Nieman v. Plough Chemical Co.

• Decision Date: 14 October 1927
• Docket Number: No. 4784.,4784.
• Citation: 22 F.2d 73
• Parties: NIEMAN v. PLOUGH CHEMICAL CO.
• Court: U.S. Court of Appeals — Sixth Circuit

22 F.2d 73 (1927)

NIEMAN v. PLOUGH CHEMICAL CO.

No. 4784.

Circuit Court of Appeals, Sixth Circuit.

October 14, 1927.

James N. Ramsey, of Cincinnati, Ohio, for appellant.

John C. Carpenter, of Chicago, Ill., and J. W. Canada, of Memphis, Tenn. (Munday, Clarke & Carpenter, of Chicago, Ill., and W. R. Wood, of Cincinnati, Ohio, on the brief), for appellee.

Before DENISON, MOORMAN, and KNAPPEN, Circuit Judges.

KNAPPEN, Circuit Judge.

This controversy concerns the rights of the respective parties to the use of the trade-mark or trade-name "Black and White," as severally used by them.

On February 18, 1921, appellant applied for registration of a trade-mark "Black and White" for printed books and pamphlets in series (the first stated use thereof being February 1, 1921), and certificate of registration No. 148,495 was granted her November 15, 1921. On August 25 of that year appellee applied for registration of an alleged trade-mark "Black and White" for books, later amended to read "Black and White for books, namely, almanacs, issued annually, Birthday and Dream Books." An interference (No. 47,897) was declared between appellant's registered trade-mark and appellee's application. The examiner, the Commissioner of Patents, and the Court of Appeals of the District of Columbia having successively held that appellee was not entitled to registration of its mark, the bill in this cause was filed by appellee under section 4915 of the Revised Statutes (U. S. C. S. 1916, § 9460 35 USCA § 63),¹ praying decree declaring its right to registration and directing issue of certificate thereof. Defendant answered, denying appellee's asserted right to registration, and counterclaimed for infringement of her registered trade-mark, asserting unfair competition with respect to her earlier common-law rights. Upon final hearing on pleadings and proofs, the District Court found that plaintiff had not sustained the burden of showing priority of right to use the words "Black and White Series" on almanacs, dream books, etc. The court also held that plaintiff appellee had not infringed appellant's statutory trade-mark nor her common-law trade-mark or trade-name.² The bill of complaint was accordingly dismissed, as was defendant's counterclaim upon both branches. Plaintiff did not appeal. This review is had upon defendant's appeal from dismissal of her counterclaim.

As early as 1900 (apparently in 1902 or 1903), Hennegan & Co., printers and lithographers at Cincinnati, Ohio, began publishing a pamphlet called "Black and White Dream Book," of an issue bearing a publication date 1900; about one-half was devoted to the "True Interpretation of Dreams" (the subjects of such dreams being alphabetically arranged), the remainder of the pamphlet being almost entirely given up to the subjects of "palmistry," "fortune telling," "curious games of cards," "Moles," "telling fortunes by grounds of a tea and coffee cup," and "signs and omens." The pamphlet carried no advertisements and bore Hennegan's imprint. The book took its name from the fact that it was originally put out as "show printing" for one Boone, a "mind reader and hypnotist," calling himself a "Mahatma," one of whose "color schemes" (applied to show printing, costumes, and horses used in one of his acts) was black and white. Its subject-matter was in large part in the language used in "The Gypsy Fortune Teller Dream Book and Treasury of Lucky Numbers," by "Madam Juno, the Gypsy Queen," apparently published in 1887. The "Dream Book" was sold by Boone, and after his death by showmen of the same general type, including Galvani and Madame Frimie, during performances in opera houses and tents.

