Nu-Enamel Corporation v. Armstrong Paint & V. Works

• Decision Date: 28 March 1938
• Docket Number: No. 6268.,6268.
• Citation: 95 F.2d 448
• Parties: NU-ENAMEL CORPORATION OF ILLINOIS (NU-ENAMEL CORPORATION OF DELAWARE, Intervener) v. ARMSTRONG PAINT & VARNISH WORKS.
• Court: U.S. Court of Appeals — Seventh Circuit

95 F.2d 448 (1938)

NU-ENAMEL CORPORATION OF ILLINOIS (NU-ENAMEL CORPORATION OF DELAWARE, Intervener) v. ARMSTRONG PAINT & VARNISH WORKS.

No. 6268.

Circuit Court of Appeals, Seventh Circuit.

February 24, 1938.

Rehearing Denied March 28, 1938.

Edward S. Rogers, William T. Woodson, and James H. Rogers, all of Chicago, Ill., for appellants.

Moses Levitan, of Chicago, Ill. (George A. Carpenter, of Chicago, Ill., of counsel), for appellee.

Before EVANS and TREANOR, Circuit Judges, and LINDLEY, District Judge.

LINDLEY, District Judge.

Plaintiff appeals from a decree of the District Court dismissing for want of equity its bill for infringement of a trade-mark and to recover damages for unfair competition. The latter ground for relief was not considered by the court on its merits, but was disposed of by a finding that the court, having found the trade-mark invalid, had no jurisdiction to grant relief for unfair competition.

The sufficiency of the bill of complaint was before this court in Nu-Enamel Corp. v. Armstrong Paint & Varnish Works, 7 Cir., 81 F.2d 1, and it was there held that the bill was sufficient and that three questions were presented, namely, (1) Has plaintiff a valid trade-mark in "Nu-Enamel"? (2) Is it infringed by defendant? (3) Was a cause of action based on unfair trade and practice stated in the complaint? The court reversed a decree of the District Court dismissing the bill upon defendant's motion, pointing out that the first two queries were questions of fact and that the averments being sufficient as to each of them and also upon the third question, the court should hear the evidence and enter a decree in conformity therewith.

After reversal, the defendant filed an answer in which it said: "Defendant admits that the name `Nu-Enamel' has come to mean and is understood to mean, throughout the United States, including the State of Illinois and the City of Chicago, the plaintiff and plaintiff's products only and the word `Nu-Enamel' is a mark by which the goods of the plaintiff are distinguished from other goods of the same class."

The mark "Nu-Enamel" has been used since 1922 and was registered in 1933. It has been applied to paints, varnishes, enamels, top dressings, paint brushes, wood powder, patching plaster, wax, varnish remover, glue, mineral oil colors, solder, and tack rags, all products of plaintiff. These articles are sold under the mark in 300 stores, operating under the name Nu-Enamel and handling plaintiff's products exclusively, 25 of which stores are located in and about Chicago. The name Nu-Enamel appears on the windows of these stores or on the window valances and is displayed by Neon signs. In addition, plaintiff's products are sold under the trade-mark in every state of the union, through approximately 3,000 dealers, as well as abroad. Plaintiff has spent several hundreds of thousands of dollars each year in advertising its products under this mark. In connection with the distinctive name, plaintiff uses the slogans "One Coat Covers," "Leaves no Brush Marks," and "A Coat of Enduring Beauty." From these facts, in connection with defendant's admission, it is apparent that the word "Nu-Enamel" is the mark by which products of plaintiff covering the various articles above mentioned are distinguished from the goods of all other persons. Thus the word has developed a secondary meaning.

It is contended by defendant that the mark "Nu-Enamel" cannot be the subject-matter of a valid trade-mark for the reason that it is descriptive in character, and the District Court so found. We cannot agree. The word "Nu-Enamel" as applied to paints, paint brushes, solder, wax, and similar products is in no wise descriptive of the subject-matter or of the possibility of results of use of the products. Rather it constitutes a fanciful phrase, largely advertised and generally known to the public, signifying the products of plaintiff, irrespective of their composition, character, or purpose. The name is similar to the words "Coca-Cola" considered by the Supreme Court in Coca-Cola Co. v. Koke Co., 254 U.S. 143, 41 S.Ct. 113, 114, 65 L.Ed. 189, where Mr. Justice Holmes said: "The name now characterizes a beverage to be had at almost any soda fountain. It means a single thing coming from a single source, and well known to the community. It hardly would be too much to say that the drink characterizes the name as much as the name the drink. In other words `Coca-Cola' probably means to most persons the plaintiff's familiar product to be had everywhere rather than a compound of particular...