Trinidad Asphalt Mfg. Co. v. Standard Paint Co.

Decision Date11 August 1908
Docket Number2,621.
PartiesTRINIDAD ASPHALT MFG. CO. v. STANDARD PAINT CO.
CourtU.S. Court of Appeals — Eighth Circuit

Before SANBORN, HOOK, and ADAMS, Circuit Judges.

HOOK Circuit Judge.

About the year 1891 the Standard Paint Company, a West Virginia corporation, commenced to make and put upon the market a prepared roofing material of felt, saturated with a gum composed of the residuum of animal fats. Because of the close resemblance of the gum to rubber and the durability and flexibility of the roofing, it then adopted the word 'Ruberoid' as a trade-name, and in 1901 caused it to be registered in the Patent Office as a trade-mark. In the application for registration it was said the trade-mark was appropriated to solid substances in the nature of soft flexible rubber in the form of flexible roofing, etc. It extensively advertised, and built up a large business. In 1904 the Trinidad Asphalt Manufacturing Company, a Missouri corporation, put upon the market a roofing of similar appearance and of similar composition, except that vegetable oils were used in treating the felt, and it applied thereto the name 'RubberO.' There were about 40 other concerns engaged in that business, many of whose products resembled those of complainant and defendant, and because they possessed some of the characteristics of India rubber were called and known to the trade as 'rubber roofings ' though in none of them was rubber an ingredient. The Standard Company sued the Trinidad Company for an injunction and an accounting on two grounds: First, infringement of trade-mark; and, second, unfair competition, in that the use by defendant of the word 'rubbero,' its similarity to 'ruberoid,' and the form and dress of defendant's roofing as put upon the market were calculated to and did deceive the public, when buying it, into the belief they were buying the roofing of complainant. The trial court gave the complainant a decree, and the defendant appealed.

First as to complainant's trade-mark. It is clear that by the adoption of the word 'ruberoid' as a trade-mark it was sought to appropriate the exclusive use of the term 'rubberoid,' and complainant's rights are to be judged accordingly. If the latter cannot be appropriated as a trade-mark, because it is a common descriptive word, and its use, therefore, belongs to the public, complainant cannot maintain its claim to the one it selected. A public right in 'rubberoid' and a private monopoly of 'ruberoid' cannot co-exist. They are inconsistent and trespass upon each other, and under the law of trade-mark the latter must give way. To the contention that 'ruberoid' is fanciful or arbitrary it must be said that no one can restrict or destroy the public right by the coinage and monopoly of a word that is a near imitation of one the use of which is open to all for the truthful description of articles of trade and commerce. The act of Congress (Act March 3, 1881, c. 138, Sec. 1, 21 Stat. 502 (3 U.S.Comp.St. 1901, p. 3401)) prohibits the registration of a trade-mark so closely resembling that of another as to create mistake or confusion in the mind of the public, and certainly the public is entitled to like protection against encroachments upon a common descriptive term. To the visual perception there is a close resemblance between 'rubberoid' and 'ruberoid,' and the pronunciation is so nearly identical the difference would not ordinarily be noticed by the attentive ear. They are substantially alike in suggestion. Nothing can be gained by the mere dropping of a 'b' from the appropriate word expressive of the advertised qualities of complainant's product. For similar reasons it was held that the word 'Matzoon' could not be appropriated as a trade-mark for a medicinal beverage because of its similarity to 'Madzoon'; the latter being the transliteration of the ancient Armenian name of the preparation. Dadirrian v. Yacubian, 39 C.C.A. 321, 98 F. 872. In Goodyear Co. v. Rubber Co., 128 U.S. 598, 604, 9 Sup.Ct. 166 168, 32 L.Ed. 535, it was said:

'The designation 'Goodyear Rubber Company' not being subject to exclusive appropriation, any use of terms of similar import, or any abbreviation of them, must be alike free to all persons.'

Because of its very structure and meaning the word 'rubberoid' is not a fanciful one, and it owes nothing to complainant for its existence or its descriptive relevance to the roofing productions in question. It was a part of our common vocabulary long before complainant began operations, the Patent Office discloses applications of it to compositions resembling but not containing rubber, and it had found its way into the lexicons. The suffix 'did' signifies likeness or resemblance to the thing indicated by the word to which it is attached.

Thus 'granitoid' means like granite, 'crystalloid' like crystal, and 'rubberoid' like rubber. The latter is the common English term signifying a resemblance to rubber in appearance or characteristics. Indeed, it would appear that many of the rubber roofings, so called, that are common in the markets, could more appropriately and truthfully be described as 'rubberoid.'

