Avrick v. Rockmont Envelope Co.

• Citation: 155 F.2d 568
• Decision Date: 14 June 1946
• Docket Number: No. 3227.,3227.
• Parties: AVRICK et al. v. ROCKMONT ENVELOPE CO.
• Court: U.S. Court of Appeals — Tenth Circuit

155 F.2d 568 (1946)

AVRICK et al. v. ROCKMONT ENVELOPE CO.

No. 3227.

Circuit Court of Appeals, Tenth Circuit.

May 20, 1946.

Rehearing Denied June 14, 1946.

COPYRIGHT MATERIAL OMITTED

Leslie D. Taggart, of New York City (Elmer L. Brock and John R. Turnquist, both of Denver, Colo., on the brief), for appellant.

Carle Whitehead, of Denver, Colo. (Edward Miller and Albert L. Vogl, both of Denver, Colo., on the brief), for appellee.

Before PHILLIPS, BRATTON and MURRAH, Circuit Judges.

MURRAH, Circuit Judge.

The Agency Paper Company, a partnership, as the owner of the trade-mark "Sky-Rite" for air mail stationery, brought this suit to enjoin appellee, Rockmont Envelope Company, from using the words "Sky Mail" on its air mail stationery, both of which are sold to the public through retail outlets. The trial court sustained Rockmont's motion for summary judgment under Rule 56 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c, holding that the pleadings, depositions and affidavits submitted for and against the motion presented no genuine issuable fact, and that Rockmont was therefore entitled to a judgment as a matter of law. The question for decision here is whether the record presents a genuine issue of fact which the trial court was required to resolve after a full hearing.

After specifically alleging the jurisdictional prerequisites, the complaint states that since May, 1938, Agency has been selling stationery in interstate commerce in the United States, and for some time past in the State of Colorado; that these products are put up and marketed in a package of distinctive design and appearance, and through extensive advertising of its duly registered trade-mark and label "Sky-Rite", the products have come to be publicly known and recognized as the products of the Agency Paper Company. It was stated upon information and belief that Rockmont had been selling air mail paper and envelopes in interstate commerce and in the State of Colorado bearing the designation "Sky Mail"; that Rockmont's designation "Sky Mail" and its labelings were adopted after Agency's products had been widely distributed and advertised to the public, and because of their resemblance and similarity, Rockmont's products were likely to be passed off on the public as and for Agency's trade-marked product; and that the use of the said labelings therefore constituted infringement and unfair competition. It was further averred upon information and belief that Rockmont's imitation of Agency's labeling, trade-mark and advertising was deliberately and intentionally designed to create confusion and mistake in the public mind, and to deceive purchasers in the belief that Rockmont's products were Agency's. The complaint prayed for an injunction, an accounting and for damages.

Rockmont answered denying the validity of the trademark as no more than the registration of a picture of an airplane performing sky writing, connected and associated with the descriptive words "Sky-Rite". It specifically denied the allegations of similarity, infringement and unfair competition, and affirmatively pleaded that the term "Sky Mail" is merely a variant of "air mail", and therefore could not infringe Agency's trade-mark "Sky-Rite"; that the word "sky" being purely descriptive, was incapable of protective ownership.

Rockmont took the deposition of one of Agency's partners, who identified for the record specimens of all of its products and advertising, as well as specimens of Rockmont's products and advertising alleged to be an infringement. Comparing the two specimens, he testified "they all look alike to me", but refused to state in what detail the two specimens were in fact similar. In support of its motion for summary judgment, Rockmont filed an affidavit of one Perrine who identified eight other air mail stationery products using the word "sky" in combination with other words as a part of its labeling. Agency filed the affidavits of two investigators, a man and his wife, to the effect that in 56 stores in San Francisco and Oakland, California, they asked for "Sky-Rite" air mail paper; that in 3 stores the clerk sold them "Sky-Rite"; in 2 stores the clerk offered them both "Sky-Rite" and "Sky Mail"; in 3 stores the clerk said he was out of "Sky-Rite" and offered "Sky Mail"; in 7 stores the clerk offered "Sky Mail" and inquired if that was what they wanted; in 16 stores the clerk sold them "Sky Mail" without any comment; in 24 stores the clerk had neither; in 1 store one clerk said to another, "give these people `Sky-Rite', and the second clerk said "we are out of `Sky-Rite'". Another affidavit was filed to the effect that when Rockmont applied for the registration of its trade-mark "Sky Mail", it was referred to other registrations, including Agency's.

The specimens of Agency's products as identified for the record consist of lightweight writing paper and envelopes contained in small cartons suitable for effective display. The distinctive feature of the trade-mark appearing on each carton is an outline of parts of the globe, above which in a blue background in a slanting position appears the hyphenated word "Sky-Rite". The word simulates white vaporous script as if written by the airplane shown below in the figure. Each sheet of paper and apparently each envelope bears this design in watermark.

Rockmont's merchandise is likewise sold in cartons of approximately the same size, containing lightweight paper and envelopes. On each carton is the legend "Sky Mail" written against a white background in a red slanting flourish. Immediately above in some but not all of the cartons in slightly smaller red block letters appears the word "Rockmont". Immediately below the words "Sky Mail," also in red block type, is the word "Handipack". In the center of the package in blue block letters is the word "Stationery", below which in red block letters are the words "for foreign and domestic air mail". The entire design is bordered by red and blue slanting lines on the white background similar to conventional air mail markings.

In a memorandum of his views, the learned trial court recognized the decisive question as whether a genuine issue of fact was presented on the record. "If so" said the court, "the motion must be denied", citing and quoting from Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620, 64 S.Ct. 724, 88 L.Ed. 967, but concluded that a visual comparison of the two specimens left no factual issue to be decided.

To borrow the language of Judge Huxman in Schreffler v. Bowles, 10 Cir., 153 F.2d 1, 3, "The salutary purpose of Rule 56 is to permit speedy and expeditious disposal of cases where the pleadings do not as a matter of fact present any substantial question for determination. Flimsy or transparent charges or allegations are insufficient to sustain a justiciable controversy requiring the submission thereof. The purpose of the rule is to permit the trier to pierce formal allegations of facts in pleadings and grant relief by summary judgment when it appears from uncontroverted facts set forth in affidavits, depositions or admissions on file that there are as a matter of fact no genuine issues for trial." See also Sabin v. Home Owners' Loan Corp., 10 Cir., 151 F.2d 541; Brooks v. Utah Power & Light Co., 10 Cir., 151 F.2d 514. But, it is not the purpose of the rule to deprive litigants of their right to a full hearing on the merits if any real issue of fact is tendered. Sartor v. Arkansas Natural Gas Corp., supra, 321 U.S. at page 627, 64 S.Ct. 724. The power to pierce the flimsy and transparent factual veil should be temperately and cautiously used lest abuse reap nullification. See Doehler Metal Furn. Co. v. United States, 2 Cir., 149 F. 2d 130, and cases cited in footnote 6.

While our immediate problem is whether the record presents an issuable fact, the real question for adjudication tendered by the pleadings is one of trademark infringement, and some understanding of the substantive rights of the parties is essential to the solution of the ultimate problem. The trial court followed the generally accepted rule as announced by this court in Schneider Brewing Co. v. Century Distilling Co., 107 F.2d 699, 703, to the effect that the function of a trade-mark as a right appurtenant to a business or trade is to "designate the goods as the product of a particular trader and to protect his good will...