Nissen Trampoline Company v. American Trampoline Co.

• Decision Date: 04 April 1961
• Docket Number: Civ. No. 4-947.
• Citation: 193 F. Supp. 745
• Parties: NISSEN TRAMPOLINE COMPANY and George P. Nissen, Plaintiffs, v. AMERICAN TRAMPOLINE CO., Defendant.
• Court: U.S. District Court — Southern District of Iowa

193 F. Supp. 745

NISSEN TRAMPOLINE COMPANY and George P. Nissen, Plaintiffs, v. AMERICAN TRAMPOLINE CO., Defendant.

Civ. No. 4-947.

United States District Court S. D. Iowa, Central Division.

April 4, 1961.

Owen J. Ooms, Donald L. Welsh, Chicago, Ill., Neill Garrett, Des Moines, Iowa, for plaintiff.

Talbert Dick, Donald H. Zarley, Des Moines, Iowa, for defendant.

STEPHENSON, District Judge.

Plaintiff, Nissen Trampoline Co., an Iowa Corporation of Cedar Rapids, Iowa, brings this action for injunction and for damages against defendant, American Trampoline Co., an Iowa Corporation of Jefferson, Iowa. Plaintiff alleges unfair competition, trade-mark infringement and patent infringement. Defendant in addition to denying plaintiff's claims, files counterclaims asking the court to declare plaintiff's trade-marks invalid, to declare plaintiff's patent invalid, and seeks damages from plaintiff for plaintiff's alleged false and fraudulent registration of plaintiff's trade-mark and plaintiff's harassment of defendant's business. Plaintiff George P. Nissen was joined as a plaintiff-respondent upon defendant's motion on the ground that he was a necessary party for defendant's counterclaim.

This suit arises under the patent and trade-mark laws of the United States and under the laws relating to unfair trade practices and unfair competition. The matter in controversy exceeds $10,000, exclusive of interest and costs and the court has jurisdiction of the subject matter and the parties. Title 15 U.S.C. A. § 1121; Title 28 U.S.C. §§ 1331 and 1338.

Plaintiff, Nissen Trampoline Co., hereinafter referred to as Nissen, is engaged in the manufacture and sale of gymnastic equipment, including devices it labels: "Nissen Trampolines" and "Mini-tramp". Defendant, American Trampoline Co., hereinafter referred to as American, is engaged in the manufacture and sale of gymnastic equipment, including devices it labels: "trampoline", "Divo-tramp" and "Tini-Tramp". Plaintiff corporation is a successor in business of George Nissen, d/b/a Nissen Trampoline Co., a sole proprietorship from at least as early as March 27, 1935 until he was succeeded by plaintiff corporation on July 21, 1946. George Nissen, in addition to being the sole proprietor of Nissen Trampoline Co., was a member of and successor to Griswold & Nissen, a partnership existing from approximately August 1941 to April 1946 and composed of George Nissen, who owned 75% interest in the firm and Larry P. Griswold, who owned the remaining 25%. The partnership of Griswold and Nissen and the sole proprietorship of George Nissen's, were engaged in a similar business of manufacturing and selling gymnastic equipment known as "trampolines."

Defendant, American Trampoline Co., a corporation since October 1, 1957, was preceded in business by partnerships known as the American Trampoline Co., The American Trampolin Co., and the Aqua Trampoline Co. Defendant company's predecessors were similarly engaged in manufacturing and selling a device called a "trampoline".

Plaintiff George Nissen, president of plaintiff corporation, attended the State University of Iowa from 1933 to 1937 and was a national ground tumbling champion during three years of varsity competition. As early as 1935, Mr. Nissen began to experiment and sell a tumbling device that he then called a "trampoline."

Mr. Bill W. Sorenson, is president of defendant corporation and was a partner in the partnership that preceded defendant corporation; he graduated from the State University of Iowa in 1953 where he was a Big Ten conference trampoline champion, and was instrumental in forming the first of defendant's predecessors known as Aqua Trampoline Co.

Prior to the entry of plaintiff, George Nissen, into the business of manufacturing and selling this type of gymnastic apparatus in 1935, the only available equipment of this type was handmade or custom made. There was no commercial manufacturing of this type of apparatus.

On June 4, 1941, plaintiff, George Nissen, applied for a patent on a tumbling device which patent was issued on March 6, 1945, being patent No. 2,370,990, and is the patent now in suit. Plaintiff, George Nissen, has assigned all his right, title and interest in that patent to plaintiff corporation. Plaintiff, George Nissen, applied for a trade-mark registration on "Nissen Trampoline" disclaiming the name "Nissen", on March 29, 1943, and this term was registered on August 7, 1943 and is the registration No. 402,868, now in suit.

