Feathercombs, Inc. v. Solo Products Corporation

• Citation: 306 F.2d 251
• Decision Date: 13 July 1962
• Docket Number: Docket 27534.,No. 378,378
• Parties: FEATHERCOMBS, INC., Plaintiff-Appellee-Cross-Appellant, v. SOLO PRODUCTS CORPORATION, Defendant-Appellant-Cross-Appellee. SOLO PRODUCTS CORPORATION, Plaintiff-Appellant, v. FEATHERCOMBS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

306 F.2d 251 (1962)

FEATHERCOMBS, INC., Plaintiff-Appellee-Cross-Appellant, v. SOLO PRODUCTS CORPORATION, Defendant-Appellant-Cross-Appellee.

SOLO PRODUCTS CORPORATION, Plaintiff-Appellant, v. FEATHERCOMBS, INC., Defendant-Appellee.

No. 378, Docket 27534.

United States Court of Appeals Second Circuit.

Argued June 12, 1962.

Decided July 13, 1962.

John B. Cuningham, Gerald W. Griffin, New York City (Cooper, Dunham, Dearborn & Henninger, Gerald W. Griffin and R. Bradlee Boal, New York City, of counsel), for Feathercombs, Inc.

Floyd H. Crews, New York City (Darby & Darby, Howard C. Miskin, New York City, of counsel), for Solo Products Corp.

Before FRIENDLY, KAUFMAN and HAYS, Circuit Judges.

KAUFMAN, Circuit Judge.

This case comes before us on cross-appeals from a judgment involving issues of patent validity, trademark infringement, and unfair competition. In the first of two consolidated actions brought in the District Court, Feathercombs, Inc. (hereafter referred to as Feathercombs), sued Solo Products Corporation (hereafter referred to as Solo), a competitor in the field of ladies' hair appliances, more particularly ladies' hair-retaining combs, for (a) infringement of its patent on a flexible, expandable comb, (b) infringement of its registered mark "Feathercombs," and (c) for unfair competition arising from the advertising and marketing of Solo's similar product, the Solo "Featherlight" comb. Solo counter-claimed for infringement of its own registered trademark "Featherlight," and in a second action sued Feathercombs for infringement of its patent on a flexible, hair-retaining comb — a patent which, concededly was procured before the Feathercombs patent considered in the first case. It was held in the court below that the patents owned by both parties were invalid because they had been anticipated by the prior art. But the court found that Solo was liable for trademark infringement and unfair competition; and, as a result, the "Featherlight" registration was cancelled, Solo was enjoined from continuing certain deceptive packaging and display techniques, and Solo was also held liable for damages and profits which would be determined by a special master on an accounting.

I.

As we have already noted, the parties before us are competitively engaged in the manufacture and marketing of comblike devices for the retention of women's hair. These devices are capable of unusual pliability because of gripping metal or wire teeth which are joined one to the next rather than all to a rigid bar or wire top. Because of this, the combs may be used to retain the hair in any number of styles while remaining invisible to the eye. Although difficult to describe in words, the devices resemble a series of inverted hairpins connected to one another, the bottom of each pin being pinched together for insertion into the hair, and the top being an arch leading into the next identical member. The arch between each member creates a spring-tensioned connection, so that the entire "comb" may be expanded or contracted, and variously shaped.

Feathercombs lays claim to this device under a patent granted in 1954 to its president, Roy A. Smith. The court below held the Smith patent invalid because is was anticipated by earlier patented hair-retaining devices, especially the Sawyer patent (1928), the Coakley patent (England, 1936), and the Weeks patent (1951) — the Weeks patent being the one on which Solo relies in advancing its own claim for patent infringement. The Sawyer and Coakley patents, described fully in the opinion of the court below, resulted in devices which were somewhat hampered in flexibility because the teeth were inserted into or themselves shaped into a fairly rigid backing. However, we need not pass on the question whether the Sawyer and Coakley patents anticipated Feathercombs' (Smith) patent, because we agree with the court below that Solo's (Weeks) patent, which broke away from the rigid-backing comb, teaches a flexible device capable of relatively free expansion and shaping of the feminine coiffure. And the differences between the Feathercombs and the earlier Weeks patent are not so great that they would not "have been obvious at the time the invention was made to a person having ordinary skill" in the haircomb art. 35 U.S.C. § 103.

