Shoe Form Co. v. Irwin Corporation

• Decision Date: 22 October 1946
• Citation: 68 F. Supp. 618
• Parties: SHOE FORM CO., Inc., v. IRWIN CORPORATION.
• Court: U.S. District Court — Southern District of New York

68 F. Supp. 618

SHOE FORM CO., Inc., v. IRWIN CORPORATION.

District Court, S. D. New York.

October 22, 1946.

Holland & Armstrong, of New York City, (Norman N. Holland, Frederick L. Edmands, and Dudley W. King, all of New York City, of counsel), for plaintiff.

Bernard Kovner, of New York City, (W. Lee Helms, of New York City, of counsel), for defendant.

RIFKIND, District Judge.

The complaint alleges infringement by the defendant of plaintiff's design patent and seeks an injunction and a judgment for damages and profits.

The case was tried to the court. The patent in issue is Des. 106968 "Design for a Box or similar article". The single claim reads, "I claim: The ornamental design for a box or similar article substantially as shown."

Fig. 2 is a section on the line 2—2 of Fig. 1.

The file wrapper shows a filing date of March 20, 1937. The first Patent Office action was taken on April 10, 1937. It rejected the claim on the ground of failure to show anything of patentable design novelty over the art shown in the cited references, to wit, Fuchs Des. 20,954, issued July 21, 1891; Fletcher Des. 25,576, issued June 2, 1896; Feder Des. 28,141, issued Jan. 11, 1898.

The applicant replied, under date of October 6, 1937. I quote his answer, in part, as follows:

"The rejection is believed to be quite un-warranted and is apparently attributable to the fact that the Examiner has failed to appreciate that the applicant's box is made of a transparent material. Before, however, referring specifically to that fact, it should be noted that the Fuchs patent shows a design simulating a box secured with string crossing around it transversely and longitudinally in the usual manner. No one can possibly say that applicant's design has the visual appearance of Fuchs or gives the suggestion of the Fuchs patent * * *.

"But the vital distinction between applicant's design and the references results from the fact that while the latter are made of opaque material, applicant's box as shown by the drawing and particularly Fig. 2 is made of a transparent material and provided with three transversely extending partitions and a central longitudinal partition. * * * In short, the design is dependent for its distinctive visual appearance upon the inside of the box as well as upon its outside, for to the eye of the observer the whole box is visible.

"If the Examiner is of opinion that the drawing does not adequately show the design as above described, a substitute will be filed or, if requested, a specimen will be submitted."

The claim was never amended by limitation to transparent material. However, on October 23, 1937, the Patent Office wrote that "Upon further consideration it is now believed that the design presents patentable novelty over the references of record."

In the usual manner, the applicant having requested a three and a half year term, he was advised that if he desired the patent to issue for a longer term, that is, seven or fourteen years, he must then advise the office to that effect within thirty days. Within the time prescribed the applicant requested an amendment for an extended term to a period of fourteen years.

Not much time need be spent on the question of infringement. By the standards established in Gorham Mfg. Co. v. White, 1871, 14 Wall. 511, 527, 20 L.Ed. 731; Geo. Borgfeldt & Co. v. Weiss, 2 Cir.1920, 265 F. 268 and Graff, Washbourne & Dunn v. Webster, 2 Cir.1912, 195 F. 522, 524, the defendant has infringed. Its box is a colorable imitation.

There are differences: the ribs are on top and bottom only and not on the upright sides; the number of longitudinal and transverse ribs is greater. The visual effect is the same.

The real issue is validity. Visual inspection of the drawing and of the exemplification compels the summary answer that it contains nothing of novelty or of originality. Res ipsa loquitur.

The exemplification shows a box made of transparent plastic; its dimensions show a base of 6 inches long by 3½ inches wide and about 1 inch high. It is fitted with a hinged cover, which is flanged and nested over the upright sides of the box to a depth of about ¼ inch. The corners are rounded. The surface is crossed by one longitudinal and three transverse ribs dividing it into eight...