James Heddon's Sons v. Millsite Steel & Wire Works

• Decision Date: 06 May 1942
• Docket Number: No. 8934.,8934.
• Citation: 128 F.2d 6
• Parties: JAMES HEDDON'S SONS v. MILLSITE STEEL & WIRE WORKS, Inc.
• Court: U.S. Court of Appeals — Sixth Circuit

128 F.2d 6 (1942)

JAMES HEDDON'S SONS v. MILLSITE STEEL & WIRE WORKS, Inc.

No. 8934.

Circuit Court of Appeals, Sixth Circuit.

May 6, 1942.

COPYRIGHT MATERIAL OMITTED

Ephraim Banning and Samuel W. Banning, both of Chicago, Ill. (Lloyd D. Heth and Laurence I. Wood, both of Chicago, Ill., on the brief), for appellant.

Willis Bugbee, of Detroit, Mich. (Barthel & Bugbee, Otto F. Barthel, and Julian Caplan, all of Detroit, Mich., on the brief), for appellee.

Before HAMILTON, MARTIN, and McALLISTER, Circuit Judges.

HAMILTON, Circuit Judge.

Appellant, plaintiff below, appeals from a decree dismissing its petition. The action commenced as a suit for the infringement of Jamar patent No. 1,892,892, relating to artificial fishing bait, and Wooster design patent No. 93,370, in the same art; also for infringement of registered trademark No. 154,046, "Head-On Basser" and for infringement of trademark No. 345,384, consisting of a red stripe applied to one or more edges of boxes or labels for fishing tackle, and also for unfair competition in simulating the form, appearance and marking of appellant's artificial bait, and appellant's boxes in which its products were displayed for sale.

In the course of the trial, appellant abandoned the charge of infringement of the Wooster design patent and the lower court found the Jamar patent invalid. From this portion of the decree appellant prosecuted no appeal. We are therefore concerned with the trademarks and the claim of unfair competition.

The parties to this appeal are competitors in the business of manufacturing and selling diversified items of fishing tackle and equipment. Appellee advertised and sold some of its products under the trade name "Millsite Bassor," appellant having previously duly registered in the patent office trademark 154,046, "Head-On Basser," which it had exploited. The lower court decided that the use by the appellee of the trademark "Millsite Bassor" was no infringement of the trademark "Head-On Basser."

Even if appellant has the right to the exclusive use of the trademark "Head-On Basser," when the applicable rule of law is correctly applied that one is an infringer who affixes the trademark of another to similar articles in such way that his use of it is liable to cause confusion in the trade or is calculated to mislead purchasers and induce them to buy his articles as goods of the other thus depriving the latter of the full benefit of his property, in our opinion appellee infringed no rights possessed by appellant by reason of the registration of its trademark.

Appellant's mark was arranged in composite form and as such constituted a symbol. Under such circumstances, it must be considered in its entirety, not separating the respective words from each other. Beckwith v. Commissioner of Patents, 252 U.S. 538, 546, 40 S.Ct. 414, 64 L. Ed. 705.

It is a fair inference that appellant wished to register a mark with some relation to its corporate name; therefore, the use of the word "Head-On." The word "Basser" is descriptive of the fish the bait is expected to catch and, standing alone in its ordinary signification, the word is not subject to trademark registration. Appellee used its corporate name "Millsite" in conjunction with the word "Bassor." Schneider Brewing Co. v. Century Distilling Co., 10 Cir., 107 F.2d 699; Steem-Electric Co. v. Herzfield-Phillipson Co., 7 Cir., 118 F.2d 122.

When appellee's product is placed upon the market with its unregistered trademark on it, the average purchaser exercising ordinary care to buy appellant's article would not be induced to buy appellee's under the belief it was appellant's, Cf. Armour & Co. v. Louisville Provision Company, 6 Cir., 283 F. 42; Loughran v. Quaker City Chocolate & Confectionary Co., 3 Cir., 296 F. 822; Van Camp Sea Food Company v. Westgate Sea Products Company, 9 Cir., 28 F.2d 957.

Appellant's trademark No. 354,384 was registered in the patent office April 27, 1937, and in appellant's application it was recited it had been used in its business since August, 1922. The trademark consisted of "a narrow red stripe and is applied to one or more edges of the boxes, bags or containers for the goods, or to labels affixed thereto, by printing with red ink, stitching with red thread or binding with red tape along one or more edges thereof." The lower court fond this trademark void.

