Capewell Horse Nail Co. v. Mooney

• Decision Date: 30 January 1909
• Citation: 167 F. 575
• Parties: CAPEWELL HORSE NAIL CO. v. MOONEY.
• Court: U.S. District Court — Northern District of New York

167 F. 575

CAPEWELL HORSE NAIL CO. v. MOONEY.

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

January 30, 1909

Edmund Wetmore and Oscar W. Jeffery, for complainant.

Robert W. Hardie and Charles A. Munn, for defendant.

RAY District Judge.

The complainant, Capewell Horse Nail Company, is a Connecticut corporation, and has its factory and main and principal place of business at Hartford, in that state. The defendant Walworth M. Mooney, is a citizen and resident of the state of New York, and has his factory and place of business at Ausable Chasm, in said state.

The parties are competitors in the business of manufacturing and selling horseshoe nails. The complainant company has been engaged in the business since 1881, and is one of the largest manufacturers and sellers of such nails in the United States. That it manufactures and sells a high grade of nails at a high price is shown and not seriously questioned. The nail in question, and referred to as the 'Capewell' nail, the highest or best grade nail made by it, constitutes about 75 per cent. of its entire output. The complainant's alleged trade-mark has been used by it in marking and designating its nails since 1892, and consists of a pattern of small but uniform checks stamped on the under or beveled face of the head of each nail. It is stamped on one face only, viz., the front beveled face, and covers it. That it is a distinguishing mark cannot be questioned. This alleged trade-mark was registered in the Patent Office under Act Feb. 20, 1905, c. 592, 33 Stat. 724 (U.S. Comp. St Supp. 1907, p. 1008), on the 9th day of October, 1906, No 56,605. In the statement filed June 5, 1905, it was described as consisting of 'a check formed of intersecting lines on the under or beveled face of the nail heads. ' In a communication of September 2, 1905, the Patent Office so recognized the claim. The original drawing showed, not only the check-mark claimed on the nail in its proper place, the beveled face of the head, but the entire nail. Pursuant to an order of the Patent Office, the applicant filed a new drawing showing only the intersecting lines forming the check-mark; that is, the check-mark independently of the nail. October 23, 1905, the Patent Office reversed its holding, and notified the applicant that the original illustration of the mark claimed was the correct one, and that a new drawing should be filed so as to show the mark claimed on the beveled face of the head of the nail according to the description in the original statement. This direction was complied with. However, pending the application, the practice in the office was so changed as to omit descriptions of trade-marks in applications therefor, and required applicant to state that he has 'adopted the trade-mark shown in the drawing. ' This rule was not applied in this case, and the whole proceeding and file wrapper show that the 'trade-mark' applied for, described, and registered was the 'check-mark' and not the 'nail with the check-mark' thereon. The nail was retained, under the ruling of the department made at the time, to show the location of the trade-mark thereon, and not as a part of the trade-mark. The statement reads:

'To All Whom It may Concern:

'Be it known that The Capewell Horse Nail Company, a corporation duly organized under the laws of the state of Connecticut, and located in the city of Hartford, county of Hartford, in said state, and doing business at Nos. 57 to 69 Charter Oak avenue and 36 to 84 Governor street, in said city of Hartford, has adopted for its use the trade-mark shown in the accompanying drawing.

'This trade-mark has been continuously used in the business of said corporation since the latter part of 1892 or the early part of 1893.

'The class of merchandise to which the trade-mark is appropriated is class 13, metal manufactures not otherwise classified, and the particular description of goods comprised in said class upon which said trade-mark is used is horse-nails.

'This trade-mark is impressed on the under side or beveled face of the heads of the nails and on the packages and boxes containing the nails.

'The Capewell Horse Nail Company, 'By George C. F. Williams, Sec'y.'

I do not think that under the proofs in this case and the practice of the Patent Office as it was at the time of the pendency of this application, especially the filing thereof, the defendant's contention can be sustained that the trade-mark claimed, allowed, and registered is the nail with the check-marks thereon. To hold otherwise would do violence to the plain intent and purpose of the applicant as shown by the file wrapper. In the original statement it said: 'The trade-mark consists of a check formed of intersecting lines on the under or beveled face of the nail head. This trade-mark has been continuously used in our business since the latter part of 1892 or the early part of 1893.'