It is the settled rule that no one can appropriate as a trade-mark a generic name, or one descriptive of an article of trade, its qualities, ingredients, or characteristics, or any sign, word, or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth. Canal Co. v. Clark, 13 Wall. 311, 323, 20 L.Ed. 581; Goodyear Co. v. Rubber Co., 128 U.S. 598, 9 Sup.Ct. 166, 32 L.Ed. 535; Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 Sup.Ct. 625, 35 L.Ed. 247. A reference to a few of the many cases in which it has been applied may more clearly signify its purport than the bare statement of the rule itself. The following have been held to be descriptive terms, and therefore not the subject of trade-mark: 'Nourishing Stout' as applied to a malt liquor (Raggett v. Findlater, L.R. 17 Eq. 29); 'Gall Cure' to a medicine (Bickmore, etc., Co. v. Mfg. Co., 67 C.C.A. 439, 134 F. 833); 'Whirling Spray' to a syringe (Marvel Co. v. Pearl, 66 C.C.A. 226, 133 F. 160); 'Standard' and 'Computing' to scales (Computing Scale Co. v. Standard Computing Scale Co., 55 C.C.A. 459, 118 F. 965); 'Steel Shod' to boots and shoes with soles studded with nails (Brennan v. Dry Goods Co., 47 C.C.A. 532, 108 F. 624; Id. (C.C.) 99 F. 971); 'Aluminum' to a manufactured article composed in part of that metal (American Washboard Co. v. Mfg. Co., 43 C.C.A. 233, 103 F. 281, 50 L.R.A. 609; 'Instantaneous' to a tapioca ready for use (Bennett v. McKinley, 13 C.C.A. 25, 65 F. 505); 'Iron Bitters' (Brown Chemical Co. v. Meyer (C.C.) 31 F. 433, affirmed in 139 U.S. 540, 11 Sup.Ct. 625, 35 L.Ed. 247); 'Acid Phosphate' (Rumford Chemical Works v. Muth (C.C.) 35 F. 524, 1 L.R.A. 44); 'Indurated Fiber' to wares made of wood pulp (Indurated Fiber Co. v. Amoskeag, etc., Co. (C.C.) 37 F. 695); 'Cramp Cure' (Harris Drug Co. v. Stucky (C.C.) 46 F. 624); 'Hygienic' to underwear (Jaros, etc., Co. v. Fleece Co. (C.C.) 65 F. 424); 'Valvoline' to lubricating or valve oil (Leonard v. Wells, 53 L. J. Ch. 233, 32 W.R. 532); 'Croup Tincture' (In re Roach, 10 Off. Gaz. 333); 'Crack-proof' to rubber goods (In re Goodyear Rubber Co., 11 Off.Gaz. 1062); 'Crystalline' to artificial stones (Ex parte Kipling, 24 Pat.Off.Gaz. 899); 'Fireproof Oil' (Scott v. Standard Oil Co., 106 Ala

. 475, 19 So. 71, 31 L.R.A. 374); 'Aromatic Schiedam Schnapps' to gin (Burke v. Cassin, 45 Cal. 467, 13 Am.Rep. 204); 'Snowflake' to crackers and biscuit (Larrabee v. Lewis, 67 Ga. 561, 44 Am.Rep. 735); 'Cough Remedy' (Gilman v. Hunnewell, 122 Mass. 139); 'Selected Shore Mackerel' (Trask v. Wooster, 28 Mo.App. 408); 'Rye and Rock' to a mixture of rock candy and rye whisky (Van Beil v. Prescott, 82 N.Y. 630); 'Dessicated Codfish' (Town v. Stetson, 3 Daly (N.Y.) 53); 'Headache Wafers' (Gessler v. Grieb, 80 Wis. 21, 48 N.W. 1098, 27 Am.St.Rep. 20);

'Microbe Killer' (Alff v. Radam, 77 Tex. 530, 14 S.W. 164, 9 L.R.A. 145, 19 Am.St.Rep. 792).

'Rubberoid' easily falls in the above class, when applied to articles with no rubber in their composition, but appearing to have and possessing its qualities and characteristics. There are cases in which words and phrases have been upheld as trade-marks upon the ground that they were suggestive, rather than descriptive; but they have no application here.

Even a proper name may in time become by common acceptation the generic designation of an article, and after the expiration of the monopoly arising from letters patent become publici juris, like an ordinary descriptive term, and therefore not appropriable as a trade-mark. This was held to be so of 'Rahtjen's Composition' and a preparation of paint (Holzapfel's Co. v. Rahtjen's Co., 183 U.S. 1, 22 Sup.Ct. 6, 46 L.Ed. 49); 'Singer' and the sewing machine (Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002, 41 L.Ed. 118); 'Goodyear Rubber' and a class of goods made by the process known as Goodyear's invention (Goodyear Co. v. Rubber Co., 128 U.S. 598, 602, 9 Sup.Ct. 166, 32 L.Ed. 535) 'Webster' and the dictionary (Merriam v. Pub. Co. (C.C.) 43 F. 450; Merriam v. Clothing Co. (C.C.) 47 F. 411); 'Fairbanks' and a make of scales (Fairbanks v. Jacobus, 14 Blatchf. 337, Fed. Cas. No. 4,608); 'Harvey' and 'Worcestershire' and the table sauces of those names (Lazenby v. White, 41 L.J. 354; Lea v. Deakin, 11 Biss. 23, 15 Fed.Cas. 95, Case No. 8,154). In the same way a fanciful word may become the very name of the thing to which in the beginning it was arbitrarily applied. Before this controversy arose complainant publicly declared it selected the word 'ruberoid' for a trade-mark, because of the resemblance of its product to...

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