Curtis-Stephens-Embry Co. v. Pro-Tek-Toe Skate Stop Co.

• Decision Date: 24 October 1952
• Docket Number: No. 14419.,14419.
• Citation: 199 F.2d 407
• Parties: CURTIS-STEPHENS-EMBRY CO., Inc. v. PRO-TEK-TOE SKATE STOP CO., Inc. et al.
• Court: U.S. Court of Appeals — Eighth Circuit

199 F.2d 407 (1952)

CURTIS-STEPHENS-EMBRY CO., Inc. v. PRO-TEK-TOE SKATE STOP CO., Inc. et al.

No. 14419.

United States Court of Appeals Eighth Circuit.

October 24, 1952.

Joshua R. H. Potts, Chicago, Ill. (Fred B. Whalen, James R. O'Connor, St. Louis, Mo., Potts & Brune, Philadelphia, Pa., on the brief; Basel H. Brune and John A. Robertson, Philadelphia, Pa., of counsel), for appellant.

Lawrence H. Cohn, St. Louis, Mo., for appellees.

Before SANBORN, JOHNSEN, and COLLET, Circuit Judges.

COLLET, Circuit Judge.

Plaintiff sought to restrain defendants' use of the trade-mark "Pro-Tek-Toe". The use of the latter mark was claimed to be an infringement of plaintiff's trademark "Pro-Tek-Tiv". The trial court dismissed plaintiff's complaint. The primary question now involved is whether the evidence supports the finding that plaintiff's trade-mark "Pro-Tek-Tiv" had not acquired a secondary meaning.

Plaintiff manufactures shoes. Its plant is located at Reading, Pennsylvania. It has sold these shoes extensively in many parts of the United States under the trademark "Pro-Tek-Tiv" since 1937. It registered its trade-mark May 7, 1940, under the Act of March 19, 1920, for leather shoes for babies, children and growing girls. Again, on November 14, 1950, upon its application dated October 14, 1949, it was granted registration of the same trade-mark on the Principal Register under the Trade-Mark Act of July 5, 1946, 15 U.S.C.A. § 1051 et seq., for men's, women's and children's shoes, made of leather, kid, fabric, and kindred materials, in Class 39, Clothing. The complaint in the present action was filed February 6, 1950.

Plaintiff has advertised its shoes extensively under the trade-mark "Pro-Tek-Tiv" from 1937 until the present time. From 1937 to date, total expenditures for such purposes have been more than $264,000.00. Its business has grown in annual sales from 32,587 pairs of shoes in 1940 to 350,904 in 1950, with a total for all of that period of 1,992,998. Its total sales volume for the entire period has been $7,972,000. All of its sales are at wholesale to retail outlets. Its method of advertising has been in newspapers and magazines, both national, in which no local dealer's name was mentioned, and local, in which particular dealers were mentioned and for which plaintiff and the local dealers shared the expense. In addition to those forms of advertising, circulars and letters were used. Plaintiff's assistant secretary and its assistant treasurer and advertising manager testified in detail concerning the extent of advertising activities, the territory covered, the nature of the advertising and the methods used in carrying on the business. Each stated the opinion that the name "Pro-Tek-Tiv" had become so well known as denoting the product of plaintiff that it had acquired a secondary meaning as such and that any name confusingly similar would be associated with the plaintiff company as denoting its product.

The defendant company was formed in October, 1947, under the name Pro-Tek-Toe Skate Stop Company, Inc., for the purpose of the manufacture and sale of a rubber shield for protecting the toe of a roller skate shoe. It named its product Pro-Tek-Toe Skate Stop. Its utility is to protect the toe of the shoe when the toe is used as a brake when skating. Its place of business was at St. Louis, Missouri, but it has recently moved to Waynesville, Missouri, approximately 135 miles from St. Louis. In 1948 defendants began the manufacture and sale of a second product, consisting of a liquid preparation for use in stretching tight shoes, which was sold under the name Pro-Tek-Toe SHU-EEZ to shoe repair shops. This item was not profitable and it was discontinued in December, 1949. Defendants used the trade names Pro-Tek-Toe, Inc., and Pro-Tek-Toe Rubber Company for a short time in their advertisements, letterheads, and labels.

Defendants' product is sold only through sporting goods stores, roller skating rinks, and shoe repair shops, and is never sold direct to consumers. The defendant company is almost completely owned by Mr. Klein, who testified that he and his father conceived the name "Pro-Tek-Toe" without knowledge of the existence of plaintiff's trade-mark. On September 19, 1949, plaintiff notified defendants to cease using the trade-mark "Pro-Tek-Toe". The notice was disregarded. On November 17, 1949, defendants applied for registration of the trade-mark "Pro-Tek-Toe" under the Act of July 5, 1946. Registration was refused. It appeared from defendants' evidence that plaintiff's shoes were not sold locally in St. Louis or the surrounding trade territory, and that defendants did not know of plaintiff's trade-mark until they received the notice to discontinue the use of "Pro-Tek-Toe". Over plaintiff's objection, defendants introduced in evidence a directory of leading trade names and trade-marks from "Thomas Register of American Manufacturers", 40th Ed., 1950, Vol. 3, containing a list of 147 trade-marks derived from the word "Protect", which showed a common and widespread use in industry of the word "Protect" and variants thereof as names for various kinds of articles and showed a practice of separating the syllables. The date of this publication was, as above indicated, 1950. There was no indication from the publication how long or how general the use of the trade-marks and trade names listed had been.

