Armstrong Paint Varnish Works v. Corporation v. 8212 1938

• Decision Date: 05 December 1938
• Docket Number: NU-ENAMEL,No. 51,51
• Citation: 59 S.Ct. 191,39 USPQ 402,83 L.Ed. 195,305 U.S. 315
• Parties: ARMSTRONG PAINT & VARNISH WORKS v. CORPORATION et al. Argued Nov. 7—8, 1938
• Court: U.S. Supreme Court

305 U.S. 315

59 S.Ct. 191

83 L.Ed. 195

ARMSTRONG PAINT & VARNISH WORKS

v NU-ENAMEL CORPORATION et al.

No. 51.

Argued Nov. 7—8, 1938.

Decided Dec. 5, 1938.

[Syllabus from pages 315-317 intentionally omitted] Messrs. Moses Levitan, George I. Haight, and George A. Carpenter, all of Chicago, Ill., for petitioner.

[Argument of Counsel from Pages 317-318 intentionally omitted] Mr. Edward S. Rogers, of Chicago, Ill., for respondents.

[Argument of Counsel from Pages 318-319 intentionally omitted] Mr. Justice REED delivered the opinion of the Court.

The Nu-Enamel Corporation of Illinois filed its bill of complaint in a District Court of the United States in Illinois to enjoin the Armstrong Paint and Varnish Works, a corporation of the same state, from using in the sale of paints, varnishes and similar goods the words 'Nu-Beauty Enamel' or any name including the words 'Nu-Enamel' or other colorable imitation of plaintiff's registered trade-mark Nu-Enamel or otherwise infringing it; to require an accounting of profits, and to recover treble damages. Pending the litigation, the plaintiff sold its assets to the other respondent Nu-Enamel Corporation of Delaware but continued its own corporate existence. The purchaser was permitted to intervene.

The bill showed the registration by the plaintiff of Nu-Enamel under the Act of March 19, 1920, 15 U.S.C.A. § 121 et seq., Trade-Mark 308,024, for mixed paints, varnishes, paint enamels, prepared shellacs, stains, lacquers, liquid cream furniture polishes and colors ground in oil. It set out that the name 'Nu-Enamel' through wide use by plaintiff had come to mean 'plaintiff and plaintiff's products only' and the 'word 'Nu-Enamel' is a mark by which the goods of the plaintiff are distinguished from other goods of the same class.' There were further allegations that defendant had adopted the name 'Nu-Beauty Enamel' with full knowledge of prior and extensive use by plaintiff of 'Nu-Enamel'; that as a result of defendant's use of the mark 'Nu-Beauty Enamel', merchants passed off defendant's products for plaintiff's, and that the products of both manufacturers were sold in interstate commerce. An exhibit showed that plaintiff used its mark with this slogan printed above it 'The coat of enduring beauty.'

Defendant admitted 'that the name 'Nu-Enamel' has come to mean and is understood to mean, thoughout the United States, including the State of Illinois and the City of Chicago, the plaintiff and plaintiff's products only, and the word 'Nu-Enamel' is a mark by which the goods of the plaintiff are distinguished from other goods of the same class'; denied the validity but not the fact or extent of the coverage of the registration; asserted 'Nu-Enamel' was a descriptive and generic term and that it had adopted 'Nu-Beauty' in connection with enamel and kindred products before it heard of the trade-mark or trade name 'Nu-Enamel.' Defendant answered specifically that it marketed only enamels under the designation 'Nu-Beauty Enamel' and that it did not market paints and varnishes under this name. The jurisdiction of the court over the subject matter was denied.

The District Court made the following material findings of fact:

'1. Plaintiff and defendant at the time of the filing of the bill of complaint herein were and are now both citizens of the State of Illinois. The intervener, Nu-Enamel Corporation, is a corporation of the State of Delaware.

'2. 'Nu' in 'Nu-Enamel', appearing on plaintiff's label, is a phonetic spelling or misspelling of the English word 'new' and means 'new'.

'3. 'Enamel' is a common English word describing a paint which flows out to a smooth coat when applied and which usually dries with a glossy appearance, and has long been known as such in the paint industry and to the public in general.

'4. 'Nu-Enamel' used in connection with paint or enamel sold by plaintiff means 'new enamel' and is a common and generic term descriptive of the product to which it is applied and of its new or recent origin.

'5. 'Nu' was commonly used in the paint and other industries in combination with other words as a misspelling or phonetic spelling of 'new' to designate brands and kinds of enamel, paint and other commodities before plaintiff and its prodecessors adopted the name 'Nu-Enamel."

It determined that 'Nu-Enamel' was not a valid trade-mark under the Trade-Mark Acts or at common law and, having so determined, refused jurisdiction of unfair competition.

