Dietene Co. v. Dietrim Co.

• Decision Date: 21 June 1954
• Docket Number: Civ. No. 87-52.
• Citation: 121 F. Supp. 785
• Parties: DIETENE CO. v. DIETRIM CO. et al.
• Court: U.S. District Court — District of Nebraska

121 F. Supp. 785

DIETENE CO. v. DIETRIM CO. et al.

Civ. No. 87-52.

United States District Court D. Nebraska, Omaha Division.

June 21, 1954.

Harold A. Prince, Grand Island, Neb., Wilkinson, Huxley, Byron & Hume (Gerrit P. Groen), Chicago, Ill., for plaintiff.

Abrahams & Kaslow (Ben E. Kaslow), Omaha, Neb., Seymour Smith, Omaha, Neb., for defendant.

DONOHOE, Chief Judge.

This action was instituted by the Dietene Company, a Minnesota Corporation, to enjoin the defendant, Vitamin Industries, a Nebraska corporation, from using the mark "Dietrim" as applied to a reducing supplement because it is confusingly similar to "Dietene", a mark which plaintiff registered under the Trade-Mark Act and also used to identify a reducing supplement. Since plaintiff charges infringement of a trade-mark registered in the United States Patent Office, this court has jurisdiction. 15 U.S.C.A. § 1121. The requisite diversity of citizenship and amount in controversy also present an appropriate basis for this court to assume jurisdiction of the cause. 28 U.S.C.A. § 1332.

The case was tried to the court without a jury, and after careful consideration of the material and competent evidence produced at the trial the court makes the following special

Findings of Fact:

Plaintiff owns United States Trade-Mark Registration No. 329,995 for "Dietene" as applied to a reducing supplement. This registration was originally obtained by plaintiff's predecessor under the Trade-Mark Act of 1905, and was subsequently republished on the Principal Register of the Trade-Mark Act of 1946, Lanham Act. 15 U.S.C.A. § 1051 et seq. Plaintiff distributes its products nationally.

Defendant uses the name "Dietrim" in connection with a reducing supplement which it distributes in areas served by the plaintiff corporation. Defendant's mark is not registered and it was not in use prior to the time plaintiff began using its mark.

Discussion

The Lanham Trade-Mark Act provides that "(n)o trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — * * *. (e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive * * * of them, * * *." 15 U.S.C.A. § 1052. This statute, which merely reflects a long standing equitable doctrine,¹ precludes the exclusive use of descriptive or generic terms as trade-marks. In Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 31 S.Ct. 456, 457, 55 L.Ed. 536, Justice McKenna points out:

"The definition of a trademark has been given by this court and the extent of its use described. It was said by the chief justice, speaking for the court, that `the term has been in use from a very early date; and, generally speaking, means a distinctive mark of authenticity, through which the products of particular manufacturers or the vendable commodities of particular merchants may be distinguished from those of others. It may consist in any symbol or in any form of words; but as its office is to point out distinctively the origin or ownership of the articles to which it is affixed, it follows that no sign or form of words can be appropriated as a valid trademark which, from the nature of the fact conveyed by its primary meaning, others may employ with equal truth, and with equal right, for the same purpose.' Elgin National Watch Co. v. Illinois Watch Co., 179 U.S. 665, 673, 21 S.Ct. 270, 45 L.Ed. 365, 378. There is no doubt, therefore, of the rule. There is something more of precision given to it in Canal Co. v. Clark, 13 Wall. 311, 323, 20 L.Ed. 581, 583, where it is said that the essence of the wrong for the violation of a trademark `consists in the sale of the goods of one manufacturer or vendor as those of another; and that it is only when this false representation is directly or indirectly made that the party who appeals to a court of equity can have relief.' A trademark, it was hence concluded, `must therefore be distinctive in its original signification, pointing to the origin of the article, or it must have become such by association.' But two qualifying rules were expressed, as follows: `No one can claim protection for the exclusive use of a trademark or tradename which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection'."

