John Morrell & Co. v. Doyle

• Decision Date: 31 July 1937
• Docket Number: No. 831-D.,831-D.
• Citation: 20 F. Supp. 110
• Parties: JOHN MORRELL & CO. v. DOYLE et al.
• Court: U.S. District Court — Eastern District of Illinois

20 F. Supp. 110

JOHN MORRELL & CO. v. DOYLE et al.

No. 831-D.

District Court, E. D. Illinois.

July 31, 1937.

Mason, Fenwick & Lawrence, Charles R. Fenwick, and E. G. Fenwick, all of Washington, D. C., and Gunn, Penwell & Lindley, of Danville, Ill., for plaintiff.

Rogers, Woodson & Rogers, of Chicago, Ill., and Acton, Acton & Baldwin, of Danville, Ill., for defendants.

LINDLEY, District Judge.

Plaintiff, engaged in packing and selling meat products, including dog food, brings this suit against defendants Boyd W. Doyle, Frederick Doyle, and the same parties as a copartnership, trading under the name and style of Doyle Packing Company, likewise engaged in packing and selling dog food. Plaintiff charges that its trade-marks "Heart" and "Red Heart" are infringed by the defendants' trade-mark "Strongheart." The basis of plaintiff's trade-mark is a red colored heart, used on many of its products including dog food, accompanied at times by the word "Heart" and at times by the words "Red Heart." Defendants use the picture of the head of a police dog in a circle and the word "Strongheart"; the basis for same, according to the testimony, being the name of a deceased dog prominent in the annals of moving pictures. The latter's figures are not colored in red but are generally gray in color.

At the outset we are confronted with the question of whether the judgment in a prior proceeding is an estoppel against defendants to deny the validity of plaintiff's trade-mark and infringement thereof by themselves. One of the members of defendant copartnership applied October 11, 1932, for registration of the trade-mark "Strongheart" for dog and cat food. Later, in the course of proceedings, the application was assigned to the copartnership. Plaintiff entered its appearance in opposition to the granting of the trade-mark on December 14, 1932. The applicant filed its answer thereto on February 1, 1933; evidence was submitted by both parties. The examiner held that the word "Heart" was an essential feature of both marks and upheld the opposition. The applicant filed an appeal on July 16, 1934, and on February 19, 1936, the Commissioner of Patents affirmed the decision of the examiner. On May 31, 1936, the applicant perfected an appeal to the Court of Customs and Patent Appeals, and on March 29, 1937, that court affirmed the decision of the commissioner.

Prior thereto, on March 31, 1936, plaintiff had filed this suit, in which it set forth the proceedings mentioned, including the then pending appeal to the Court of Customs and Patent Appeals. Later, in an amendment, it set forth the decision of the court and asserted that as a result thereof defendants are estopped to contest probability of confusion between the marks.

In their answer defendants admit the binding effect of the decision as to the issues there involved but deny that the proceedings, marks, and parties were the same as in the present case and that the issue of probability of confusion in the trade considered by the Court of Customs and Patent Appeals is the same as that involved here. In other words, they admit that the decision of likelihood of confusion between the marks as presented to that court is final on the question of the right to register the marks Strongheart, but deny that they are now estopped to present evidence that "there is no likelihood of confusion in trade as between the goods of the respective parties."

It is obvious that the parties are the same. Though Frederick Doyle was not in his own proper person a party to the former proceedings, the Doyle Packing Company was, and he, as a member of that copartnership was privy to the principal in the litigation.

To determine whether the issues in the two proceedings are the same, it is necessary to consider the applicable acts of Congress. The trade-mark statute created by the Act of February 20, 1905 (as amended, 15 U.S.C.A. § 81 et seq.), provides that the owner of a trade-mark may obtain registration by complying therewith; that no mark shall be registered which "so nearly resemble a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers." Section 5, as amended (15 U.S.C.A. § 85). Under the act any person who believes he may be damaged by the registration may oppose the same in the Patent Office. If an application is made for the registration of a trade-mark which is substantially identical with a trade-mark appropriated to goods of the same descriptive properties, for which a previous registration has issued or a mark "which so nearly resembles such trade-mark or a known trade-mark owned and used by another, as is, in the opinion of the commissioner, likely to be mistaken therefor by the public, the commissioner may declare that an interference exists and direct the examiner to determine the question "of the right of registration to such trade-mark and of the sufficiency of objections to registration." The practice is the same as that in interferences upon applications for patents, and the procedure is governed by the rules in equity in the United States courts.

