Capewell Horse Nail Co. v. Green

• Decision Date: 20 October 1910
• Citation: 182 F. 404
• Parties: CAPEWELL HORSE NAIL CO. v. GREEN et al.
• Court: U.S. District Court — Northern District of New York

182 F. 404

CAPEWELL HORSE NAIL CO. v. GREEN et al.

United States Circuit Court, N.D. New York.

October 20, 1910

Edmund Wetmore and Oscar W. Jeffery, for complainant.

Robert W. Hardie, for defendants.

RAY District Judge.

The validity and character of complainant's trade-mark was passed upon by this court in Capewell Horse Nail Co. v Mooney, 167 F. 575, affirmed by Circuit Court of Appeals 172 F. 826, 97 C.C.A. 248. We have here the same evidence given in that case, with some in addition, and nothing to the contrary, and the holding is that the complainant is, and since 1892 has been, the owner of the trade-mark. The complainant's trade-mark covers the bevel face of the head of the horseshoe nail, and is a distinguishing mark. With that mark upon the nail, it is everywhere and easily recognized as complainant's nail. It cannot be successfully contended, however, that the complainant is entitled to all check marks of every shape, form, and description; as, for instance, if defendant should make use of a small cross covering say one-third of such bevel face the cross made up of lines crossing each other either at right angles or diagonally, so as to form a check mark, I should be disinclined to hold it an infringement. There the cross would be the distinguishing or characteristic feature.

But this is not what the defendants do. They make a nail of substantially the exact form of complainant's nail, and to the eye not distinguishable from it, and on the bevel face of the head place a check mark like complainant's covering two-thirds of such bevel face in the form of two triangles, which check mark is divided by an interposed triangular smooth surface covering the remaining third of such bevel face. In my judgment, following the trade-mark, purchasers and users would not suspect that this nail was made by any other than the Capewell Company. Knowing the Capewell trade-mark, and looking at the defendants' 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, within all the authorities, 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 the one supposing it to be the other.

But it is said that defendants' 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. This may be so in some cases, and may not be so. It is matter of common knowledge that manufacturers make and put up goods of all kinds, nearly, in boxes or packages for customers who are retail dealers, marked with the name of such customer or retail dealer, and with nothing except the trademark on the goods themselves to indicate the maker. This is shown to be the practice of the Hoopeston Horse Nail Company. Enos & Sanderson, of Buffalo, N.Y., and John G Merkel Company, of Newark, N.J., are supplied by the Hoopeston Company with nails of its make having (on the nail) the check mark complained of, put up in packages marked 'Enos' and 'Merkel Special,' respectively, with nothing to indicate they are of the Hoopeston make. So soon as the package is open and the nails displayed in store or shop, they at...