Capewell Horse Nail Co. v. Green

• Decision Date: 08 May 1911
• Docket Number: 268.
• Citation: 188 F. 20
• Parties: CAPEWELL HORSE NAIL CO. v. GREEN et al.
• Court: U.S. Court of Appeals — Second Circuit

188 F. 20

CAPEWELL HORSE NAIL CO. v. GREEN et al.

No. 268.

United States Court of Appeals, Second Circuit.

May 8, 1911

Robert W. Hardie, for appellants.

Edmund Wetmore and Oscar W. Jeffery, for appellee.

Before LACOMBE, COXE, and WARD, Circuit Judges.

LACOMBE Circuit Judge.

The complainant has been engaged in the manufacture of horseshoe nails since 1881. Up to 1892 its nails were made with a smooth head. During that year it changed one of the heading dies in its machines, so as to produce a nail with small checks on the front face of the head. It has since then continuously used that mark. It makes three grades of nail called, respectively, the 'Capewell,' the 'Alligator,' and the 'Black Prince.' The last named, a dark blue-black nail, is the lowest grade. The Capewell, a polished nail, is the highest grade, and has borne this mark on the front face of the head for very many years.

In 1905 it brought suit in Massachusetts against the Putnam Nail Company, alleging ownership of a common-law trade-mark, and charging defendant with infringement. The cause was tried before Judge Colt, who dismissed the bill because of failure to prove that the mark had become associated in the public mind and among purchasers and users of nails with complainant's nail. Capewell Horse Nail Co. v. Putnam Nail Co. (C.C.) 140 F. 670.

In July, 1907, complainant brought another suit against one Mooney in the Northern district of New York, who was making and selling nails with a check mark which was a Chinese copy of complainant's. Much testimony was taken, and complainant prevailed. 167 Fed.(C.C.) 575. Upon appeal to this court the decree below was affirmed August 20, 1909. 172 F. 826, 97 C.C.A. 248. We found that the testimony which was lacking in the Putnam Nail Case had been abundantly supplied that before 1892 various marks had been placed on the front face of nail heads, by others-- initials, etc., including a globe with intersecting meridian lines (readily distinguishable from complainant's mark), but that complainant was the first to use the mark it claimed. We further found that such check mark had come to be generally known to the public as complainant's trade-mark, and that goods bearing such mark had come to be publicly known and distinguished as those of complainant's make. We held therefore, affirming Judge Ray, that complainant had a common-law trade-mark, and that Mooney had infringed it.

In the case at bar the decree recites that complainant--

'Is and since 1892 has been the owner of the trade-mark consisting of a pattern of small checks stamped upon the front face of the head of its horseshoe nails, commonly called a 'check mark,' and as heretofore used covering substantially such front of the head of the nail and generally conforming to the shape of such face, and because of the shape of the head (and face) having four sides, the upper and lower sides being parallel, but unequal in length, the upper being the longer; the right and left sides being of equal length, substantially but not parallel, and having within such boundaries thus conforming to the shape of such face of the head of the nail a pattern of small, but uniform, checks made by lines crossing each other at right angles or diagonally.'

The evidence abundantly sustains this finding. To discuss that branch of the case would be merely to repeat what was said in the two opinions in the Mooney Case.

In the early part of 1907, more than 10 years after complainant's Capewell nail, with the check mark on its face, became known to the trade, the defendant Hoopeston Company placed upon the market a horse nail which it called the 'Peerless.' It already had a high-grade nail known as the 'Hoopeston,' with a distinctive mark of its own on the front face of the head. The 'Peerless' was a lower grade of nail, and it was marked with a check mark on the front face, substantially the same as those of complainant and of Mooney; the only difference being that the tiny checks were squares, instead of diamonds. Suit being threatened, it altered the mark on its 'Peerless' nails by cutting out a triangular piece from the bottom. At the same time it sent to its customers a card, giving illustrations of both forms of marking and containing this statement:

'It having been repeatedly brought to our attention that inferior nails were being substituted for our Peerless because of similar marking under the head, we have changed our mark to make it more distinctive, that our numerous customers may be protected in getting the best.'

Inspection of the two illustrations shows that defendant company still retained the check mark with which it had sought to associate its 'Peerless,' merely cutting out a portion of it. It was to restrain the use of this second design that this suit was brought.

As we have seen, Judge Ray held, quite properly, that complainant was not entitled to all check marks of every shape, form, and description; there being some which would be so unlike its own as not to mislead any one. For that reason the decree describes the mark with such particularity, but it does not follow that identity must be shown in order to establish infringement. Before taking up this branch of the case, reference may be had to the following illustrations. Being taken from different sources, all are not drawn to the same scale; but it should be understood that the nails thus marked are of the standard sizes. No. 3 is a rough sketch from a nail marked as an exhibit, no drawing of it being found in the record.

(Image Omitted)

No. 1 is the old 'globe' mark which antedated complainant's. No. 2 is complainant's. Mooney's was the same. No. 3 is defendant's high-grade 'Hoopeston' nail, which it used before it marked its 'Peerless' nails in the manner indicated, and which it still uses. No. 4 is the mark defendant put on its 'Peerless' nails for a few months in 1907, and No. 5 is the modified mark in use when this suit was brought.

Passing upon the question of infringement Judge Ray says:

'Knowing the Capewell trade-mark and looking at the defendant's nail, a purchaser or user would assume it to be a Capewell nail, unless specifically informed that nails with a check mark on the beveled side of the head, such check mark being formed of three triangular spaces, two check marked and the third one interposed plain, were not Capewell nails, but those of the Hoopeston Company. Such a close copy and imitation is an infringement. It tends to confusion and deception. The resemblance is such as to deceive an ordinary purchaser giving such attention to the nails and the marks thereon as such a purchaser ordinarily gives, and cause him to purchase one supposing it to be the other. But it is said that defendant's nails are put up in packages, boxes, or cartons, with the name of the dealer thereon, and that one purchasing a package, box or carton is informed by the name on the package that the nails are not Capewell's. * * * So soon as the package is open and the nails displayed in store and shop, they at once pass for or are easily passed off as Capewell nails. Mistake, deception, and fraud are easy. * * * Purchasers and users understand that the names on packages do not necessarily indicate the maker, but also understand that the trade-mark or name on the articles themselves do.'

In our former opinion it was stated...