Fawcett Publications v. Popular Mechanics Co.

• Decision Date: 18 October 1935
• Docket Number: No. 5751.,5751.
• Citation: 80 F.2d 194
• Parties: FAWCETT PUBLICATIONS, Inc. v. POPULAR MECHANICS CO.
• Court: U.S. Court of Appeals — Third Circuit

80 F.2d 194 (1935)

FAWCETT PUBLICATIONS, Inc. v. POPULAR MECHANICS CO.^*

No. 5751.

Circuit Court of Appeals, Third Circuit.

October 18, 1935.

Chester W. Johnson and Dan J. O'Connell, both of Minneapolis, Minn. (Marvel, Morford, Ward & Logan and Arthur G. Logan, all of Wilmington, Del., of counsel), for appellant.

Edward S. Rogers, William T. Woodson, and James H. Rogers, all of Chicago, Ill. (Hugh M. Morris and Alexander Nichols, both of Wilmington, Del., and E. K. Lundy, of Chicago, Ill., of counsel), for appellee.

Before WOOLLEY, DAVIS, and THOMPSON, Circuit Judges.

DAVIS, Circuit Judge.

This is a suit for infringement of a trade-mark and unfair competition.

The plaintiff, the Popular Mechanics Company, has published its magazine, "Popular Mechanics," since 1902. The name "Popular Mechanics" was registered as a trade-mark in 1914.

As the title indicates, the subject-matter of the magazine is concerned with a popular and elementary portrayal of mechanical and inventional progress. Its narrative is concise and "catchy," perhaps inclining to dramatic coloring. It had a circulation of approximately half a million copies each month.

In 1928, the defendant, Fawcett Publications, Inc., introduced a competitive magazine in the field and published it under the name, "Modern Mechanics and Inventions." The words "Modern Mechanics" of the title were printed across the face of the magazine in large, bold type and the words "and Inventions" in smaller type underneath the key words.

It was a monthly magazine and its subject-matter was similar to that contained in the plaintiff's "Popular Mechanics." The defendant sought to register the name of its publication as a trade-mark, but the application was contested by the plaintiff and denied because of the similarity of the defendant's title, "Modern Mechanics and Inventions," to the plaintiff's "Popular Mechanics." Fawcett Publications, Inc., v. Popular Mechanics Company (Cust.&Pat.App.) 58 F.(2d) 838.

The defendant continued to publish its magazine with the same title over the protest of the plaintiff. The plaintiff commenced this suit in June, 1932. In August, the defendant's "Modern Mechanics and Inventions" was taken over by another corporation, the Modern Mechanix Publishing Company, and thereafter was published under the name of "Modern Mechanix and Inventions." Its circulation was approximately 100,000 copies per month.

The bill of complaint avers that the title of the defendant's magazine infringes the plaintiff's trade-mark, "Popular Mechanics"; that the defendant attempts to imitate the plaintiff's magazine and to deceive and confuse the public; that after thirty years of use, the words "Popular Mechanics" or "Mechanics" have acquired a secondary meaning, when applied to a magazine, indicating the plaintiff's publication. The defendant's answer denies the averments of the complaint.

At the hearing before the District Court, several witnesses testified to the confusion of Popular Mechanics and Modern Mechanics by the public at retail news stands from which both magazines were principally distributed. Purchasers bought Modern Mechanics by mistake and returned it for Popular Mechanics. Wholesale magazine distributors who only handled Popular Mechanics testified that unsold copies of Modern Mechanics were sent to them by dealers as returns for credit. There was testimony also that readers confused the magazines in corresponding with the plaintiff or defendant.

After final hearing, the District Court, 9 F.Supp. 474, 478, granted an injunction to the plaintiff and said in its opinion: "Assuming the word `Mechanics' be a descriptive word and not the subject of a valid trade-mark, I am satisfied the word from thirty or more years of continuous use by plaintiff has acquired a secondary signification indicative of plaintiff's magazine, and as such is entitled to protection as much as an arbitrary or fanciful word. The plaintiff is entitled to a decree enjoining the defendant from using the word `Mechanics' or `Mechanix' as part of the name of its magazine, and for an accounting."

The plaintiff itself has stated the question on this appeal to be: "Where a name has acquired a secondary meaning identifying an established and popular magazine, is it unfair competition for a rival publisher, with notice, to appropriate such name or the salient part of it as the title of a competing magazine where such appropriation results in substantial confusion between the two publications and the passing off of one as and for the other?"

That the words, "Popular Mechanics," may be registered as a trade-mark is doubtful because of their descriptive nature, and, as a matter of fact, the plaintiff has not relied on the validity of its trade-mark in this appeal. Popular Mechanics has been used successfully and continuously as plaintiff's title for many years. The words are of great value, and while they are generally descriptive, the plaintiff has used them so continuously and successfully in this field that they have come to indicate its magazine, which is a leader of its sort.

But what the plaintiff wants is the right to the exclusive use of its key word "Mechanics" when it is applied to a magazine. The defendant insists that it cannot acquire that right and that the plaintiff is seeking a monopoly of this type of magazine since the word "Mechanics" is uniquely appropriate in describing its contents. It is doubtful if "Mechanics" is the only word the can be used in the title of a successful magazine in this field. The decision in this case, however, is not based upon the ownership of a registered trade-mark, but upon "unfair competition."

The law applicable to this case was clearly stated by Judge Woolley in Barton v. Rex-Oil Company (C.C.A.) 2 F.(2d) 402, 404, 40 A.L.R. 424, as follows:

"The law governing trade-marks is but a branch of the law regulating trade competition. The policy of this law is to foster, not to hamper, competition and it permits a monopoly in the use of a trade-mark only when it has become the absolute and exclusive property of the first user — good against the world. A merely descriptive name can never become such property; * * * and the utmost the first user of such a name after it has acquired a secondary meaning can insist upon is that no one shall use it against him in an unfair way. Accordingly, the second user becomes an infringer only when he makes an unfair use of the mark. Not any competition, but only unfair competition on the part of such user is actionable. * * *

"A technical trade-mark being treated as property, infringement thereof carries with it the presumption of fraud; but where no exclusive right to the use of a trade-mark exists, fraud — unfair competition — in the use of the mark by another must be proved, * * * and when proved, the utmost that the courts can do for the relief of the first user is to enjoin not the use of the trade-mark but the unfair method of its use. Thus it appears that while the first selection of a descriptive name which later has acquired a secondary meaning does not carry with it an exclusive right to its use, yet the first user has a right to be protected against one who subsequently so uses the name as to deceive the public and thereby take his trade from him; and in affording him this protection the later comer, when using the name, will be required to distinguish his goods and enlighten the trading public. * * * In this way the courts preserve to the first user his superior right to the mark and, what is more important, guard the public."

The plaintiff insists that its rights in "Mechanics" entitles it to an...