Trade-Mark

Plaintiff, in Count I of its amended complaint, charges unfair competition by defendant on the grounds that defendant wrongfully uses plaintiff's trademarks, "trampoline" (Reg. No. 402,868), "Mini-Tramp" (Reg. No. 655,474), and "Tramp" (Reg. No. 655,755).

Plaintiff charges defendant wrongfully uses plaintiff's registered trade-marks in its corporate name and in its advertising of the sale of similar equipment; plaintiff further charges that defendant makes trampolines that are similar in appearance to those of plaintiff's and in effect wrongfully palms off its trampolines as those of plaintiff's. In Count II plaintiff alleges the same wrongs enumerated in Count I, but includes a charge of infringement of plaintiff's registered trademarks set out above.

Defendant claims:

(1) That the term "trampoline" was a generic word for the type of gymnastic equipment here involved for many years before Mr. Nissen allegedly adopted and used the term, and the term cannot, therefore, of itself have any trade-mark significance.

(2) That even if "trampoline" had been a coined word and had first been adopted by plaintiffs, it has now become generic and it is now the only word by which this equipment is generally known, and as such has fallen into the public domain, where it cannot serve as a trademark.

(3) That the corporate plaintiff does not own the trade-mark registration No. 402,868 because it was abandoned by its original owner, George Nissen, before it was conveyed to the plaintiff corporation. (The court will give no further attention to this charge of abandonment because the evidence does not support the same.)

(4) That George Nissen fraudulently and falsely registered trade-mark No. 402,868 on "Nissen Trampoline" and that defendant has been damaged thereby (Title 15, Sec. 1120). (Defendant's counterclaim)

Prior to 1935 the word "trampoline" was used, at least in circus and vaudeville circles, as the name of an apparatus of the same general character made by the plaintiffs and the defendants herein. John Hayes was known as a trampoline performer in the United States and Europe between 1907 and 1915; Joe E. Brown was a professional trampoline performer from 1906 until at least 1934, using that term in referring to the apparatus and performance; another trampoline performer using similar equipment and referring to it as a trampoline, commencing in the early 1920's was George Paul. The word "trampolin" and "trampoline" appeared in Webster's Dictionary in 1934 and the word trampoline was used to describe various professional acts in Billboard magazine between 1930 and 1934.

The evidence shows that there was a generic or descriptive use of the word "trampoline" in vaudeville and circuses prior to the entry of plaintiff into the manufacture of this equipment. Plaintiff does not seriously dispute these facts, but contends that the fact that plaintiff was practically the sole manufacturer of this product for many years, and has spent over a million dollars advertising its product, "Nissen Trampoline" and "trampolines", has caused the word "trampoline" to acquire a secondary meaning in that the word "trampoline", in the minds of the consuming public, now identifies a product produced exclusively by Nissen Trampoline Company. Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 1938, 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195; Snap-On Tools Corporation v. Winkenweder & Ladd, Inc., 7 Cir., 1957, 250 F.2d 154; Coca-Cola Co. v. Koke Co., 1920, 254 U.S. 143, 41 S.Ct. 113, 65 L.Ed. 189.

Plaintiff contends that the determination of the validity of the term as a trademark must be based on the facts as they exist at the time of trial. This rule finds support in the following statement by the court in DuPont Cellophane Co. v. Waxed Products Co., 2 Cir., 1936, 85 F.2d 75, 77, certiorari denied E. I. DuPont De Nemours & Co. v. Waxed Paper Products Co., 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443:

"The real problem is what it meant to the buying public during the period covered by the present suit."

It is clear that under the law the important consideration is, what is in the mind of the consuming public when it hears the term in dispute. Does the term identify a product or a producer. In Kellogg Co. v. National Biscuit Co., 1938, 305 U.S. 111, 118-119, 59 S.Ct. 109, 113, 83 L.Ed. 73, the Court said:

"It is contended that the plaintiff has the exclusive right to the name `Shredded Wheat,' because those words acquired the `secondary meaning' of shredded wheat made at Niagara Falls by the plaintiff's predecessor. There is no basis here for applying the doctrine of secondary meaning. The evidence shows only that due to the long period in which the plaintiff or its predecessor was the only manufacturer of the product, many people have come to associate the product, and as a consequence the name by which the product is generally known, with the plaintiff's factory at Niagara Falls. But to establish a trade name in the term `shredded wheat' the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. This it has not done. The showing which it has made does not entitle it to the exclusive use of the term shredded wheat but merely entitled it to require that the defendant use reasonable care to inform the public of the source of its product."

One of the earlier...