New England Duplicating Co. v. Mendes

Decision Date16 July 1951
Docket NumberNo. 4570.,4570.
Citation190 F.2d 415
PartiesNEW ENGLAND DUPLICATING CO., Inc. v. MENDES.
CourtU.S. Court of Appeals — First Circuit

Ezekiel Wolf, Boston, Mass., for appellant.

Herbert A. Baker, Boston, Mass. (Daniel J. Daley, Boston, Mass., on the brief), for appellee.

Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN, Circuit Judges.

WOODBURY, Circuit Judge.

This is an appeal from a judgment for the plaintiff in an action for infringement of a federally registered trade-mark, and for unfair competition. Federal jurisdiction is clear from the established evidentiary facts concerning which there is little if any dispute.

J. Curry Mendes, the plaintiff herein, in 1939 devised a so called collating and tipping machine, otherwise known as an interleaving machine, for placing spot gum on paper and carbon paper for the production of one-time carbon forms. He called his machine a "Paddy" machine, that name being adapted from the nickname of one of his daughters, and so advertised it in a leading trade periodical. At the outset he did business as an individual under the name Paddy Machine Company, and filed that name as provided by Massachusetts law in the office of the City Clerk of the City of Boston where he carried on his business. In 1940, he organized a local corporation, of which he was president, treasurer and manager, called Paddy Machine Company, Inc., to take over the assets of Paddy Machine Company, and by the end of 1942 the corporation had sold and shipped two machines bearing the label "Paddy" in interstate and foreign commerce, one going to Cincinnati, Ohio, and the other to Canada. Material shortages and financial difficulties beset Paddy Machine Company, Inc., during 1942, and in March of that year, in order to raise funds, John Curry Mendes on behalf of the corporation executed a mortgage covering all its furniture, good will, accounts receivable and orders for merchandise to one Frank L. Harney. Soon after this the plaintiff withdrew from the corporation, and thereafter it carried on business without him under the control of the mortgagee and one Herbits, who testified that he actually ran the business.

A patent on the so called "Paddy" machine issued in 1945, but Paddy Machine Company, Inc., was forced by necessity to discontinue business as a corporate entity at about the same time. Herbits, however, received and answered numerous inquiries about "Paddy" machines addressed to the corporation from 1945 until October, 1948, when the defendant corporation, New England Duplicating Co., Inc., claiming under an oral agreement with Herbits, (which was reduced to writing in June, 1949), undertook by advertising and by circulars addressed to the trade, to promote the sale of collating and tipping machines under the "Paddy" name.

The plaintiff in the meantime, beginning in 1947, had recommenced the manufacture and sale of collating and tipping machines. With one exception, however, the machines were labeled as either "Mendes" or "JCM". The court below found, however, that the plaintiff still used the name "Paddy" in his correspondence, that he had not abandoned it and that he intended to use it again on an improved machine which he expected to produce, in the meantime using "Mendes" and "JCM" as broader terms to designate all his products.

In this posture of affairs, the plaintiff, acting on the advice of counsel, made two shipments of collating machines bearing the "Paddy" mark from Boston to New York for the purpose of securing the exclusive use of the mark. He made the first of these shipments on May 31, 1949 to his sales office in New York. A month later, on June 29, he filed application for registration of his mark asserting his belief in his ownership thereof and citing the above shipment as his first use of the mark in commerce, and then on July 14, 1949, he shipped his second machine bearing the "Paddy" mark to a purchaser in New York. On February 21, 1950, Registration No. 521,322 issued to him for the mark as applied to machines of the kind under consideration.

Shortly thereafter the plaintiff learned that the defendant was using the same name in its advertising of like machines in trade periodicals, and he thereupon removed the "Paddy" mark from the two machines he had shipped to New York, and stopped applying the mark to any others, until, to quote from the findings of the District Court, "such time as it could be demonstrated by legal decision that he was the owner of this mark, and that his registration was in fact good." 94 F. Supp. 558, 560.

On the foregoing facts there appear to be weak links in the defendant's asserted chain to title to the mark. But this is not an important factor for we agree with the court below that the plaintiff by priority of appropriation, use and employment has established his ownership of the mark as against the defendant, whatever the latter's chain of title may be.

Section 1 of the Lanham Act so called, 60 Stat. 427; 15 U.S.C. § 1051, provides that "The owner of a trade-mark used in commerce may register his trade-mark under this Act" and registration under the Act gives rise to rights of exclusive use cognizable in the federal courts. § 32 id.; 15 U.S.C. § 1114.

There can be no doubt whatever, and it is not disputed, that the mark is registrable under § 2 of the Act for the goods to which the plaintiff applied it. Nor can there be any serious question that the plaintiff used it "in commerce" on those goods before he applied for registration. The shipment of a labeled machine to his sales office in New York on May 31, 1949, cited in his application for registration as his first use of the mark in commerce, clearly constituted a use of the mark in commerce under § 45, par. 15, of ...

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