The allowance of the trademark by the Patent Office furnishes a presumption it is valid, and while it is true that a registered trademark cannot be cancelled except by direct attack in the way prescribed in the statute, trademarks registered under the law (15 U.S.C.A. § 121 et seq.) are not thereby rendered valid, and their validity may be collaterally attacked in any suit where material. The sole purpose of the Congress in authorizing the registration of trademarks was to enable persons in the United States to obtain their registration in other countries pursuant to treaties. Kellogg Co. v. National Biscuit Company, 2 Cir., 71 F.2d 662, cited with approval in Armstrong Paint & Varnish Works v. Nu-Enamel Corporation, 305 U. S. 315, 323, 59 S.Ct. 191, 83 L.Ed. 195.

As to the simple question of trademark, we think the lower court was correct. The boxes and packages used by appellant for its goods were in common use and the narrow red stripe applied to such boxes and containers is not a trademark and cannot be exclusively appropriated. It is true that the most universal element may be appropriated as the specific mark of a manufacturer's goods if it is used and claimed with a sufficiently complex combination of other things as to make the combination unique. There is nothing peculiar about the trademark in question and the boxes are in the appropriate and usual form in which to package articles for fishermen. The law of trademarks has not yet gone so far as to enable a party to appropriate such form of package or fashion of label as to exclude all others from their use or from the use of anything resembling them, either separately or in combination. The alleged trademark here is a colored label which gives a distinctive external appearance to the packages containing appellant's goods and one which indicates to some of the purchasing public that it contains appellant's goods, but does not point out distinctly the origin or ownership of the articles to which the label is affixed. Color, except in connection with some definite, arbitrary symbol or in association with some characteristics which serve to distinguish the article as made or sold by a particular person is not subject to trademark monopoly. Newcomer & Lewis v. Scriven Company, 6 Cir., 168 F. 621; Samson Cordage Works v. Puritan Cordage Mills, 6 Cir., 211 F. 603, L.R.A.1915F, 1107; Smith v. Walker, 57 Mich. 456, 22 N. W. 267, 24 N.W. 830, 26 N.W. 783; Dayton v. Imperial Sales, etc., Co., 195 Mich. 397, 161 N.W. 958.

It is a fundamental rule applicable to all cases of unfair competition that one man has no right to palm off his goods for sale as the goods of a rival dealer and that he cannot therefore be allowed to use names, letters or other indicia by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another and this principle is applicable although no technical trademark is used by either.

On the issue of unlawful competition, the question of color per se and the use of a particular style of package are not always controlling. If appellee has made and sold its products so as to mislead the public, appellant is entitled to relief, regardless of the use of old or new forms of package or the style or shape of its products, and it is not so material on this issue as in a technical trademark infringement whether the appellant has the exclusive right in any one element of the dress or packing of the article, size, shape, coloring, lettering, wording or symbol, as long as the ensemble has come to be a public guaranty of origin and quality. Enoch Morgan Sons Co. v. Ward, 7 Cir., 152 F. 690, 12 L.R.A.,N.S., 729; Hemmeter Cigar Company v. Congress Cigar Company, 6 Cir., 118 F.2d 64; Good Housekeeping Shop v. Smitter, 254 Mich. 592, 236 N.W. 872.

Appellant was engaged in manufacturing a product of ancient origin. In the 15th Volume of Aelian's Natural History, Third Century, A. D., there is described how the Macedonians captured a certain spotted fish in the river Ostrocus by means of a lure composed of colored wood and feathers used in what is known in modern fishermen's nomenclature as "dapping." In both ancient and modern literature on the subject of angling, many writers say that perfection is attained in artificial bait when it is manufactured in such shape and form as to simulate some fly, small fish or subaqueous creature and with the same motion as those on which the big fish is accustomed to feed.

For many years, appellant has been engaged in the manufacture of artificial baits commonly called "plugs" used to catch game fish. The plugs are attached by a leader to a line which is wound around a reel on a casting rod, manipulated by the fisherman to cause the plug to travel through the air until it strikes the water. It is then retrieved by reeling in the line. The plug is provided with one or more hooks. Appellant followed a custom of advertising its products widely in appropriate publications and also issued annually a catalog which was distributed among retail dealers and fishermen. In its catalogs and advertisements it used numerous trademarks, names, slogans, and trade configurations.

One of its products was sold under the registered trademark "River Runt." This bait has a comparatively short and stubby body, terminating in a somewhat blunt nose at the forward end beneath which is fastened a spoon-shaped, metallic collar. The body is provided with a forward gang, depending from a point slightly behind the collar and the rear gang secured to the tail. In 1933 appellant began the manufacture of some of its...