American Thermos Bottle Co. v. W.T. Grant Co.

Decision Date05 August 1922
Docket Number1555.
Citation282 F. 426
PartiesAMERICAN THERMOS BOTTLE CO. v. W. T. GRANT CO.
CourtU.S. Court of Appeals — First Circuit

Frederick P. Fish, of Boston, Mass. (Charles F. Rowley, of Boston Mass., and Robert B. Killgore, of New York City, on the brief), for appellant.

Merton E. Lewis, of New York City (Morris, Plante & Saxe, of New York City, and Arthur Black, of Boston, Mass., on the brief) for appellee.

Before BINGHAM and JOHNSON, Circuit Judges, and MORRIS, District judge.

BINGHAM Circuit Judge.

This is a proceeding in equity, brought by the plaintiff, appellant against the defendant, appellee, asking an injunction restraining the defendant from putting on the market vacuum bottles and employing in connection therewith the word 'Thermos,' the plaintiff's corporate name, its patent numbers, etc., and for an accounting.

In the court below it was assumed, for the purposes of the case, that the plaintiff had a valid trade-mark in the word 'Thermos,' used in connection with vacuum bottles which it produced and put upon the market, and that the defendant, by selling and putting upon the market, as it did, vacuum bottles bearing the words 'American Thermos Bottle Company, Norwich, Conn., U.S.A.,' inscribed in the outer circle on the bottom of each bottle, and the words and figures 'Thermos, Trade-Mark, Pat. Nos. 13,093, Mch. 15, '10, 38834, Sept. 24, '07,' in the inner circle, was guilty of infringing the plaintiff's property right, and that the plaintiff could maintain its action, unless either one of two defenses set up by the defendant could be found to be sustained by the evidence.

The first defense was that the plaintiff procured and induced the use of its trade-mark, name, etc., on the vacuum bottles which the defendant had sold and was offering for sale, and therefore could not be heard to complain of such use. The second was that the plaintiff did not come into court with clean hands, in that it had used and purposed to use its trade-mark and name in connection with the sale of goods of foreign origin fraudulently and in a manner to deceive and mislead the purchasing public as to the country of origin.

In the argument on this appeal counsel for the defendant has contended that the word 'Thermos' is descriptive, and that the trade-mark is therefore invalid. This defense was not pleaded, or even suggested, in the court below until after the evidence was closed. In fact, the record shows that the parties, early in the trial, filed a written stipulation to the effect that the plaintiff was the owner of the trade-mark 'Thermos' for 'double-walled vacuum vessels with vacuum between the walls,' duly registered in the United States Patent Office January 7, 1908, certificate 67,002, and that thereafter, while the trial was proceeding, on inquiry by the court as to whether formal evidence of the trade-mark had been put in, counsel for the defendant stated that it had been stipulated between the parties that the plaintiff had a trade-mark in the word 'Thermos' and there was no occasion for offering formal proof. Such being the situation, we think it is not open to the defendant at this time to question the validity of the trade-mark.

The only questions, therefore, of importance in this controversy, are those presented by the two defenses above referred to.

The first defense-- that the plaintiff procured and induced the use of its trade-mark on the vacuum bottles which the defendant has sold and is proposing to sell-- is based upon a contract, and the relations arising therefrom, dated December 6, 1920, which the plaintiff made with the American Steel Export Company. The Export Company is not a defendant, and the evidence does not show what its exact relations to the Grant Company, the defendant, are. But the court below found that the fair inference from the evidence was that the Grant Company had either bought the vacuum bottles, which it had sold and was offering for sale, from the Export Company, or that it was marketing them for that company, and assumed that the rights of the Grant Company to the use of plaintiff's trade-mark were the same as those of the Export Company.

By the contract of December 6, 1920, the plaintiff agreed to purchase from the Export Company 600,000 pint Thermos fillers, identical with 'Schmidt Pint Filler No. 1,' to be shipped from a European port at the rate of 100,000 per month for 6 months commencing December, 1920; 300,000 quart fillers, identical with sample marked 'Schmidt Quart Filler No. 2,' to be shipped from a European port during the 6 months commencing January, 1920, at the rate of 50,000 per month; and 100,000 pint complete aluminum bottles identical with sample marked 'Schmidt Full Aluminum Pint Size No. 3,' except to be of seamless aluminum, to be shipped from a European port during 6 months commencing January, 1921, at the rate of 16,666 per month. It is the sale by the defendant of these 100,000 pint bottles, marked with plaintiff's trade-mark, name, etc., of which the plaintiff complains. The 600,000 pint fillers, the 300,000 quart fillers, and the fillers in the 100,000 complete bottles were guaranteed to be free from stone and blisters, to be silvered as per quality of sample, and to maintain a temperature of not less than 115 degrees F. after standing 24 hours filled with water entered at 210 degrees F. Defective or broken bottles were to be credited or replaced at the option of the Export Company. The prices were fixed at 32 cents for a pint filler, 45 cents for a quart filler, and 50 cents for the complete pint bottle, freight and duty paid; payments for all goods delivered were to be 50 per cent. on arrival in New York or any other Atlantic seaport, and 50 per cent. within 10 days after delivery to carrier at the port of arrival.

During the month of December, 1920, and prior to January 27, 1921, the Export Company delivered about 43,000 pint thermos fillers, which the plaintiff failed to pay for on arrival at port or within 10 days after delivery to the carrier. On January 27, 1921, the plaintiff was notified in writing that it had defaulted in the payments and that the Export Company elected to rescind the contract 'so far as such contract remains unperformed.'

At the time of the rescission none of the complete pint bottles called for by the contract had been received by the plaintiff, and there is no evidence that any of them had been made or marked with the plaintiff's trade-mark at that time, or that the Export Company had made a contract for their manufacture; but it does appear that at some time between January 27, 1921, and June, 1921, the 100,000 complete pint bottles were received in the United States and put on the market by the defendant, and that some 20,000...

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3 cases
  • Ward Baking Co. v. Potter-Wrightington, Inc.
    • United States
    • U.S. Court of Appeals — First Circuit
    • April 8, 1924
    ... ... Coxe in the Circuit Court in 1909, in American Tobacco ... Company v. Polacsek, 170 F. 117. In ordering ... 113, 65 L.Ed. 189. See, also, American Thermos Bottle ... Company v. Grant Company, 279 F. 151, 156, 158, ... ...
  • American Thermos Prod. Co. v. Aladdin Industries, Inc.
    • United States
    • U.S. District Court — District of Connecticut
    • June 26, 1962
    ...as a descriptive word, came into popular use. 21. On February 25, 1922 in American Thermos Bottle Co. v. W. T. Grant Co., 279 F. 151, aff'd 282 F. 426, the United States District Court for the District of Massachusetts "Belatedly defendant's counsel suggests that `Thermos' is a descriptive ......
  • Potter-Wrightington, Inc. v. Ward Baking Co.
    • United States
    • U.S. District Court — District of Massachusetts
    • March 20, 1923
    ...by it. The defense of unclean hands cannot be sustained. Compare American Thermos Bottle Co. v. Grant Co. (D.C.) 279 F. 151; Id. (C.C.A.) 282 F. 426. Defendant's most plausible contention is that, if and in so far as the plaintiff's case is what is sometimes called a technical trade-mark ca......

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