Rubber & Celluloid Harness Trimming Co. v. F.W. Devoe & C.T. Reynolds Co.

• Decision Date: 08 June 1916
• Citation: 233 F. 150
• Parties: RUBBER & CELLULOID HARNESS TRIMMING CO. v. F. W. DEVOE & C. T. REYNOLDS CO.
• Court: U.S. District Court — District of New Jersey

233 F. 150

RUBBER & CELLULOID HARNESS TRIMMING CO. v. F. W. DEVOE & C. T. REYNOLDS CO.

United States District Court, D. New Jersey.

June 8, 1916

Chauncey G. Parker, of Newark, N.J., for defendant.

HAIGHT District Judge.

This suit was originally brought in the Court of Chancery of New Jersey, and was removed to this court because of the diversity of the citizenship of the parties. It is based on alleged unfair competition. Both parties are, and have been for many years, engaged in the manufacture and sale of brushes; the plaintiff in brushes generally, and the defendant in paint brushes. The unfair competition is claimed to exist in the way in which the defendant designates, marks and advertises certain kinds of its brushes. Prior to 1887 brushes had been made by setting or holding the bristles in cement, glue, pitch, or rosin, and binding them to the handle by means of a metal ferrule. In that year there was issued to the plaintiff, as assignor of one James A. Read, a patent for a new process of making brushes, that of holding or setting the bristles in rubber and binding the same to the handle by a belt of rubber, or rubber and metal combined; and in 1889 another patent was issued to it for the product of the process of the previous patent. Thereafter the plaintiff began the manufacture of brushes according to the patented process, and has ever since continued to do so. For a number of years it designated and advertised the brushes so made as 'Hard Rubber Set and Bound' and 'Hard Rubber Set'; and in 1906 it procured the registration of each of those phrases as trade-marks alleging that the former had been continuously used by it since March 1, 1890, and the latter since January 1, 1895. It had long been the custom in the trade to describe brushes according to the manner in which their bristles were set, as 'cement set,' 'glue set,' 'set in cement,' etc., for the purpose of distinguishing them and the uses to which they could be put. Some could be used in solvents; others could not.

Prior to 1905 the plaintiff had done very little, if any advertising of its products, except in the ordinary way, through the medium of trade journals. In the spring of that year, and some time after the patents had expired (they having expired before the usual 17 years limitation, because patents for the same product and process had been granted to Read in Great Britain and France in 1885; see section 4887 of Revised Statutes, before amendment of March 3, 1897 (29 Stat.L. 693, c. 391, Sec. 3)) the plaintiff inaugurated an extensive advertising campaign, and then adopted and caused to be registered as a trade-mark in the Patent Office the word 'Rubberset.' This word had been suggested by one of its employes, as the result of the offering of a prize for the best name to be applied to its brushes. Thereafter a very extensive advertising campaign was engaged in, and has since been continued. Many thousands of dollars have been expended therein. The advertising was carried on, not only in the trade journals (which had theretofore been the customary method), but in magazines, newspapers, periodicals, display matter, etc.; the idea being to reach the general public as well as the dealers. For several years after the plaintiff began to advertise thus extensively it had no competitors, as it had none before, in the field of making brushes according to the rubber setting process. Shortly thereafter, however, other brush manufacturers began to make such brushes and to put them upon the market. On e of the first to do so was the 'Rubber-Bound Brush Company,' which at first designated its brushes as 'Rubber-Bound,' and later, after objection to the former name was made by plaintiff, as 'Rubber-Vulc.' The use of this designation, as well as its corporate name, was, in 1912, enjoined by a decree of the Court of Chancery of New Jersey, which decree was subsequently affirmed by the Court of Errors and Appeals of New Jersey. Rubber & Celluloid Harness Trimming Company v. Rubber-Bound Brush Company, 81 N.J.Eq. 419, 88 A. 210, Ann. Cas. 1915B, 365, affirmed 81 N.J.Eq. 519, 88 A. 210, Ann. Cas. 1915B, 365. At the time the plaintiff adopted the word 'Rubberset' as its trade-mark, it designated its brush department as the 'Rubberset Brush Company,' and so notified the trade. This was later changed to the 'Rubberset Company.' It has used this name on its brushes and in all of its advertisements, catalogues, display matter, bill and letter heads, etc., since that time. Within a short time after the plaintiff adopted the word 'Rubberset' it commenced to use, on the majority of its brushes, metal ferrules, on which it caused to be embossed, in large type, the word 'Rubberset,' and nothing more. On the wooden handle it printed the 'Rubberset Company,' and an arbitrary name (which was according to the trade custom), which designated the brand of brush, but not its character, the word 'Rubberset' denoting the latter.

