SAN FRANCISCO ASS'N, ETC. v. Industrial Aid for Blind

• Decision Date: 13 February 1945
• Docket Number: No. 2530.,2530.
• Citation: 65 USPQ 267,58 F. Supp. 995
• Parties: SAN FRANCISCO ASS'N FOR BLIND v. INDUSTRIAL AID FOR BLIND, Inc.
• Court: U.S. District Court — Eastern District of Missouri

58 F. Supp. 995

65 USPQ 267

SAN FRANCISCO ASS'N FOR BLIND v. INDUSTRIAL AID FOR BLIND, Inc.

No. 2530.

District Court, E. D. Missouri, E. D.

February 13, 1945.

John H. Cassidy, of St. Louis, Mo. (Charles S. Evans and Hugh N. Orr, both of San Francisco, Cal., of counsel), for plaintiff.

Eilers & Schaumberg and Albert Chandler, all of St. Louis, Mo., for defendant.

HULEN, District Judge.

By this action plaintiff seeks to restrain defendant from infringement of plaintiff's alleged trademark, "Blindcraft," and from unfair competition. Plaintiff is organized under the laws of the State of California, and has its place of business in the City of San Francisco. It is engaged in the business of manufacturing and selling products, the handiwork of the blind. Defendant is organized under the laws of the State of Missouri, and is engaged in administering aid to the blind in the city of St. Louis and vicinity by providing facilities for the blind to manufacture and sell commodities.

In 1916 plaintiff started to use "Blindcraft" as a trademark, in designating its business, factory, and on labels attached to its product. Its products now consist of "reed and rattan furniture including chairs, settees, tables, jardinieres, lamp bases, standards and pedestals, lamp shades, couches, stands, smoking sets, shoe stands, hat racks, fern boxes and stools; also trays and baskets made of reed, rattan, hemp, wicker or grass; rugs and mats woven, knitted or sewn together and made of cotton, wool, grass, or hemp; brooms, brushes, dusters and mops; and many other similar products." Plaintiff registered the trademark on four different occasions between January 5, 1926, and February 12, 1929. The registrations make no reference to the blind and use of the mark to label their products. In 1923 George Pollard was superintendent of a shop conducted (subsidized) by the Missouri Commission for the Blind in St. Joseph, Missouri, and without knowledge of plaintiff's use of the term, originated the practice of referring to the shop supervised by him as "Blind Craft." By 1927-28, the Missouri Commission for the Blind was using the mark to label articles produced by the blind under its supervision and in shops subsidized by it in Missouri. Between 1923 and 1927-28, the Missouri Commission for the Blind substituted the letter "k" for "c" in the word craft. Defendant corporation was organized in 1934 and use of the mark "Blind Kraft" was then transferred to it by the Missouri Commission for the Blind, and has been continually used by it ever since, on labels attached to the products of the blind, manufactured and sold under its supervision. There has been no interruption in the use of the mark in Missouri since it was originated in the St. Joseph shop in 1923.

Plaintiff's knowledge of defendant's use of "Blind-Kraft" was received in 1939-40 during the Golden Gate Exposition in San Francisco when people from Missouri visited the plaintiff's exhibit and informed the parties in charge that "they had a `Blind-Kraft' in Missouri." (See testimony of Mrs. Ruth A. Quinan.) There is no other evidence that the sale of products of the blind by plaintiff and defendant have ever come in competition.

Plaintiff's place of business is in San Francisco. The deposition of Charles S. Evans was offered in evidence by the plaintiff. Mr. Evans is a "patent lawyer with offices in" San Francisco and has represented plaintiff in "trademark registrations and various matters of infringement." Mr. Evans testified that "when infringing use of the St. Louis Industrial Aid for the Blind, Inc., was brought to my attention, it was obvious it would be necessary to establish the wide distribution of my client's goods with the trademark used thereon." Certain memoranda of plaintiff's business were prepared at the request of this attorney, with the object of establishing "the wide distribution of" plaintiff's goods.

