Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., Civ. A. No. 64-1205.

• Decision Date: 13 February 1967
• Docket Number: Civ. A. No. 64-1205.
• Citation: 152 USPQ 743,267 F. Supp. 963
• Parties: DRESSER INDUSTRIES, INC., a corporation, Plaintiff, v. HERAEUS ENGELHARD VACUUM, INC., a corporation, Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

267 F. Supp. 963

152 USPQ 743

DRESSER INDUSTRIES, INC., a corporation, Plaintiff, v. HERAEUS ENGELHARD VACUUM, INC., a corporation, Defendant.

Civ. A. No. 64-1205.

United States District Court W. D. Pennsylvania.

February 13, 1967.

Walter T. McGough, Reed, Smith, Shaw & McClay, Pittsburgh, Pa., Dean A. Olds and Jerome Gilson, Hume, Groen, Clement & Hume, Chicago, Ill., Robert W. Mayer, Dallas, Tex., for plaintiff.

Ralph D. Dinklage, Burgess, Dinklage & Sprung, New York City, Edward F. Welsh, Pittsburgh, Pa., for defendant.

OPINION

WILLSON, District Judge.

The plaintiff in this action is Dresser Industries, Inc., a Delaware corporation having its principal place of business at Dallas, Texas. The defendant is Heraeus Engelhard Vacuum, Inc., a Delaware corporation having its principal place of business at Monroeville, Pennsylvania, in this District. In the complaint, plaintiff alleges that this action is brought under the federal trademark statute, 15 U.S.C. §§ 1051-1127, and that the jurisdiction of this Court is based upon 15 U.S.C. § 1121 and 28 U.S.C. § 1338.

Plaintiff, through its Roots-Connersville division, manufactures and sells rotary positive displacement vacuum pumps. Defendant's corporate parent W. C. Heraeus, GmbH, of Hanau, Germany, manufactures in that country similar pumps for which defendant is the marketing agent in the United States. Defendant markets pumps ranging in price from about $1,300 to $25,000 and up. Competitive bidding accounts for about 30 to 50 percent of the sales in this range, with the percentage of competitive bidding rising as the price increases. The remainder of sales are made as a result of inquiries and orders from prospective buyers. Its buyers include federal departments and agencies, companies in the aerospace, steel, chemical and electrical industries, and universities and laboratories. It advertises its products in selected trade and technical journals. The controversy here is over the use by the defendant of the word ROOTS in advertising the rotary positive displacement vacuum pumps manufactured by W. C. Heraeus. The parties have stipulated that defendant has not affixed the word ROOTS to any of its manufactured products. Nor has defendant affixed the word ROOTS to any of the boxes, containers, or wrappers in which its products are shipped throughout the country.

In the complaint, plaintiff sets forth its allegations under three counts. The first count is styled "Trademark Infringement." Plaintiff alleges that it is the owner of six trademarks, the registrations of which are in full force and effect, and which have been variously and continuously used on the several products manufactured and sold by plaintiff. Plaintiff alleges that the use of the trademarks, both on its goods and in advertising with respect to them, together with "continuous and expensive maintaining of high standards of excellence of products," has resulted in a very favorable consumer identification of the trademarks with it and its products. Plaintiff finally alleges that despite its long-established prior right to the use of the trademarks in connection with a wide variety of products, defendant began in 1963 to use one of the trademarks, the word ROOTS, in connection with the advertisement and sale of blowers and pumps, and that such use wrongfully identifies and represents the defendant's products with and as those of the plaintiff, and does and will cause confusion, deception or mistake, in violation of 15 U.S.C. § 1114(1).

The second count is styled "Federal Unfair Competition." Plaintiff repeats the allegations in the first count and alleges that defendant's use of the word ROOTS with respect to its products constitutes a false designation of origin, in violation of 15 U.S.C. § 1125(a).

The third count is styled "Common Law Unfair Competition." Plaintiff repeats the allegations made in the first and second counts, and alleges that although defendant had knowledge of the prior use of the plaintiff's trademarks, defendant used the word ROOTS in advertising its products, thereby promoting its products in such a manner as to suggest association with plaintiff and to cause confusion, deception or mistake as to the origin of defendant's products, and profiting unlawfully from consequent sales.

Plaintiff seeks both injunctive relief and monetary damages.

