Barton v. Rex-Oil Co.
| Decision Date | 12 December 1928 |
| Docket Number | No. 3642.,3642. |
| Citation | 29 F.2d 474 |
| Parties | BARTON et al. v. REX-OIL CO., Inc. |
| Court | U.S. Court of Appeals — Third Circuit |
Allen M. Reed and Edward S. Rogers, both of Chicago, Ill., and Edward A. Lawrence, of Pittsburgh, Pa., for appellants.
E. W. McCallister, of Pittsburgh, Pa., for appellee.
Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.
The District Court, in dismissing the bill of Warren D. Barton et al. against Rex-Oil Company, Inc., held that the plaintiffs' claimed trade-mark "Dyanshine" for shoe polish was invalid as descriptive of their product and that unfair competition on the part of the defendant had not been established. Barton v. Rex-Oil Co., Inc., 288 F. 878. This court on appeal reversed the decree Barton v. Rex-Oil Co., Inc., 2 F.(2d) 403, 40 A. L. R. 424, on a finding that the defendant in the exploitation of its product under the mark "Dye & Shine" had competed unfairly with the plaintiffs but declared itself in accord with the decision of the District Court that the plaintiffs' word "Dyanshine" was not subject-matter of a valid trade-mark; holding, however, that, by use and popular recognition, it had acquired a secondary meaning and that the plaintiffs in their use of the word were entitled, not to an injunction, but to protection against its misuse by the defendant. The plaintiffs on that appeal insistently claimed the right to the exclusive use of the words "dye and shine," whether in corrupted or uncorrupted form. In view of what we thought was flagrant misconduct on the part of the defendant, we gave the plaintiffs' contention serious consideration and went to some pains to state the law and make clear the reasons for our decision against them. Nevertheless, when the mandate went down they insisted that this court had in substance directed that the defendant be enjoined from using the words "Dye & Shine" and asked for an injunction, which the learned trial judge, reading the opinion correctly, refused. The plaintiffs then filed a supplemental bill demanding that the court afford them adequate relief and averring that the only adequate and practical relief in the circumstances is that it enjoin the defendant from using the words "Dye & Shine," thus raising anew the old question which this court had fully considered and definitely decided. The learned trial judge dismissed the supplemental bill and the case is here on the plaintiffs' appeal raising substantially three questions:
First (the old question), error by the court in refusing to enjoin the Rex-Oil Company from using the words "Dye & Shine" in connection with its product or business.
Whatever may be the plaintiffs' exigency or our personal inclination in respect to the defendant's description of its product by uncorrupted words that have the precise meaning and sound of the plaintiffs' corrupted word, the fact is that the plaintiffs are confronted and this court is controlled by the law of trade-marks in respect to words with a secondary meaning which, as was said before, does not give the first user an absolute and exclusive right to the words but only gives him the right to be protected against one who later so uses them as to deceive the public and in that way take his trade from him. It follows that the learned district judge was right in refusing to enjoin the use of the words.
The second question arises from the action of the trial court in approving the marks which in obedience to the mandate on the first appeal the Rex-Oil Company places on its cartons to distinguish its product from that of the plaintiffs. These marks involve a change from the old name "Victory Dye & Shine," standing out in large letters, to similarly prominent and lettered words "Victory Dyes & Shines." We do not think much of the change of the critical words from nouns to verbs, or from singular nouns to plural nouns, whichever it is; but in addition the defendant pastes in prominent position on the outside of its brown cartons white stickers with small but clear type containing this statement:
Notice.
This preparation is not "Dyanshine" manufactured by Barton Manufacturing Co. and is not to be dispensed as such, and is not to be used by jobbers and retailers when filling orders or meeting calls for "Dyanshine."
So long as the words "dye and shine," whether corruptively joined or correctly separated, have the same sound and meaning and can be used by both parties in describing their products, we cannot say that the marks which the court has approved are not...
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