Mantle Lamp Co. of America v. Aladdin Mfg. Co.

• Decision Date: 07 August 1935
• Docket Number: No. 5422,5443.,5422
• Citation: 78 F.2d 426
• Parties: MANTLE LAMP CO. OF AMERICA v. ALADDIN MFG. CO. ALADDIN MFG. CO. v. MANTLE LAMP CO. OF AMERICA.
• Court: U.S. Court of Appeals — Seventh Circuit

78 F.2d 426 (1935)

MANTLE LAMP CO. OF AMERICA v. ALADDIN MFG. CO.

ALADDIN MFG. CO. v. MANTLE LAMP CO. OF AMERICA.

Nos. 5422, 5443.

Circuit Court of Appeals, Seventh Circuit.

June 29, 1935.

Rehearing Denied August 7, 1935.

George I. Haight and W. H. F. Millar, both of Chicago, Ill., for appellant.

Maurice S. Cayne, of Chicago, Ill., for appellee.

Before EVANS, SPARKS, and FITZHENRY, Circuit Judges.

FITZHENRY, Circuit Judge.

These cross-appeals are from a decree in a suit brought by Aladdin Manufacturing Company to enjoin the Mantle Lamp Company of America from using the word "Aladdin" upon portable electric lamps. The Mantle Lamp Company of America filed a counterclaim asking that Aladdin Manufacturing Company be enjoined from using the word "Aladdin" on lamps or any goods which the Mantle Lamp Company now sells under that name. The District Court held that the Aladdin Manufacturing Company was entitled to use the word "Aladdin" on electric portable lamps; that the Mantle Lamp Company was entitled to use the word "Aladdin" on kerosene mantle lamps, but not on electric portable lamps; that neither side was entitled to an accounting; and that each side pay its own costs. From this decree both sides appealed, but for convenience in this opinion the Mantle Lamp Company will be referred to as appellant and Aladdin Manufacturing Company as appellee.

In 1908 the Mantle Lamp Company of America, an Illinois corporation, began the sale of kerosene mantle lamps and accessories therefor under the trade-mark "Aladdin." In 1920 the Aladdin Manufacturing Company, an Indiana corporation, commenced to manufacture and sell portable electric lamps under the name "Aladdin." Appellant alleges that the name was selected in order that appellee might avail itself of the advertising, good reputation, etc., of appellant. Appellee falsely used the words "Trade Mark registered in the United States Patent Office" in its advertising matter and upon its electric lamps, and, while it offered as an excuse its ignorance of the law governing the proper use of these words, the record shows that it failed to remove them when the mistake was called to its attention. It marked its lamps in large type "Aladdin Lamps" and in type so small as often to be illegible added the words "Electric Portable," thereby causing its goods to be mistaken for those of appellant. Tags were attached to the lamps bearing the words "Tune in Station WLBC every Tuesday night and listen to our Aladdin programs." Appellee claims that, at the time these tags were placed upon the lamps and distributed, it had arrangements pending for such a broadcast, but its plans never materialized. Appellant contends that, years after the arrangements for a broadcast had failed, appellee was still selling lamps with these tags in distant states that could never, under any circumstances, have tuned in on the program because of distance from the small station WLBC which could, under the most favorable conditions, be heard for only thirty miles, and that the purpose of appellee was to take advantage of the programs being broadcast by appellant over one of the large national chains.

Appellant sought to prove that appellee's salesmen had deliberately and falsely represented themselves as selling for the original "Aladdin" company, as being from the electric department of appellant's company, whereas appellant's salesmen represented only the kerosene mantle lamp department, etc. Appellee contends that these alleged acts of unfair competition, though proved, cannot be connected with appellee, but must be attributed to excessive zeal on the part of its salesmen, unauthorized and unsanctioned by appellee. The trial court made no findings of fact on the question of unfair competition upon the part of either company.

In 1931 appellant began to manufacture portable electric lamps and use the word "Aladdin" upon them as it had upon its kerosene mantle lamps since 1908. Two years prior to that time, in 1929, a dispute had arisen between appellee and appellant's subsidiary in Australia; the latter having demanded that appellee cease to sell its electric lamps in Australia under the name "Aladdin."

In 1931 appellant filed its opposition to the registration by appellee in the United States Patent Office of the trade-mark "Aladdin" for electric lamps. In all of these proceedings, appellant was successful. However, on this appeal, it is contended by Aladdin Company, appellee, that the Mantle Lamp Company, appellant, sat by while appellee built up its large business and that by appellant's conduct encouraged appellee in the belief that its business would be unmolested and appellant is now barred from the relief which it seeks by its cross-claim because of laches in asserting its rights. The trial court held that appellant's conduct amounted to acquiescence in the use by appellee of the word "Aladdin" on portable electric lamps and that it would be inequitable now to restrain appellee from such use.

The District Court found: "A kerosene mantle lamp is a mechanical device, while a portable electric lamp is an ornamental stand for supporting a light bulb. The two lamps are sold to different classes of trade, and neither in actual commercial practice is capable of supplanting the other in its field." The term "lamp" is a general one describing any of a number of instruments, vessels, or devices for the furnishing of artificial light. When appellant first began to manufacture its lamps in 1908, electric lights were not common in small towns and villages and their use in country homes was negligible. Appellant manufactured and sold what appears from the record before us to have been a very satisfactory lamp. Its sales in the United States and Canada from 1913 to 1933 amounted to something over $24,000,000. In the United States alone it has spent $2,500,000 on advertising. The word "Aladdin" came to indicate in the mind of purchasers that the product originated with the Mantle Lamp Company of America.

During the period since appellant began to manufacture and sell its lamps, electric power has been extended to towns, villages, and farms all over the United States. Granting that a kerosene mantle lamp could not compete with an electric lamp where that means of supplying artificial light was open to the purchaser, can we say that the public was not, and is not, deceived by appellee when it marks its lamps "Aladdin Lamps" and "New Lamps by Aladdin"? Will not prospective purchasers be misled into thinking that the company whose reliable products they have known or used for so long is keeping step with the new developments in methods of artificial illumination and that the new electric lamps are the products of the Mantle Lamp Company of America with whom they have come to associate the name "Aladdin"?

In the case of Wall v. Rolls-Royce of America, 4 F.(2d) 333, 334, the Circuit Court of Appeals for the Third Circuit said: "It is true those companies made automobiles and aeroplanes, and Wall sold radio tubes, and no one could think, when he bought a radio tube, he was...