Brown & Bigelow v. BB Pen Co.

• Decision Date: 03 December 1951
• Docket Number: No. 14323.,14323.
• Parties: BROWN & BIGELOW v. B • B PEN CO.
• Court: U.S. Court of Appeals — Eighth Circuit

191 F.2d 939 (1951)

BROWN & BIGELOW v. B • B PEN CO.

No. 14323.

United States Court of Appeals Eighth Circuit.

November 2, 1951.

Rehearing Denied December 3, 1951.

COPYRIGHT MATERIAL OMITTED

Edmund C. Rogers and Lawrence C. Kingsland, St. Louis, Mo. (Harold Olsen, Estill E. Ezell, St. Louis, Mo., Jack W. Wicks, St. Paul Minn., and Kingsland, Rogers & Ezell, St. Louis, Mo., were with them on the briefs), for appellant.

Lewis E. Lyon, Los Angeles, Cal., for appellee.

Before GARDNER, Chief Judge, and WOODROUGH and COLLET, Circuit Judges.

WOODROUGH, Circuit Judge.

The B • B Pen Company, a California corporation, brought this action in the federal District Court in Minnesota against Brown & Bigelow, a Minnesota corporation, praying for a declaratory judgment to the effect that the defendant was without right to assert, as it was doing and threatening to do, any claim against plaintiff with respect to plaintiff's use of the trade-mark "B • B" on ball point pens manufactured by plaintiff, and that defendant had no right to or interest in the plaintiff's trade-mark "B • B", as applied to ball point pens.

Plaintiff also asked that it be declared that it had not engaged in unfair competition with defendant. Defendant answered by denial of all the material allegations of the complaint, and filed a counterclaim against plaintiff alleging that plaintiff had been using the letters "B • B" on its ball point pens in violation and infringement of defendant's rights in defendant's trademark "B. & B.", and that plaintiff in so doing competed unfairly with defendant. Defendant sought dismissal of plaintiff's complaint, and on its counterclaim, injunctive relief and an accounting of damages suffered by defendant and of profits realized by plaintiff arising from plaintiff's infringement of defendant's trade-mark. There was federal jurisdiction by reason of diversity of citizenship and amount involved.

The case was tried to the court without a jury, and the court, after hearing the evidence, entered a judgment dismissing both plaintiff's complaint and defendant's counterclaim without costs to either party. The court's opinion accompanying its findings and conclusions is reported at 8 Cir., 92 F.Supp. 272. The defendant, after its motion for a new trial on its counterclaim was denied, appealed from so much of the judgment as dismissed its counterclaim. No appeal was taken by plaintiff.

On the trial, the evidence showed that defendant Brown & Bigelow had been in the business of "Remembrance Advertising" since its incorporation in 1905, and as an incident it developed the idea of producing novelties to be given away by its customers as a means of advertising the customer's business. Defendant would manufacture the novelties, usually ascribe a trade name to them, imprint them with the trade name and the customer's name and advertising message, and deliver them to the customer. The customer would then distribute the novelties to its trade, as gifts for the purpose of advertising. Through the years defendant was always alert to find and use new ideas for novelties suitable for manufacture and distribution in its business. Among such items were mechanical pencils, pens, pen and pencil sets, cigarette lighters, desk calendars, and many other such novelties.

In 1945, in common with many other manufacturers, defendant began to experiment with the type of pen known commonly as the "ball point" pen. Such pens do not have a nib as do ordinary fountain pens, but instead they use a tiny ball for the writing surface. In May of 1946, defendant began distribution of these ball point pens in its ordinary channels of business, that is, such pens imprinted conspicuously with the various customers' names and advertising were sold to defendant's customers.

In addition to the customer's advertising imprint, the novelties also bore a trade name or trade-mark thought to be appropriate to each one. For example, in the case of mechanical pencils the registered trade-mark "Redipoint" was prominently displayed. In connection with the lighters, the registered trade-mark "Redilite" was used; and on the ball point pens made by the defendant, the name "Redipen" was registered and imprinted conspicuously on the pen. In connection with all of the registered names, Brown & Bigelow also applied its initial letters "B. & B.", and "B. & B. St. Paul", "B. & B. St. Paul, Minn.", and "B. & B. St. Paul, U. S. A.", to the articles. But the letters and address were not registered as trade-marks nor made conspicuous on the articles. As an example of how the letters "B. & B." were used, it was shown that on one small keychain ball pen "B. & B. St. Paul U.S.A." was put on the small round top of the pen, in juxtaposition to patent data, in letters so small they could only be easily read with a magnifying glass. In other cases they appeared on the metal of the inner part of the pen concealed by the cover when the pen was in normal operating or carrying position, and in still other cases the letters appeared in other inconspicuous ways.

Defendant has caused its descriptive trade-mark, "Remembrance Advertising" to be registered and uses it in the regular course of its business. In rare instances, outside of the regular course of its business, defendant has sold some few articles direct to retailers for re-sale to consumers.

The business origin of the B • B Pen Company dates from January of 1945 when a partnership under the name of the Ball Pen Company was formed and began the manufacture and sale of ball point pens. Thereafter the partnership was incorporated as the Ball Pen Company, and the corporation adopted the letters "B • B" as the name and trade-mark of its ball point pen. The symbol "B • B" was chosen by plaintiff because the writing surface was a small ball. The standard description of a certain size or grade of shot is "BB" and the widely familiar use of BB guns and BB's by boys everywhere in the country helps to link "B • B" with ball pens. Plaintiff's assumption was that "B • B" would signify a small ball to the public, and the plaintiff's ball point pen would thus be clearly differentiated in the public mind from the older type of nib-point pen. The first sale of plaintiff's pen under the name "B • B" was made on January 10, 1947. On January 16, 1947, the B • B Pen Company was incorporated and acquired all the rights of the Ball Pen Company in and to the name "B • B". The plaintiff operates principally as a wholesaler, selling its products to retailers, who in turn sell the pens to the purchasing public. In rare instances it had sold some of its pens for use for advertising the customer's business.

The B • B Pen Company knew of the appellant Brown & Bigelow, but when it adopted its trade-name "B • B" it had no knowledge that Brown & Bigelow ever manufactured or sold a ball point pen, and plaintiff had no knowledge that Brown & Bigelow marked any of its products "B. & B. St. Paul". Plaintiff did not dispute the fact that Brown & Bigelow had been in business for many years prior to plaintiff's entering into its present business.

Neither plaintiff nor defendant has a registered trade-mark, either State or Federal, in the letters "B • B" or "B. & B." That fact is not of great importance however, because as stated in Griesedieck Western Brewery Co. v. Peoples Brewing Co., 8 Cir., 149 F.2d 1019, 1022, "* * * the mere registration of a trade-mark does not in itself confer any greater rights than existed at common law without registration." Or as stated in Best & Co. v. Miller, 2 Cir., 167 F.2d 374, 376, "* * * registration of a trade-mark confers only procedural advantages and does not enlarge the registrant's substantive rights."

It is universally held that the law of trade-marks and trade-mark infringement is but a part of the law of unfair competition. Seven Up Co. v. Cheer Up Sales Co., 8...