Independent Nail & Packing Co. v. Perry

• Decision Date: 13 July 1954
• Docket Number: No. 11135.,11135.
• Citation: 214 F.2d 670
• Parties: INDEPENDENT NAIL & PACKING CO., Inc. v. PERRY, Judge.
• Court: U.S. Court of Appeals — Seventh Circuit

214 F.2d 670 (1954)

INDEPENDENT NAIL & PACKING CO., Inc. v. PERRY, Judge.

No. 11135.

United States Court of Appeals Seventh Circuit.

July 13, 1954.

Thomas F. McWilliams, Chicago, Ill., for petitioner.

Casper William Ooms, Robert C. Williams, Chicago, Ill., for respondent.

Before DUFFY, LINDLEY and SWAIM, Circuit Judges.

DUFFY, Circuit Judge.

This is a petition for a writ of mandamus. The petitioner herein was the plaintiff in a suit entitled The Independent Nail and Packing Company, Inc. v. Stronghold Screw Products, Inc., 205 F. 2d 921 in which action plaintiff charged defendant with appropriating its trademark "Stronghold" by including "Stronghold" in its corporate name and by applying "Stronghold" to its line of goods which was similar to that made and sold by plaintiff. Unfair competition was also alleged.

Defendant's predecessor first operated under the name, Sackheim Brothers Corporation. In 1936 its name was changed to Manufacturers Screw and Supply house, and in 1940 it was again changed to Manufacturers Screw Products. In 1946, which was twelve years after plaintiff had widely advertised its products under the trade-mark "Stronghold," defendant changed its corporate name to Stronghold Screw Products, Inc. The district court found the issues favorable to the defendant. On appeal this court, 205 F.2d 921, 925, reversed the judgment of the district court, pointing out that defendant was the latecomer in the adoption of the words "Stronghold." We stated, "Defendant adopted its logotype emphasizing the word `Stronghold' with full knowledge of plaintiff's registered trade-mark which featured the same word. It did so at its peril." We also pointed out that defendant adopted its new corporate name, including the word "Stronghold," with full knowledge of plaintiff's mark. We quote with approval from National Circle, Daughters of Isabella v. National Order of Daughters of Isabella, 2 Cir., 270 F. 723, 734: "If damage is suffered by the defendant corporation by being compelled now to change its name and cease its infringement on the plaintiff's name, the loss arises out of the defendant's own folly in deliberately incorporating under a name already in use." We held that the defendant with full knowledge of plaintiff's use of the words in its business, appropriated plaintiff's common law trade-mark as well as the predominant feature of plaintiff's registered trade-mark. We held also that defendant's conduct constituted unfair competition and concluded our opinion by stating that the plaintiff was entitled to injunctive relief.

Defendant petitioned for certiorari, which was denied by the Supreme Court on November 16, 1953. 346 U.S. 886, 74 S.Ct. 138. The mandate of this court was issued on November 19, 1953, and forwarded to the district court. On November 27, 1953, judgment was entered in the district court, providing that the earlier judgment be vacated, that plaintiff was the owner of the trademark "Stronghold," that defendant had infringed plaintiff's trade-mark and competed unfairly with plaintiff, that an injunction issue restraining defendant from further infringing plaintiff's trade-mark and from competing unfairly with plaintiff. However, the court provided that the injunctive provisions of the judgment should become effective only upon the further order of the court. The judgment also provided that Stronghold Screw Products, Inc. file a report within 30 days setting forth what had been accomplished pursuant to the terms of the judgment.

On December 17, 1953, and before the report was filed, defendant presented to the district court a motion for stay of injunction and asked for an interpretation of the judgment and for the court to decree that Stronghold Screw Products, Inc. had the right under the judgment theretofore entered to use the name Strong Screw and Bolt, Inc. and logotypes similar to those theretofore used, with the exception that the word "Strong" was to be substituted for the word "Stronghold."

Plaintiff, the petitioner herein, strongly objected to such use and registered such objections both orally and by formal pleading, but the district judge, on February 23, 1954, decided that Stronghold Screw Products, Inc. could use the corporate name Strong Screw and Bolt, Inc., and also the logotypes in the form suggested. The question was then raised as to the effective date of the injunction. After indicating that a period of 30 days would be proper, the district judge said, "I don't think I should carry that along until an appeal is made to determine another matter." However, when the order was signed, it provided May 1, 1954, as the effective date, a period of 65 days. In the meantime plaintiff, the petitioner herein, had appealed to this court the order and judgment determining that Stronghold Screw Products, Inc. could use the corporate name of Strong Screw and Bolt, Inc., and the logotypes hereinbefore described. That appeal is decided in a separate opinion handed down on this date.

On March 16, 1954, the district judge entered an order as follows: "It is hereby ordered that the injunction ordered in the order of February 24, 1954, is hereby stayed until 30 days after the mandate is issued from the Court of Appeals for the Seventh Circuit in...