Capewell Horse Nail Co. v. Mooney

• Decision Date: 20 August 1909
• Docket Number: 289.
• Citation: 172 F. 826
• Parties: CAPEWELL HORSE NAIL CO. v. MOONEY.
• Court: U.S. Court of Appeals — Second Circuit

172 F. 826

CAPEWELL HORSE NAIL CO. v. MOONEY.

No. 289.

United States Court of Appeals, Second Circuit.

August 20, 1909

This cause comes here upon appeal from a decree of the Circuit Court, Northern District of New York, enjoining defendant from making, using, or selling or offering for sale horse nails bearing the trade-mark of complainant such as have been heretofore made and sold by defendant or bearing any mark so similar to complainant's trade-mark as to be likely to deceive purchasers and the public.

The opinion of the Circuit Court is reported in 167 F. 575.

Robert W. Hardie, for appellant.

Edmund Wetmore and Oscar W. Jeffery, for appellee.

Before LACOMBE, COXE, and NOYES, Circuit Judges.

LACOMBE Circuit Judge.

The mark consists of a pattern of small checks, formed by lines crossing each other diagonally, stamped upon the under or bevelled side or front face of the head of the horseshoe nails and substantially covering the surface of that particular face. It is not a rhomboid, but has four sides the upper and lower sides being parallel but unequal, the upper being the longest. The right and left sides are of equal length, but not parallel. Within these boundaries are the check marks. No complaint is made of the marking or dressing up of the packages in which defendant's nails are sold by him, but it is in evidence that such packages are frequently broken up and the contents sold to users by the pound, and that users are accustomed to look to markings on the nail itself as identifying the maker. Various marks have been placed on the front face of nail heads by different makers-- initials, etc.-- and in the case of one maker a globe with intersecting meridian lines (readily distinguishable from complainant's mark). There is also some evidence, not especially persuasive, that check marks had been used on the top of the head as the distinguishing mark of another maker. But the record does not show that this particular mark on the front face was in use before its adoption by complainant and its association in the public mind with horse nails made by it.

Complainant registered this trade-mark, No. 56,605, dated October 6 1906, and the bill charges infringement of such registration. Several objections to the validity of this registration are urged by defendant, but it is not necessary to discuss that branch of the case, since the court found that complainant had a common-law trade-mark, and that defendant had placed the mark on the front face of his nail heads 'for the purpose of simulating complainant's nails and producing confusion in the minds of dealers and users and selling his nails as those of complainant's make. ' Such acts constitute unfair competition in trade. It is idle to contend that the Circuit Court had no jurisdiction to pass upon the question of common-law trade-mark. There is the requisite diversity of citizenship, and the averment in the complaint as to the statutory amount in dispute is not denied in the answer, nor was any such objection interposed by plea.

The opinion of Judge Ray is most exhaustive and no useful purpose would be served by a rediscussion of the facts. He found that:

'This well-defined check mark was first appropriated and adopted by the complainant as a trade-mark and as its trade-mark and that it was so adopted and appropriated and thereafter used primarily for the purpose of identifying and distinguishing horse nails of complainant's manufacture from those of all other makers and not as an incident of manufacture or primarily for ornamentation.'

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