The letter of the Commissioner dated September 2, 1905, said;

'The mark claimed consists of a check formed of intersecting lines on the under or beveled face of the nail head.'

This was the statement also of D. L. Pittman, acting examiner. After the applicant had filed his new drawing showing simply the check-mark, the same examiner said, and this was communicated to the applicant October 23, 1905:

'Applicant has filed a new drawing, and it does not show the trade-mark as described or as used. The original illustration of the mark is the correct one, and a new drawing should be filed. (Signed) D. L. Pittman, Acting Examiner.'

In view of his prior description of what the trade-mark claimed actually was, it is impossible to say that this examiner was leading the applicant into a trap and inducing him to claim and register 'a horseshoe nail with the check formed of intersecting lines thereon' as his trade-mark. The applicant had not made that claim, and, to have so broadened it, would have made the accompanying declaration under oath false. The trade-mark used had been, not a nail with the check thereon, but the check alone. This 'trade-mark,' the check, was used on a horseshoe nail or on the package containing the nails. It may be that under the practice subsequently adopted, or adopted during the pendency of this application, the drawing filed was the trade-mark allowed and registered in subsequent cases, but this practice was not applied to this case.

The defendant insists that this check-mark was not the subject of a valid trade-mark at common law or under the statute; that it was in common use in the manufacture of various useful articles, and the common property of all the people, and that it could not be appropriated by this claimant as a trade-mark for horseshoe nails. It must be conceded that similar checks, composed of or formed by lines crossing each other at right angles, or diagonally, and cut into the metal, had been in use for years to form gripping surfaces, as in forceps, tweezers, vises, etc., where they are cut on the interior surfaces of the jaws of the gripping devices. They had also been used on the exterior surfaces of the handles of various tools to prevent the slipping of the hand of the workman when grasping the tool.

I do not think the mere fact that the general design of this alleged trade-mark is composed or made up of a form of marks found elsewhere in general use for purposes of utility deprived the complainant company of the right to adopt this particular check-mark, of this particular form, used in this particular place on the horseshoe nail itself, or representations of such nail, as its trade-mark to designate its goods as those of its make or manufacture.

In Hutchinson v. Blumberg (C.C.) 51 F. 829, 830, the symbol of a star was held a valid trade-mark. In that case the word 'star' was used in connection with the symbol, but I cannot see that this was material.

Stars--that, is, figures and symbols of stars, and paintings and signs with stars painted and engraved thereon, etc.-- have been used for more than a hundred years both for ornamentation and utility, and, so far as I know, any one had and has the right to use the symbol or cut of a star for such purposes, but it seems that it could be and was appropriated as a valid trade-mark. In Johnson v. Brunor (C.C.) 107 F. 466, Judge Lacombe restrained the infringement of a trade-mark consisting of a red cross. Now crosses have been used by the general public both for ornamentation and utility for generations.

In Hier v. Abrahams, 82 N.Y. 519, 523, 37 Am.Rep. 589, the court said:

'Trade-marks are of two kinds. They may consist of pictures or symbols or a peculiar form and fashion of label, or simply of a word or words, which in whatever form printed or represented, continue to be the distinguishing mark of the manufacturer who has appropriated it or them, and the name by which his products are known and dealt in.'

In Popham v. Cole, 66 N.Y. 69, 23 Am.Rep. 22, the trade-mark consisted of the figure of a hog, with the name of the manufacturer and the words 'prime leaf lard.' The court, per Rapallo, J., held that the words, being descriptive merely, could not be appropriated as a trade-mark. The court also held that there was such a distinction between the fat, plump, well-conditioned hog of complainant's trade-mark and the lean, scrawny, ill-conditioned wild boar of defendants' device that there was no infringement. The court took occasion, however, to say, in speaking of the sign or symbol of the hog:

'The sign or symbol may be employed with equal truth in respect to any parts of the dead swine or the products of that animal put up for sale, and no one dealer has a greater right than any other to appropriate it to his own purposes. A serious question might be made as to the right of the plaintiff to

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