An examination of the cases discloses that the following marks have been held to be merely descriptive of the goods to which they applied: "Cube Steak" as applied to a meat tenderizing machine;² "Launderette" as applied to a washing machine;³ "3 in 1" as applied to a jig saw which also performed two other functions (sanding and filing);⁴ "Ez Flo" as applied to insecticide dusts, plant and horticultural parasiticides, agricultural crop and animal fungicides and plant hormones administered by spraying;⁵ "Fastie" as applied to a tube fastening machine used for the purpose of applying fasteners to flexible ends of tubes such as sausage casings;⁶ "Carillonic Bells" as applied to electrically operated carillons or chimes;⁷ "Mineral Meal" and "Minral Meal" as applied to hog and livestock feed;⁸ "Lanolin Plus" as applied to soap and cosmetics;⁹ the names "Storybook," "Goldilocks," "Little Bo Peep," "June Girl," "Mistress Mary," "Curly Locks," "Little Miss Muffett," "Red Riding Hood," "Little Miss Donnett" and "Story" as applied to dressed dolls portraying such fictional characters;¹⁰ "Pro-Tek-Tiv" as applied to shoes;¹¹ "Safe T Seal" as applied to envelopes;¹² "Ashless Ash Stand" in connection with the trade-mark "Smokador" as applied to ash stands;¹³ "Specs" as applied to fowl masks or blinders;¹⁴ "Thermogene" as applied to a cotton wadding so prepared as to act as a counterirritant and to reduce swellings and inflammatory conditions;¹⁵ "Dumore" as applied to electric appliances;¹⁶ "Steem Electric" as applied to electric steam irons;¹⁷ "Air Brush" as applied to an instrument designed for the distribution of pigments by means of an air blast to produce pictures;¹⁸ "No Wash Up" as applied to a preparation for use on printing rollers and lithographing plates to obviate the necessity of washing them after use;¹⁹ "Elastic Seam Drawer" as applied to drawers having a strip of elastic knitted material inserted at the seams;²⁰ the prefix "Rite" as applied to pens and pencils;²¹ "No-D-Ka" as applied to tooth paste;²² "Lusta" as applied to soap;²³ "Bufferin" as applied to aspirin;²⁴ "M.M." as applied to malted milk;²⁵ "Pep" as applied to beverage;²⁶ "NuGrape" as applied to grape drink;²⁷ "Bohemian" as applied to beer;²⁸ "Non-Stick" as applied to windows;²⁹ "Keepclean" as applied to tooth brushes;³⁰ "Ruberoid" as applied to flexible waterproof roofing;³¹ "Always Closed" as applied to a revolving door;³² "U-Bar" as applied to greenhouse construction;³³ "Dioxygen" as applied to hydrogen dioxide;³⁴ "Flora" as applied to flavorings;³⁵ "Mouse Seed" as applied to rodent exterminator;³⁶ "Spearmint" as applied to gum;³⁷ "Red Leaf" as applied to tobacco;³⁸ "Taffy Tolu" as applied to chewing gum;³⁹ "Wornova" and "Slipova" as applied to garments;⁴⁰ "Vogue Hats" as applied to hats;⁴¹ "Stud" as applied to a belt fastener;⁴² "Zero" as applied to clothing designed for winter wear;⁴³ "Fashionknit" as applied to knitted articles of clothing;⁴⁴ "Coco-Quinine" as applied to pharmaceutical preparation containing quinine colored and flavored with chocolate;⁴⁵ "Nervine" as applied to a nerve tonic;⁴⁶ "Acid Phosphate" as applied to a medicinal preparation;⁴⁷ "Cramp Cure"⁴⁸ and "Gall Cure"⁴⁹ as applied to medicine; "Med-I-Pax"⁵⁰ and "Aseptikons"⁵¹ as applied to vaginal suppositories; "Shredded Wheat,"⁵² "Toasted Corn Flakes"⁵³ and "Raisin Bran"⁵⁴ as applied to breakfast cereals; "Frostee" as applied to frozen fruits and vegetables;⁵⁵ "Graphic" as applied to cameras;⁵⁶ "Realistic" as applied to hair waving machine;⁵⁷ "Self-tapping" as applied to screws;⁵⁸ "Whirling Spray" as applied to a syringe;⁵⁹ "Copperclad" as applied to copper coated steel wire;⁶⁰ "Five Disc Cylinder" as applied to a padlock;⁶¹ "Nu-Enamel" as applied to paint;⁶² "Textul" as applied to an oil used for cleaning wool and worsteds;⁶³ "Stabrite"⁶⁴ and "Mirrolike"⁶⁵ as applied to polish; "All White"⁶⁶ and "Dyanshine"⁶⁷ as applied to shoe polishes; "Aviation"⁶⁸ and "Visualized"⁶⁹ as applied to magazines and books; "Oriental Cream" as applied to a cosmetic lotion;⁷⁰ "Lather-Kreem" as applied to shaving cream;⁷¹ "Overtone" as applied to solid dry cake of cosmetic preparation;⁷² "Speed Wagon" as applied to motor trucks;⁷³ "Flare Front" as applied to automobile lamp;⁷⁴ and "Vacuum Cups" as applied to tires.⁷⁵ In each of the seventy-four instances mentioned, the court refused to protect the trade-mark involved in the litigation because such mark was merely descriptive of the product or its qualities and functions. A close analysis of these trade-marks indicates that very few of them are more descriptive as applied to their respective products than the plaintiff's mark in this case.

"Dietene" is a combination of the root word "diet" and the suffix "ene." Etymologically speaking, the root word is of Greek origin (diaita), which finds later acceptance in chronological order in the Latin (dieta), French (diete) and English languages. Among other things, the noun "diet" denotes: "Solid or liquid food taken in regular quantities, or of a particular kind, in a course of medical treatment or in accordance with hygienic rules; a regulated order or course of eating and drinking; a prescribed or regulated regimen." Funk and Wagnall's New Standard Dictionary of the...