Snap-On Tools Corp. v. Winkenweder & Ladd, Inc., 11991.

• Decision Date: 10 December 1957
• Docket Number: No. 11991.,11991.
• Citation: Snap-On Tools Corp. v. Winkenweder & Ladd, Inc., 250 F.2d 154 (7th Cir. 1957)
• Parties: SNAP-ON TOOLS CORPORATION, Plaintiff-Appellee, v. WINKENWEDER & LADD, Inc., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

250 F.2d 154 (1957)

SNAP-ON TOOLS CORPORATION, Plaintiff-Appellee, v. WINKENWEDER & LADD, Inc., Defendant-Appellant.

No. 11991.

United States Court of Appeals Seventh Circuit.

December 10, 1957.

Richard B. Finn, Chicago, Ill., Frank Zugelter, Cincinnati, Ohio, Norton L. Penney, Chicago, Ill., Finn & Van Mell, Chicago, Ill., of counsel, for appellant.

Casper William Ooms, Harry C. Alberts, Chicago, Ill., Robert C. Williams, Chicago, Ill., Robert L. Grover, Kermit L. Caves, Kenosha, Wis., of counsel, for appellee.

Before MAJOR, FINNEGAN and HASTINGS, Circuit Judges.

FINNEGAN, Circuit Judge.

Snap-On Tools Corporation, plaintiff, manufactures and sells tools and cabinets bearing the name Snap-On, its trade-mark, and defendant solicits orders for specialty drawers sold as Snap-On Drawers, which are manufactured by the Snap-On Drawer Company of Morrow, Ohio. This suit was commenced for unfair competition in the trade and for trade-mark infringement because, as plaintiff alleges, the name "Snap-On Drawers" and firm name "Snap-On Drawer Co." are colorable imitations of plaintiff's trademark and corporate name contraction "Snap-On." Relying on common law rights, plaintiff asked for and received, injunctive relief against infringement by, and unfair competition in, defendant's use of plaintiff's tradename and mark. The scope of that restraint, arrived at after the district court heard and received extensive evidence, is as follows. Defendant is restrained from:

(a) Using the word "Snap-On" or any reproduction, counterfeit, copy or colorable imitation thereof, as a brand name or trade-mark for cabinets, and specifically for drawer units;

(b) Using the word "Snap-On" or any reproduction, counterfeit, copy or colorable imitation thereof, in any firm or corporate name or business style, to-wit: "Snap-On," "Snap-On Drawer Co.," or "Snap-On Drawer Company," in connection with the production, sale or distribution of cabinets or boxes for any purpose;

(c) Engaging in the sale or distribution of any drawers or cabinets bearing the trade-mark "Snap-On" or any reproduction, counterfeit, copy, or colorable imitation thereof; and

(d) Doing any act or thing calculated to induce the belief that the defendant or its merchandise is in any way connected with the plaintiff or plaintiff's products.

As one of the chief grounds for reversal and remandment of the final judgment, entered below, defendant stresses Kellogg Co. v. National Biscuit Co., 1938, 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73. Such heavy reliance is, however, misplaced. Inapplicability of that opinion to the facts now before us is quickly shown in these two significant aspects mentioned by Mr. Justice Brandeis when explaining the Kellogg factual background: (1) "Since during the life of the patents `Shredded Wheat' was the general designation of the patented product, there passed to the public upon the expiration of the patent, not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known * * * citing and quoting" and, (2) "* * * To establish a trade name in the term `Shredded Wheat' the plaintiff must show more than a sub-ordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. This it has not done."

The current appeal involves points diametrically opposed to the two enumerated in Kellogg, supra. Item 1 is offset by finding of fact numbered 7, entered in the district court 150 F.Supp. 794:

"Plaintiff\'s applications to the United States Patent Office for registration of its trade-mark `Snap-On\' under Section 2(f) of the Trade Mark Act of 1946, 15 U.S.C.A. § 1052(f), for hand tools, automobile service tools, etc.; metal tool boxes, tool trays, tool chests and table high supports therefor; gauge blocks and strips, measuring calipers and micrometers, etc.; have proceeded to the point of publication and oppositions Numbered 29567, 30428, and 29565, by Snap-On Drawer Company; no final decision having yet been made."

From the evidence in the record before us we are satisfied that the findings of fact made by the district judge corresponding to point 2 in Kellogg, as well as the others he made, are not clearly erroneous, Fed.Rules Civil Procedure, Rule 52, 28 U.S.C., and we refuse to set them aside.

This is a comparatively simple instance of where a manufacturer, the plaintiff at bar, engaging in a national and international business, has continuously produced roughly 4000 different tools and tool containers or cabinets, since 1920. All of these items are sold under plaintiff's trade-name and-mark, and since the evidence supports the findings of fact, certain of them are reprinted below:

"Under its trade-mark `Snap-On,\' plaintiff has sold individual drawer units since 1933, and plaintiff presently has in its line an individual drawer unit as well as multiple drawer units intended for vertical stacking for build-up into various combinations.

"In the year 1920 plaintiff\'s predecessor adopted and used, and plaintiff now uses, on its various tools and cabinets the trade-mark `Snap-On\' presently in the forms as shown in plaintiff\'s exhibits 1-D, 3-D, 5-D and 35-D. Since 1920, said use of the trade mark `Snap-On\' has been continuous and without interruption throughout the United States and in many foreign countries.

"The plaintiff, Snap-On Tools Corporation, is known in the trade and generally referred to by the contraction `Snap-On\' which is also its principal trade-mark impressed in various styles on its products, catalogs, and brochures. About 85% of its tools presently bear the trademark `Snap-On\' and the remainder are identified with the trade marks, `Blue Point,\' `Supreme,\' and `Vacuum Grip.\' All these products are sold as `Snap-On Tools,\' and all the cabinets have thereon the name `Snap-On\' or `Snap-On Tools.\'

"The annual volume of business done by plaintiff under its trade-mark and -name `Snap-On\' as described above, in 1949-1950 amounted to $15,370,820, and presently amounts to more than $22 million each year. The sales volume from 1940 to 1950, inclusive, amounted to $143,699,035.

"Plaintiff spends, and has for many years

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