Folmer Graflex Corporation v. Graphic Photo Service, 972 Civ. A.

Decision Date19 June 1942
Docket NumberNo. 972 Civ. A.,972 Civ. A.
Citation44 F. Supp. 429
PartiesFOLMER GRAFLEX CORPORATION v. GRAPHIC PHOTO SERVICE et al.
CourtU.S. District Court — District of Massachusetts

Irving U. Townsend, I. U. Townsend, Jr., and Emery, Booth, Townsend, Miller & Weidner, all of Boston, Mass., for plaintiff.

Worth Rowley, of Boston, Mass., for defendants.

FORD, District Judge.

The plaintiff brings this action for trademark infringement and unfair competition. Injunctive relief only is sought — an accounting for damages and profits being waived — to restrain the defendants from violating the rights of the plaintiff in the trade-mark "Graphic" registered in the United States Patent Office on December 4, 1906 by Folmer & Schwing Company, of Rochester, New York, a predecessor of the plaintiff, under the provisions of the Federal Trade-mark Act of February 20, 1905, c. 592, Sections 1-30, 33 Stat. 724-731, 15 U.S.C.A. § 81 et seq., hereinafter referred to as the 1905 Act.

The defendants deny both the validity of the trade-mark and any infringement thereof.

The plaintiff is a Delaware corporation having its place of business at Rochester, New York, and the defendants are individuals engaged in business since March 15, 1939, at Gardner, Massachusetts, where they conduct a camera shop and sell photographic merchandise.

It was shown at the trial that the plaintiff, as a separate corporation, is, and has been, since 1926, engaged in the manufacture and sale of cameras, accessories therefor, apparatus for making contact prints with enlargements, and many and other allied products of a photographic nature. One extensive line of the plaintiff's products is manufactured and marketed under the name of "Graflex". In addition to this line, the plaintiff and its predecessors, the Folmer & Schwing Company and the Eastman Kodak Company, have continuously, since July, 1896, manufactured and marketed a list of products bearing the name "Graphic". The word "Graphic" is used on most of its products and appears on practically all of them in combination with other terms. It manufactures and sells "Speed Graphic" cameras, the "No. O Graphic" camera, the "R B Cycle Graphic", "Graphic Rapid Rectilinear" camera, "Stereoscopic Graphic", etc., and accessories such as "Graphic Press Plate Holders", "Graphic Press Film Holders", "Graphic Sight Finders", "Graphic Lens Shades", etc. Since 1918, or earlier, only "Speed Graphic" cameras have been sold in Massachusetts within a price range of $120-$200. All of the plaintiff's cameras are sold at wholesale to dealers and its one jobber, Eastman Kodak Company. It manufactures no photographic film, printing paper, or chemicals.

As stated above, on December 14, 1906, the Folmer & Schwing Company, plaintiff's predecessor, registered "Graphic" (No. 57,887) in the Patent Office as a trade-mark for photographic cameras. This registration was renewed December 4, 1926. It stated in its application that "Graphic" had been used as a trade-mark continuously in its business for almost ten years and "* * * The class of merchandise to which the trade-mark is appropriated is Class 63, Measuring and scientific apparatus, appliances and instruments, and the particular description of goods comprised in said class upon which said trademark is used is photographic cameras".

The plaintiff's products are distributed throughout the United States, including Massachusetts, by something like 2,800 authorized dealers, 4% of whom are in Massachusetts. Eighty of these dealers are within a fifty-mile radius of Gardner, Massachusetts, where the defendants' business is located; fifteen or sixteen are within a twenty-five mile radius; there is one in Gardner and three in cities within a radius of twelve or sixteen miles of Gardner. These dealers have sold principally the products of the plaintiff, the "Speed Graphic" camera among them, and a great many accessory items, some of which have been mentioned above. In addition to these regular dealers, the Eastman Kodak Company has jobbed the plaintiff's line since the plaintiff became a separate and distinct corporation in 1926.

Extensive national advertising has built up for the plaintiff a very substantial good will and a high reputation for its products. "Graflex", a well-known trade-mark of the plaintiff, and "Graphic" products are known in the camera trade for their precision, quality, and satisfactory craftsmanship.

