Plough, Inc. v. Intercity Oil Co.

• Decision Date: 17 February 1939
• Docket Number: No. 7581.,7581.
• Citation: 26 F. Supp. 978
• Parties: PLOUGH, Inc., v. INTERCITY OIL CO. et al.
• Court: U.S. District Court — Western District of Pennsylvania

26 F. Supp. 978

PLOUGH, Inc., v. INTERCITY OIL CO. et al.

No. 7581.

District Court, E. D. Pennsylvania.

February 17, 1939.

COPYRIGHT MATERIAL OMITTED

A. Yates Dowell, of Washington, D. C., and Howson & Howson and Kennard N. Ware, all of Philadelphia, Pa., for plaintiff.

A. D. Caesar, Charles W. Rivise, and I. Edward Master, all of Philadelphia, Pa., for defendants.

WELSH, District Judge.

The plaintiff, Plough, Inc., filed its bill of complaint to enjoin the Intercity Oil Company and the Eveready Oil Company from using the name "Eveready" in connection with the manufacture and sale of motor oils and greases, and for damages resulting from the alleged infringement of the plaintiff's registered trade mark, "Ever Ready," under which it distributes a lighter lubricant. Plaintiff also seeks to restrain the defendant, Eveready Oil Company, from using the same word as a part of its corporate title.

In 1922 the plaintiff began the manufacture and sale of a light oil lubricant under the brand name, "Ever Ready" which was registered and classed among "oils and greases" in the United States Patent Office. The product has always been marketed in a small hand-size can with spout attached and was adapted chiefly to the cleaning and lubrication of small machinery such as sewing machines, bicycles, lawnmowers and possibly certain automobile parts. It is not designed for use as a motor oil, nor for machinery requiring a heavy lubricant. Starting in 1932 the defendants engaged in the business of producing and selling motor oils and heavy greases in bulk and in large containers. They adopted "Eveready" as their trade mark and developed an extensive distribution in Eastern Pennsylvania and the adjoining states. At the time of the registration, the plaintiff, Plough, Inc., traded as the "Ever Ready Company" for the purpose of distributing its Ever Ready products, which fact is indicated in the certificate of registration. Defendants assumed the name "Eveready Oil Company" for a similar purpose, the Intercity Oil Company being the parent and producing company.

Plaintiff contends that the defendant's action, in adopting and using the name "Eveready" in its corporate title and as a brand name in the sale of lubricants, constitutes unfair competition and an infringement of the plaintiff's proprietary rights acquired by prior use and under the certificate of trade mark registration. Defense is made on the grounds that the name "Ever Ready" is descriptive and therefore the plaintiff's registration is invalid, that the products of the respective parties are non-competing, they are essentially different in purpose and use, and are sold in different markets for distinctive purposes. Several issues are thus presented, but the controlling question is: Whether the plaintiff by its use and registration of the trade name "Ever Ready" as applied to a light lubricant sold in small packages has so pre-empted the name as to justify the Court in restraining the defendants from selling, under a similar name, heavy motor oils and greases for the use in the operation of automobiles and like machinery.

The Trade-Mark Act of 1905, § 16, 15 U.S.C.A. § 96, provides that the registration of a trade mark shall be prima facie evidence of the registrant's ownership of the mark, and when a similar mark is applied by others to products of "substantially the same descriptive properties," such use may be enjoined and damages may be recovered; but no mark which consists merely of words or devices which are descriptive of the goods or of the character or quality of the goods is registerable or entitled to the protection given by the Act. The purpose of the Trade-Mark Act, 15 U.S.C.A. § 81 et seq., is to aid legitimate commerce by preventing confusion of goods either as to origin or sale and this Court has jurisdiction of both technical infringement and the issue of unfair competition. Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148.

The registration has established, prima facie, the plaintiff's proprietorship of the trade mark "Ever Ready", and both parties seem to agree that the obvious similarity of the defendant's mark "Eveready" brings it within the contemplation of the Act; but a consideration of the law and the circumstances presented is necessary to determine whether the terms are descriptive and whether the respective products are of substantially the same descriptive properties. A mark which is descriptive is not a good trade mark at common law (Warner & Co. v. Lilly & Co., 265 U.S. 526, 44 S.Ct. 615, 68 L.Ed. 1161), and the registration thereof does not create any substantive rights in the user, nor does he obtain any exclusive use or monopoly merely by the registration of a descriptive term (Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. ___, 39 U.S.P.Q. 296; Hygrade Food Products Corp. v. H. D. Lee Mercantile Co., D.C., 37 F.2d 900.