The Circuit Court of Appeals reversed.¹ That court held the trade-mark nondescriptive, valid and infringed. It was of the opinion that the mark had acquired a secondary meaning. It found that the petitioner's conduct enabled merchants to palm off the Armstrong product for 'Nu-Enamel' and concluded that the District Court had jurisdiction of the issue of unfair competition. We granted certiorari on account of the importance in trade-mark law of the issues of the descriptive character of the mark and the effect of its acquired meaning under the Trade-Mark Act of 1920, 15 U.S.C.A. § 121 et seq. 305 U.S. 580, 59 S.Ct. 64, 83 L.Ed. —-.

As the petitioner concedes by answer that 'Nu-Enamel' has acquired the meaning of respondent and respondent's products only and is a mark which distinguishes respondent's goods from others of the same class, no evidence or finding is needed to establish that fact. It may be noted, also, that the allegation of the use of 'Nu-Beauty Enamel' by Armstrong on products other than enamels, fails of proof. Armstrong uses this mark on enamels only. On other products, there is the mark 'Nu-Beauty,' followed by some descriptive word, such as paint, varnish or brush.

Federal Trade-Mark Act of 1920. The registration of 'Nu-Enamel' does not create any substantive rights in the registrant.² Trade-marks registered under the 1920 act may be attacked collaterally. Kellogg Co. v. National Biscuit Co., 2 Cir., 71 F.2d 662, 666.

The act forbids the unauthorized use of the registered mark in foreign and interstate commerce and adopts the procedural provisions of the Trade-Mark Act of 1905.³ Through the inclusion of these procedural sections the lower Federal courts are given original and appellate jurisdiction of 'all suits at law or in equity respecting trade-marks registered in accordance with the provisions of this Act, arising under the present Act' and this Court was given jurisdiction for certiorari 'in the same manner as provided for patent cases.' ⁴ Section nineteen of the 1905 act, 15 U.S.C.A. § 99, vesting power to grant injunctions in trade-mark cases is applicable also to proceedings under the 1920 act. By section twenty-three, 15 U.S.C.A. § 103, former remedies in law and equity are left available. The significant distinction between the two acts is the omission in the 1920 act of the provision of section sixteen of the earlier act making the registration of a trade-mark prima facie evidence of ownership.

On its face the act shows it was enacted to enable American and foreign users of trade-marks to register them in accordance with the provisions of the convention for the protection of trade-marks and commercial names, signed at Buenos Aires in 1910. In addition section one, paragraph (b), 15 U.S.C.A. § 121(b), provides, without limitation to the export trade, for the registration of marks not registerable under section 5 of the Trade-Mark Act of 1905, 15 U.S.C.A. § 85, after one year's use in interstate or foreign commerce. This enables the (b) marks to be registered abroad.

While the Act of 1920 does not vest any new substantive rights, it does create remedies in the Federal courts for protecting the registrations and authorizes triple damages for infringement.⁵ As a consequence of these remedial provisions, when a suit is begun for infringement, bottomed upon registration under the 1920 act, the district courts of the United States have jurisdiction. Unless plainly unsubstantial, the allegation of registration under the act is sufficient to give jurisdiction of the merits. In this case the trial court concluded that the invalidity of the trade-mark divested it of jurisdiction over unfair competition. This was erroneous.⁶ Once properly obtained, jurisdiction of the one cause of action, the alleged infringement of the trade-mark, persists to deal with all grounds supporting it, including unfair competition with the marked article.⁷ The cause of action is the interference with the exclusive right to use the mark 'Nu-Enamel.' If it is a properly registered trade-mark, a ground to support the cause of action is violation of the Trade-Mark Act. If it is not a properly registered trade-mark, the ground is unfair competition at common law. The facts supporting a suit for infringement and one for unfair competition are substantially the same. They constitute and make plain the wrong complained of, the violation of the right to exclusive use.

In the Oursler Case there was a valid copyright which was held not infringed. Here the trial court determined the trade-mark was invalid. The Oursler Case held that where the causes of action are different, the determination that the federal cause fails calls for dismissal.⁸ But where there is only one cause of action we do not consider that the holding of the invalidity furnishes any basis for a distinction between this and the Oursler Case. Registration of 'Nu-Enamel' furnished a substantial ground for federal jurisdiction. That jurisdiction should be continued to determine, on substantially the same facts, the issue of unfair competition.⁹

Registration of Descriptive Mark under 1920 Trade-Mark Act. Even though under the facts alleged and the admission that respondent's mark has acquired a secondary meaning the Federal courts have jurisdiction to determine whether petitioner is chargeable with unfair competition, it becomes necessary to determine whether registration of 'Nu-Enamel' is permissible or impermissible under the Act of 1920 in order that it may be...