It is obvious that the commissioner is charged with the duty of determining (1) priority of adoption and use; (2) similarity of the goods; (3) similarity of marks or likelihood of confusion or mistake in the mind of the public or to deceive purchasers. The act (section 9) provides for an appeal from the decision of the examiner to the commissioner and for a further appeal to the Court of Appeals of the District of Columbia (by amendment, to the United States Court of Customs and Patent Appeals). See section 89, U.S.C.A. title 15, section 309a, U.S.C.A. title 28.

There is no dispute as to priority, plaintiff having adopted and used the words "Red Heart" on April 2, 1932, for dog food, and defendants having used the word "Strongheart" as of August 4, 1932, for dog food. The products were the same.

The controverted issue in the proceedings mentioned was the similarity of the marks or the likelihood of confusion in the minds of the purchasing public. The court held against defendants, and the immediate question is as to the binding effect of such decision. There is no precise precedent fully answering the contentions of the parties here as to the effect of the decision.

Defendants contend that the issue submitted to the court was a limited one, bearing only upon their right to register, and that the issue here is much broader and includes much more as to the respective rights of the parties in the trade. It is true that the court had to decide the ultimate questions of right to registration, but it is apparent that in doing so, in pursuance of the statute, the court was called upon to determine whether there was likelihood of confusion. The testimony in that cause and that in the present cause were substantially the same.

It should be observed that section 4915 of the Revised Statutes, as it was originally adopted (35 U.S.C.A. § 63), provides that when an application for patent is refused, the applicant may have a remedy by a bill in equity and, upon adjudication in favor of the applicant, that the court trying the issue shall direct the commissioner to issue the patent. Such suit is a bill in equity upon which testimony can be introduced de novo and is in the nature of a proceeding to set aside the conclusions of the commissioner. Prior to March 2, 1927, the suit could not be filed until after an appeal from the Commissioner of Patents to the District of Columbia Court of Appeals. Consequently it was likewise a direct attack upon the decision of the latter court.

On March 2, 1927 (44 Stat. 1336, § 11), the statute was amended to provide that the bill to obtain a patent could be filed only when no appeal had been taken from the decision of the commissioner to the United States Court of Customs and Patent Appeals, but that, in the absence of such appeal, the remedy would lie as previously provided. Consequently it appears that under the present statute as amended (35 U.S.C.A. §§ 63), an applicant for patent or trade-mark, defeated by the commissioner, may appeal and obtain an adjudication in the Court of Customs and Patent Appeals or he may, if he takes no such appeal, file a bill in equity to obtain a patent. It seems obvious that Congress has given him an option to prosecute an appeal from the decision of the commissioner as was done here and, in the absence of such appeal, to file his bill in equity. If he files his appeal, he has no right to prosecute his bill to procure a patent. Such was the conclusion of the court in the unreported case of United States Gypsum Company v. American Gypsum Company, Equity No. 1621 in the United States District Court of the Northern District of Ohio.¹ Judge Stringham held that the applicant, having taken no further proceedings under section 4915, was precluded thereafter from raising the question of priority.

It would seem apparent that the one essential issue of fact decided by the Court of Customs and Patent Appeals was the same as that presented here and that the finding of that court creates an estoppel against defendants to reassert their contentions there made upon which they were defeated. True, the commissioner acts in a purely administrative capacity, and to a certain extent, upon appeal from his decision, the court acts in a similar capacity. But it does not necessarily follow that the decision of the commissioner, upheld by that of the Court of Customs and Patent Appeals, does not constitute a judicial hearing within the sense of that term as used in determining whether an estoppel exists. Thus in U. S. v. Duell, 172 U.S. 576, 19 S.Ct. 286, 43 L. Ed. 559, the Supreme Court held that a decision of the Court of Appeals on appeal from the Patent Office in a patent interference case was a judgment, and Mr. Justice Matthews...