85 F.2d 75 (2nd Cir. 1936), 266, DuPont Cellophane Co., Inc. v. Waxed Products Co., Inc.

Docket Nº:266.
Citation:85 F.2d 75, 30 U.S.P.Q. 332
Case Date:July 17, 1936
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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85 F.2d 75 (2nd Cir. 1936)

30 U.S.P.Q. 332




No. 266.

United States Court of Appeals, Second Circuit.

July 17, 1936

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Nims & Verdi, of New York City (Harry D. Nims, C. R. Mudge, of Wilmington, Del., and J. Hanson Boyden, of Washington, D.C., of counsel), for complainant-appellee.

Hugh M. Morris, of Wilmington, Del., amicus curiae speaking for Societe LaCellophane, Kalle & Co. Aktiengesellschaft, The Cellophane Company, Limited.

Before MANTON, L. HAND, and AUGUSTUS N. HAND, Judges.

AUGUSTUS N. HAND, Circuit Judge.

This is a suit brought by the complainant, a wholly owned subsidiary of E. I. DuPont de Nemours & Co., for the infringement by the defendant of the alleged trade-mark 'Cellophane' through using the same in connection with goods not of the complainant's manufacture.

The defendant purchases goods from Sylvania Industrial Corporation, which is a manufacturer of cellulose transparent sheets and is one of the complainant's principal competitors and has been in the habit of supplying cellulose transparent wrappings manufactured by Sylvania to customers who order cellophane sheets and billing them as 'cellulose.' The material thus sold by defendant to the public was billed and labeled 'cellulose' because it was told by Sylvania at the outset not to use the name 'Cellophane.'

The trial court held that the complainant was the owner and was alone entitled to use the trade-mark 'Cellophane' and that the defendant had infringed its exclusive rights by supplying transparent cellulose films, which were not manufactured by the complainant, in response to requests for cellophane from its customers. There was no proof, however, that any individual buyer from the defendant thought that he was obtaining complainant's product when he purchased goods from the defendant. On the ground that the complainant owned the exclusive right to the use of the trade-mark 'Cellophane,' an interlocutory decree was granted to the latter restraining the defendant from using the word cellophane in connection with any product not made by complainant and from filling any orders for cellophane with any such product without explaining to the purchaser that it was a different brand of transparent cellulose film from that of the complainant. It was also ordered in the interlocutory decree that the complainant recover profits and damages because of the foregoing infringement.

The trial judge having found that the complainant at one time had the right to prevent the use of the word 'cellophane' by others concluded that this right could only cease, if voluntarily abandoned. Hence much of the opinion of the court below was devoted to showing that there was no abandonment. We do not differ with it in respect to the question of abandonment and think that it was fairly established that the complainant endeavored to retain its rights and that abandonment,

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which depends on a voluntary surrender of the trade-mark to the public, did not occur. Hanover Milling Co. v. Metcalf, 240 U.S. 403, 419, 36 S.Ct. 357, 60 L.Ed. 713; Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 31, 21 S.Ct. 7, 45 L.Ed. 60.

In our opinion this case does not properly turn on abandonment, nor does it even turn on the question whether the word cellophane was at one time more than a descriptive term. The real problem is what it meant to the buying public during the period covered by the present suit. In other words, did it simply mean a transparent glycerinated cellulose hydrate regenerated from viscose, and nothing more, or did it mean such an article of commerce manufactured by or originating with the complainant?

The court below made a finding that the name 'characterizes a single thing coming from a single source, and is a valid trade-mark, even if it should be shown that the product is more emphasized than the producer or that the identity of the producer is unknown. ' This finding seems to us not only not warranted by the evidence but clearly disproved.

The product and use of cellophane in commerce is attributed to one Brandenberger, of Bezons, France, at about the year 1909. He coined the word 'cellophane' as suggesting a product made of cellulose and transparent, and registered 'La Cellophane' written in a fancy script as a trade-mark. It would have served as a useful trade-mark, at least in the beginning, if it had not almost immediately lost ground as such because it was employed to describe the article itself. Indeed, no other descriptive word was adopted. In answer to the question whether 'Cellophane was the name by which the new product was christened by Mr. Brandenberger,' Mr. Yerkes, the DuPont president, said: 'I considered that Cellophane was the name which he gave to the product which he invented. ' That Brandenberger used the word cellophane in a generic sense is evident from his United States patents Nos. 1,226,897 and 1,406,148. In the first he said: 'The invention relates to a label made of cellophane. ' And in the second he not only used the word generically in the specification, but he also had a claim reading thus: '4. A band, as claimed in Claim 2 in which the cellulosic material consists of cellophane.'

