Mishawaka Rubber & Woolen Mfg. Co. v. SS Kresge Co.

• Citation: 119 F.2d 316
• Decision Date: 18 April 1941
• Docket Number: No. 8612.,8612.
• Parties: MISHAWAKA RUBBER & WOOLEN MFG. CO. v. S. S. KRESGE CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

119 F.2d 316 (1941)

MISHAWAKA RUBBER & WOOLEN MFG. CO. v. S. S. KRESGE CO.

No. 8612.

Circuit Court of Appeals, Sixth Circuit.

April 18, 1941.

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Thomas S. Donnelly, of Detroit, Mich. (Thomas S. Donnelly, of Detroit, Mich., and Eugene M. Giles, of Chicago, Ill., on the brief), for appellant.

William B. Giles, of Detroit, Mich., for appellee.

Before HICKS, HAMILTON, and MARTIN, Circuit Judges.

HAMILTON, Circuit Judge.

Appellant, Mishawaka Rubber and Woolen Manufacturing Company, filed a complaint against the appellee, the S. S. Kresge Company, for trade-mark infringement and unfair competition. The court found for appellant, but it claims the relief granted was inadequate and on this appeal it asks that the judgment be extended to award it further and other relief.

For many years appellant has been engaged in the manufacture, sale and distribution of footwear of various kinds and for more than thirty-five years, has been manufacturing rubber heels for use on its boots and shoes. Continuously since 1898, appellant has used a trade-mark which it registered in 1901 for its goods, consisting of an arbitrarily selected representation of a circular figure or colored ball of varying shades of red applied directly to the tread face at approximately the center of the rubber heel. It has renewed the registration of its trade-mark from time to time and is presently using it.

Since 1917 it has exemplified its trademark by embedding a circular plug of contrasting colored rubber in the heels of shoes sold by it of the same thickness of the heel so that the distinctive marking remained on the product during its life. In combination with the colored circular ball figure, appellant also used other registered trade-marks consisting generally of the words "Ball Band" or sometimes "Mishko" in raised lettering and also at bottom the lettering "Mishawaka, Indiana." The circular mark and the words "Ball Band" were associated together in different ways, the ball-shaped mark sometimes appearing between the words "Ball" and "Band" and sometimes being at the side of or above or below them. The words "Trade-Mark, Rubbers, Mishawaka, Ind." were always stamped under the colored circular mark. Mishawaka is the town in Indiana where appellant did its manufacturing.

Appellant has spent, and is continuing to spend, large sums of money advertising in catalogs, pamphlets, newspapers and by window displays, its product under its trade-marks, prominently displaying its colored circular figure as an identification of origin. Appellant's shoe heels have been sold throughout the United States always as a part of its shoes, never separately.

Appellee, the S. S. Kresge Company, operates and maintains a large number of retail stores throughout the United States where it sells detached rubber heels and lifts manufactured for it by the Essex Rubber Company, O'Sullivan Rubber Company and the Boston Woven Hose and Rubber Company. Those manufactured for it by the Essex Rubber Company had a red circular mark on the tread with the word "Crusader" in raised lettering and embossed in the outer face of the circular mark was a crusader's head or a head in armor.

On discovery that appellee was selling the above-described heels, appellant, on May 9, 1933, notified appellee that it was infringing its trade-mark and appellee, on May 19, 1933, informed appellant it intended using some color other than red on its heels and notified the Essex Company to discontinue the use of the red circular mark on the heels manufactured for it and from about June 6, 1933, to June 29, 1934, Essex manufactured and supplied appellee heels with a circular orange colored mark but from May, 1933, until June, 1934, appellee continued to sell heels with red circular mark, as well as those with orange circular mark indiscriminately mixed together on the same counters. Appellant again notified appellee of the alleged infringement on February 15 and also on June 14, 1934, and on June 29, 1934, appellee notified the Essex Rubber Company to discontinue delivery of heels to it. From June 1, to September 1, 1934, the Essex Rubber Company was changing its molds and thereafter supplied appellee with heels with an indented diamond-shaped insert with a crusader's head embossed thereon, the insert contrasting to the color in the body of the heel and having on it the word "Crusader."