There is some dispute in the evidence as to whether other manufacturers had not preceded the plaintiff in so stamping or embossing the character of the brush on the metal ferrule. But I consider it established by the evidence that the plaintiff was the first to do so, except that in a few isolated instances, which by no means established a trade custom, the words 'set in glue' and a trade-mark had been theretofore imprinted, as distinguished from embossed, in small type on the ferrules of brushes made according to that process. In 1911 the defendant for the first time began to make and sell brushes, the bristles of which were set or held in rubber, and it proceeded to advertise the fact that it was doing so, in its catalogues and otherwise; not, however, by any means as extensively or in the same way as the plaintiff did, but it featured this particular line of goods. It also embossed on the ferrule the character of the brush, as it had not theretofore done with any other of its products, using the words 'Set in Rubber-- Devoe.' On some brushes the words 'Set in Rubber' were in one line and the word 'Devoe' underneath, the letters of each word being the same size; and in other brushes the words 'Set in' were on one line, 'Rubber' on another, and 'Devoe' on a third. In each the words 'Rubber' and 'Set' were prominently featured. It also stamped on the wooden handle 'F. W. Devoe & Company' and the arbitrary name which designated the brand of the brush. It is the use by the defendant of the words 'Set in Rubber' in its catalogues, on the brushes, and in its advertising and display matter, that the plaintiff claims constitutes the unfair competition, which is the subject-matter of this suit.

The defendant contends that the word 'Rubberset' is not a valid trade-mark, because it is merely descriptive of the process of manufacture, of the characteristics, qualities, or ingredients of the brush, and consequently that there can be no infringement of it, and that it has been guilty of no unfair competition, because it has not only not used the word 'Rubberset,' but has accompanied the words 'Set in Rubber,' whenever used, with its own name, which it claims clearly indicates that the brushes are not manufactured by the plaintiff, and thus has done all that the rules of law require that it should do. It is not claimed by plaintiff, either in its pleadings or in the arguments of counsel, that there is a technical infringement of a valid trademark; but it is insisted that under the facts in this case either the use of the words 'Set in Rubber,' alone, or the way in which the defendant uses them, constitutes unfair competition, as the latter phrase is now understood in the law.

I think it entirely clear that 'Rubberset' is not a valid trade-mark as applied to brushes made according to the Read process, because it does not in itself indicate the origin of manufacture, but is merely descriptive of the process of manufacture-- the essential characteristic of the brush-- the same as 'glue set,' 'cement set,' etc. These latter terms, the evidence shows, had been used by manufacturers to describe the manner in which their brushes were made, long before the plaintiff began to use 'Rubberset.' The general proposition upon which the above conclusion rests is, of course, so well settled as to need no citation of authorities; but the correctness of its application to the present case is demonstrated, I think, by the following cases, which are only a very few of those which might be cited: Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220U.S. 446, 31 Sup.Ct. 456, 55 L.Ed. 536; cases collected in the opinion of the Circuit Court of Appeals of the Eighth Circuit in the same case, Trinidad Asphalt Mfg. Co. v. Standard Paint Co., 163 F. 977, 979, 90 C.C.A. 195; Rice-Stix Dry Goods Co. v. J. A. Scriven Co., 165 F. 639, 91 C.C.A. 475 (C.C.A. 8th Cir.); Florence Mfg. Co. v. Dowd, 178 F. 73, 101 C.C.A. 565 (C.C.A. 2d Cir.); N.Y. & N.J. Lubricant Co. v. Young, 84 N.J.Eq. 469, 94 A. 570; Mississippi Wire Glass Co. v. Continuous Glass Press Co., 79 N.J.Eq. 277, 81 A. 374. The decisions of the New Jersey courts in the Rubber-Bound Brush Co. Case, supra, were based on unfair competition, and it seems to have been assumed that the plaintiff's trade-marks were invalid as such.

But, as plaintiff contends, it is also well settled that words which are not in themselves a valid trade-mark may, by association with the goods of a particular manufacturer, acquire a secondary signification differing from their primary meaning and denoting the product of that manufacturer, and when this is made to appear their use in that sense will be protected by restraining the use of the words by others in such a way as to amount to a fraud or deception on the public and to cause injury to those to whose...