The Commissioner of Patents has granted registration of the words "ever ready" in many forms and for numerous commodities, and the approval of the term by the patent office experts creates a strong presumption of its validity as a proper trade mark under the Act (Feil v. American Serum Co., 8 Cir., 16 F.2d 88) as distinguished from a merely descriptive term. To justify a finding that the words are descriptive and the registration invalid (Warner & Co. v. Lilly & Co., supra) it must be shown that they apply especially to some ingredient, quality or characteristic of the lubricating oils under consideration. The words in question seem to have no particular reference to any ingredient or inherent characteristic or quality of oil. They suggest merely that the product is prepared, is readily available or is immediately usable, in the form of a word combination or catch phrase which, although frequently used, is no more descriptive of oil than of the scores of other commodities to which it is applied. We note also that the defendants themselves have so considered it, for they adopted and registered the name as their brand with the Pennsylvania Grade Crude Oil Association and have continuously sought to promote and protect it as a trade mark. Many other persons have used and registered the words "ever" and "ready" in various forms as trade marks, and although multiplicity of registrations may have no weight in statutory proceedings relating to registration (American Fruit Growers v. Michigan Fruit Growers, Cust. & Pat.App., 38 F.2d 696), we think that such extensive use and commercial adoption of the term indicates that it is generally accepted as a satisfactory trade identification of the products of the various users. In only one cited case has a similar term been held to be descriptive. Ex parte Rich Products Corp., 21 U.S.P.Q. 646. There the Commissioner of Patents held that the term "Evr Redy" when taken with other descriptive matter constituted the description of a special characteristic of dog food and was not registerable. However, that decision, like the decision of the Court of Appeals referred to in the Act (Section 9, 15 U.S.C.A. § 89), is not a judicial judgment. It is a mere administrative decision and instruction given for Patent Office administrative purposes (Postum Cereal Co. v. California Fig Nut Co., 272 U.S. 693, 698, 47 S.Ct. 284, 71 L.Ed. 478), and it cannot be controlling in the face of judicial recognition of the term as a valid trade mark (American Safety Razor Corp. v. International Safety Razor Corp., 3 Cir., 34 F.2d 445). We hold that the term "Ever Ready" is not descriptive within the meaning of the Act and that the plaintiff's registration of the trade mark is valid.

The second issue as to whether the respective products are of substantially the same descriptive properties involves some comparisons between them and incidentally a discussion of the possible rights of both parties to use similar names in their respective fields. Much technical testimony was given as to the similarity and the differences between the products of the respective parties, and some with regard to their distinctive uses; but from all of the scientific evidence submitted, it is possible to present the comparisons in simple language and to briefly set forth the basis of our conclusions. The products of both parties are derived from a common source, paraffin base crude petroleum. They are produced by the same process of distillation, used for a generally similar purpose, lubrication, classed in the patent office among oils and greases, and are sold to the general public as lubricants for relatively similar uses. They differ chiefly in viscosity or the rate of pour and in specific, although possibly overlapping, use. One is designed for lubricating small or light machinery and the other for heavy, and they may not be used interchangeably. They are sold in different quantities and packages and there is little likelihood of the public being misled as to the purpose for which each product may be used. Without reviewing in detail all of the properties and characteristics, it would seem obvious that they are both essentially the same as to ingredients, both are oils intended for lubrication of machinery, and that they are of substantially the same properties as to composition, source and use. The fact that one product is used to oil a bicycle and the other an automobile is not sufficient in itself to deny their similarity so far as descriptive properties are concerned. Refineries generally produce and dispense both types of lubricant and other distillates of petroleum, and it has been properly held that they are all in the same descriptive class. Ethyl Gasoline Corp v. Klibanow, D. C., 1 F.Supp. 584. We conclude that the goods of the respective parties are of substantially the same descriptive properties and that the plaintiff is entitled to the protection of the Act, unless the defendant can establish an equitable right superior to the rights of the plaintiff. Whether defendants...