Judson Dunaway Corporation v. Hygienic Products Co.

• Decision Date: 15 December 1949
• Docket Number: No. 4440,4441.,4440
• Citation: 178 F.2d 461
• Parties: JUDSON DUNAWAY CORPORATION v. HYGIENIC PRODUCTS CO. HYGIENIC PRODUCTS CO. v. JUDSON DUNAWAY CORPORATION.
• Court: U.S. Court of Appeals — First Circuit

178 F.2d 461 (1949)

JUDSON DUNAWAY CORPORATION v. HYGIENIC PRODUCTS CO.

HYGIENIC PRODUCTS CO. v. JUDSON DUNAWAY CORPORATION.

Nos. 4440, 4441.

United States Court of Appeals First Circuit.

December 15, 1949.

John P. Carleton, Manchester, New Hampshire, (Manvel Whittemore, New York City, McLane, Davis, Carleton & Graf, Manchester, New Hampshire, and Emery, Varney, Whittemore & Dix, New York City, with him on brief) for Judson Dunaway Corporation, defendant.

Irving H. Soden, Concord, New Hampshire, (Frank J. Sulloway, Concord, New Hampshire, Harry Frease and Joseph Frease, Canton, Ohio, Sulloway, Piper, Jones, Hollis & Godfrey, Concord, New Hampshire, and Frease & Bishop, Canton, Ohio, with him on brief) for The Hygienic Products Company, plaintiff.

Before MAGRUDER, Chief Judge, WOODBURY, Circuit Judge, and CLIFFORD, District Judge.

WOODBURY, Circuit Judge.

These are cross appeals from a final judgment entered by the United States District Court for the District of New Hampshire in a suit for trade-mark infringement and unfair competition. Federal jurisdiction over both causes of action under 28 U.S.C.A. § 1338(a) and (b) and under its predecessor statute and the rule of Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148, is clear. Moreover the facts necessary to establish federal jurisdiction on the ground of diversity of citizenship and amount in controversy are conceded. Our jurisdiction over these appeals under 28 U.S.C.A. § 1291 is obvious.

The Hygienic Products Company, an Ohio corporation, is the manufacturer of a powder, the last patent for which expired in 1932, for cleaning watercloset bowls and automobile radiators by chemical action. It began to use the name "Sani-Flush" for its product in 1911, and it has used that name ever since. And, at the same time, it began to use as a trade mark a representation against a plain background of a young woman with an expression of pleasure on her face bending gracefully from the waist in the act of pouring the contents of an approximately pint sized can held in her outstretched hand into an open watercloset bowl. During the years from 1916 to 1940 it obtained several registrations of its mark under the Trade Mark Act of 1905, as amended, some with and some without its trade name printed in extrabold italics, each successive registration showing the woman dressed in the style current at the date thereof and a watercloset bowl of contemporaneous design, but otherwise substantially similar to the original registration, with the exception that the women in the earlier registrations were shown dressed as housemaids, whereas in the last two the woman is depicted as a rather dignified and matronly housewife. Over the past thirty-eight years it has made extensive use of its name "Sani-Flush" and of its representation in the form current at the time of use, in connection with the sale of its product in local, interstate and foreign commerce. Its business prospered from the beginning and is now substantial.

It has always marketed its product in a 22 ounce cylindrical can of conventional proportions bearing a predominantly yellow label upon which its trade name and its trade mark in the current form are prominently displayed, and upon which, in addition to directions for the use of the product, appear the laudatory slogans "Quick", "Easy", "Sanitary", "Cleans without fuss or muss." In its advertising, which has been nationwide, it has made extensive use of its trade name and its trade mark, and it has also made extensive use of the representation of attractive young women in fashionable dress in a bathroom setting pouring the contents of one of its cans into an open watercloset bowl.

The defendant, Judson Dunaway Corporation, a New Hampshire corporation, is a comparative newcomer in the field. In 1937 it began to manufacture a powder substantially similar to the plaintiff's, which it called "Vanish", as it concededly had the right to do since the plaintiff's patents had expired. At first, it marketed its product in a 21 ounce oval can bearing a black and white label on which its name was prominently displayed in block capital letters above a representation of an open toilet bowl, a stream of material being shown flowing from the bottom of the letter "I" in the word "Vanish" into the bowl. Subsequently it changed the style of its can to a tall cylindrical one of the same capacity, and it changed its label to one predominantly blue, still, however, prominently displaying its name (which it had registered under the federal act) and the stream of material flowing from it into a toilet bowl as before. It began to advertise its product extensively in various ways in 1937, but its activities met with no objection from the plaintiff until almost ten years later when it began to use, sometimes against a plain background and sometimes in a bathroom setting, first, a pictorial representation of a woman pouring from one of its cans into a watercloset bowl, and later a pictorial representation of a hand, obviously a woman's, similarly pouring from one of its cans into a watercloset bowl.

The plaintiff formally notified the defendant early in 1947 that it objected to these forms of advertising, and the defendant, asserting its right to continue to so advertise, the plaintiff on May 31 of that year, brought the instant suit for trade mark infringement and unfair competition. The defendant in its answer asserted, first, that all of the plaintiff's marks were invalid and had been illegally registered for the reason that they were merely descriptive of the goods with which they were used, and second, that the mark in its earlier forms had been abandoned, and then, admitting its use of the advertising matter complained of, it denied that such advertising infringed any of the plaintiff's marks or constituted unfair competition. Then, by counterclaim, it asked for a judgment ordering the cancellation of all the plaintiff's marks pursuant to § 37 of the Trade Mark Act of 1946, the so called Lanham Act, 60 Stat. 427, 440, 15 U.S.C.A., § 1119, which by its terms, § 46, became effective on July 5, 1947, while the instant suit was pending. The court below after hearing held that the plaintiff's marks were valid, that none of them had been abandoned, and that the defendant had infringed and was unfairly competing with the plaintiff by the use of advertising matter showing a woman pouring from a can into a toilet bowl, but not by the use of advertising matter showing merely a woman's hand pouring from a can into a toilet bowl. From the final judgment enjoining the defendant in keeping with these conclusions both parties have appealed; the defendant from so much of the judgment as adjudicates the validity and infringement of the plaintiff's marks, the plaintiff from so much thereof as adjudicates that its marks are not infringed by the defendant's advertising matter showing merely the woman's hand. In the view we take of the case it will be necessary to give detailed consideration only to the defendant's appeal.

Its first contention is that the plaintiff's pictorial representation of a woman pouring the contents of a can into a watercloset bowl does not constitute a valid trade mark under either the common law or the Trade Mark Act of 1905, as amended, for the reason that it is merely descriptive of the plaintiff's product. We do not agree.

Cases involving the validity of symbols or devices as identifying marks for goods, i. e. trade marks strictly speaking, as distinguished from names used as trade marks, are comparatively rare. But there can be no doubt that "Whether a picture can be a trade-mark for goods depends upon the same test that is applied in determining whether words can be trade-marks," the question in each case being "whether the picture is merely descriptive of the goods on which it is used or has an arbitrary or fanciful significance in relation to them", Am.Law Inst., Restatement of Torts, § 721 comment d. And the test of validity at common law is also the test for registerability under the third proviso of § 5 of the Trade Mark Act of 1905, as amended,¹ 15 U.S.C.A.1946 Ed. § 85 15 U.S.C.A. § 1052, for that proviso is "simply an expression in statutory form of the prior general rule of law that words and clearly also devices merely descriptive are not a proper subject for exclusive trademark appropriation." P. D. Beckwith's Estate v. Commissioner of Patents, 252 U.S. 538, 544, ...