Nancy Ann Storybook Dolls v. Dollcraft Co.

• Citation: 197 F.2d 293
• Decision Date: 14 July 1952
• Docket Number: No. 12953.,12953.
• Parties: NANCY ANN STORYBOOK DOLLS, Inc. v. DOLLCRAFT CO. et al.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

197 F.2d 293 (1952)

NANCY ANN STORYBOOK DOLLS, Inc. v. DOLLCRAFT CO. et al.

No. 12953.

United States Court of Appeals Ninth Circuit.

May 31, 1952.

Rehearing Denied July 14, 1952.

Hugh N. Orr, William G. MacKay, San Francisco, Cal., for appellant.

Mellin, Hanscom & Hursh, Oscar A. Mellin, LeRoy Hanscom, Jack E. Hursh, San Francisco, Cal., for appellees.

Before STEPHENS, HEALY and GOODRICH,^* Circuit Judges.

GOODRICH, Circuit Judge.

This litigation involves the validity of registered trade-marks and a claim for damages for alleged unfair competition. The form of proceeding was an action for a declaratory judgment and the defendant put in a counterclaim. The position of the parties will be kept more clearly in mind if they are called by name rather than as plaintiff or counterclaimant. The dispute is between Nancy Ann Storybook Dolls, Inc. (Nancy Ann) and Dollcraft Company (Dollcraft). There are two individuals, officers of Dollcraft, in the litigation but, as will be shown, we are not concerned with their part in the lawsuit.

Nancy Ann markets dolls. It has secured trade-mark registration under such names as "Red Riding Hood," "Little Miss Muffett," "Little Bo-Peep," "Mistress Mary," "Little Miss Donnett," "Curly Locks," "Goldilocks," and so forth. Dollcraft also sells dolls and it, too, has a "Red Riding Hood" and several other named dolls in the list covered by Nancy Ann's registered trade-marks.

Nancy Ann says that Dollcraft's use of the names it has protected by registering them as trade-marks is actionable. Dollcraft, on the other hand, attacks the validity of the claim that the names listed are to be classed as trade-marks and says it has been guilty of no unfair competition.

In the district court two of the names registered by Nancy Ann were upheld¹ but the remainder were rejected.² Nancy Ann brings the case here for review.

The appellant makes much of the fact that these trade-marks were registered by the patent office. Such registration does not, of course, bind this court. Jacuzzi Bros. v. Berkeley Pump Company, 9 Cir., 191 F.2d 632. It is our responsibility to decide whether the registered trade-mark is entitled to legal protection.

"The office of a trade-mark is to point out distinctively the origin or ownership of the article to which it is affixed; or, in other words, to give notice who was the producer." Delaware & Hudson Canal Co. v. Clark, 1871, 13 Wall 311, 322, 80 U.S. 311, 322, 20 L.Ed. 581.³

Both companies market dolls which are expressly dressed to resemble the fictional characters whose names they bear. The names for which Nancy Ann claims protection identify characters well-known in the literature of childhood for scores of years. Little "Red Riding Hood" does not designate Nancy Ann but quite clearly refers to a character in childhood fiction who had a very interesting adventure with a wolf. The same is true of the other names which the trial judge held not to be protected as trade-marks.

The Nancy Ann claim, if upheld, would lead to startling results. Here are some well-known names which have for years been in the public domain and a part of the literary background of almost every American child. Manufacturers surely cannot be allowed to reach into this public domain and appropriate portions thereof for their own exclusive use even if thousands of other characters still remain in that domain unappropriated. If Nancy Ann had its way a woman could not dress dolls for a church bazaar and call them by any of the Mother Goose character names which Nancy Ann claims to have secured a trade-mark upon. It was found as a fact in the district court that the names rejected as trade-marks by the trial judge were descriptive. We agree. They are descriptive and they are descriptive of the characters who bear the names, not the output of Nancy Ann.

Dollcraft makes something of the point that Nancy Ann took a position inconsistent with the one it takes in this case in some comparable litigation before the United States Court of Customs and Patent Appeals. See Ippolito v. Nancy Ann Dressed Dolls, 1950, 184 F.2d 201, 33 C.C. P.A., Patents, 720. That is immaterial. It is not required of a litigant in a trade-mark case that his conduct be consistent with his position in another case.

Nancy Ann also urges that if Dollcraft wanted to attack its trade-marks it could have done so through established procedure in the patent office. That, too, is an immaterial fact. If sword, spear and battle-ax are in the legal armory and available to a party, he may fight with any of...