395 F.2d 457 (3rd Cir. 1968), 16566, Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc.

Docket Nº:16566, 16567.
Citation:395 F.2d 457, 158 U.S.P.Q. 65
Party Name:DRESSER INDUSTRIES, INC., a Corporation v. HERAEUS ENGELHARD VACUUM, INC., a Corporation.
Case Date:May 24, 1968
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit
 
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395 F.2d 457 (3rd Cir. 1968)

158 U.S.P.Q. 65

DRESSER INDUSTRIES, INC., a Corporation

v.

HERAEUS ENGELHARD VACUUM, INC., a Corporation.

Nos. 16566, 16567.

United States Court of Appeals, Third Circuit.

May 24, 1968

Argued Dec. 4, 1967.

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[Copyrighted Material Omitted]

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Ralph Dinklage, Burgess, Dinklage & Sprung, New York City (Christy, Parmelee & Strickland, Pittsburgh, Pa., on the brief), for appellant in No. 16567 and for appellee in No. 16566.

Before MARIS, KALODNER and SEITZ, Circuit Judges.

OPINION

MARIS, Circuit Judge.

These are appeals from a judgment entered in the District Court for the Western District of Pennsylvania in an action brought by the plaintiff, Dresser Industries, Inc., a corporation engaged in the manufacture and sale of, inter alia, rotary positive displacement lobe-type vacuum pumps, blowers and compressors, to enjoin the defendant, Heraeus Englehard Vacuum, Inc., a corporation selling similar products manufactured in Hanau, Germany, by the defendant's parent corporation, W. C. Heraeus, GmbH, from using the trademark 'Roots' in catalogues and trade journal advertising in the United States. Judge Willson, in a careful and exhaustive opinion, set out the charges and countercharges of the pleadings, as well as the corporate history of the parties, and the history of the 1860 1 patent issued to P. H. Roots on an improvement in rotary blowers, and made comprehensive findings covering the

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factual issues. No useful purpose would be served in repeating here what has been so well and fully stated by him. Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., D.C.Pa.1967, 267 F.Supp. 963.

For this review it is sufficient to say that the design disclosed in the P. H. Roots 1860-1866 patent generated considerable interest in engineering and industrial circles, abroad as well as in this country, winning high awards in exhibitions held in 1867, 1873 and 1876. That design principle has retained its appeal to the present time. Since 1859 rotary air blowers and related products were manufactured and sold by the plaintiff's predecessors, P. H. & F. M. Roots Company and succeeding predecessors in interest, and are now manufactured and sold by the plaintiff through its Roots-Connersville division. In 1955 Heraeus began to sell through a distributor in the United States its rotary positive displacement pumps. In 1963 the defendant was formed to sell these products. During this period the plaintiff protested, to Heraeus' agent and later to the defendant, the use of the word 'Roots' in advertising 'Roots pumps', 'Roots blowers' and 'Heraeus Roots Pump'. 2

The goods with which the parties compete in the market in this country are rotary positive displacement lobe-type vacuum pumps. At least half a dozen major companies manufacture and sell this type pump. The defendant's products range in price from about $1,300 to $25,000 and up; competitive bidding accounts for a good percentage of the purchases from the parties. The pumps are often sold as a result of an inquiry or a direct order from a prospective user. The market is relatively small and selective, the purchasing being made sometimes through customers' purchasing agents but, generally, on the basis of specifications drafted by the customers' engineers for use in installations which are large and expensive. In these sales advertising may play a significant role and the descriptive words used are often of paramount importance. Invitations to bid indicated that the prospective purchasers, among whom were the National Bureau of Standards, the United States Air Force, Grumman Aircraft Engineering Corporation and the General Electric Company, specified 'Roots-type', 'Roots', 'roots', or 'Roots type' pumps. In this context it was of considerable importance to the plaintiff, on the one hand, to restrict the use of the word 'Roots' to its own products, and to the defendant, on the other, to be free to use the word 'Roots' with respect to advertising its products.

The complaint charged that the use by the defendant of the trademark 'Roots' being identical to the plaintiff's trademark 'Roots' and substantially identical to salient portions of the plaintiff's five other trademarks, 3 wrongfully identified and represented the defendant's pumps as originating from the plaintiff and was likely to cause confusion, deception or mistake in the minds of the purchasing public as to the origin or relationship of the defendant's products, in violation of section 32 of the Trademark Act of 1946, as amended, 15 U.S.C.A. § 1114(1), and constituted unfair competition for which plaintiff demanded an accounting and damages. The defendant by way of defense asserted that the designation 'Roots', since at least 1900, has been in the public domain, widely used in the art to identify either an engineering principle or a type of equipment embodying that principle, and has become generic with respect to identifying that type of equipment. In a counterclaim the defendant charged the plaintiff with fraud in obtaining its trademark registrations and with unfair competition and illegal restraint and sought a judgment dismissing the complaint, cancelling the

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plaintiff's trademark registrations, and damages.

Following the trial of the case, the district court concluded that the word 'Roots', as applied to rotary positive displacement lobe-type pumps, blowers and compressors which embodied the design or principle disclosed in Patent Reissue No. 2369, was a word of generic significance; that the plaintiff did not have any rights of trademark or tradename in the word per se; that the word 'Roots' was free for use in the trade by the defendant in its sales promotion, providing the defendant in using the word 'Roots' did so in such a manner as to show that its goods were the products of a specific supplier other than plaintiff's Roots-Connersville division. The court accordingly dismissed the complaint. With respect to the defendant's counterclaim, the court ordered cancellation of the plaintiff's Trademark Registration Nos. 153,840 and 710,549, insofar as they related to rotary positive displacement lobetype pumps, blowers and compressors, dismissed the remainder of the counterclaim and awarded the defendant costs of the action. Judgment was entered accordingly and these appeals followed. The plaintiff, at our docket No. 16566, appeals from all portions of the judgment excepting that portion dismissing the remainder of the counterclaim; the defendant, at our docket No. 16567, appeals from that portion of the judgment dismissing its counterclaim.

In deciding cases involving charges that the exclusive use of a trademark has been invaded, there is no precise formula or rule of law which can be applied mechanically to determine whether there has been an infringement of a trademark or name. Each case must be decided on its own facts and circumstances. Morgenstern Chemical Co. v. G. D. Searle & Co., 3 Cir. 1958, 253 F.2d 390, 392. As was observed in Q-Tips, Inc. v. Johnson &...

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