Speed Products Co. v. Tinnerman Products, 172
| Decision Date | 15 April 1955 |
| Docket Number | 23013.,Docket 23012,No. 172,173,172 |
| Citation | 222 F.2d 61 |
| Parties | SPEED PRODUCTS CO., Inc., Plaintiff-Appellee, v. TINNERMAN PRODUCTS, Inc., Defendant-Appellant. SPEED PRODUCTS CO., Inc., Plaintiff-Appellee, v. TINNERMAN PRODUCTS, Inc., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Second Circuit |
COPYRIGHT MATERIAL OMITTED
Harry Price and Charles M. Palmer, New York City, for plaintiff-appellee.
Bates, Teare & McBean, Cleveland, Ohio, Darby & Darby, Floyd H. Crews, New York City, Albert R. Teare, Cleveland, Ohio, for defendant-appellant.
Before CLARK, Chief Judge, HINCKS, Circuit Judge, and SMITH, District Judge.
To understand the issues raised on this appeal, it is necessary that we review the highlights of the extended litigation over trademarks waged by the parties. Speed Products, Inc. (hereinafter called "Speed") commenced an action in the United States District Court for the Southern District of New York against Tinnerman Products, Inc. (hereinafter called "Tinnerman") in 1946. This was Civil Action 38-662 hereinafter referred to as the "first action." In this first action Speed sought the following relief: (1) Registration under Rev.Stat. § 4915, 35 U.S.C.A. § 63,* of a trademark, No. 460,846, after registration had been denied in the Patent Office, and (2) a declaratory judgment that two other registered trademarks owned by it were valid and did not infringe any registered trademarks belonging to Tinnerman, or, in the alternative, that Tinnerman's registered trademarks were invalid. Tinnerman sought relief by way of a counterclaim alleging that Speed was using the above unregistered trademark, No. 460,846, in such a way as to infringe three registered trademarks owned by Tinnerman, viz: No. 244,038, No. 347,986 and No. 352,197. In this counterclaim Tinnerman prayed for a judgment declaring that its three trademarks were valid and its exclusive property "as applied to fastening devices, including staples," and for an injunction against infringement by Speed.
The trial court held that Speed was entitled to registration of its trademark No. 460,846 and also held that its two previously registered trademarks, No. 246,812 and No. 416,025, were valid and did not infringe any of Tinnerman's registered trademarks. On the counterclaim the trial court held that Tinnerman's three registered trademarks were valid but that they were not infringed by Speed. Tinnerman appealed, and Speed cross-appealed from so much of that judgment as accorded validity to Tinnerman's trademarks.
On that appeal, this court held, 179 F.2d 778, that Speed was not entitled to register No. 460,846. We also held that two of Tinnerman's trademarks were invalid: (1) No. 347,986 designated as "Speed Clip," and (2) No. 352,197 designated as "Speed Nuts" because "descriptive" in that "both are dominated by the word `SPEED' which describes one of the qualities of the clip and nuts." We also held that Tinnerman's trademark "Speed Nut," No. 244,038, was valid but subject to collateral attack in this country. We did not decide whether Speed's registered trademarks infringed Tinnerman's marks or whether Speed's registered trademarks were valid. And we held that Tinnerman would be entitled to injunctive relief on its counter claim only on proof (1) that one or more of its marks (two of which marks were invalid and the third subject to collateral attack) had acquired a secondary meaning before Speed or its predecessor began to use in the field of stationery staples the mark "Speed Fastener," No. 246,812, that being — as the record then stood — its earliest use of "Speed" as a mark, and (2) that confusion would result between Speed's present use of that mark and Tinnerman's trademarks. For proofs on those issues and for further findings thereon by the trial court, the first case was remanded.1
On remand, the trial court held that Tinnerman was not entitled to any relief on its counterclaim. This holding was based on a finding that Tinnerman had failed to prove that its trademark had acquired a "secondary meaning" before Speed began using its mark designated as "Speed Fastener," and that confusion would result. The trial court also held that Tinnerman was estopped from seeking the relief prayed for in the counterclaim on the ground of laches. The counterclaim was accordingly dismissed, and the present appeal in the first action is from that decree of dismissal. This we now discuss.
