National Fruit Product Co. v. Dwinell-Wright Co., 1445.
| Decision Date | 20 February 1942 |
| Docket Number | No. 1445.,1445. |
| Citation | 42 F. Supp. 1016 |
| Parties | NATIONAL FRUIT PRODUCT CO., Inc., v. DWINELL-WRIGHT CO. |
| Court | U.S. District Court — District of Massachusetts |
John V. Spalding, of Boston, Mass., and Clarence B. Des Jardins and Halbert P. Brown, both of Washington, D. C., for plaintiff.
John M. Hall (of Choate, Hall & Stewart), of Boston, Mass., and Edward G. Fenwick (of Mason, Fenwick & Lawrence), of Washington, D. C., for defendant.
In this trade-mark infringement suit, plaintiff has moved that defendant be enjoined, pending this suit, from prosecuting in the United States Patent Office a proceeding to cancel plaintiff's trade-mark registration upon which the complaint is based. This action involved the respective rights of the parties to the use of the trademark "White House", sometimes accompanied by a representation of the Executive Mansion, in connection with the sale of certain goods. For some time the plaintiff has used the trade-mark "White House" in connection with the sale of vinegar, apple-cider, canned apples, apple-sauce, and similar vegetable and fruit products and juices, while the defendant has used the same trade-mark upon the coffee and tea which it marketed.
The complaint charges defendant with infringement of five trade-mark registrations owned by plaintiff, and with unfair competition, by the sale of orange and grapefruit juice under the trade-mark "White House". The registrations relied on are 104,641, 121,723, 299,846, 316,305, and 336,489. The first three are specified to cover only apple products, but 316,305 purports to cover a large class of fruit products and 336,489 to cover "fruit and vegetable juices for food purposes".
The complaint, filed July 29, 1941, put in issue the validity of plantiff's registrations for the trade-mark "White House" as applied to various fruit and vegetable products and juices. By answer, filed August 18, 1941, defendant denied the validity of said trade-mark registrations and asserted that plaintiff was not entitled to the exclusive use of the mark upon the goods specified, at the dates upon which it filed applications for registration. The answer also included a counterclaim which charged infringement of defendant's registrations of the trademark "White House" for coffee and tea, by sale by plaintiff of fruit and vegetable products under this mark. Plaintiff filed an answer to defendant's counterclaim on September 5, 1941.
On September 6, 1941, defendant attacked plaintiff's trade-mark registrations by filing in the United States Patent Office a petition for their cancellation on the ground that plaintiff was not entitled to the use of the marks, for the goods specified in the registrations, at the dates of its applications therefor. The plaintiff thereafter moved for an injunction enjoining the defendant from prosecuting or taking any further steps in the cancellation proceeding, and from filing, commencing, instituting or prosecuting any other proceeding in the United States Patent Office seeking the cancellation of said trademark registrations, pending the hearing and final determination of this action.
The plaintiff moved, in the Patent Office, for a stay of the cancellation proceeding during the pendency of this action, on the ground that this court had first acquired jurisdiction of the issue as to the validity of the plaintiff's trade-mark registrations. That motion was granted by a decision rendered November 22, 1941.
On January 12, 1942, the Commissioner of Patents rendered a decision, on the petition of the defendant, vacating the order which stayed the cancellation proceeding.
On November 27, 1941, this court continued the hearing on the present motion for a preliminary injunction on the ground there was no present need for such an injunction in view of the suspension of the proceedings by the Patent Office. Since that suspension has been vacated, this court must now decide, after hearing the parties, whether the injunction moved for should issue.
Conclusions of Law.
By the filing of the complaint and answer in this action this court has acquired jurisdiction of the dispute between these parties on the issue of validity of plaintiff's five trade-mark registrations. The petition to cancel these registrations requires the Patent Office to make the same determination. In either forum this depends on whether the registrant was entitled to the use of the mark at the date of its application for registration. (Cf. paragraph 12 of defendant's answer, and 15 U.S.C.A. § 93 governing cancellation proceedings in the Patent Office). It is true that other issues will arise in this court, and that further relief...
To continue reading
Request your trial
-
Cresta Blanca Wine Co. v. Eastern Wine Corporation
...Seaman, 4 Cir., 113 F. 750; Pacific Fire Ins. Co. v. C. C. Anderson Co., D.C.S.D.Idaho, 42 F.Supp. 917; National Fruit Product Co. v. Dwinell-Wright Co., D.C.D.Mass., 42 F.Supp. 1016; Godfrey L. Cabot, Inc., v. Binney & Smith, D.C.D.N.J., 46 F.Supp. 346; Green v. Gravatt, D.C.W. D.Pa., 35 F......
-
Katz v. Lear Siegler, Inc.
...action generally preferred when identical actions are proceeding in different federal courts); National Fruit Prod. Co. v. Dwinell-Wright Co., 42 F.Supp. 1016, 1017, 52 USPQ 294, 295 (D.Mass.), aff'd, 129 F.2d 848, 54 USPQ 149 (1st Cir.1942) ("the right to relief is dependent on the determi......
-
Dwinell-Wright Co. v. National Fruit Product Co.
...the plaintiff's motion to restrain the defendant from prosecuting its proceeding for cancellation in the Patent Office as follows 42 F.Supp. 1016, 1017: "It has long been settled that a court of equity which has first taken jurisdiction of a case may, in order to prevent vexatious and haras......
-
Old Charter Distillery Co. v. CONTINENTAL DISTILL. CORP.
...in this court. Crosley Corporation v. Westinghouse Electric & Mfg. Co., 3 Cir., 130 F.2d 474; National Fruit Product Co., Inc. v. Dwinell-Wright Co., D.C., 42 F.Supp. 1016; In re Georgia Power Co., 5 Cir., 89 F.2d 218. Assuming without deciding that this court and the United States District......