Aluminum Cooking Utensil Co. v. Sargoy Bros. & Co.

• Decision Date: 30 June 1921
• Citation: 276 F. 447
• Parties: ALUMINUM COOKING UTENSIL CO. v. SARGOY BROS. & CO.
• Court: U.S. District Court — Eastern District of New York

276 F. 447

ALUMINUM COOKING UTENSIL CO. v. SARGOY BROS. & CO.

United States District Court, E.D. New York.

June 30, 1921

Samuel D. Jones, of New York City (H. P. King, E. T. Fenwick, and C R. Allen, all of New York City, of counsel), for defendants.

CHATFIELD District Judge.

The plaintiff brings this action for infringement of trade-mark and also upon a charge of unfair competition. Plaintiff is a corporation organized under the laws of Pennsylvania, and having its principal place of business in Pittsburgh in that state. It has for some 16 or 17 years placed upon the market aluminum dishes or vessels for use in household and kitchen work. It evidently has at all times had its attention fixed upon the idea of 'cooking' utensils, for which the metallic material aluminum is particularly advantageous.

The corporate title of the company is the Aluminum Cooking Utensil Company. It has during these years sold extensively and advertised very widely at great expense its so-called 'Wear-Ever' aluminum vessels and utensils. The result has been that the public has recognized, as a standard or staple article, aluminum vessels of the 'Wear-Ever' grade or brand.

Such trade reputation is a valuable asset which will be protected under the doctrine of unfair competition and also under the trade-mark statute, if the particular design, mark, or device has been validly filed.

In 1903, the plaintiff attempted to file the trade-mark 'Wearever,' and stated that the class of merchandise upon which it intended to place its trade-mark was aluminium and aluminium alloys. With the same limitation in idea which was present when the name of the company was chosen, it was further stated that the trade-mark is particularly intended for use upon cooking utensils made of aluminium and aluminium alloys, with utter disregard of the apparent fact that a pan or dish might be used to heat water for shaving or washing and thus not be brought within the class of cooking utensils except in so far as the water might be cooked or heated in the same way as if used in the preparation of food.

The testimony in this case shows that in the Patent Office cooking utensils are considered and classified as a different line of commercial manufacture from articles for laundry purposes or articles for household work, like cleaning or scrubbing, though a pail or dish for the mere containing of hot water, and in which water might be heated, would fall in either class.

The defendants are manufacturers of tin wash boilers. They first put them on the market under such trade-names as Boilrite or S.B., and then later, appreciating the value of the name 'Wear Ever,' and knowing that the plaintiff did not manufacture or sell a wash boiler, they have added to their lines of merchandise a better grade of tin wash boiler, either with copper bottom or in some instances made entirely of copper, around which they have placed a paper wrapper entirely covering the sides of the boiler and stamped in large letters with the words 'Wear Ever,' and also having upon the side, in colors, the picture of a young woman holding before her, by the handles, a wash boiler. This picture resembles in general characteristics the figure of a young woman (extensively used by the plaintiff in its advertisement) holding and raising in front of her by the handles a utensil, to which she seeks to attract attention and to indicate the light and attractive character of the article.

The defendant has cited a number of valid trade-marks such as 'Wearever' applied to rubber goods, 'Everwear' for harness, shoe leather, etc., 'Wearever' applied to tooth brushes, to establish the proposition that the words Wear Ever as a name or sign cannot be monopolized by the person who first uses it as a trade-mark upon a class of articles entirely dissimilar or not connected with some other line of articles upon which the same word is placed as a trade-mark.

Validity of trade-mark cannot depend upon classification or indexing by the Patent Office alone. The defendants have filed a trade-mark consisting of an outline of the Western Hemisphere, with a wash boiler, and the words 'Wear Ever' superimposed thereon. This trade-mark was registered as a search of the laundry appliances and machines in class No. 24 did not disclose the 'Wear Ever' trade-mark in the cooking utensil class.

A valid trade-mark cannot be obtained for goods in the same general class, having the same descriptive properties, and similar essential characteristics, so that the general public would be misled. Johnson Educator Food Co. v. Sylvanus Smith & Co., 175 O.G. 268, 37 App.D.C. 107. Otherwise mere similarity of mark is not sufficient. G. & J. Tire Co. v. G.J.G. Motor Car Co., 190 O.G. 550, 39 App.D.C. 508.

Many such cases have been cited by the plaintiff showing decisions in the Patent Office and on appeal therefrom, where applications for trade-mark have been disallowed on the ground that conflict...