Capewell Horse Nail Co. v. Putnam Nail Co.

• Decision Date: 08 November 1905
• Docket Number: 1,765.
• Citation: 140 F. 670
• Parties: CAPEWELL HORSE NAIL CO. v. PUTNAM NAIL CO.
• Court: U.S. District Court — District of Massachusetts

140 F. 670

CAPEWELL HORSE NAIL CO. v. PUTNAM NAIL CO.

No. 1,765.

United States Circuit Court, D. Massachusetts.

November 8, 1905

Edmund Wetmore, for complainant.

William K. Richardson and Warner, Warner & Stackpole, for defendant.

COLT Circuit Judge.

This suit relates to a trade-mark. The parties are manufacturers of cold-rolled horseshoe nails. The complainant claims a trade-mark in the pattern impressed upon the front face of the head of each nail. The pattern is first imprinted on the face of one of the heading dies, and the impression on the nail is made during the operation of heading. This pattern consists of a series of small diamond-shaped checks formed by a succession of intersecting diagonal lines. The pattern itself is old. It is, perhaps, the most common form of 'knurling' or roughening the surface of articles like vices and pincers, to prevent slipping.

The complainant was the first to use these checks upon the heads of horseshoe nails. This use began in 1892, and since that time the leading brand of complainant's nails has been stamped with this design. Since July, 1902, the defendant has used identically the same checks upon its nails. It is not uncommon for manufacturers of nails to impress a mark of some character upon the head or surface of each nail. This may be done either for the purpose of a distinguishing mark, or for the purpose of ornament, or it may be merely an incident in the process of manufacture.

The defense rests mainly on two grounds: First, the failure of the complainant to prove that it ever adopted this check pattern as a trade-mark, or that the public regard it as designating the complainant's goods; and, second, that this pattern is not the proper subject of a trade-mark, for several reasons: Because it is an ancient and common form of knurling; because it relates to the form, appearance, or finish of a manufactured article; and because it is a necessary incident in the manufacture of cold-rolled nails in defendant's machines, due to the roughening of one of the dies to prevent heating.

Taking up the first defense, we find that the bill alleges that 'the complainant adopted as its mark, by which its leading brand of 'Capewell' nails might become known a pattern of small checks stamped upon the front face of the head of each nail'; that these checks 'have been and are associated in the minds of the public and the purchasers and users of said nails with the complainant as the maker thereof'; and that the 'check mark has become and is the genuine trade-mark of the complainant, and has been and is recognized and acquiesced in as such by the public generally, and the buyers and users of such nails, and indicates to such buyers and users the origin of said nails, and that they are of the complainant's manufacture.'

Under these allegations of the bill it was necessary for the complainant to establish by proper proof either that this pattern was adopted for the purpose of identifying the origin or ownership of the article to which it is attached, or that the pattern by itself points distinctively to such origin or ownership, or that by association it points distinctively to such origin or ownership. Columbia Mill Company v Alcorn, 150 U.S. 460, 463, 14 Sup.Ct. 151, 37 L.Ed 1144.

It is manifest that these checks do not of themselves point to origin or ownership. In other words, they do not in any way indicate that this nail is manufactured by the complainant. The case, therefore, resolves itself into the inquiry whether the evidence shows either that the complainant has adopted this pattern as a trade-mark, or that by association in the public mind it has become a valid trade-mark.

First, as to the adoption of this pattern as a trade-mark:

Mr. Capewell, the founder of the complainant company, testified as follows:

'Q. For what purpose were the dies made to produce the particular check marks which appeared on the face of the complainant's nail? A. It was done for the betterment of the appearance of the nail, and as the distinguishing mark of our make.'

This general statement that one of the purposes for which the dies were changed was to make this pattern the distinguishing mark of complainant's nails is manifestly insufficient to prove its adoption as a trade-mark, unless accompanied by some public acts which go to show that this intention was carried into effect, such as calling attention to this mark upon the packages in which the goods are sold, and in the company's advertisements.

The complainant has been engaged in the manufacture of horseshoe nails since January, 1881. Up to 1892 its nails were made with a smooth...