, about June, 1926, selected a color which it calls a russet or reddish brown, and, during the process of waterproofing, but not as a functional part thereof, dyed canvas so used such color. After such date appellee continued to manufacture and sell tents, tarpaulins, and wagon covers made of bright yellow or khaki colored canvas, but it called the same "Magic Khaki." Said words were arranged in the form of a trademark, the word "Magic" being printed in large capitals broadly spaced, and the word "Khaki" in small capitals closely spaced immediately below the same. Appellee, at the time of the hearing below, was still manufacturing and selling said products in such color and under such name as a trade-mark. Its right to continue to do so is not questioned in this case. Appellee at said time began to manufacture and sell tents, tarpaulins, and wagon covers made out of said russet or reddish brown colored canvas, and was still doing so at the time of the trial below. On all of said colored products it stamped its regular "Dux-Bak" trade-mark. It advertised the same as superior in quality to its Magic Khaki products, but it did not feature such color in its advertisements, except that in its illustrated price lists its Dux-Bak products were pictured in said color. About April 1, 1928, appellants began coloring canvas during the process of waterproofing, but not as a functional part of such process, substantially the same hue of russet or reddish brown used by appellee. They used the waterproof canvas so colored by them in manufacturing tents, tarpaulins, and wagon covers. They stamped upon each of such articles a trade-mark consisting of a crown, with the words "Rex-All" printed above in the form of an arc. In all illustrated price lists issued by them they pictured said Rex-All products in said specific russet or reddish brown color. They also advertised such products as inferior in quality to their yellow Seal-Tex products. Appellee, in a suit in the federal court, enjoined appellants from using said trade-mark, on the ground that it was a colorable imitation and infringement of their own Dux-Bak trade-mark. Appellants thereafter continued to manufacture and sell such articles made out of waterproof russet or reddish brown canvas, and stamped thereon the trade-name "Rain-Tite." Appellee then brought this suit to enjoin and restrain appellants from using waterproof canvas of said specific russet or reddish brown color in the manufacture of such articles.

As grounds for such relief, appellee alleged, in substance, that, for the purpose of making its products more distinctive, it selected, and was the first to adopt and use, such specific russet or reddish brown color; that it was at the time, and had continued to be, the only manufacturer of such products using such color; that it had built up an extensive trade in such products; that the same had become identified in the public mind with such distinctive color, so that persons desiring to purchase from local dealers such articles of its manufacture frequently called for the same by such color. Appellee further alleged that appellants knew the large demand for, and use of, such products manufactured and sold by it in said distinctive color; that appellants, with the intent and purpose of counterfeiting appellee's said products and confusing the buying public and inducing the belief that the products manufactured by them were in truth and in fact products manufactured and sold by appellee, and thus fraudulently securing for themselves the benefits of the popularity of its said products and the large demand therefor, began on or about April 1, 1928, to manufacture and sell tents, tarpaulins, and wagon covers in exactly the same distinctive color so first adopted and continuously and extensively used by appellee in its manufacture of such products, and that such acts on the part of appellants constituted unfair competition.

Appellee further alleged that purchasers of said such specific products had been in fact confused and deceived into buying articles of such color so manufactured and sold by appellants, as and for similar articles manufactured and sold by appellee, solely by reason of the use by appellants of said distinctive color; that said articles so manufactured and sold in said distinctive color by appellants were greatly inferior in quality to such articles so manufactured and sold in such color by appellee, and that the reputation and good will established for appellee's said products were being greatly injured and would probably be ultimately destroyed by the acts of appellants so complained of.

Appellee prayed for the immediate issuance of a temporary injunction, restraining appellants from using said distinctive color in manufacturing such articles. There was a preliminary hearing before the court on June 30, 1928, upon which hearing the court entered an order enjoining appellants, their servants, agents, and employees, from manufacturing and selling, and from advertising and offering for sale, tents, tarpaulins, and wagon covers of the same reddish brown color, or of substantially the same reddish brown color as that adopted and then used by appellee on such articles manufactured and sold by it under the mark "Dux-Bak," until further orders of said court at its next regular term, beginning on the first Monday in September, 1928. Appellee gave the bond required, and said order thereby became effective. Said action of the court is here presented for review.

Opinion.

The principal contention urged by appellants is that color alone, when not associated with some other color or with some sign, symbol, or design, cannot be monopolized. They further contend in this connection that when products of a particular kind, formerly manufactured and sold by one manufacturer...