Maas & Waldstein Company v. American Paint Corp.
| Decision Date | 23 March 1961 |
| Docket Number | No. 16420.,16420. |
| Citation | 288 F.2d 306 |
| Parties | MAAS & WALDSTEIN COMPANY and Plextone Corporation of America, Appellants, v. AMERICAN PAINT CORPORATION, Appellee. |
| Court | U.S. Court of Appeals — Eighth Circuit |
Jordan B. Bierman, New York City, for appellants.
Ray G. Palmer, Duluth, Minn., for appellee.
Before SANBORN, WOODROUGH and MATTHES, Circuit Judges.
This is an action brought by Maas & Waldstein Company and Plextone Corporation of America against American Paint Corporation for common law and statutory trade-mark infringement and unfair competition. There was federal jurisdiction by reason of diversity, amount involved and also under the Lanham Trade-Mark Act of 1946, 15 U.S. C.A. § 1121.
Plaintiffs' trade-mark is Plextone, which Maas & Waldstein has used since 1949 in connection with sales of a wide variety of paints and related materials, and the defendant's trade-mark is Flexitone, which it has used since 1952 in marketing a type of paint or enamel. Plaintiff Maas & Waldstein is the owner of United States Trade-Mark Registration No. 547,125 of its Plextone trademark for "Industrial Coating Finishes for Producing Multiple-Colored Film Coatings", but it adopted and has used the Plextone trade-mark since late 1949 in connection with both solid and multi-colored paints and also with primers, sealers, alkyds, latexes, vinyls, thinners, reducers and solvents. Plaintiff Plextone Corporation of America is the licensee of the trade-mark owner and since its formation in January, 1957, the licensee has used the trade-mark on the same line of goods.
The defendant American Paint Corporation did not adopt or commence to use its Flexitone trade-mark prior to 1952 and since that time has used the mark in connection with a type of solid colored paint or enamel.
The plaintiffs contended on the trial to the Court that the two trade-marks Plextone and Flexitone cover protective coating compositions which have the same or similar descriptive properties and are offered for sale and sold to the same classes of customers and within the same geographical area. That the marks are confusingly similar and the defendants use of Flexitone is adapted to and does deceive purchasers as to the origin of the goods and wrongfully takes advantage of plaintiffs' good will, infringes their trade-mark and constitutes unfair competition.
Defendant contended that the words Plextone and Flexitone raise entirely different connotations and mental associations; that in all its uses of Flexitone defendant is clearly and unmistakably indicated as the source of and the dealer in Flexitone goods; that the plaintiffs do not sell products of the species or class to which...
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