227 F.2d 728 (10th Cir. 1955), 5082, Olin Mathieson Chem. Corp. v. Western States Cutlery & Mfg. Co.

Docket Nº:5082.
Citation:227 F.2d 728, 107 U.S.P.Q. 257
Party Name:OLIN MATHIESON CHEMICAL CORPORATION, a corporation, Appellant, v. The WESTERN STATES CUTLERY AND MANUFACTURING COMPANY, a corporation; H. Reginald Platts, Harlow C. Platts, Debbie C. Platts, Lois M. Platts, and Marian K. Platts, doing business under the name and style of Western States Cutlery Company; and Western States Cutlery Company, a Colorado
Case Date:November 12, 1955
Court:United States Courts of Appeals, Court of Appeals for the Tenth Circuit

Page 728

227 F.2d 728 (10th Cir. 1955)

107 U.S.P.Q. 257

OLIN MATHIESON CHEMICAL CORPORATION, a corporation, Appellant,

v.

The WESTERN STATES CUTLERY AND MANUFACTURING COMPANY, a corporation; H. Reginald Platts, Harlow C. Platts, Debbie C. Platts, Lois M. Platts, and Marian K. Platts, doing business under the name and style of Western States Cutlery Company; and Western States Cutlery Company, a Colorado corporation, Appellees.

No. 5082.

United States Court of Appeals, Tenth Circuit.

November 12, 1955

Rehearing Denied Dec. 16, 1955.

Page 729

Dudley I. Hutchinson, Boulder, Colo. (T. Henry Hutchinson and Dudley I. Hutchinson, Jr., Boulder, Colo., were with him on the brief), for appellees.

Before PHILLIPS, Chief Judge, HUXMAN, Circuit Judge, and SAVAGE, District Judge.

HUXMAN, Circuit Judge.

Appellant, Olin Mathieson Chemical Corporation, filed an action in the United States District Court for the District of Colorado against appellee, the Western States Cutlery and Manufacturing Company, a corporation, et al., seeking an injunction restraining appellees from using the trade-mark 'Western' and restraining them from selling or offering to sell knives bearing the trade-mark 'Western' and for an accounting of profits realized from the alleged unlawful use of that trade-mark name upon knives sold. After a hearing before the court findings of fact and conclusions of law were made and based thereon judgment was entered dismissing appellant's complaint with prejudice.

Appellant, formerly operating under the name of Western Cartridge Company (a Delaware Corporation organized January 25, 1922) and now operating under the name and style of Western Cartridge Company Division of Olin Industries, Inc., and appellant's predecessors have since January 1, 1896, been engaged in the manufacture and sale of ammunition, including shotshells, rifle and revolver cartridges, shotgun and air rifle shot, shotgun wads, bullets, shotgun and rifle powders, primers, blasting caps, targets and traps, at East Alton, Illinois, and at New Haven, Connecticut. Beginning January 1, 1896, appellant's predecessors adopted 'Western' as their trade-mark for such products and continuously since appellant and its predecessors have manufactured, sold and distributed large quantities of such products bearing the trade-mark 'Western' throughout the United States and in foreign countries, primarily to hunters and sportsmen. Such sales have been made through hardware stores, sporting goods stores and other similar retail outlets.

Appellant is the owner of nine registered trade-marks of the mark 'Western'. The first five were registered pursuant to the Trade-Mark Act of February 20, 1905, and the last four were registered under the Act of 1946. Four of these registrations registered the word 'Western' in script enclosed in a diamond format. The other five merely registered the word 'Western' in script, varying somewhat in the characters employed.

Appellee, the Western States Cutlery and Manufacturing Company, organized under the laws of the State of Colorado in 1913, began the selling of cutlery as a jobbing business shortly thereafter. It and its predecessors have been continuously engaged in such business from that time on. As early as 1920 appellee and its predecessors began the manufacture of cutlery, including pocket knives. Beginning at least by the early 1930's they began the manufacture and sale of hunting or outdoor knives on which the word 'Western' alone or in combination was stamped. Sometimes the word 'Western' alone was used. At other times 'Western Boulder Colorado' was stamped on the knives with 'Boulder Colorado' printed in smaller type. Some were

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stamped 'Western States,' some with 'West-Cut,' some with other marks and some with no marks at all.

In the early 1930's the hunting knife production constituted about ten per cent of the business of appellee and its predecessors. Since then there has been a steady increase in the manufacture and sale of these hunting knives and later of axes, until at the present time such products constitute over seventy-five per cent of appellee's production.

Since 1918 appellees have employed the practice of issuing catalogues disclosing its cutlery stamped as above indicated, and beginning in July, 1944, its hunting knives and other cutlery products, including knives manufactured for the war effort for the Government, were advertised in national magazines such as Outdoor Life, Field and Stream and...

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