National Lead Company v. Wolfe

• Citation: 223 F.2d 195
• Decision Date: 14 July 1955
• Docket Number: No. 13737.,13737.
• Parties: NATIONAL LEAD COMPANY, a Corporation, Appellant, v. Bernard M. WOLFE and Frederick J. Dannenfelser, Individuals and Copartners, Doing Business Under the Names and Styles "Dutch Paint Co.," and "Manning-Mitchell Paint Co.," Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

223 F.2d 195 (1955)

NATIONAL LEAD COMPANY, a Corporation, Appellant, v. Bernard M. WOLFE and Frederick J. Dannenfelser, Individuals and Copartners, Doing Business Under the Names and Styles "Dutch Paint Co.," and "Manning-Mitchell Paint Co.," Appellees.

No. 13737.

United States Court of Appeals Ninth Circuit.

May 17, 1955.

Rehearing Denied July 14, 1955.

Robert E. Burns, Crimmins, Kent, Draper & Bradley, San Francisco, Cal., James D. Ewing, New York City, Milton Handler, San Francisco, Cal., John B. Henrick, New York City, for appellant.

James M. Naylor, Frank A. Neal, Naylor & Lassagne, San Francisco, Cal., for appellee.

Before DENMAN, Chief Judge, POPE, Circuit Judge, and BYRNE, District Judge.

POPE, Circuit Judge.

The plaintiffs-appellees, citizens of the State of California, brought a suit for declaratory relief against the defendant-appellant, a New Jersey corporation, praying for an adjudication that the plaintiffs' use of the words "Dutch", "Dutch Paint Company" and "Dutch Paint" in connection with the paint and paint products manufactured and processed by them does not infringe the rights of appellant in its trade mark "Dutch Boy".

Appellant, by counterclaim, alleged its prior adoption and use of the trade mark "Dutch Boy", the registration of this mark, for paint products, in the United States Patent Office in 1937; that it has built up a large and profitable business in its products identified with that trade mark and has spent large sums in advertising it; that since 1949 the appellees, with knowledge of appellant's trade mark, have used the words "Dutch Paint Company", "Dutch" and "Dutch Paint" in connection with their manufacture and advertising of paint products in a manner calculated and liable to confuse and deceive the public in believing that appellees' products are manufactured by or originate with the appellant; that this was unfair competition as well as infringement of appellant's trade mark and its registration.

Upon this counterclaim the appellant sought an injunction against further use by the appellees of the words objected to; an accounting of profits from the alleged infringement of the trade mark, and an award of damages.

The case was tried and all testimony taken before Honorable Herbert W. Erskine, District Judge, who died before he could make or file any findings in the case. By agreement of the parties the cause was submitted to the Honorable Edward P. Murphy upon the record of the testimony and other evidence previously presented to Judge Erskine. The court made findings of fact and entered a judgment in favor of the appellees as plaintiffs and dismissed the appellant's counterclaim. Upon this appeal the specifications of error in the main assert the right of appellant to have judgment upon this counterclaim.

The record shows that the appellant is a large and well known manufacturer of paint and paint products which it has sold to the trade and the consuming public throughout the country for more than 40 years. In 1907 it adopted a picture of a Dutch boy as its trade mark for white lead. Subsequently it commenced using the words "Dutch Boy" in its advertising and these words were applied successively to linseed oil, red lead paint, white lead paint, flatting oil, wall primer and other paint products. The word trade mark "Dutch Boy" was registered in the Patent Office in 1937 for a number of paints and paint products including inside and outside paints, primers, undercoats, lacquers and varnishes. All these uses antedated by a considerable number of years the appellees' entry into the paint business. In connection with its sales of Dutch Boy paints appellant made very large expenditures devoted to advertising its Dutch Boy trade mark. Its products were shown to be regularly sold through independent dealers as well as through its 39 retail stores. There were some 1200 of these dealers in the eleven Pacific Coast states. Appellant's sales of paint products bearing this trade mark have aggregated over six hundred million dollars and it has expended in excess of nineteen million dollars in national advertising.¹

The appellees on the other hand entered the paint business in 1946 after their discharge from the Navy where they had had some training in connection with the naval paint program. After initiating the paint business and incorporating their enterprise under the name of Manning-Mitchell, Inc., they had some difficulty in procuring raw materials for their marine paints. Then in the same year they acquired for some $9,000 a partnership concern known as "Dutch Paint Co." at San Francisco which operated a small paint factory and which had on hand some labels marked "Dutch Paint".² Thereafter the apellees formed a new corporation called "Dutch Paint Company" and continued to increase the manufacture and sale of household and other paints using labels and other marks with the names "Dutch" and "Dutch Paint". It is of this use that appellant complains in its counter-claim.

