Snap-On Tools Corp. v. Winkenweder & Ladd, Inc.
| Decision Date | 31 October 1956 |
| Docket Number | No. 49 C 1587.,49 C 1587. |
| Citation | 150 F. Supp. 792 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | SNAP-ON TOOLS CORPORATION, Plaintiff, v. WINKENWEDER & LADD, Inc., Defendant. |
Harry C. Alberts, Chicago, Ill., for plaintiff.
Herman T. Van Mell, Richard B. Finn, Norton L. Penney, Chicago, Ill., Frank Zugelter, Zugelter & Zugelter, Cincinnati, Ohio, for defendant.
Plaintiff seeks injunctive relief against infringement and unfair competition in the use by defendant of plaintiff's trade-name and -mark "Snap-On" to which plaintiff asserts common-law rights. Defendant asserts that this Court lacks jurisdiction because plaintiff has failed to establish the requisite statutory amount; that plaintiff's mark is not a valid trade-mark, but a mere descriptive term for which plaintiff has failed to sustain the burden of showing a secondary meaning designating plaintiff or plaintiff's products, or fraudulent intent on the part of defendant in passing off other goods as those of the plaintiff.
The case came on for hearing before the Court on the pleadings and the evidence consisting of oral testimony, documentary proofs, and physical exhibits. Witnesses were called by the respective parties whose testimony was transcribed in the record. The Court has had the benefit of argument of counsel on written briefs and memoranda, has weighed the arguments presented and studied the authorities advanced in support of the respective assertions of the parties.
Upon a careful consideration of the whole case, the Court makes the following:
Findings of Fact
1. Plaintiff, Snap-On Tools Corporation, is a Delaware corporation, with its principal office and place of business in Kenosha, Wisconsin.
2. Defendant, Winkenweder & Ladd, Inc., is an Illinois corporation, with its principal office and place of business in Chicago, Illinois. Defendant is a resident and inhabitant of the Northern District of Illinois, Eastern Division.
3. Defendant is the factory sales agent for the Snap-On Drawer Company, an Ohio corporation, with its principal office and place of business at Morrow, Ohio.
4. The Snap-On Drawer Company of Morrow, Ohio, filed a declaratory judgment complaint against the Snap-On Tools Corporation, plaintiff herein, in the United States District Court for the Southern District of Ohio, Western Division, Civil Action No. 2229, subsequent to the date the complaint herein was filed. The said Court held that the complaint in the Cincinnati, Ohio, case was directed to the same subject matter and issues involved in this case.
5. The Court of Appeals for the Sixth Circuit denied petition of Snap-On Drawer Company for writ of mandamus to vacate order staying proceedings in the Cincinnati, Ohio, action until this case is decided, upon the finding that the Snap-On Drawer Company, although not a formal party to this case, was in privity with the defendant herein, and that the issues in both cases were substantially the same.
6. The amount in controversy herein is in excess of $3,000 exclusive of interest and costs.
7. Plaintiff's applications to the United States Patent Office for registration of its trade-mark "Snap-On" under Section 2(f) of the Trade Mark Act of 1946, 15 U.S.C.A. § 1052(f), for hand tools, power tools, automobile service tools, etc.; metal tool boxes, tool trays, tool chests and table high supports therefor; gauge blocks and strips, measuring calipers and micrometers, etc.; have proceeded to the point of publication and oppositions Numbered 29567, 30428, and 29565, by Snap-On Drawer Company; no final decision having yet been made.
8. Plaintiff and its predecessors have been continuously engaged in the manufacture and sale of a large variety of tools and tool containers or cabinets since the year 1920. Its line of products has been ever expanding, and now comprises some 4,000 different tools, cabinets and accessories used by mechanics in automotive shops, industrial firms, hospitals, laundries, public utility firms, and wherever hand tools are used for service, repair, and maintenance requirements. Some of the tools and the tool containers or cabinets are not manufactured by plaintiff but are made to plaintiff's specifications. Some of the tools carry other names but all, including the cabinets, are sold under plaintiff's trade-name and -mark.
9. Plaintiff owns and operates three large manufacturing plants in the United States. It did not appear that the locations of these were known to the trade with the possible exception of the main office and plant at Kenosha, Wisconsin.
10. Plaintiff's business is national and international in scope. Plaintiff owns and operates a subsidiary manufacturing plant in Canada which is also engaged in the manufacture and sale of various tools and cabinets throughout the Dominion of Canada.
11. Plaintiff has approximately 45 sales branches, throughout the United States and Canada, from which operate an average of between 650 and 820 dealers and salesmen, in all states of the United States and Canada, and these dealers and salesmen make an average of 32,000 calls daily in vending plaintiff's tools and cabinets. In a number of foreign countries, the plaintiff has distributors selling its line of tools and cabinets. Plaintiff distributes catalogs of its complete line of tools and cabinets to the trade every other year.
12. Under its trade-mark "Snap-On," plaintiff has sold individual drawer units since 1933, and plaintiff presently has in its line an individual drawer unit as well as multiple drawer units intended for vertical stacking for build-up into various combinations.
13. In the year 1920 plaintiff's predecessor adopted and used, and plaintiff now uses, on its various tools and cabinets the trade-mark "Snap-On" presently in the forms as shown in plaintiff's exhibits 1-D, 3-D, 5-D and 35-D. Since 1920, said use of the trade-mark "Snap-On" has been continuous and without interruption throughout the United States and in many foreign countries.
14. The plaintiff, Snap-On Tools Corporation, is known in the trade and generally referred to by the contraction "Snap-On" which is also its principal trade-mark impressed in various styles on its products, catalogs, and brochures. About 85% of its tools presently bear the trade-mark "Snap-On" and the remainder are identified with the trade marks, "Blue Point," "Supreme," and "Vacuum Grip." All these products are sold as "Snap-On Tools," and all the cabinets have thereon the name "Snap-On" or "Snap-On Tools."
15. The annual volume of business done by plaintiff under its trade-mark and -name "Snap-On" as described above, in 1949-1950 amounted to $15,370,820. and presently amounts to more than $22 million each year. The sales volume from 1940 to 1950, inclusive, amounted to $143,699,035.
16. Plaintiff spends, and has for many years spent, large sums of money in advertising its tools and cabinets sold under its trade-name or -mark "Snap-On," or both, and has established a reputation for dependability for its products by a liberal policy of tool replacement which plaintiff pursues as an effective measure of maintaining the good will of its customers.
17. Plaintiff's trade-mark "Snap-On" means, and has meant for many years prior to defendant's use, to the trade and public, when applied to tools and cabinets, the products of the plaintiff. The trade-name "Snap-On Tools Corporation" and its contraction "Snap-On" means and has meant the plaintiff to the trade and public for many years prior to defendant's use on the accused drawer units.
18. As a result of plaintiff's large and extensive and long-continued sales of tools and cabinets sold under its trade-mark "Snap-On" and...
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