Everest & Jennings, Inc. v. E & J MANUFACTURING CO.

• Decision Date: 02 February 1959
• Docket Number: No. 15922.,15922.
• Citation: 263 F.2d 254
• Parties: EVEREST & JENNINGS, INC., a corporation, Appellant, v. E & J MANUFACTURING COMPANY, a corporation, Appellee. E & J MANUFACTURING COMPANY, a corporation, Appellant, v. EVEREST & JENNINGS, INC., a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

263 F.2d 254 (1958)

EVEREST & JENNINGS, INC., a corporation, Appellant, v. E & J MANUFACTURING COMPANY, a corporation, Appellee.

E & J MANUFACTURING COMPANY, a corporation, Appellant, v. EVEREST & JENNINGS, INC., a corporation, Appellee.

No. 15922.

United States Court of Appeals Ninth Circuit.

December 24, 1958.

Rehearing Denied February 2, 1959.

COPYRIGHT MATERIAL OMITTED

Fred H. Miller, Allan D. Mockabee, Los Angeles, Cal., for appellant.

Lyon & Lyon, Frederick W. Lyon, Los Angeles, Cal., for appellee.

Before BARNES, HAMLEY and JERTBERG, Circuit Judges.

JERTBERG, Circuit Judge.

There are cross appeals before us in this case. Everest & Jennings, Inc., a corporation — defendant below and appellant and cross-appellee here — appealed from the judgment of the court below holding that E & J Manufacturing Company, a corporation — plaintiff below and appellee and cross-appellant here — was the owner of the trade-mark "E & J"; that the trade-mark was good and valid in law; and was infringed by the use of the trade-mark "E-J". The court enjoined the defendant from further infringement, and refused to order registration of "E-J" as a trade-mark of the defendant to be applied on wheel chairs.

The district court further held that the infringement by the defendant was done without intent to infringe; that there was no contract between the parties; and that no damages should be awarded to plaintiff. From such holdings of the court below the plaintiff appealed to this Court.

We will continue to refer to E & J Manufacturing Company, a corporation, plaintiff below, as the plaintiff, and Everest & Jennings, Inc., a corporation, defendant below, as the defendant, regardless of designations on appeal.

Plaintiff E & J Manufacturing Company is a California corporation, which was incorporated in 1945. This corporation has manufactured and sold resuscitators and other gas administering devices under the trade-mark "E & J" since its incorporation. The initials "E" and "J" of the plaintiff's trade-mark were derived from the initials of the developers of resuscitators, C. N. Erickson and Dr. Johnston. The initials, either alone or as "E & J Manufacturing Company," were used as a trade-mark by the sole proprietorship owned by Mr. Erickson from 1929. In 1945 Mr. Erickson disposed of his business, including the trade-mark, to Don Baxter, Inc., which corporation conveyed such business including the mark, to the plaintiff.

Plaintiff registered the trade-mark "E & J" in the United States Patent Office on July 27, 1948, for use on "resuscitators, oxygenators and cases especially designed and adapted to ship and carry said resuscitators and oxygenators in class 44, dental, medical and surgical appliances."¹

Defendant Everest & Jennings, Inc. is the manufacturer of wheel chairs for invalids, with its principal place of business within approximately 15 miles of the main office of plaintiff. Its business was originally started in 1932 by Herbert A. Everest and Harry C. Jennings, as copartners. Later the partners formed the corporation, and the assets of the partnership were transferred to the corporation. In 1943 Everest sold out his entire interest in the corporation; Jennings is still active in the corporation but only in an advisory capacity, and his son, Gerald M. Jennings, is now the president.

Shortly after defendant began marketing its chairs and, apparently without any encouragement by the company, its customers began to refer to the company's product as "E and J chairs". With the advent of World War II, the designation became even more popular, particularly among injured servicemen who were using the wheel chairs. Finally, in 1946, because of the widespread use of the term "E and J" defendant adopted the initials "E-J" as a trade-mark. At that time a rather expensive die was produced to cast the initials "E-J" on the metal foot pads of the chair, as a means of readily identifying the wheel chair as being of the defendant's manufacture and standard of quality. In addition to the initials "E-J", each foot pad also carried on the underside the full and complete name "Everest & Jennings". Whenever the initials "E-J" were used on the chairs there was also a name plate on the cross brace of the chair bearing the name of the defendant in full, the street address of the defendant, and the serial number by which the chair could be identified.

