MISHAWAKA R. & W. MFG. CO. v. Panther-Panco Rubber Co.
| Decision Date | 18 May 1944 |
| Docket Number | No. 1213.,1213. |
| Citation | 55 F. Supp. 308 |
| Parties | MISHAWAKA RUBBER & WOOLEN MFG. CO. v. PANTHER-PANCO RUBBER CO., Inc. |
| Court | U.S. District Court — District of Massachusetts |
Robert J. Keating (of Roberts, Cushman & Woodberry), of Boston, Mass., and Herbert L. Shepard and Eugene M. Giles, both of Chicago, Ill., for plaintiff.
Melvin R. Jenney and Richard R. Hildreth (of Churchill & Jenney) both of Boston, Mass., for defendant.
In this action the plaintiff charges that the defendant infringes its trade-mark, and also seeks damages for alleged unfair competition.
The plaintiff is a manufacturer of utility footwear as distinguished from fashion footwear. It manufactures felt boots, rubbers, galoshes, and boots and shoes for heavy outdoor work. The plaintiff's trade-marks are United States Trade-Mark Registration Nos. 36,471 and 356,086.
The design of the trade-mark is a solid red circle, and the mark itself is generally made of red rubber and inlaid in the soles of shoes, rubbers and boots manufactured by the plaintiff, or otherwise affixed to its other products. The plaintiff has spent large sums of money in making this trademark well known, and has vigorously defended this trade-mark in several law actions.
The defendant is a large manufacturer of soles, heels and taps, principally for the shoe repair trade. It does not make complete shoes or boots, and in only a few instances have any of its products been used on new shoes. The plaintiff and the defendant are, therefore, not in direct competition with each other, although they both cater to the same buying public. Competition in the defendant's line of business is very keen. To distinguish its product from that of its competitors, the defendant stamps its name on various shapes of red rubber and attaches these to the tread surface of the heel, sole or tap. The name used on the sole is "Pan-Cord", and on the heel and tap "Panco". Those names are properly registered, and one has been adjudicated in this court, Grosjean v. Panther-Panco Rubber Co., D.C., 26 F.Supp. 344, affirmed by the Circuit Court of Appeals, 1 Cir., in 113 F.2d 252.
It is the plaintiff's contention that the defendant violates its exclusive right to the use of a red circle by so closely approximating a red circle as to deceive the buying public. The first three red marks used by the defendant of which the plaintiff complains are a red diamond-shaped mark, a red rough rectangle whose length is about two and a half times its width, and a red oval which is about three-fifths as wide as it is long. The plaintiff's trade-mark has only two qualities — first, its geometrical design which is a circle, and, secondly, its color which is red. When two such common qualities are used protection cannot be extended to each. It is the combination only that can be protected by registration. Dunhill v. Bartlett & Bickley, Ch.Div.1922, 39 R.P.C. 426.
The defendant sought to register its red oval trade-mark with the United States Patent Office, but in Opposition No. 12,777, the Examiner of Interferences and on appeal the Commissioner ruled against the defendant. That Opposition was between these same parties. The decision of the Commissioner is not binding on this court, but is, of course, of great weight. But it must be borne in mind that the question presented to the Commissioner is not the identical question presented here. The decision was to the effect that a red oval might confuse the public. Our question is whether or not it does confuse the public. Whether confusion exists must depend upon the care with which a customer selects his goods, and I am of the opinion that the buying public will not be confused in buying the defendant's product by way of thinking that the product which they are purchasing is the plaintiff's. The defendant is not required to guarantee against confusion. In Wrisley v. Iowa Soap Co., 8 Cir., 122 F. 796, 798, the correct rule of law was stated as follows:
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...is not entitled to a guarantee against confusion in the minds of careless and indifferent buyers, Mishawaka Rubber & Woolen Mfg. Co. v. Panther-Panco Rubber Co., D.C.Mass., 55 F.Supp. 308; and merely occasional cases of confusion or thoughtless errors by very inattentive purchasers are of v......
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