Dobeckmun Co. v. Boston Packaging Machinery Co.

• Decision Date: 01 May 1956
• Docket Number: Civ. A. No. 54-944.
• Citation: 139 F. Supp. 321
• Parties: The DOBECKMUN COMPANY v. BOSTON PACKAGING MACHINERY CO.
• Court: U.S. District Court — District of Massachusetts

139 F. Supp. 321

The DOBECKMUN COMPANY v. BOSTON PACKAGING MACHINERY CO.

Civ. A. No. 54-944.

United States District Court D. Massachusetts.

December 2, 1955.

As Modified on Rehearing May 1, 1956.

Charles S. Grover, Boston, Mass., Albert L. Ely, Jr., Cleveland, Ohio, for plaintiff.

James C. Henes, Boston, Mass., for defendant.

ALDRICH, District Judge.

This is a suit for an injunction¹ under the Lanham Act, 15 U.S.C.A. § 1051 et seq., and Mass.Gen.Laws (Ter.Ed.) Ch. 110, § 7A, as added by St.1947, c. 307. The plaintiff is an Ohio manufacturer of cellophane products, notably an opening tape hereinafter described. The tape is sold in interstate commerce in Massachusetts. The defendant is a local manufacturer of packaging machinery. Jurisdiction is asserted under 15 U.S.C. A. § 1121 and 28 U.S.C. §§ 1332 and 1338. I find all jurisdictional requisites.

Since 1937 the plaintiff has been manufacturing a narrow laminated cellophane tape, generically called tear tape. In 1940 it adopted the name Zip-Tape, for which it obtained a registered trademark, No. 379,629. In its application the independent use of the word tape was disclaimed. The appearance of plaintiff's product is familiar to most users of cigarettes as the red opening tape on the package. Plaintiff has no monopoly, and manufactures something less than half of this product sold throughout the country. By adopting the name Zip-Tape it has sought to identify tape manufactured by it, but once it is removed from the labelled spool on which it is marketed, it is indistinguishable from that made by others. Plaintiff claims, however, and I find for the purposes of this decision, that its tape is peculiarly well manufactured and packaged, and that this is a matter of importance.

The defendant manufactures a machine for packaging loose material, such as potato chips, in cellophane bags, called the Govatsos Zip-Corder, but known as a Zip-Corder. The machine incorporates in each package a piece of opening tear string, known as the zip-cord. Any commercial thread string can be used, and defendant does not concern itself with supplying it.

A bag closed by defendant's machine can be opened at the lips by the cord without injury to the bag. While tear tape is sometimes sold for use in packaging bags, it does not have this advantage. Plaintiff's product is appropriate for bags that are discarded, or at least no longer fully used as a bag, as soon as opened; defendant's product is for bags given further whole use. On the other hand, a tear cord is not at all practical on a rectangular solid such as a cigarette package. Packaging machinery adapted for tape cannot be used with a cord, and defendant's machine cannot use tape.

I find there is no confusion, or likelihood of any confusion, in the minds of customers or prospective customers as to the source of either plaintiff's tape or defendant's machine. In particular I do not believe anyone is likely to purchase defendant's machine thinking it had the same origin as plaintiff's tape. There is no direct competition between plaintiff and defendant. To the extent that there is any competition it is between defendant and the manufacturers of packaging machines that use plaintiff's tape, which would, of course, have an indirect effect on plaintiff. Even apart from the relatively small amount of business done by defendant I find this competition negligible. And, as stated, it does not involve passing off. I do not find the defendant guilty of bad faith.

The first question is whether plaintiff's registered trademark is valid. Defendant says it is not because the term Zip is generic and purely descriptive. While zip is a common word I do not find it has any definite isolated meaning. It is highly suggestive, but that is not enough. Q-Tips, Inc., v. Johnson & Johnson, 3 Cir., 206 F.2d 144, certiorari denied 346 U.S. 867, 74 S.Ct. 106, 98 L. Ed. 377; W. G. Reardon Laboratories v. B. & B. Exterminators, 4 Cir., 71 F.2d 515; cf. Charles of the Ritz v. Elizabeth Arden Sales Corp., 161 F.2d 234, 34 C.C. P.A., Patents, 1029. (See also note 2, infra). I hold the registered trademark valid. However, I hold it not infringed. The word zip is too common a word for the plaintiff to be able to appropriate it to an unnecessary extent. One can never be sure of the limits of judicial notice, but at least since the World War I song, "Good Morning, Mr. Zip, Zip, Zip," I think zip has been commonly known as connoting movement, speed and dash. The zipper; Zippo, the snap-opening cigarette lighter; even Zip, the depilatory, are or were well-known examples of such application to merchandise. Others were mentioned in the testimony.² A pertinent example of current use is a nationally advertised washing powder, Tide, which boasts a "zip-opening" package.

In the light of the facts hereinbefore found, and those hereafter found to the extent material, I hold that plaintiff cannot pre-empt the word zip altogether from other uses, and that apart from the possible question of dilution defendant's use falls within permissible bounds. Benrose Fabrics Corp. v. Rosenstein, 7 Cir., 183 F.2d 355; Brown & Bigelow v. Eugene Dietzgen Co., C.C.P.A., 203 F.2d 764, 40 C.C.P.A., Patents, 901; Perfection Co. v. Coe, D.C.D.C., 64 F.Supp. 942.

The matter of dilution requires further findings. Although plaintiff has from time to time advertised in national magazines of general circulation, I find that so far as the general public is concerned plaintiff's purpose was merely to create a demand for tear tape. The public at large has little, if any, knowledge of the name Zip-Tape. Plaintiff's primary object in this advertising was to foster public demand for tear-tape-opening packages as such, thereby inducing extensions in their use, with resultant benefits to plaintiff as a supplier of 45-50% of the market.³ Plaintiff also advertises in trade magazines. The persons among whom its name is known are the manufacturers and users of packaging machines. So far as the manufacturers are concerned, except as a matter of friendly relations, plaintiff's trademark is of no particular significance. The manufacturers neither buy nor supply tape, and the tape attachments which they furnish for their machines are adapted for tear tape generally and not specifically for the plaintiff's.

Nor is it clear how much importance the users of packaging machinery attach to plaintiff's name. I am content to assume that plaintiff's trademark is known in the trade, but I find that it is principally known only by plaintiff's customers,⁴ who became and remain such by virtue of their knowledge of plaintiff's reputation and not as a result of the mark. I believe even they have no great interest in the mark, but use it as a simple convenience, or out of courtesy to ...