Mishawaka R. & W. Mfg. Co. v. Panther-Panco Rub. Co.

• Decision Date: 20 March 1946
• Docket Number: No. 4063,4064.,4063
• Parties: MISHAWAKA RUBBER & WOOLEN MFG. CO. v. PANTHER-PANCO RUBBER CO., Inc. PANTHER-PANCO RUBBER CO., Inc., v. MISHAWAKA RUBBER & WOOLEN MFG. CO.
• Court: U.S. Court of Appeals — First Circuit

153 F.2d 662 (1946)

MISHAWAKA RUBBER & WOOLEN MFG. CO. v. PANTHER-PANCO RUBBER CO., Inc. PANTHER-PANCO RUBBER CO., Inc., v. MISHAWAKA RUBBER & WOOLEN MFG. CO.

Nos. 4063, 4064.

Circuit Court of Appeals, First Circuit.

February 7, 1946.

Rehearing Denied March 20, 1946.

Richard F. Walker, of Boston, Mass. (Eugene M. Giles, of Chicago, Ill., and Robert J. Keating and Roberts, Cushman & Grover, all of Boston, Mass., of counsel), for Mishawaka Rubber & Woolen Manufacturing Company.

Melvin R. Jenney, of Boston, Mass. (Richard R. Hildreth, of Boston, Mass., of counsel), for Panther-Panco Rubber Co., Inc.

Before MAGRUDER, MAHONEY, and WOODBURY, Circuit Judges.

MAGRUDER, Circuit Judge.

The complaint in this case charges defendant with infringement of a registered trade-mark and with unfair competition. From an interlocutory decree granting in part the relief sought, both parties have appealed.

Plaintiff, Mishawaka Rubber & Woolen Manufacturing Company, is an Indiana corporation, incorporated in 1874, an old-established manufacturer of various kinds of heavy duty footwear bearing rubber soles and heels. These products it sells to shoe stores, department stores, and other shoe retailers. It produces soles and heels only for use on its own footwear and not for sale as separate soles or heels to shoe manufacturers or to the shoe repair trade.

On May 28, 1901, plaintiff obtained from the Patent Office a certificate of Trade-Mark Registration, No. 36,471 (renewed in 1931), for a mark which it had adopted several years earlier. In the application, the mark is described as an "arbitrarily-selected representation of a circular figure or ball colored red," customarily affixed to various goods, including rubber boots and shoes, and boots formed partly of rubber and partly of wool. The mark has usually been affixed to rubber soles and heels either as a circular wafer vulcanized upon the tread or as a red circular plug embedded in the tread, the size of the mark varying from three-eighths to five-eighths of an inch in diameter. Throughout the years since the adoption of its trade-mark, plaintiff has spent millions of dollars in national advertising, in which its red circular figure has been continually and conspicuously displayed, together with the slogan "LOOK FOR THE RED BALL." As a result, this characteristic mark upon the tread face of plaintiff's shoes has undoubtedly achieved a considerable trade-mark significance, despite the fact that it might be described as intrinsically a "weak" mark. Plaintiff has been alert and zealous to protect it from infringement, perhaps at times under an exaggerated notion of the scope of the mark reserved to its exclusive user. See Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 6 Cir., 1941, 119 F.2d 316, 322; reversed (on an accounting point) 1942, 316 U.S. 203, 62 S.Ct., 1022, 86 L.Ed. 1381; Mishawaka Rubber & Woolen Mfg. Co. v. H. C. Godman Co., 1941, 119 F. 2d 425, 28 C.C.P.A., Patents, 1116.

In 1938, plaintiff obtained Trade-Mark Registration No. 356,086 for the same mark, as applied to "rubber heels and rubber soles."

These two registrations of plaintiff's trade-mark were adjudged to be good and valid in law in the interlocutory decree of the court below. Defendant has not urged on appeal that such ruling was in error, though it has argued that such a common-place mark is not entitled to broad protection.

Defendant Panther-Panco Rubber Co., Inc., is a Massachusetts corporation, incorporated about 1931 as a consolidation of two other Massachusetts corporations, Panther Rubber Manufacturing Company and Panco Rubber Company. It is a large and well-known manufacturer of rubber soles, taps and heels, sold through jobbers to the shoe repair trade, and to some extent to shoe manufacturers. It does not manufacture completed shoes and boots, and hence, as pointed out by the district court, is not in "direct competition" with the plaintiff.

