Gillette Safety Razor Co. v. Triangle Mech. Lab. Corp.

• Decision Date: 28 June 1933
• Docket Number: No. 6650.,6650.
• Parties: GILLETTE SAFETY RAZOR CO. v. TRIANGLE MECHANICAL LABORATORIES CORPORATION et al.
• Court: U.S. District Court — Eastern District of New York

4 F. Supp. 319

GILLETTE SAFETY RAZOR CO. v. TRIANGLE MECHANICAL LABORATORIES CORPORATION et al.

No. 6650.

District Court, E. D. New York.

May 4, 1933.

On Application for Settlement of Final Decree, June 1, 1933.

Settlement of Decree June 28, 1933.

COPYRIGHT MATERIAL OMITTED

Nims & Verdi, of New York City (Harry D. Nims, Wallace H. Martin, and M. L. Severn, all of New York City, of counsel), for plaintiff.

Louis Soll, of New York City (Morris Kirschstein, of New York City, of counsel), for defendant Triangle Mechanical Laboratories Corporation.

Arthur G. Solomon, of New York City, for defendant Holtz.

INCH, District Judge.

The plaintiff, a Delaware corporation, has sued the defendants alleging infringement of its United States trade-marks and of unfair competition.

The defendants are a New York corporation which, for convenience, will be hereafter referred to as the Triangle Corporation, and two citizens of the state of New York, doing business under the trade-name of "Jacob Holtz."

Answers were duly interposed by these defendants and the issues raised have been duly tried.

No question of jurisdiction has been raised, nor can there be any such question in this case. Title 28, U. S. C. § 41, 28 USCA § 41 (section 24 of the Judicial Code).

Moreover, there is really one cause of action asserted but on different grounds, one of these being the violation of registered trademarks. Hurn, etc., v. Oursler et al., 53 S. Ct. 586, 77 L. Ed. ___ (decided April 17, 1933).

The relief asked for by plaintiff in its complaint is that the defendants be enjoined: From using in their advertising and sale the term "Gillette," "Gillette Type," "Gillette Razor," "Blue Blades for Gillette Razors," "Blue Steel," or any similar term. From representing that defendants' razor blades are "Blue Blades." From manufacturing, selling, and offering for sale safety razor blades of a "blue" color or which are placed in packages colored wholly or partially "blue," or which are "blue" and use the name "Gillette." From selling or offering for sale packages and blades dressed in "blue" such as "Navy Blue Blade," "Sapphire Real Blue Steel Blade," "Goodyear Blue Blade," "Uneeda Genuine `Blue' Steel Blade." From advertising, selling, or offering for sale razor blades not of plaintiff's manufacture in combination with plaintiff's "Gillette" razor frames, without clearly indicating that the blades so sold are not made or sold by plaintiff. And, generally, from passing off, inducing or enabling others to sell or pass off, any safety razor blade or razor frame not the plaintiff's as and for the plaintiff's product.

It will be seen at a glance that while plaintiff seeks in detail the above injunctive relief, in fact that which plaintiff seeks is that the court stop the defendants from violating plaintiff's trade-marks and from unfairly competing with plaintiff in the safety razor frame and "blue" blade business in this country.

A great deal of testimony has been taken. Much of it is not disputed.

Briefly the facts are that the plaintiff at that time a Maine corporation, about thirty years ago, entered the safety razor field. This was in 1901. A year or so later its product was identified by the name "Gillette"; a few years thereafter by the additional "portrait and signature of King C. Gillette." In 1917 the plaintiff was incorporated, under the laws of the state of Delaware. It succeeded to the business.

Plaintiff is possessed of the following trade-marks duly registered in the United States Patent Office: No. 134,317, "Gillette." This was first used in 1903 but was not registered until 1920. No. 56,921, "portrait and signature of King C. Gillette," registered 1906. No. 70,856, "Gillette pierced by arrow, within a diamond," registered 1908. No. 291,052, "combination of features with `blue' color," registered 1932. No. 294,217, "a combination of features including the words `Blue Blades' with a disclaimer of the word `Blue' except in association with the word `Gillette' and with reservation of common-law rights in the word `Blue' and `Blue Color' indicated," registered May 24, 1932. This had been used since October 27, 1931.

There are other trade-marks registered elsewhere, but the above is sufficient to show both the facts of ownership and the nature of the trade-marks of plaintiff claimed to have been here infringed.

There is no proof here that the defendants or any of them used, in manufacture or sale, the trade-marks indicating the "portrait or signature of King C. Gillette" or the trademark "Gillette" in manufacturing safety razors or safety razor blades.