Until 1912 books of this character were also sold by Hennegan to promoters of mail order business generally. From 1912 to 1919, at least, that company sold the old "Black and White Dream Book" (1900) in large quantities to appellant exclusively, but still under the Hennegan imprint; and from 1919 to 1921 printed in the name of the Van Publishing Company, Cincinnati, of which appellant was proprietor, a "Dream Dictionary," containing in principal substance the "Dream Interpretations" published in the old Black and White Dream Book, but omitting the other features hereafter enumerated. This "Dream Dictionary" of 1919 to 1921 did not purport to be a Black and White publication, nor did it contain the words "Black and White." Presumably such trade-mark rights as appellant had derived from Hennegan were not intended by appellant to be abandoned. In 1921 Hennegan printed in the name of the Van Publishing Company a series of six volumes, viz.: (1) A "Dream Dictionary," which was almost entirely a reprint (with exceptions hereafter mentioned) of the Dream Dictionary before referred to as printed from 1919 to 1921; (2) "Marriage" (Nos. 1 and 2 had been prepared between 1919 and 1921); (3) "What is in Your Life;" (4) "The Little Wonder Fortune Teller;" (5) "Character Reading;" and (6) "Magnetism." All six of these volumes so put out in 1921 were marked "Black and White Series" at the top of both front and back pages, the volumes being in both places numbered respectively, from 1 to 6. They carried no advertisements, except one of a so-called "Wizard Fortune Wheel" put out by appellant. Hennegan's Black and White Dream Book had carried no advertisements. These six "Black and White Series" volumes were continuously published from 1921.

Meanwhile, in 1917, and thus before the first publication by appellant of a "Black and White Series," under that imprint, appellee, whose business was that of a manufacturing chemist and manufacturer of toilet preparations, proprietary medicines and food products, adopted and began to use the label (and alleged trade-name) "Black and White" on its line of medicinal and toilet articles, and possibly other lines, which label it has since continuously used.

In 1919 appellee, as part of an advertising system for the sale of its products, began putting out paper pamphlets, such as "almanacs and dream books," etc., which it sent to its customers in large quantities, and which the latter could give away or sell, as they might prefer — a price of 25 cents being marked on the pamphlet. In 1923, and thus six years after appellee began the use of its trade-name "Black and White" as applied to its line of manufactured products, and four years after appellee's publications began, Hennegan & Co. gave appellant a written assignment of the trade-mark (or trade-name) "Black and White." Hennegan & Co. had no registered trade-mark.

Appellant asserts that Hennegan & Co. actually sold her the trade-mark when she bought the goods purchased in 1912. The trial judge, who saw and heard nearly all the witnesses, including appellant, found that "no such assignment was in fact made until the written assignment, which is 1923." The judge considered that appellant's use was simply that she bought the 100,000 or less of these Black and White Dream Books,³ and disposed of them, and that at that time she had no idea of establishing a trade-mark, and that, in his opinion, she could not in fact have established such trade-mark, because the use was neither indicative of excellence of selection, high quality of printing, or any other attribute which she had or which she exercised, as distinguished from the uncopyrighted contents of the book.

Appellee, not having appealed from the decision of the court below, denying its asserted right over appellant to use the words "Black and White" as applied to a series of books, is bound by that decision, and, in the view we take of the question of infringement, we find it unnecessary to determine whether appellant bought Hennegan's trade-mark in 1912.⁴

1. Appellee contends that appellant was anticipated by Harper & Bros. in the use of the trade-mark "Black and White," as applied to their well and widely known series of books published under the trade-name "Black and White Series" (the series seems at one time to have included about 23 titles), which trade-mark or trade-name was purchased by appellee May 22, 1924, during the pendency of the trade-mark interference proceedings between appellant and appellee.

The court below, while of opinion that appellee gained by such purchase no right superior to Nieman's to the ownership or registration of this alleged trade-mark, expressed the opinion that there was sufficient evidence to convince the court of the fact of anticipation on the part of Harper & Bros., and that their common-law trade-mark was still in existence and still active, and still representative of some good will, at the time the registration was granted to Nieman, and that for that reason, among others, appellee had not infringed appellant's alleged trade-mark. We see no inconsistency between the failure to recognize the Harper use as available to appellee in support of its attempted trade-mark registration, and the conclusion that the defense of such Harper use was available as against a charge of infringement.⁵ If the trial court's conclusion of fact is right, its conclusion of law would seem to follow.

If the testimony of the witness Lewin, taken by appellee under the federal statute relating to depositions de bene esse, was properly in evidence, we think the record supports a conclusion that the Harper use of the trade-mark "Black and White Series" began in 1885 (as recited in the assignment to appellee), and was still active and still representative of substantial good will at the time of Harper's sale to appellee in 1924. The witness Lewin, who when his deposition was taken⁶ (February, 1926), was organization manager of Harper & Bros., and had been continuously associated with that house for 39 years, testified, in substance, that the Black and White Series started originally with "just a single volume title? of the series, or perhaps one or two in the series, and then we have added from time to time various titles" thereto; that Howell's "The Garroters"...