Defendant is the owner of three registered trade-marks: No. 162,105 for PANCO, applied to soles and taps, originally registered December 5, 1922, and renewed December 5, 1942; No. 162,104 for PANCORD, applied to rubber heels, originally registered December 5, 1922, and renewed December 5, 1942; and No. 318,516 for PANCO TRIPLEWEAR, applied to rubber heels, registered October 30, 1934.

As originally used, the name "Panco" was impressed in the rubber sole or tap without contrasting color. In 1932, defendant (or its predecessor) modified the display of its mark by vulcanizing to the black rubber tread of the sole an oval-shaped piece of red rubber about two inches across, and embossing in the red oval the word "PANCO" in large capital letters below the word "GENUINE" and above the legend "TRADE-MARK REG."

This red oval mark defendant sought to register in the Patent Office. Plaintiff filed an opposition proceeding based upon its prior red circular trade-mark. The Examiner of Interferences, and, on appeal, the Assistant Commissioner of Patents, refused registration to defendant's red oval mark on the ground of its confusing similarity to plaintiff's mark affixed to goods of the same descriptive properties. This was in 1935.

Notwithstanding the foregoing decision of the Patent Office, defendant continued thereafter to use the red oval mark. Plaintiff apparently did not discover this continued use until the summer of 1939. Some correspondence between the parties ensued. Defendant declined to abandon the use of the red oval. Complainant filed its complaint below on April 11, 1941.

The district court in the decree now under review dismissed the complaint in so far as it was based upon defendant's use of the red oval mark on its rubber soles, upon a finding that the buying public would not thereby "be confused in buying the defendant's product by way of thinking that the product which they are purchasing is the plaintiff's." A challenge of the correctness of this ruling is the main issue urged by plaintiff in its appeal. We think that the district court committed no error in this respect.

It is conceded by plaintiff that the decision of the Patent Office in the opposition proceeding is not res judicata. John Morrell & Co. v. Doyle, 7 Cir., 1938, 97 F. 2d 232. While such decision may be entitled to weight, as the court below recognized, yet in the circumstances of this case we agree that it is not controlling.

It is of some significance that, notwithstanding defendant's long-continued use of the accused red oval mark, plaintiff produced no evidence of actual confusion in the minds of purchasers due to such use. See Patton Paint Co. v. Sunset Paint Co., 1923, 53 App.D.C. 348, 290 F. 323, 326. In its brief, plaintiff acknowledges "that the accused infringements have so far inflicted little injury, the subject matter of recoverable damages, to Plaintiff. Defendant has maintained relatively good quality in its accused products, and its sales have been principally confined to the repair market where Plaintiff is inactive."

The first impression one gets in examining defendant's red oval mark is that the word "Panco" in large capital letters is the dominating feature, with the red oval serving merely as a background having the effect of making "Panco" stand out more distinctly. Plaintiff, however, earnestly maintains that this is not the impression that would be made upon the trade and the public; that to them the outstanding representation would be that of the red oval, or "football," a colorable imitation of plaintiff's red circle or ball trade-mark. In support of this view, plaintiff refers to testimony by defendant's own witnesses as to the reason which led defendant to adopt the red oval mark in 1932. This was the explanation given: After several years of experience with stamping defendant's trade-mark "Panco" on its soles without contrasting color, and after expensive advertising and sales promotion, the name "Panco" became a household word in various parts of the country, and "a good many people" were led to believe "that any black soling material was Panco, and they assumed that it was a type of soling material rather than a brand name." There resulted some confusion with competitive soles of inferior quality, to the damage of defendant's reputation. Accordingly, defendant adopted the red label, or oval-shaped background, "in order to display our own name very prominently." This eliminated the confusion with competing soles which had previously been experienced.

Plaintiff reads this testimony as a confession out of defendant's own mouth that the name "Panco" had lost all trade-mark significance and that what the defendant really sought to do, from 1932 on, was to trade on the good will of plaintiff's well-established red ball mark. We think no such conclusion need be drawn from this testimony. The fact that "a good many people" had confused defendant's soles with those of competitors may have indicated that the name "Panco" was in danger of ultimately losing its trade-mark significance in the trade generally unless steps were taken to impress the name more sharply upon the public consciousness as the mark of defendant's product. The district court might well have believed that this was all the testimony amounted to.

In its opinion, the district court 55 F.Supp. 308, 309, laid down this proposition: "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." We think this is an accurate enough statement as applied to the case at bar. Certainly, plaintiff's trade-mark registrations do not give it the exclusive right to the use of the color red; nor do they give it an exclusive right to the use of a circle. We do not understand the court to mean that, to be a colorable imitation under 15 U.S.C.A. § 96, the accused...