Three exhibits were offered, showing shipments of plaintiff's products. They are of interest more because of what they do not show than what they do show. Plaintiff's Exhibit 29 is a list of points to which shipments were made by plaintiff in 1926. This exhibit shows a shipment or shipments to Kansas City and Butler in the State of Missouri. Exhibit 30 is a list of individuals to whom shipments were made "to states east of Nevada from 1926 to 1932, inclusive." (The two shipments to Missouri shown in Exhibit 29 do not appear in this Exhibit.) This exhibit, while showing that plaintiff did make eighty-four shipments of its products over a period of six years east of the state of Nevada, fails to show a single shipment into the state of Missouri, only ten shipments into the state of Kansas in six years, and two shipments into the state of Illinois in six years. Plaintiff's Exhibit 31a is a summary "showing number of purchases shipped by Blindcraft to Missouri and neighboring states February — September, 1939." This was during the San Francisco Exposition. Whether the sales originated from plaintiff's exhibit there does not appear. According to this exhibit there were thirty-three shipments made into the State of Missouri during this period. The record contains no explanation of this method of showing "widespread distribution" of plaintiff's products, prepared at the instigation of plaintiff's attorney for use in this litigation. These exhibits are further of interest in that they fail to show what any shipment contained. Further proof of this phase of the case consists of depositions by C. Ed Hansen and Thomas C. Belton. Mr. Hansen is a hardware jobber located in San Francisco. Mr. Belton is a Department Manager for Baker and Hamilton of San Francisco. Mr. Hansen testified that sale of plaintiff's products through the institution represented by him extended "into eight western states." Asked if the products of plaintiff sold through the jobbing house with which he was connected "go into territory in or bordering Missouri?" the witness stated he did not know, but that they did sell in the states of "Colorado, Wyoming, Nevada, Texas, Arizona, Washington, Oregon, Idaho, Utah, and California." Mr. Belton testified that sales of plaintiff's products by the institution represented by him were to dealers in "Oregon, Washington and Nevada." He could not say if any of the products were shipped into the State of Missouri or neighboring territory.

There is no evidence that the plaintiff ever sold in Missouri or in the central west a single product of the character and kind produced by the blind and sold under the direction and supervision of the defendant. Plaintiff's business during the year 1943 (the record does not show of what it consisted) grossed approximately $200,000, and during the past twenty years has averaged $150,000 gross per year. Defendant's business was estimated at approximately $230,000 gross a year.

The defense, as the case was tried and now presented, is twofold: First, that "Blind Craft" or "Blind Kraft" is a descriptive and generic term and plaintiff can acquire no right to its exclusive use, and second, that defendant was the earlier user of "Blind-Kraft" in Missouri, and surrounding states, and defendant's products do not compete with plaintiff's products.

I. Does the plaintiff have a valid trademark in "Blindcraft?" Or does the word "Blindcraft" fall under the classification of a descriptive term; is it a generic term; and therefore not the subject of monopoly by plaintiff?

By the terms of the statute, "no mark which consists merely in * * * words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods * * * shall be registered under the terms of this subdivision of this chapter." 15 U.S.C.A. § 85(b).

We approach a decision of the question here presented, mindful that due effect should be given to plaintiff's registration of the mark in question. Such registrations, however, appear to be procedural and not substantive. Pennzoil Co. v. Crown Central Petroleum Corporation, D.C., 50 F.Supp. 891, loc. cit. 898. The adoption of a trademark does not establish its validity. The right to a trademark must grow out of its use. This right has exceptions. One is stated in the case of Parker Pen Co. v. Finstone, D.C., 7 F. 2d 753, loc. cit. 755:

"If a given mark is common to the trade when it is sought to adopt it as a trademark, it is obvious that it can never become a valid trade-mark. If a given mark has been common to a particular trade, it is manifest that by its adoption one cannot claim priority, which is fundamental on the question of exclusive appropriation."

The purpose behind the protection of the adoption and use of trademarks is to protect the owners and users in their respective lines of public relations and to safeguard the consumer by preventing the products of some one else being palmed off on him under a like or similar mark. McGraw-Hill Publishing Company v. American Aviation Associates, 73 App.D. C. 131, 117 F.2d 293. So a trademark, to be protected as such, in the class of cases now before this Court, is usually one which not only designates, but distinguishes the particular goods owned and sold by indicating origin or ownership. Another exception, the rule on adoption of descriptive words, is as follows:

"A descriptive word used in its primary sense does not do this and a manufacturer has no right to the exclusive use of any such word which has no relation to the origin and ownership of goods. Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581. A word descriptive of the goods, or some feature or function of them, is not available as a trade-mark. Nims, 3d Ed." Folmer Graflex Corporation v. Graphic Photo Service, D.C., 44 F.Supp. 429, loc. cit. 432.

An examination of decisions of the appellate courts in trademark cases does not show a clear line of demarcation by which general rules can be applied to a particular case, with the result that a mark either stands...