Car-Freshner Corporation v. Marlenn Products Company

• Decision Date: 30 March 1960
• Docket Number: Civ. A. No. 10830.
• Citation: 183 F. Supp. 20
• Parties: CAR-FRESHNER CORPORATION v. MARLENN PRODUCTS COMPANY, Inc.
• Court: U.S. District Court — District of Maryland

183 F. Supp. 20

CAR-FRESHNER CORPORATION v. MARLENN PRODUCTS COMPANY, Inc.

Civ. A. No. 10830.

United States District Court D. Maryland.

March 30, 1960.

COPYRIGHT MATERIAL OMITTED

G. Gordon Haines, Baltimore, Md., and Robert F. Conrad, Watson, Cole, Grindle & Watson, Washington, D. C., for plaintiff.

Thomas W. Y. Clark and J. Wesley Everett, Samuels & Clark, Baltimore, Md., for defendant.

R. DORSEY WATKINS, District Judge.

This suit involves separate counts for technical trade-mark infringement under the Lanham Act, 15 U.S.C.A. § 1051 et seq., and for unfair competition due to the manufacture and sale by defendant of a small tree shaped figure of blotter stock material impregnated with a deodorant. An answer was filed by defendant denying any exclusive right of the plaintiff to the tree shaped figure so impregnated; and two counterclaims were filed by defendant; one requesting the cancellation of plaintiff's trade-mark registration because it was improperly granted and improperly used; and the second requesting an injunction against plaintiff's use of a figure comprising a horseshoe and rose impregnated with a deodorant, this latter claim for relief since having been withdrawn.

Trade-mark Infringement

In August, 1952, plaintiff and its predecessors¹ adopted and have since been using the device of a pine tree in connection with the sale and distribution of perfumed air deodorants. This pine tree included a block-like base and a white panel displayed at a slight angle on the body of the tree. On September 25, 1952, plaintiff's predecessors filed an application for the registration of the tree design, including the slanted panel, the block-like base and the words "Car-Freshener." This application matured into Registration No. 595,047, dated September 14, 1954, which is now owned by the plaintiff, infringement of said registered trade-mark being the cause of action alleged in the first count of the complaint in the instant suit. Upon issuance of the certificate, plaintiff affixed notice of registration to its goods. Plaintiff's product consists of blotter stock die-cut in the shape of a pine tree and dyed a solid color² with the exception of a white slanted panel and block-like base with a white panel. In the white slanted panel appear, printed in the same solid color as used on the body of the tree, the words "Car-Freshener" and in the white base panel:

"For `Forest-Fresh' Air Car-Freshner Corp. Watertown, N.Y., U.S.A."

After printing and prior to die cutting, the absorbent blotter stock is impregnated with the desired perfumed air deodorant. The trees are then sealed in cellophane envelopes and twenty-four envelopes stapled to a cardboard easel or display panel. Sales to retailers are of these display cards, the ultimate consumer detaching from the card the number of individual trees he wishes to purchase. As now marketed, the plaintiff's tree carries a small R in a white circle in the center of the tree just above the slanted panel. Plaintiff claims a trade-mark registration on the tree itself. Defendant contends that the actual mark registered was a picture of the plaintiff's tree-shaped dry deodorant, said picture being used on the display cards associated with the merchandising of plaintiff's trees.

Examination of the file wrapper for the granting of the registration on the principal register shows that the initial samples of the use of the mark filed with the application are of a red tree printed on a rectangular blotter stock bearing plainly across the slanted panel the words "Car-Freshner" with the notation "Tr. Mk." just above and also within said panel: and at the base within a red margin the inscription:

"For `Forest-Fresh' Air Car-Freshner Co. Watertown, N.Y., U.S.A."

