Dymo Industries, Inc. v. Tapeprinter, Inc.
| Decision Date | 06 January 1964 |
| Docket Number | No. 18629.,18629. |
| Citation | 326 F.2d 141 |
| Parties | DYMO INDUSTRIES, INC., Plaintiff-Appellant, v. TAPEPRINTER, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Ninth Circuit |
McCutchen, Black, Harnagel & Shea, G. Richard Doty, and Oakley C. Frost, Los Angeles, Cal., Gardner & Zimmerman, and Harris Zimmerman, Oakland, Cal., and Hoppe & Mitchell, and Carl Hoppe, San Francisco, Cal., for appellant.
Adele I. Springer, and J. Calvin Brown, Los Angeles, Cal., for appellee.
Before CHAMBERS and JERTBERG, Circuit Judges, and MURRAY, District Judge.
Appellant brought suit below charging patent infringement, registered trademark infringement and unfair competition, and immediately moved, supported by affidavits, for a preliminary injunction against the alleged trademark infringement and unfair competition pending a final determination of the case. The alleged patent infringement is not involved in the motion for preliminary injunction. Appellee filed counter affidavits, and the motion for preliminary injunction was submitted on the affidavits and exhibits attached thereto. The District Court, "finding that there is great doubt as to whether or not the plaintiff has the exclusive right to use the word `TAPEWRITER'", denied the motion, and this appeal is from that denial.1
On June 6, 1961, Registration No. 716,443 was issued to appellant by the United States Patent Office for the trademark TAPEWRITER for a hand plastic and metal tape embossing machine which it manufactured and marketed, based upon the actual adoption of said trademark and its continuous use commencing June 20, 1960. Appellant alleges that it has spent hundreds of thousands of dollars promoting and advertising said TAPEWRITER and has built up a valuable good will and property right in said trademark.
In February, 1963, appellee commenced manufacturing and marketing a hand plastic and metal tape embossing machine similar to appellant's product under the name of TapePrinter, and it is the manufacture and sale of this machine under the name of TapePrinter which appellant contends infringes its registered trademark, and against which it seeks the preliminary injunction.
The granting or withholding of a preliminary injunction rests in the sound discretion of the court. B. W. Photo Utilities v. Republic Molding Corp., 280 F.2d 806, (CA 9 — 1960). Appellant, however, urges that the District Court abused the discretion by failing to apply applicable standards of law in arriving at its finding "that there is great doubt as to whether or not the plaintiff has the exclusive right to use the word `TAPEWRITER'", and in refusing to issue the preliminary injunction.
Appellant points out that under 15 U.S.C.A. § 1057(b), a part of the Lanham Trademark Act, the registration of a trademark by the Patent Office is prima facie evidence of its validity. However, 15 U.S.C.A. § 1119, also a part of the Lanham Trademark Act, provides that in any action involving a registered mark, the court may determine the right to registration. A registered trademark may be cancelled by direct attack as prescribed by the statute, and it may also be collaterally attacked in any action where the validity of the mark is properly in issue. Sylvania Electric Products v....
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...otherwise rectify the register with respect to the registrations of any party to the action."); see also Dymo Indus., Inc. v. Tapeprinter, Inc. , 326 F.2d 141, 143 (9th Cir. 1964) ("A registered trademark may be cancelled by direct attack as prescribed by the statute, and it may also be col......
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