The record shows beyond possible controversy that the appellants had a trade mark valid both at common law and under the applicable federal acts.³ Neither the word "Dutch", nor the words "Dutch Boy" are used otherwise than in a fictitious, arbitrary and fanciful manner. Of course the word "Dutch" is capable of being used as a geographical term. If used to indicate a product made in Holland or by some Dutch process, it could be a descriptive term. However, the record shows without doubt that appellant's trade mark does not contain words having either a geographical or descriptive sense. In this respect the case is governed by Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., 240 U.S. 251, 36 S.Ct. 269, 271, 60 L.Ed. 629, where the court said: "We do not regard the words `The American Girl,' adopted and employed by complainant in connection with shoes of its manufacture, as being a geographical or descriptive term. It does not signify that the shoes are manufactured in America, or intended to be sold or used in America, nor does it indicate the quality or characteristics of the shoes. Indeed, it does not, in its primary signification, indicate shoes at all. It is a fanciful designation, arbitrarily selected by complainant's predecessors to designate shoes of their manufacture. We are convinced that it was subject to appropriation for that purpose, and it abundantly appears to have been appropriated and used by complainant and those under whom it claims. * * * `The American Girl' would be as descriptive of almost any article of manufacture as of shoes; that is to say, not descriptive at all."

Here there is no likelihood that the use of the name "Dutch" or "Dutch Boy" in connection with the appellant's goods would be understood by purchasers as representing that the goods or their constitutent materials were produced or processed in Holland or that they are of the same distinctive kind or quality as those produced, processed or used in that place.⁴

The record and briefs do not disclose any assertion on the part of the appellees that appellant's trade mark was wholly without validity. Appellees however contend that the mark is not a "strong" but a "weak" mark, citing as their authority for this position this court's decisions in Sunbeam Furniture Corporation v. Sunbeam Corporation, 9 Cir., 191 F.2d 141, and Sunbeam Lighting Co. v. Sunbeam Corporation, 9 Cir., 183 F.2d 969. We find no resemblance between this case and our Sunbeam cases for in those cases it was pointed out that the name Sunbeam was "a meaningful word, a joyful word, a word of comfort, and of health." It was therefore held that its use was not sufficiently fanciful to warrant the granting of an injunction not merely against the use of the term "Sunbeam" on the defendants' lamps but against the use of the firm name "Sunbeam Furniture Corporation."

The fact that "Dutch" as a dictionary term has a geographical significance and that it would be possible for a manufacturer to use that word in connection with his business in its primary geographical sense is beside the point here. Thus one who manufactures paint in Holland cannot be restrained from selling his product as "Dutch" paint any more than a watch manufacturer in Switzerland can be prevented from selling his "Swiss" watches. No use of the word "Dutch" in a geographical sense is involved here for neither appellant nor appellees are marketing products or goods "likely to be understood by purchasers as representing that the goods or their constituent materials were produced or processed in the place designated by the name or that they are of some distinctive kind or quality as the goods produced, processed or used in that place."⁵

The distinction is well made by the Supreme Court in Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., supra, where it contrasted with the valid use of "The American Girl" the supposititious use of a mark "American Shoes". As the appellees are not making their paints in Holland or using any Dutch processes or giving them any distinctive Dutch quality, the fact that others might have done so is of no significance in this case. There is no question also that "Dutch" has certain descriptive meanings. Thus "Dutch Kalsomine Brushes", the record shows, are paint brushes of a special construction; "Dutch White" and "Dutch Blue" are terms describing certain colors under which some paints are sold although not those of the appellees; "Dutch Process", or "Old Dutch Process" is a means of making white lead used in Holland and some manufacturers of white lead use that process and make reference to it on their labels; "Dutch Enamel" is a term descriptive of a kind of enamel first developed in Holland. Neither appellant nor appellees are engaged in the utilization of any such processes and the words "Dutch", "Dutch Paint", or "Dutch Paint Company" used by appellees are not claimed to have any relation to any product now or ever made in Holland or any process, color, or...