In its answer, defendant essentially denies that the designation ROOTS in the form asserted by plaintiff constitutes a trademark, and alleges that any alleged trademark or registration of which ROOTS is all or a significant portion is invalid and unenforceable against defendant in that the word ROOTS is and has been since at least 1900 in the public domain as signifying "an engineering principle and/or an equipment type and/or an equipment type incorporating said principle," or that the designation ROOTS was abandoned as a trademark by plaintiff. Defendant says that its use of the word ROOTS has been merely descriptive of the equipment it makes and that it has been using the word ROOTS in a generic sense and in good faith and it had been so used prior to the later registrations of the word ROOTS as a trademark by the plaintiff. Defendant alleges that the later registrations of the word ROOTS as a trademark by the plaintiff were fraudulently obtained, and that plaintiff has violated the anti-trust laws in that it has interfered in free commerce and competition by seeking to prevent others from using the word ROOTS in connection with fluid handling equipment. Defendant finally alleges that the word ROOTS has become a generic designation for a type of fluid handling equipment and cannot be exclusively appropriated by plaintiff. In its counterclaim, defendant alleges that despite the fact that the word ROOTS has been in the public domain, has come to identify a principle or type of equipment and has become generic with respect to identifying such type of equipment, plaintiff has applied for certain trademark registrations involving use of the word, and that therefore the registrations were "improperly if not fraudulently obtained," and that plaintiff has thereupon unfairly competed with defendant in attempting to restrict the lawful use of the word ROOTS. As relief, defendant seeks the cancellation of plaintiff's registrations of the word ROOTS, assessment of damages suffered by defendant as a result of plaintiff's allegedly fraudulent registration and unfair competition, and punitive damages for violation of the anti-trust laws.

The corporate background of this controversy, as stipulated to by counsel, is important to an understanding of the contentions of both parties. In 1846, Alanson Roots and his sons Philander and Francis founded the Roots Woolen Mill in Connersville, Indiana. For almost three decades the Roots Mill manufactured and sold nationally a variety of cloth products. Between 1854 and 1859, the Roots brothers established, as a sideline to the woolen mill, a separate business under the name of The P. H. & F. M. Roots Company to develop, manufacture and sell rotary air blowers and related products. A patent for a rotary blower was issued to P. H. Roots in 1860 and reissued in 1866. Appendix "A". When the Roots Mill burned to the ground in 1875, the Roots brothers became active solely in The P. H. & F. M. Roots Company. In 1929, The P. H. & F. M. Roots Company, which had previously become a division of The Stacey Engineering Company, was merged with the Connersville Blower Co., and the resulting corporate entity was known as Roots-Connersville-Wilbraham, a division of the International Stacey Corp. In 1934, the assets of Roots-Connersville-Wilbraham were transferred to The Connersville Blower Company, Inc., and its name changed to Roots-Connersville Blower Corp. In 1944, Dresser Industries, Inc., purchased all the stock of International Stacey, acquiring thereby the stock of Roots-Connersville Blower Corp. In 1952, Roots-Connersville Blower Corporation sold all its assets to Dresser, and was then dissolved. Dresser Industries in that year created a division called Roots-Connersville Blower, the name of which was shortened, in 1965, to Roots-Connersville. In this manner, plaintiff became the owner of, inter alia, the patents and trademarks owned by The P. H. & F. M. Roots Company and its successors. Through the years, the product line of Roots-Connersville has been greatly expanded so that it now manufactures all sorts of air and gas handling equipment—pumps, blowers and exhausters based on various engineering principles, gas meters, and accessories —and is now developing electronics instruments.

Meanwhile, the design disclosed by the 1860-66 patent, in the words of defendant's counsel, "took hold the world over." Blowers of this type, manufactured by The P. H. & F. M. Roots Company or its foreign licensees, were exhibited at and won the highest prizes awarded by the International Exhibitions of Paris in 1867, Vienna in 1873 and Philadelphia (United States Centennial) in 1876. The P. H. & F. M. Roots Company catalog of 1878 is replete with testimonials from users and descriptions of use in a variety of installations ranging from forcing blast furnaces through ventilating buildings to powering church organs. That the design principle disclosed in the 1860-66 patent has generated considerable interest in engineering and industrial circles, and has retained its appeal to the present time, is borne out by the fact that between 1866 and 1965, more than 50 patents have been issued in this country for designs of equipment based on the rotary positive displacement principle disclosed in the original P. H. Roots patent. Perusal of the technical literature and advertising introduced at trial indicate that the diversity of uses of equipment embodying this principle has increased with the advances made by technology in all fields in this century. Since the 1950's, advances in medium- to high-vacuum technology and its applications...