Prest-O-Lite Co. v. Heiden

• Decision Date: 04 January 1915
• Docket Number: 4118.
• Citation: 219 F. 845
• Parties: PREST-O-LITE CO. v. HEIDEN et al. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

219 F. 845

PREST-O-LITE CO. v. HEIDEN et al. ^[1]

No. 4118.

United States Court of Appeals, Eighth Circuit.

January 4, 1915

Moore Smith & Moore, of Little Rock, Ark. (Winter & Winter, of New York City, on the brief), for appellant.

W. E Hemingway, G. B. Rose, and D. H. Cantrell, all of Little Rock, Ark. (J. F. Loughborough, of Little Rock, Ark., on the brief), for appellees.

Before SANBORN, SMITH, and CARLAND, Circuit Judges.

SANBORN Circuit Judge.

The Prest-O-Lite Company makes and sells packages of acetylene gas for supplying automobile headlights, and undertakes to and does furnish any owner of an empty tank to one of its packages at any considerable city or town, and at many villages in the United States and parts of Canada, one of its filled tanks in exchange for this empty tank, for 10 per cent. of the cost of the original package. It has expended more than a million dollars in establishing this system of exchange, providing a stock of its gas packages at every considerable town ready for exchange, and advertising its gas packages and its system. It adopted and has used 'Prest-O-Lite' as a trade-mark for its packages which it displays on its cylindrical tanks containing its gas, and on December 25, 1906, it registered this trade-mark. After the business of this company and its system of exchange of its filled packages for its empty tanks had become fully established, advertised and well known throughout the country, and in February, 1913 the defendants below commenced to gather and fill empty Prest-o-lite tanks with gas which they produced and to sell these packages of their gas and to exchange them for empty Prest-O-Lite tanks for a small consideration. The Prest-O-Lite Company brought suit against them for infringement of its trade-mark and for unfair competition; the defendants by their answer denied both; evidence was produced; and at the final hearing the court below rendered a decree against the defendants, by which it enjoined them from filling, selling, or exchanging any of the tanks bearing the trade-mark Prest-O-Lite without covering the trade-mark with a notice that the contents of the tank were not prepared by the Prest-O-Lite Company or that they were not Prest-O-Lite gas. The Prest-O-Lite Company appealed from the decree because the court adjudged that the filling, selling, and exchanging by the defendants of the Prest-O-Lite tanks with the trade-mark covered by the label used by the defendants at the time of the decree did not constitute unfair competition, and because it did not enjoin the defendants from filling with their gas the Prest-O-Lite tanks, or selling or exchanging them when so filled, unless they first completely and permanently obliterated the plaintiff's trade-mark from the tanks. The tanks of the plaintiff are steel cylinders or bottles, and the Prest-O-Lite trade-mark is fastened upon them in this way: The tanks are first plated with copper; they are then plated with nickel; then a resisting material outlining the letters of the trademark is placed on the nickel surface, and the tank is given another coat of copper, which adheres to every part of it, except the lettering, so that the letters of the trade-mark then appear in nickel on the copper plating. These letters are not in the steel tank, and they can be removed by grinding them off with proper machinery for about nine cents a tank, but the defendants have not suitable machinery for this purpose. Before this suit was commenced, and up to the time that the preliminary injunction was granted, the defendants pasted on the Prest-O-Lite tanks, which they filled with their gas and sold, or exchanged, a paper label bearing the words: 'This tank is filled with Pure Acetylene Gas (Not Prest-O-Lite Gas). Headlight Gas Company. Little Rock, Arkansas'-- but the words 'Not Prest-O-Lite Gas' were in type much smaller than the words 'Pure Acetylene Gas,' and the labels did not always cover the plaintiff's trade-mark and often slipped from the tanks. After the preliminary injunction they enlarged the words 'Not Prest-O-Lite Gas' to the size of the words 'Pure Acetylene Gas' and put the labels on over the plaintiff's trade-mark with shellac. They covered the bottom of the label with shellac, and also the top of it. Then water does not remove it, and it may be taken off with a knife or scraper, and the record shows that one of the dealers to whom the defendants furnished Prest-O-Lite tanks labeled in this way made a practice of removing the labels before he exchanged them with the consumers or users. The legal effect of the decree below is to adjudge: (1) That it is an infringement of the plaintiff's trade-mark and unfair competition for the defendants to fill with their gas the empty Prest-O-Lite tanks, or to sell or exchange or deal in gas packages so made; but (2) that they may fill, sell, or exchange them if they cover the plaintiff's trade-mark with a paper label fastened with shellac, or otherwise in such a way that it is not capable of being easily detached, and which bears a notice that the tank is not filled with Prest-O-Lite gas.

Much argument in the briefs relates to the soundness of the first proposition. But the defendants have not appealed, and that question is not here for review. The second proposition alone is challenged by the appeal. Upon records not materially different from that in this case, that proposition has been exhaustively discussed, deliberately considered, and repeatedly decided-- twice by courts of equally authority with that of this court. The United States Circuit Courts of Appeals of the Sixth and Seventh Circuits have adjudged that parties are not entitled to refill Prest-O-Lite tanks with their gas, to sell gas packages so made, or to exchange them without completely and permanently obliterating and removing from the tanks the trade-mark 'Prest-O-Lite.' Searchlight Gas Co. v. Prest-O-Lite Co., 215 F. 692, 696, 131 C.C.A. 626; Prest-O-Lite Co. v. Davis, 215 F. 349, 350, 131 C.C.A. 491. And so are the decisions in Prest-O-Lite Co. v. Avery Lighting Co. (C.C.) 161 F. 648, 650, 652; Prest-O-Lite Co. v. Davis (D.C.) 209 F. 917, 922, 923, 924; Prest-O-Lite Co. v. H. W. Bogen (C.C.) 209 F. 915, 916; Prest-O-Lite Co. v. Post & Lester Co. (C.C.) 163 F. 63, 64. Unless this court was thoroughly convinced that these decisions were erroneous, it would be its duty to follow them in the interest of uniformity of decisions and certainty of law. A thoughtful consideration of the question in the light of the evidence in the record in this case, of these authorities, and of the only opinion to the contrary that has come to our attention, Prest-O-Lite Co. v. Auto Acetylene Light Co. (C.C.) 191 F. 90, has satisfied that the conclusions reached in the cases first mentioned above are rational and just and should be followed. Reference is made to the opinions in those cases for the reasons for this result, and further discussion of the question is omitted because it would be nothing but a repetition of what has already been so well said in those opinions.

Let the decree below be modified so as to read as follows, and, so modified, let it be affirmed.

Modified...