Also over plaintiff's objection, trade-mark registrations were received in evidence for the following marks and uses:

"Protector", by the International Shoe Co., St. Louis, Missouri, December 22, 1925, renewed December 22, 1945, reciting that it had been continuously used by registrant for men's shoes of leather since 1908, — under the Act of February 20, 1905;

"Protexu", by Arthur A. Williams, Holliston, Mass., August 20, 1929, renewed August 20, 1949, reciting that it had been continuously used for and applied to leather shoes for industrial workers since August, 1926, — under the Act of February 20, 1905;

"Protekshoe", by Mississippi Valley Last Company, St. Louis, Missouri, October 2, 1945, reciting that it had been used and applied to shoe trees since March 11, 1943, — under the Act of February 20, 1905;

"Shuprotek", to Fern Dell Gamble, Los Angeles, California, March 1, 1938, reciting its continuous use for and application to shoe mitts made of elastic fabric, intended for wear over shoes while driving an automobile, since July, 1936, — under the Act of March 19, 1920;

"Protek-Shu", by Marie C. Palmer, Chicago, Illinois, September 13, 1938, reciting that it had been continuously used for and applied to shoe-covers intended to be worn over shoes, since March 9, 1936, — under the Act of March 19, 1920;

"Pro-Tec", by The New Mode Infants Wear Co., Inc., of New York, June 27, 1944, reciting that it had been continuously used for and applied to baby buntings, sleeping bags, robes, and vestees, since November, 1940, — under the Act of March 19, 1920;

"The ProtexArch", by The Holters Company, of Cincinnati, Ohio, October 11, 1921, renewed October 11, 1941, reciting that it had been used by the applicant since February 15, 1921, for men's, women's, and children's shoes made of leather, fabric, and combined leather and fabric, — under the Act of February 20, 1905;

"Dr. Hall's Protective Arch", by The J. K. Orr Shoe Company, of Atlanta, Georgia, December 18, 1928, reciting its continuous use since November 1, 1927, for leather, fabric, and combined fabric and leather shoes, — under the Act of February 20, 1905.

The trial court's theory of the case is stated in a letter addressed to defendants' counsel as follows:

"I have decided to enter judgment for the defendants in the above-styled case on the ground that no secondary meaning has been established.

"Please prepare Findings of Fact, Conclusions of Law and a separate Judgment."

Findings were prepared and filed that defendants manufactured a stopping or brake appliance made of rubber, for use by roller skaters, designed for attachment to the forward part of the skate shoe and when so attached provided a guard or shield for the toe of the shoe; that it was sold under the name "Pro-Tek-Toe" through sporting goods stores, shoe repair shops and roller skating rinks; that on May 7, 1940, a certificate of Trade-Mark Registration No. 377,682 issued to plaintiff under the Trade-Mark Act of March 19, 1920, for the name "Pro-Tek-Tiv", for leather shoes for babies, children and growing girls; that on November 14, 1950, certificate of Trade-Mark Registration No. 533,473 issued to plaintiff for the name "Pro-Tek-Tiv" for men's women's, and children's shoes made of leather, kid, fabric, and kindred materials, and that "such registration was effected under the provisions of Section 2(f) of the Act of July 5, 1946"; that "The mark Pro-Tek-Tiv is the full equivalent of `protective,' and as such is merely descriptive of plaintiff's goods. The word `protect' in various forms and spellings has been used as trade marks by a large number of concerns. Thomas Register of Leading Trade Names and Trade Marks, 1950 Edition, lists one hundred forty-seven (147) instances of such use. Closely similar words are registered in the Patent Office, including the words `Protector' and `Protexu', for leather shoes"; that "The Trade-Mark Act of 1946 provides that words which are merely descriptive of the goods to which they are applied are not registrable on the Principal Register, unless such mark has become distinctive of the user's goods in commerce, or, otherwise stated, unless the mark has acquired a secondary meaning"; that "The mark Pro-Tek-Tiv has not become distinctive of plaintiff's goods in commerce, and such mark has not acquired a secondary meaning"; that "The goods on which the terms Pro-Tek-Tiv and Pro-Tek-Toe are used by the respective parties are substantially different and such goods reach the public through different retail channels. There is no evidence of confusion,...