Certain-Teed Products Corp. v. Philadelphia & Sub. Mortg. G. Co.

• Decision Date: 06 April 1931
• Docket Number: No. 4432.,4432.
• Citation: 49 F.2d 114
• Parties: CERTAIN-TEED PRODUCTS CORPORATION v. PHILADELPHIA & SUBURBAN MORTGAGE GUARANTEE CO.
• Court: U.S. Court of Appeals — Third Circuit

49 F.2d 114 (1931)

CERTAIN-TEED PRODUCTS CORPORATION v. PHILADELPHIA & SUBURBAN MORTGAGE GUARANTEE CO.

No. 4432.

Circuit Court of Appeals, Third Circuit.

April 6, 1931.

Emerson R. Newell, of New York City, for appellant.

A. B. Stoughton, of Philadelphia, Pa., for appellee.

Before BUFFINGTON and WOOLLEY, Circuit Judges, and THOMPSON, District Judge.

BUFFINGTON, Circuit Judge.

In this case the court below dismissed a bill filed by the Certain-Teed Products Corporation, whose products are roofing and other building materials, against the Philadelphia & Suburban Mortgage Guarantee Company, whose business is buying mortgages and reselling them with the added security of its guaranty of their principal and interest. The bill prayed the defendants be enjoined from its use of a slogan, "A guaranteed mortgage is a certainteed income." No similarity or simulation of product is involved. No fraud, deception, or confusion in the minds of the public is shown or threatened. After a study of the case, we are satisfied the bill was rightly dismissed. The proofs, the pertinent decisions, and indeed the entire case is so fully and satisfactorily discussed in the comprehensive opinion of Judge Kirkpatrick, that a further one by this court could be but a labored effort to clothe in other words what he has said. Accordingly we limit ourselves to adopting his opinion, which is printed in the margin,¹ as our own, and so affirm the decree below.

1 District Judge.

The corporate name of the plaintiff in this case is "Certain-Teed Products Corporation." In 1912 the plaintiff's predecessor, General Roofing Manufacturing Company, began to use the word "Certain-Teed" as a trade-mark, and had it registered. At that time the business of the company was the manufacture and sale of roofing materials. Since then the business has been gradually expanded in volume, in territorial extent, and in variety of products, until at the present time the plaintiff manufactures and sells, in addition to roofing materials, linoleum and oilcloth, paints, varnishes, polish, beaverboard, plaster, including dental plaster and plaster of paris, and various other products more or less closely related to those named. From time to time as new products were added, the word "Certain-Teed" was used and registered as a trade-mark in connection with them. In 1917 the business of General Roofing Manufacturing Company was reorganized and the present corporate name, taken from the trade-mark, was adopted. The plaintiff sells its product in every state in the country, and its annual business amounted in 1929 to $30,000,000. Since 1917 it has averaged an annual expenditure of $500,000 for advertising, in all of which it stresses its corporate name and trade-mark.

The defendant deals in guaranteed mortgage certificates, purchasing mortgages with its own funds and then selling fractional interests therein, evidenced by certificates and guaranteed as to principal and interest. Its business is limited to the city of Philadelphia and nearby territory. For about five years the defendant has been using, in connection with its advertising matter, the slogan, "A guaranteed mortgage is a certainteed income." The slogan appears on its letterheads, on circulars, on calendars, and in street car advertising. A seal or device bearing the slogan is also printed upon the actual certificates of mortgages which the defendant sells, and the same device appears upon some of its letterheads and advertising matter. The defendant never uses the slogan except in connection with its own corporate name, and, in the advertising in which the slogan appears, the corporate name is featured much more prominently than the slogan. The defendant nowhere refers to its securities as "certainteed mortgages," or "certainteed certificates," or the like.

The defendant is not and up to the present time has not been in competition with the plaintiff in any sense of the word. It appears that the plaintiff has under consideration a plan for the financing of certain related businesses and also the financing of prospective purchasers of its products who wish to build or improve houses. This plan might involve the sale of securities to the public, in which case such securities might or might not be sold under the plaintiff's name. That I think is about as far as the testimony on this point goes. The defendant, of course, has never had any intention of ever dealing in any of the manufactured products now sold by the plaintiff.

The plaintiff does not contend that section 16 of the Trade-Mark Statute of 1905 15 USCA § 96 applies to this case, and in substance concedes that in this action he must stand upon his common-law rights.

The issue here is the right to restrain the use of a coined word which is part of a corporate name, where the use complained of is a noncompeting and totally unrelated business, and is merely part of an advertising slogan. If the plaintiff's position is sustained, rights in words would be carried further than in any reported case that has been brought to my attention. I do not suppose that this slogan is a particularly valuable asset to the defendant, or that it would suffer very much harm if it were restrained from using it, but care must be taken not to allow that consideration to control the decision. The important question is the extent of the plaintiff's right. Upon that question certain general principles are well settled.

First. The plaintiff has certain rights in the word "Certain-Teed" as a trade-mark merely, but these rights give him no standing in this case to restrain the defendant's use of it. "The mere fact that one person has adopted and used a trade-mark on his goods does not prevent the adoption and use of the same trade-mark by others on articles of a different description." American Steel Foundries v. Robertson, 269 U. S. 372, 46 S. Ct. 160, 162, 70 L. Ed. 317. "There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed * * * its the trade-mark's function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his. * * * In truth, a trade-mark confers no monopoly whatever in a proper sense, but is merely a convenient means for facilitating the protection of one's good-will in trade by placing a distinguishing mark or symbol — a commercial signature — upon the merchandise or the package in which it is sold." United Drug Co. v. Rectanus Co., 248 U. S. 90, 97, 39 S. Ct. 48, 63 L. Ed. 141. It follows that a plaintiff cannot restrain the use of a word or symbol as a trade-mark merely, if the use is in connection with noncompeting and unrelated goods. "* * * Since its sole office is to indicate that the goods of the same general class to which it is attached emanate from a single source or reach the consumer through the same channels of trade * * * the proprietor of a trade-mark is without right to forbid or exclude the use of the same mark, words, or symbol by another upon goods of a class and quality so different from those of the original user as to preclude the probability that purchasers will be misled into believing that the different articles spring from a common source." Standard Oil Co. v. California Peach & Fig Growers, Inc. (D. C.) 28 F.(2d) 283, 284, 285 (The Nujol Case). See also Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 413, 36 S. Ct. 357, 60 L. Ed. 713; Ainsworth v. Walmsley, L. R., 1 Eq. C. A....