The trial court, for the purpose of deciding the "secondary meaning" issue, had to find when Speed first began using the mark "Speed Fastener" in connection with the sale of office and stationery type staples. It found that the proper date was 1926. Tinnerman challenges this finding contending that on the first trial the district court had held that the earliest date of Speed's use was 1936 and that this finding had been affirmed by the Court of Appeals. Consequently, Tinnerman argues, on the ground of res judicata the trial court on remand was precluded from finding any date other than 1936 as the "critical date." We turn to consider the three grounds on which this argument is based.
While the Appellate Court did quote Finding No. 6 as made by the District Judge on the first trial, we do not think that it, or the trial court, intended to give that finding the interpretation urged by Tinnerman. This conclusion is reached by reading Finding 6 in context with Findings 4 and 5. These three findings we set out in a footnote.2 It appears from Finding No. 4 that the trademark "Speed Fastener," No. 246,812, was registered in 1928. Finding No. 5 indicates that "thereafter" the mark was used by Speed's predecessor, Parrot Speed Products Corporation, in its sale of office and stationery type staples. It does not purport to state precisely when the mark was first used nor does Finding No. 6 so state. Finding No. 6 is thus seen to mean only that at least from 1936 on the mark was used by Speed. The earliest date of such use does not appear to have been made the subject of a specific finding.
Tinnerman stresses a passage in the opinion of the Appellate Court wherein it stated that "the only question remaining is whether defendant's (Tinnerman) trademarks had acquired a secondary meaning before plaintiff (Speed) entered the field."3 A fair reading of the whole opinion indicates that all that was meant was that the "only remaining question" for the court to discuss in its opinion was that of secondary meaning in Tinnerman's marks before the critical date. It did not mean, as Tinnerman seems to contend, that the trial court could not, after a consideration of the pertinent evidence presented on remand, find that the "critical date" was other than the year 1936, or, put in another way, that the remand was limited solely to the question of whether Tinnerman's trademarks had acquired a secondary meaning after 1936. Our interpretation is further supported by the final paragraph of the opinion. 179 F.2d at page 782.
Thirdly, Tinnerman argues that the summary denial of Speed's petition for rehearing on the prior appeal, indicates appellate affirmance of 1936 as the critical date. But the denial did not mean that at all. It simply meant that the Appellate Court considered that its opinion had sufficiently dealt with all issues then before it on the record as it then stood, and that it should not speak further until the issues of secondary meaning and critical date had been fully developed on remand.
We conclude that the scope of the remand was properly interpreted by the trial court.
Not only was the finding by the trial court within the proper scope of the remand but also it is supported by a large quantity of convincing evidence. Tinnerman, aside from its res judicata argument just reviewed, seems not to challenge that finding. However that may be, we are satisfied that it is not "clearly erroneous" within the meaning of Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. United States v. United States Gypsum Co., 333 U.S. 364, 68 S.Ct. 525, 92 L.Ed. 746; United States v. Yellow Cab Co., 338 U.S. 338, 70 S.Ct. 177, 94 L.Ed. 150. Accordingly, we accept 1926 as the critical date.
The next key question as to the counterclaim was whether any of Tinnerman's registered trademarks acquired a secondary meaning before that date. The trial court concluded that the only mark belonging to Tinnerman that could conceivably qualify for this purpose was the trademark "Speed Nut" which had been patented by Tinnerman in 1924 as a "Spring Nut." It was also found that the nut was sold under the mark "Speed Nut" in the early part of 1924 though Tinnerman did not register it until April 5, 1928. "Speed Nut," as the trial court found, was in the field of staples, clips and fasteners. These findings do not appear to be disputed by Tinnerman. Thus the problem was narrowed to the question of whether Tinnerman's mark "Speed Nut" attained a secondary meaning in the two-year period (1924-1926) before Speed began using the trademark "Speed Fastener" in its sale of staples. On this question the lower court held in favor of Speed.
Tinnerman does not claim that the lower court improperly defined the doctrine of secondary meaning. Whether a particular trademark has acquired a secondary meaning is a question for the trier of the facts. LeBlume Import Co. v. Coty, 2 Cir., 293 F. 344; G. & C. Merriam Co. v. Saalfield, 6 Cir., 198 F. 369; 1 Nims "Unfair Competition and Trademarks," § 39. Again Rule 52(a) comes into play: we cannot reverse the lower court unless its findings of fact are clearly erroneous, which Tinnerman does not contend. On the ground that secondary meaning and confusion was not established we affirm the dismissal of the counterclaim. Hence, there is no need to rule upon the equitable defenses raised by Speed.
While the remand was pending Speed commenced a second action in the same court against Tinnerman (C.A....
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