The defendants established their business in Gardner, Massachusetts, in March, 1939, and since that time have carried on a comparatively small business. They were then and are now small dealers for products of the Agfa Ansco Corporation, Defender Photo Supply Company, and American Photographic Supply Company. The City of Gardner has about 20,000 inhabitants. In 1939, total sales of cameras by the defendants amounted to $454 out of a gross for sales and service of $2,663. Sales outside of cameras consisted of film, chemicals, photo papers, and services, such as, photo-finishing, with some newspaper and commercial work. In the year 1939, one camera, a "Rolliflex", was sold by the defendants for $115 out of which they made a profit of $5. This sale was reasonably in the range of prices for which the plaintiff's dealers sold its cameras. During the same year the defendants sold one "Speed Graphic" camera, a product of the plaintiff. The average price of the other cameras sold by the defendants in 1939 and 1940 up to the date of the present complaint was in a range from $3 to $5, with a few at $5 to $7, and one for $7.95. Most of these were the "Agfa". In 1940, the total sales of cameras amounted to $107.09 out of a total business of $4,532.31. The other items, outside of cameras, that made up this gross income were news and commercial photography, photo-finishing, sale of film, chemicals and papers. No camera in the price range of the plaintiff's products was sold during that year. It can easily be seen that the defendants' business in cameras was small.

The defendants, on August 10, 1939, filed a business certificate with the city clerk of Gardner giving notice that they were doing business under the firm name and style of "Graphic Photo Service". At a previous place of business in Gardner and at their present location, the defendants maintained on their windows, one small three-inch green Neon sign bearing the name "Graphic Photo Service", the three words placed over one another. Another sign carried the same wording with "Graphic" above and "Photo Service" below. Other than on these signs, letterheads, stationery, and labels, no other evidence was introduced showing the defendants' use of "Graphic Photo Service".

On March 8, 1940, the defendants, notified by letter to discontinue the use of the word "Graphic", refused to do so.

The first issue involved is whether the plaintiff is the owner of "Graphic" as a technical of common-law trade-mark, properly registerable as such under the provisions of the 1905 Act. The plaintiff says the word "Graphic" is a common-law trade-mark in that it has been used to indicate origin and ownership; that it is fanciful, arbitrary, and meaningless as applied to cameras; that it was not even suggestive with respect to cameras until it was registered. The defendants claim it is descriptive. It needs no long citation of authorities to establish the proposition that a mark which is descriptive is not a good trade-mark at common law. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 44 S.Ct. 615, 68 L.Ed. 1161; Amoskeag Manufacturing Co. v. D. Trainer & Sons et al., 101 U.S. 51, 25 L.Ed. 993. The difficulty in this type of case is to draw the line between different classes of words. Many of the cases are close. This case is no exception.

A trade-mark is adopted to designate and distinguish the particular goods owned and sold by a merchant or manufacturer, or, in other words, to indicate origin and ownership. Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365. A descriptive word used in its primary sense does not do this and a manufacturer has no right to the exclusive use of any such word which has no relation to the origin and ownership of goods. Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581. A word descriptive of the goods, or some feature or function of them, is not available as a trade-mark. Nims, 3d Ed., Unfair Competition and Trade-Marks, c. XIV, Section 201. "A designation cannot be a trade-mark for goods if it is likely to be regarded by prospective purchasers as a common name or generic name for such goods or as descriptive of them or of their ingredients, quality, properties, functions or uses". Restatement, Torts, Section 721; Warner & Co. v. E. Lilly & Co., supra.

The law in Massachusetts, which is the law applicable to the substantive rights of the plaintiff in its claimed trade-mark (Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487), is the same as disclosed in the federal cases cited above. See C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100, 102 N.E. 87, Ann.Cas.1914C, 926, and the leading case of Gilman v. Hunnewell, 122 Mass. 139, 148. For this reason there is no need to distinguish between Massachusetts and Federal law.

The fact that "Graphic" was registered under the 1905 Act confers on the plaintiff no new substantive rights with respect to it and although registration under the Act is prima facie evidence of the validity, it is not conclusive.

Is "Graphic" as applied to cameras distinctive or descriptive? I think the latter. It was and is, as stated in the application, used on photographic cameras, instruments, or devices that write (graphic) vividly images or pictures on sensitized papers. This seems to describe the use to which the camera is put. Taking the meaning that an ordinary camera purchaser would apply to "Graphic", i.e., well delineated, clearly written, or drawn (Cf. Webster's New International...

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    ...only federal precedents in its opinion. State law was held applicable in (a) of the sixth category in Folmer Graflex Corporation v. Graphic Photo Service, D.C., 44 F.Supp. 429, 433-434, and in (c) of the sixth category in the Pecheur case, the Graflex case, and Socony-Vacuum Oil Co. v. Rose......
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