In this application the initial description of goods called for "absorbent material impregnated with air deodorizing and disinfecting material." The application was rejected for the reason that "the mark is dominated by the representation of the goods and the words `Car-Freshner' which are considered to be merely descriptive as applied to applicant's goods." Upon the suggestion of the Examiner the description of the goods was changed to "an air deodorant and disinfectant" and applicant's attorney stated that the "representation of the tree is in reality a package or container for the goods and distinctive containers have heretofore commonly been registered as trade marks. Such containers certainly identify the source of the goods." A card used in connection with the sale of applicant's goods which suggested various uses of dry deodorants—i. e., in the car, in the kitchen, in the bathroom and in the closet—was submitted to meet Examiner's contention that the words "Car-Freshner" were merely descriptive. The card bore a picture of the tree as shown in the samples initially submitted to indicate the use of the mark. A single rectangular blotter with the tree device imprinted upon it was stapled on the card over the picture of the tree. The description of the goods was next amended to "an air deodorant and perfuming agent." The application was again rejected in part for the reason that:

"Applicant's admission that `the representation of the tree is in reality a package or container for the goods' supports the Examiner's position that the tree constitutes a representation of the package or container of the goods. Such matter, while it identifies applicant's goods, is only qualified for registry on the Supplemental Register in accordance with the provisions of Section 23 of the Act of July 5, 1946.

"There are no provisions under the act of July 5, 1946 which provide for the registration of the container of the goods or the package of the goods on the Principal Register. Only the Supplemental Register provides for the registration of such marks providing they are capable of distinguishing applicant's goods. Attention is directed to Section 23 of the Act of July 5, 1946 entitled `Nature of Mark.'"

A further amendment of the description of the goods was made to "an absorbent body impregnated with a perfumed air deodorant" and the argument was then advanced by applicant that "while the absorbent material might be considered a vehicle in which the deodorant is absorbed, it certainly is not a package or container in the ordinary sense of the word." The application was then finally rejected with the statement that only on the Supplemental Register could a package or container be registered, citing various decisions to that effect. After an interview with the Examiner a further amendment was filed disclaiming registration rights of the words "Car-Freshner" except as used "in connection with the trade-mark as shown" and new facsimiles were filed of a larger display card with the blotter removed and showing the picture of the tree on the card in the position previously intended for the blotter. Various uses for the dry deodorants were suggested on the card, and room for approximately twenty-four envelopes containing plaintiff's products was provided. The applicant's attorney made the following statement in regard to these new specimens: "It is our understanding that the Examiner stated that if specimens were submitted in place of those originally filed with this application and in which the trade-mark is shown printed on a rectangular card, that registration could be obtained. These rectangular cards, therefore are believed to dispose of the Examiner's contention that the drawing merely shows the package or container".

A further amendment was made cancelling that part of the application alleging that the specimens showed the trademark as actually used "in connection with such goods, the trade-mark being applied to the goods" and inserting instead "on display cards associated with such goods." The application was then allowed on the Principal Register with the definition of the goods as shown in the registration, being "absorbent body impregnated with a perfumed air deodorant."

Plaintiff urges that the doctrine of file wrapper estoppel, which is frequently applied in patent cases, is not found in trade-mark cases, the reason being that "registration of a trade-mark confers no rights and limits none, but is a mere procedural advantage, depending upon common-law ownership. United Drug Co. v. Theodore Rectanus Co., 1918, 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141. "That is to say, plaintiff's right, if it exists, to noninterference by the defendants * * * is determined by common law." (Anheuser-Busch, Inc. v. Cohen, D.C.Md.1930, 37 F.2d 393, 396—emphasis supplied; accord: Dixi-Cola Laboratories, Inc. v. Coca-Cola Co., 4 Cir., 1941, 117 F.2d 352, 353, certiorari denied 1941, 314 U.S. 629, 62 S.Ct. 60, 86 L.Ed. 505.) This court has not reviewed and summarized the proceedings indicated by the file wrapper for the purpose of raising any estoppel against the plaintiff as to any common law trade-mark rights that it might possess. However, a determination of what actually was registered is obviously necessary for a determination of the issues of the validity of the registered trade-mark, infringement of the registered mark and the alleged misuse of the notice of registration, or false claim of registration, by the plaintiff, through the placing of ® on the goods themselves.

The certificate issued by the Patent Office contains no statement limiting the manner of the use of the mark by plaintiff. It would nevertheless be unrealistic to ignore the Patent Office proceedings including three rejections of the application on the ground that the tree device constituted a representation of the package or container of the goods and, therefore, was not qualified for registry on the principal register coupled with the fact that registry was granted only when new specimens showing the tree device printed on display cards were submitted to "dispose of the Examiner's contention that the drawing merely shows the package or container." The court is mindful of...