The court below also found that the Weeks patent, applied for in 1948, issued in 1951, and purchased by Solo in 1958 (after Feathercombs had commenced its action for patent infringement), was invalid for anticipation and lack of novelty. The comb referred to by the Weeks patent is made of plastic, or other flexible material, and consists of a series of serpentine portions, a device capable of relatively full expansion and contraction. Judge Metzner held that the Weeks patent taught little that could not be derived from the earlier Sawyer and Coakley patents. Here too, we need not make a determination for it is clear that the Weeks patent was anticipated by an even earlier patent issued in 1894 to one Nathan Rheinberg. The Rheinberg comb was formed of a wire bent in zigzag form so as to make a series of rows of teeth. Unlike the Sawyer and Coakley hair-retainers, it was without any spine and was obviously expandable; hence Weeks' innovations in the haircomb art lack the novelty requisite to patent.¹ We therefore affirm the judgment of the lower court in finding both the Smith and Weeks patents invalid.

II.

Solo has long been known as a manufacturer of various hair accessories for women, such as combs, curlers and hairnets. In advertising and marketing its products Solo often inserted a short descriptive or suggestive word between its trademark "Solo" and the noun identifying the product. "Solo Grip-Tite-Tuck Combs," "Solo Sleep Easy Curlers," and "Solo Comfy Curlers" are examples. These terse and contrived adjectives were not used in any trademark sense, but were merely words descriptive of the particular qualities of the hair product. From 1938 to 1957, Solo used the term "Featherlight" in conjunction with its hair roller. The court below found, and properly so, that this word too was merely used to describe the qualities of Solo's hair roller, and was not used in a trademark sense. That is, the word "Featherlight" was not meant to convey to the public the fact that the product was manufactured by a particular company and was not indicative of source. A mere examination of Solo's advertising in the period between 1938 and 1957 bolsters this conclusion, for the words "Solo" in block letters was given great prominence in the display of the hair roller, while the word "Featherlight" was depicted in much smaller block lettering.

Feathercombs came upon the scene in 1953, when it began to merchandise its expandable hair retaining comb under the trademark "Feathercombs" appearing in black script on white display cards. This mark was granted registration in the principal register for distinctive marks on January 1, 1957. From the date of its entry upon the market, Feathercombs' expandable comb, as well as its trademark, were given wide publicity in unsolicited articles and editorials in newspapers and in popular and fashion magazines. In 1957, more than four years after Feathercombs first met with success in the hair-retaining art, Solo marketed an almost identical comb, denoting it the "Featherlight Comb." The word "Solo" which was generally prefixed to the name of that company's hair products, was conspicuously absent from its usual position in the display material presenting the comb to the public. The words "Featherlight Combs" appeared at the top of the card upon which the comb was affixed, and the word "Solo" appeared in an oval at the bottom corner of the card. Also absent from the card was Solo's familiar red and yellow background; like Feathercombs' display card, Solo's was white. In 1958, Solo applied for but was denied registration in the principal register for the term "Featherlight." The word was subsequently (March 10, 1959) granted registration in the supplemental register, which is reserved for marks that are merely descriptive. The registration of "Featherlight" was granted for "Hair Rollers and Combs."

Solo admits² that the terms "Feathercombs" and "Featherlight" are likely to cause confusion among ordinary purchasers of the parties' hair appliances. The court below found that such confusion was in fact created because of the similarity of trademarks, marketing practices and the advertising and display materials. We are therefore confronted with the problem of which, if either, of the parties before the court is entitled to the free use of its trademark and to an injunction against the infringing trademark use of the other.

We agree with the court below that Solo has infringed the trademark "Feathercombs" by its post-1957 use of the word "Featherlight" in merchandising its expandable comb. Solo contends that its use of the word "Featherlight" before 1953, when Feathercombs first marketed its comb, was not merely descriptive but was a valid trademark which indicated the source of the product. It is elementary that in order to acquire a right to the exclusive use of a mark, it must be such as to identify the origin of a product or service and to distinguish one product or service from another. Vandenburgh, Trademark Law and Procedure 1 (1959). In contending that the word "Featherlight" did (before 1953) connote the source of the hair product on which it was used, Solo refers to Charles of the Ritz, Inc. v. Elizabeth Arden Sales Corp., 161 F.2d 234, (34 C.C.P.A. 1029, 1947) where the registered mark "Feather-Light" was held to be a valid trademark for face cream, and the court refused to cancel it as "merely descriptive." The case fails to support Solo's contention. It highlights the essential distinction that must be made between marks that are suggestive and those that are "merely descriptive." The former are good trademarks. Vandenburgh, op. cit. supra, § 4.30, at...