In March 1952, defendant filed an application to register the trade-mark "E-J" as applied to invalid chairs with the United States Patent Office. The application was allowed by the examiner and publication ordered and made in the Patent Office Official Gazette. Plaintiff instituted an opposition proceeding, which was sustained by the examiner of interferences. An appeal from this decision by defendant has been stayed pending the outcome of these proceedings.

Plaintiff manufactures resuscitators, gas anesthetic machines, oxygenators, and other similar products under the name "E & J" and sells these products throughout the world to hospitals, governmental agencies such as fire departments, police departments, or other organizations concerned with rescue and first aid. In addition, these products are sold to various large heavy industrial concerns where there is a need to administer first aid and artificial respiration.

Plaintiff's products are normally purchased by persons in the medical profession or upon their advice, even when the items are purchased by a fire or police department. Their products sell for prices ranging from $350 to $420, and usually only after a demonstration by a competent demonstrator. On the other hand, defendant's invalid wheel chairs are sold at a much lower average figure and to the general public, rental businesses, and to hospitals and other public institutions, usually without an approval by a medical doctor.

Apparently for a long period of time neither of the parties in this litigation, nor their predecessors, were aware of the other's existence. One of the plaintiff's employees, since 1928, testified that he was not aware of defendant until 1945; and another employee, from 1933 to 1953, testified he did not hear of the defendant or its predecessor until 1946. Prior to 1949, there had been some mis-addressed mail and purchase orders sent to the wrong address of plaintiff or defendant. Whenever this occurred, the mail was merely forwarded on to the proper party, as neither one was competing with the other in the sale of the same products. Finally, in October 1949, a trade publication in commending a new development by plaintiff credited the device to defendant. Shortly after this magazine was published, the president of defendant contacted plaintiff for the purpose of seeing what could be done to eliminate the confusion. Following the suggestion of the defendant's official, two meetings were held between the parties. The result was that defendant continued to use the mark "E-J" on its wheel chairs, but deleted the use of "E-J" from its advertising, promotional literature, and from its correspondence, in the hope that this would reduce or eliminate mis-addressed mail and orders. Thereafter, both parties noticed a decline in the incidence of confusion, particularly as to mis-addressed envelopes and orders. However, there continued to be some mis-addressed mail during this period.

In December, 1952, defendant resumed using the initials "E-J" but always with the reference to Everest & Jennings, Inc. in close proximity to the initials, either within the shield used as the trademark, or printed somewhere on the wheel chair itself close to the initials. From that time, there were instances of money sent to the wrong party, purchase orders sent to the wrong company, convention space wrongly allocated, magazine advertising wrongly credited, and salesmen of one company thought by customers to be salesmen of the other. This resulted in the present litigation.

Before proceeding with the discussion of the points raised on this appeal, it should be pointed out that defendant in its statement of points to be relied upon on appeal has cited some 26 specifications of error, numbered I to XXVI. In its brief are set out and argued only those errors numbered XI to XVIII. Rule 18(2) (d) of this Court, 28 U.S.C.A., requires that "in all cases" a brief shall contain "a specification of errors relied upon which shall be numbered and shall set out separately and particularly each error intended to be urged." Failure to comply with this rule relieves this Court of considering the omitted errors, even if the errors are set forth elsewhere in the record. Peck v. Shell Oil Company, 9 Cir., 1944, 142 F.2d 141. Therefore we will deal only with the specifications set forth in the brief.

Appeal of Everest & Jennings, Inc., a corporation.

The specifications of error set forth in the defendant's brief center around the claimed error that, as stated in defendant's brief, "The conclusion reached by the Trial Court disregards the principle of law that anyone is entitled to use his own name on his products or any abbreviation thereof by which he is popularly known, and as long as he does so reasonably and honestly, it is immaterial whether some portion of the trade or public are confused or mistaken as long as they are not deceived."

A subsidiary point raised by the defendant is that the trial court erred in receiving in evidence as proof of confusion resulting from defendant's use of the initials "E-J" on its products mis-addressed letters and mis-addressed purchase orders without proper authentication.

By its judgment the trial court determined that the plaintiff was the owner of a trade-mark entitled to protection; that the defendant had infringed such trademark; that the defendant be enjoined from using in the manufacture, advertisements, offering for sale, or sale of wheel chairs or walkers under the trademark "E & J" or any colorable imitation thereof. The judgment further requires...