The heels manufactured for appellee by the O'Sullivan Rubber Company, had on the tread surface an embossed circular Indian head in red with the words "Sure-Foot" in raised lettering thereon and these were delivered to appellee from July 1, 1934, to December 1, 1934, and sold by it from bins and counters on which were also displayed and sold heels having the red "Crusader" mark. After December 1, 1934, appellee requested the O'Sullivan Rubber Company to change the color of the circular Indian head mark from red to green and thereafter appellee sold these heels bearing the green circular Indian headmark from the same bins and counters where there was displayed and offered for sale heels bearing the red circular mark of the "Crusader" type, the orange circular mark of the "Crusader" type and the indented diamond-shaped "Crusader" head type.

The heels made for appellee by the Boston Woven Hose & Rubber Company had an American eagle on a circular background on the tread surface, with the word "Evergrip" embossed thereon but they did not use a red or reddish color.

The court below found that the heels manufactured for the appellee by the Essex Rubber Company and the O'Sullivan Rubber Company infringed appellant's trade-mark but that those manufactured by the Boston Woven Hose & Rubber Company did not so infringe. It also found that the method followed by appellee in the sale of its heels and lifts was unfair to appellant.

The court decreed that appellee be enjoined from selling, aiding or abetting others either directly or indirectly in selling rubber heels with a red or reddish circular ball figure appearing on the surface portion of the heel or any imitation thereof, so nearly resembling the ornamental dress of the heels of appellant as to be calculated to deceive the ordinary purchaser as to the source of such goods and it also decreed that appellee account to appellant for profits realized by it after May 19, 1933, on rubber heels bearing a red or reddish circular mark indented upon the face portion thereof, to purchasers who were induced to buy because they believed the heels to be those of appellant and which sales appellant otherwise would have made.

Broadly stated, appellant attacks the decree in two particulars: (1) that the court should have enjoined the appellee from selling any heels with a disc of different color from the remainder of the heel; (2) that appellee should have been required to account for the profit on the sale of all heels with a distinctive colored disc regardless of any direct evidence of positive deception or whether or not appellant would otherwise have made the sales.

The registration of appellant's trade-marks did not enlarge its substantive rights. All it did was to confer jurisdiction on the court regardless of diversity of citizenship and give registrant certain procedural advantages. Armour & Co. v. Louisville Provision Company, 6 Cir., 283 F. 42; Armstrong Company v. Nu-Enamel Corp., 305 U.S. 315, 322, 59 S.Ct. 191, 83 L.Ed. 195.

Whatever substantive rights appellant may have in the premises arise under local law and are within the scope of Erie Railroad Company v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487; Kellogg Company v. National Biscuit Company, 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73. However, the parties make no claim that the local law is different from the general law on the subject and each has relied in the briefs almost entirely on Federal precedents.

A manufacturer may market his products in a dress in which there is no element of size, shape, color, lettering, word or symbol to which he has the exclusive right of use, but if the ensemble has come to be a public guaranty of origin and quality, he may secure protection against unlawful pirating by a competitor on the ground of unfair competition. Schwannecke v. Genesee Coal Company, 262 Mich. 624, 247 N.W. 761. In such a case, it is the duty of the court to examine the dress of the product in the original and that of the alleged pirate as a whole, both as to resemblances and differences to ascertain whether, in view of the differences, the resemblances are so marked that the ordinary purchaser would be likely to be deceived. The manufacturer may also put forth his product marked with an arbitrary symbol, lettering or figure and rely upon building up a good will by associating in the public mind his product with the invented word or arbitrary symbol, and by thus using the marking acquire an exclusive right in it. Smith v. Walker, 57 Mich. 456, 22 N.W. 267, 24 N.W. 830, 26 N.W. 783. The symbol or marking of the manufacturer does not exist in gross or separate and apart from the good will with which it is associated but only attaches itself to the goods which it identifies and which goods are manufactured or sold by its owner.

An abstract right in a symbol has no existence, but the symbol must be considered in association with the article which it identifies. In this sense a trademark differs from a patent or copyright. The latter exist the instant either is issued or entered. The patentee or author, without use, remains the real or true owner of the grant until it is dedicated to the public use by abandonment or by operation of law, but the registry of a trade-mark does not ipso facto make the mark. Patent right and copyright rest upon the view that the results of the original labor of the inventor and the author ought as a matter alike of justice and of public policy to be...