Jessar Mfg. Corp. v. Berlin

• Decision Date: 06 January 1955
• Citation: 104 U.S.P.Q. 92,380 Pa. 453,110 A.2d 396
• Parties: JESSAR MANUFACTURING CORPORATION v. Irving BERLIN and Dennis Berlin, Individually and as Co-Partners, Trading as Dennis Mitchell Industries, Appellants.
• Court: Pennsylvania Supreme Court

110 A.2d 396

380 Pa. 453, 104 U.S.P.Q. 92

JESSAR MANUFACTURING CORPORATION v. Irving BERLIN and Dennis Berlin, Individually and as Co-Partners, Trading as Dennis Mitchell Industries, Appellants.

Supreme Court of Pennsylvania.

January 6, 1955

Plaintiff, which had manufactured and sold baby automobile seats, which had a horse's head on the front and reigns for child to hold, brought action against defendants, which had copied the product and had marketed it under their own name, to enjoin defendants from doing so. The Court of Common Pleas, No. 5 of the County of Philadelphia, as of March term 1954, No. 10248, in Equity, Alessandroni, J., entered an order making absolute plaintiff's rules for preliminary injunction, and defendant appealed. The Supreme Court, at No 308, January term, 1954, Bell, J., held that where plaintiff had not patented the product, and the product had not acquired a special or secondary meaning, plaintiff was not entitled to enjoin defendant from copying the product.

Order reversed, preliminary injunction dissolved, and complaint dismissed.

Where plaintiff manufactured and sold baby automobile seats, which had a horse's head on the front and reins for child to hold, without patenting the product, and the product did not acquire a special or secondary meaning, and defendants copied the product and marketed it under their own name, which was in no way similar to plaintiff's name, plaintiff was not entitled to a preliminary injunction restraining defendants from manufacturing and selling the product, on ground that defendants' actions amounted to unfair competition.

Harry Langsam, Simon Shapiro, Philadelphia, for appellants.

Sylvan M. Cohen, Louis Samuel Fine, Cohen & Cohen, Philadelphia, for appellee.

Before STERN C. J., and STEARNE, JONES, BELL, CHIDSEY, MUSMANNO, and ARNOLD, JJ.

BELL Justice.

Plaintiff sought and obtained a decree in equity restraining defendants from manufacturing and selling baby auto seats which had a horse's head on the front and reins for the child to hold.

Plaintiff is a manufacturer of baby auto seats and other toys. Early in 1954 it brought out and marketed the above-described baby auto seats. Defendants copied this product and marketed it under their own name, which was in no way similar to plaintiff's name, claiming they had a legal right to do so, since plaintiff's invention was not patented and had not acquired a special or secondary meaning. The Chancellor found that defendants' actions amounted to unfair competition and issued a preliminary injunction.

At first blush it seems shocking that any person can copy or imitate an article made, manufactured or sold by another. However, on analysis it is clear that copying the ideas and unpatented commercial articles of others has contributed tremendously to the progress and prosperity of the United States and is in the best interest of the vast majority of the people, since it restricts monopoly and enables the people to purchase useful or necessary articles at low competitive prices. Moreover, the manufacturer of an article of general use, or the inventor of a trade-mark or a trade name is not without protection. He can have his article, trade-mark or trade name patented or copyrighted, in which event he will be protected against infringement; furthermore, he can and will be protected if his article, trade-mark or trade name has acquired a so-called special or secondary meaning.

In this case plaintiff points out that defendants could have used a lion's head or a zebra's head or a donkey's head or any other animal's head instead of a horse's head. Why, may we ask, should plaintiff have the sole and exclusive right to the use of a horse's head or to the use of a baby seat or to the use of a combination of both of these articles which are of such general usage that-unless they are patented or have acquired a secondary meaning- they rightfully belong to the general public.

The general principles dealing with trade names and trade-marks have recently been considered by this Court in Peters v. Machikas, 378 Pa. 52, 105 A.2d 708; Kool-Vent Metal Awning Corp. v. Price, 368 Pa. 528, 84 A.2d 296; and in Goebel Brewing Co. v. Esslingers, Inc., 373 Pa. 334, 95 A.2d 523.