The controversy really arises from the use by the defendants of the words "blue blades" and the use of the "blue color" on its packages containing safety razor blades and the use of the word "Gillette" by the individual defendants in the sale thereof.

While due consideration of plaintiff's trade-marks must be given in view of its claim, the substantial issue arises from alleged unfair competition on the part of defendants.

We may now, briefly, refer to certain other facts.

The razor blades of plaintiff are the natural steel which, for convenience, may be said to be "white." Along in July, 1931, plaintiff commenced an extensive advertising campaign which announced to the United States that plaintiff's razor blades were thereafter to be of a "blue" color and in a "blue" package. This blue color was at first obtained by the application of a blue lacquer to the white steel. Thereafter plaintiff changed this process, somewhat, by first oxidizing the steel blades which in itself produced a blue color and then applied the blue lacquer. By May, 1932, plaintiff's product was so produced extensively. On May 24, 1932, as has already been shown, it obtained the registration of its trade-mark for the "Gillette Blue Blade." It disclaimed the word "blue" except in association with the word "Gillette," but it reserved its rights to be protected from unfair competition, in connection with the words "blue" and "blue color."

Over a million dollars has been spent by plaintiff in the above extensive and unique form of advertising.

It can safely be said that the evidence shows that the general public, due to this advertising, were urged to associate the razor blade of plaintiff with the term "blue blade." At the same time, so far as I can discover from a careful examination of the testimony, and the exhibits, the "blue packages" of plaintiff's razor blades and its razor blade all carried the identifying "portrait," "signature," or name of "Gillette." In other words, many customers, desiring plaintiff's product, thereafter asked for "Blue Blades," while others asked for "Gillette Blue Blades"; but nothing is shown to indicate clearly that plaintiff had so abandoned its said identification of name, etc., that every "blue blade" in the market would naturally be considered that of plaintiff's manufacture.

I find that both the words "blue" and blue color on packages, in connection with safety and other razor blades, were known to some extent previous to the adoption of same by plaintiff. The oxidation of steel, producing a blue color, was a well-known process long before. The idea, however inaccurate, that "blue" steel was better than steel has long existed.

"Secondary meaning is `association' nothing more. It exists only in the minds of those of the public who have seen or known or have heard of a brand of goods by some name or sign and have associated the two in their minds." Nims, Unfair Competition (3d Ed.) p. 105.

The test of "secondary" meaning arises in the associated product and its origin in the mind of the public and no specific length of time is required. Nevertheless such secondary meaning must be proved by a fair preponderance of evidence. Elgin National Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 21 S. Ct. 270, 45 L. Ed. 365; Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U. S. 554, 28 S. Ct. 350, 52 L. Ed. 616; Shredded Wheat Co. v. Humphrey (C. C. A.) 250 F. 960; Upjohn Co. v. Wm. S. Merrell Chemical Co. (C. C. A.) 269 F. 209.

The following is applicable to the facts of this case: "A merely descriptive term or the name of a person or place may have become associated with a particular kind of goods or the product of a particular manufacturer in such a way that merely attaching the word to an article of the same kind would amount to a misrepresentation as to the origin of the article. In such case, while the use of the word cannot be prohibited, it may be enjoined unless accompanied by such information and precautions as will unmistakably distinguish the article from the goods of the original manufacturer or vendor and will prevent deception of purchasers." DeLong Hook & Eye Co. v. Hump, etc., Co., 297 Ill. 359, 130 N. E. 765, 768.

Confining ourselves solely to the question of the right to use the term or words "blue blades" or "blue," it seems to me that plaintiff has no exclusive right to such term or word and has failed to prove by a fair preponderance of evidence such a public sanction of plaintiff's appropriation thereof as to justify a finding that the general public has thereby adopted same as the indicia of origin of all blue blades in plaintiff. Upjohn Co. v. Wm. S. Merrell, etc., Co. (C. C. A.) 269 F. 209.

On the facts of this case, therefore, I do not find, in spite of the extensive advertising, that plaintiff has succeeded in securing for itself such a "secondary" meaning of the word "blue" or "blue blade" as is now contended for by plaintiff. Accordingly, plaintiff must rely, it seems to me, for its protection on its common-law rights, the right to have unfair competitors stopped from misleading the public.

Here was an excellent razor blade, produced by a recognized manufacturer, with the widest sort of publicity, requiring the expenditure of a very large sum of money in advertising to the public its "new blue blade" and in a "blue package." It was a...