The early importations from the French manufacturer into the United States beginning in 1912 had labels on which 'La Cellophane' was inscribed. At first the words were written in the label and afterwards printed in order, as Euler, the American agent, intimated, to show 'what the package contained.' (Record P. 764.) In connection with sales of the product Euler also distributed some labels of his own on which were inscribed the words: "Wrapped in LaCellophane' or something like that. ' At this early stage Euler distributed circulars to his customers advertising 'La Cellophane' as 'the most interesting article put on the market in many years-- a transparent parchment tissue of the highest merit,' and added:

'La Cellophane does not break.

'La Cellophane does not stick.

'La Cellophane does not smell.

'La Cellophane has no taste.

'La Cellophane will not dissolve in water, alcohol or grease.

'La Cellophane is impermeable, always soft, waterproof and chemically pure.

'La Cellophane is tough, flexible, transparent and free from oxydes.

'La Cellophane is an ideal wrapper for any article that must be protected from outside influences.

'La Cellophane is sold in the stock size sheets, 24 x 36, or imported in any desired size.

'La Cellophane is now in use by nearly all the leading confectioners because they can't keep away from the peerless package-wrapping paper.'

While he warned the trade in the foregoing circular that 'La Cellophane' is registered in the United States Patent Office and infringers would be prosecuted, he again and again used the words as descriptive of the cellulose product. He thus used it in advertising in the Confectioner's Journal in the years 1913, 1916, and 1921-1924.

A research on cellulose by Cross & Bevan published in 1912 contained the following statement: 'The 'viscose film' (cellulose) under the powerful auspices of the Societe Industrielle de Thaon is at length a fait accompli, and is an article of commerce under the descriptive term 'Cellophane.'1 The film is produced in a great variety of decorated forms which find corresponding applications. * * * '

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In June, 1913, an article in the Journal of Industrial and Engineering Chemistry stated that: 'Paper coated with 'Cellophane' is claimed to possess more technical advantages than lead, tin, zinc, and aluminum ('Alolit') foils, mainly owing to its lightness, non-oxidizability and cleanness; in addition, Muller states that it is gas-tight. ' Cellophane' is insoluble in water and alcohol, and it may be treated with boiling water without indications of decomposition.'

In the Literary Digest of March 7, 1914, the use of cellophane as a wrapping was discussed, and in the New York Times of March 11, 1915, it use as a wrapper for candy boxes and a lining for cigar boxes was mentioned.

In 1917-18 there were reports of the United States Chemical Warfare Service in which the use of cellophane in connection with gas masks was discussed.

In Volume 13, 1919, of the American Chemical Society, there was an article as to the use of cellophane in photography.

In January, 1922, Birn & Wachenheim, who were acting as agents for the French manufacturers, distributed to the American public 10,000 copies of a circular printed in France on cellophane. It read: 'La Cellophane Bezons * * * the ideal transparent wrapper can be furnished in all sizes, in all colors.'

In 1922, the Court of Customs Appeals rendered an opinion in which the term 'cellophane' was employed many times to describe the product involved in the litigation.

In 1923, in an appeal from the Board of General Appraisers to the United States Court of Customs Appeals, the word 'cellophane' was constantly used by the witnesses as a descriptive term.

It seems quite evident that the French manufacturers and their agents, as well as the relatively limited public that were interested in using these cellulose films before DuPont entered the field, constantly employed the word 'cellophane' to describe the product and that it was used in a generic sense from the beginning.

The DuPont Cellophane Company, Inc., was incorporated in June, 1923, 'to manufacture, buy, sell, import * * * cellophane, transparent wrapping material, viscose products, textiles, fabrics, materials and articles manufactured from viscose * * * .'

The French interests, patents, the trade-mark 'Cellophane' and the business of...

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