In Peters v. Machikas, 378 Pa. 52, 105 A.2d 708, supra, upon a complaint by plaintiff trading under the fictitious name of Majestic Restaurant we reversed the Chancellor and enjoined defendants from using the trade name of Majestic Grill. The Court in its opinion said, 378 Pa. at page 58, 105 A.2d at page 712:‘ In Kool-Vent Metal Awning Corp. v. Price, 368 Pa. 528, at pages 532, 533, 534, 84 A.2d 296, 298, this Court held that the trade mark ‘ Kool-Vent’ was not infringed by the use of the name ‘ Cool-Ray’, and said: ‘ The law in this class of cases is well established; its application to different facts and circumstances is sometimes difficult. Descriptive, geographical and generic words, as well as words of common or general usage belong to the public and are not capable of exclusive appropriation by anyone. This general principle is subject to the limitation or exception that if a trade-name or trade-mark or other word or words have acquired, in the trade and in the minds of the purchasing public, a special or so-called secondary meaning, i. e., have come to mean that the article is the product of a certain manufacturer ^[1] or of a particular individual or corporation, such trade-name or trade-mark or word or words will be protected against infringement. Quaker State Oil Refining Co. v. Steinberg, 325 Pa. 273, 189 A. 473; Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73; Thomson-Porcelite Co. v. Harad, 356 Pa. 121, 51 A.2d 605; Stroehmann Brothers Co. v. Manbeck Baking Co., 331 Pa. 96, 200 A. 97. * * * an actual intent to deceive is not indispensable. American Clay Mfg. Co. v. American Clay Mfg. Co., 198 Pa. 189, 47 A. 936.All that is necessary is that the court shall find from the evidence that the name or mark or label, or the conduct and practices of the defendant actually confused and deceived or that it is reasonably likely that the average purchaser will be deceived ; possibility that purchasers will be misled is not enough. Stroehmann Brothers Co. v. Manbeck Baking Co., 331 Pa. 96, 98, 200 A. 97; Thomson-Porcelite Co. v. Harad, 356 Pa. 121, 51 A.2d 605; Quaker State Oil Refining Co. v. Steinberg, 325 Pa. 273, 189 A. 473.’ * * *'

Scranton Stove Works v. Clark, 255 Pa. 23, 99 A. 170, is on its facts on all fours with and governs the instant case. The Court said, 255 Pa. at page 32, 99 A. at page 173:‘ The remainder of the decree restraining defendants from selling * * * parts not made by plaintiff, whether they have or have not on them marks used by plaintiffs, without informing the purchaser they are not of plaintiff's manufacture, unnecessarily restricts defendants in the legitimate conduct of their business. There is no question of violation of patent rights involved in this case. Consequently it is not unlawful for defendants to imitate, and manufacture and sell as their own, an article manufactured by plaintiff .^[1] * * * So long therefore as defendants manufacture and sell the plain castings without marks, except their own, and without attempting to dispose of the article as a part manufactured by plaintiff, the later has no cause to complain.’

In Putnam Nail Co. v. Dulaney, 140 Pa. 205, 21 A. 391,11 L.R.A. 524, a demurrer to a bill in equity which alleged unfair competition was sustained. This case is likewise analogous to and governs the instant case. The Court said, 140 Pa. at pages 212-213, 21 A. 391:

‘ * * * There is no trade-mark shown nor alleged which it is charged the defendant has pirated. On the contrary, the bill alleges that the plaintiff manufactures a peculiar kind of horse-shoe nail. It is known to the trade as a bronzed nail, being covered with a coating of bronze. It is not alleged they are any better for being bronzed, but they are more popular, and sell more readily. The bill charges that the defendant is selling a precisely similar nail ; that it is bronzed like those of plaintiff's, to deceive purchasers, and induce them to purchase them as plaintiff's nails. * * *

‘ We have never yet carried the doctrine of trade-marks to the extent claimed for it by the plaintiff. He have never hesitated to restrain the imitation of a trade-mark, when the facts justified it. We are now asked to go one step further, and protect the manufacture of the article itself. This we do not see our way clear to do. The manufacture of a particular article can only be protected by a patent [or where the article has acquired a secondary meaning]. The law in regard to trade-marks should not be pushed to the extent of interfering with manufactures. A man may make any article he pleases that is not protected by a patent . He may make a horseshoe nail or any other unpatented article precisely like that of any other manufacturer. He may imitate it so perfectly that the one may be mistaken for the other, but he may not sell his own article as and for that of another, * * *.’

Quaker State Oil Refining Co. v. Steinberg, 325 Pa. 273, 189 A. 473, is likewise analogous in principle. In that case, this Court refused to enjoin, at the complaint of the Quaker State Oil Refining Company, the use of a trade name ‘ Quaker City’ by the defendant, Quaker City Oil Refining Company, notwithstanding the fact that the plaintiff had over 70,000 dealers handling its oil and its annual sales exceeded ten million gallons and that it had been engaged in extensive advertisement of its trade name ‘ Quaker State’ for many years. The Court said, 325 Pa. at page 276, 189 A. at page 474:

" * * * the word Quaker [State] is a descriptive term

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