Eagle White Lead Co. v. Pflugh

• Decision Date: 03 August 1910
• Citation: 180 F. 579
• Parties: EAGLE WHITE LEAD CO. v. PFLUGH et al.
• Court: U.S. District Court — District of New Jersey

180 F. 579

EAGLE WHITE LEAD CO. v. PFLUGH et al.

United States Circuit Court, D. New Jersey.

August 3, 1910

[Copyrighted Material Omitted]

Clifton V. Edwards and Julian S. Wooster, for defendants.

RELLSTAB District Judge.

This is a trade-mark case, and not one of unfair competition. The bills allege ownership of the trade-marks in complainant, and continuous use by it and its predecessors since 1843 adjudication in complainant's favor in a prior suit decision in its favor in an interference in the Patent Office against these defendants, acquiescence in complainant's rights therein by the public, except by the defendants, and use by them without permission of the infringing trade-marks. The answers admit the adverse decision in the Patent Office, deny infringement by the use of either of said alleged trade-marks, deny general acquiescence in complainant's alleged rights, deny that any deception has been practiced by defendants, set up anticipation, and assert that complainant's rights, if it ever had any, to an injunction or accounting, have been forfeited by laches.

The complainant was incorporated in 1867, and at that time succeeded to the business of Wood & Co. and Wood & McCoy, who had been in the white lead business since 1843. For brevity, the word 'complainant' will be used to include not only the present complainant, but its several predecessors. As early as 1854 and ever since, the complainant has manufactured and sold a pure white lead designated as 'Eagle' lead. The packages (wooden kegs and tin cans) containing this lead always bore the word 'Eagle' or a representation thereof, usually both. The complainant's place of manufacture, as well as its principal business office, was and is Cincinnati, Ohio. During its early existence, its sales were confined to that and neighboring states. No business was done by it in New York City and vicinity until after the formation of the defendant firm and the adoption by it of the alleged infringing trade-mark, and very little until about 1900. The defendants began the manufacture and sale of paints and white lead in 1889. Their place of manufacture was and is Hoboken, N.J., and their principal market is in the city of New York and vicinity. In 1890 defendants adopted as a trade-mark for their white lead (not pure, but a combination) the words 'Gold Eagle,' accompanied with the representation of an eagle, with which it branded or labeled such product, which was marketed in wooden kegs and tin cans. This trade-mark was registered on February 7, 1893, No. 22,437, and has since continually been used and advertised by defendants in the marking and sale of such product. In the course of years, the business of the complainant and the defendant increased considerably, and their products are now, and have been for some time, marketed amongst the same trade in certain places.

In a suit brought in the United States Circuit Court, Northern District of Illinois, E.D., against Monroe Heath and William F. Milligan, for infringement of the trade-marks here involved, a decree was entered under date of July 7, 1876, in which the complainant was adjudged to be the owner of the trade-mark, and the defendants therein were restrained from using the words 'Eagle,' 'American Eagle,' or 'Western Eagle,' or any words similar to, or only colorably different from, such words, or any mark, especially the figure of an eagle, as applied to white lead. In an interference in the United States Patent Office between the complainant and the defendants, No. 25,816, following application by complainant for registration of its said trade-marks, the complainant was held to be the first to adopt and use the trade-marks in issue and entitled to registration thereof over the defendants. These adjudications, while not controlling, are forceful factors on the questions of prior adoption and use by complainant of such trade-marks, the acquiescence of others in complainant's rights thereto, and the similarity of defendants' trade-mark to that of complainant.

The evidence is overwhelming that as between the parties to this suit the complainant, by at least 35 years' continuous use before the defendants' advent into the business world, had obtained the right to the trade-mark 'Eagle' in both word and representation, as applied to white lead. The several instances of the use by others of an eagle as a trade-mark to white lead are all, except in the case of Wetherill & Bro., of recent date as compared with either complainant or Wetherill & Bro., and are not evidential on the question of prior adoption and use. In the case of Wetherill & Bro., however, a serious question of priority is raised. They and the complainant have been manufacturers and vendors of white lead for many years. Both very early in their business career adopted and used the trade-mark 'Eagle,' both by word and representation, on their white lead products, the former on their first quality (pure), the latter on their second quality (combination). The exact time when each first used such trade-mark is not established. On the evidence submitted, however, giving full credit to the country order book obtained from the Wetherills, I am of the opinion that the complainant was the first to use such trade-mark. The earliest date given of the use of such mark by Wetherill & Bro. is in 1855. Complainant's witness, Edmund S. Wood, speaks of the use of such mark by complainant when he was about the age of 10 or 12 years, which, with his other testimony, fixes the time as between 1853 and 1855. The bill of complaint filed by the complainant in its suit against Heath & Milligan, hereinbefore mentioned, and which was introduced in evidence by the defendants, alleges that a representation of an eagle as a trade-mark was used by the complainant long before 1854.

While this evidence is not satisfying beyond a reasonable doubt, yet in view of the recognized difficulty in securing at this day satisfactory evidence of the condition of affairs of 55 or 60 years ago, and the voluntary abandonment by Wetherill & Bro., of its claim in such interference proceedings, and the subsequent assignment by them to complainant, without compensation, of whatever rights they had to such trade-mark, it is persuasive of the priority of use by complainant of such trade-mark, even against Wetherill & Bro. Again, it must be remembered that, in view of the satisfactorily established long continued use by the complainant and the subsequent official registration of such trade-marks, the burden of proof on the question of prior use is upon the defendants. This burden, suffice it to say, has not been met.

But it is said that the complainant's trade-mark, as used before the registration, is not the word 'Eagle' nor the picture of one alone. True, in the use of these trade-marks neither the word or representation was used alone nor in conjunction with one another only. Other printed matter always accompanied them, and this matter was not always the same. The succession of proprietorship occasioned a change of the name accompanying such trade-marks, such as the substitution of 'William Wood & Company' for 'Conkling, Wood & Company,' and 'Eagle White Lead Company' for 'William Wood & Company.' Changes in other of the printed matter occasionally took place, such as eliminating the words 'Eagle Works,' and transposing the word 'pure'; but with all such changes the one prominent and dominant feature of the brand or label was 'Eagle,' whether manifested by word or picture, and however accompanied. It was this feature that characterized this particular brand of white lead among other...