Speed Products Co. v. Tinnerman Products

• Decision Date: 18 May 1948
• Docket Number: No. 9700.,9700.
• Citation: 171 F.2d 727,83 US App. DC 243
• Parties: SPEED PRODUCTS CO., Inc. v. TINNERMAN PRODUCTS, Inc., et al.
• Court: U.S. Court of Appeals — District of Columbia Circuit

83 US App. DC 243, 171 F.2d 727 (1948)

SPEED PRODUCTS CO., Inc. v. TINNERMAN PRODUCTS, Inc., et al.

No. 9700.

United States Court of Appeals District of Columbia.

Argued January 26, 1948.

Decided May 18, 1948.

Mr. Charles M. Palmer, with whom Mr. Harry Price was on the brief, for appellant.

Mr. Albert R. Teare, with whom Mr. Herman G. Lombard, who entered an appearance, was on the brief, for appellee Tinnerman Products, Inc.

Mr. E. L. Reynolds, U. S. Patent Office, for appellee Lawrence C. Kingsland. Messrs. W. W. Cochran, Solicitor, U. S. Patent Office, and Joseph Schimmel, U. S. Patent Office, also entered appearances for appellee Lawrence C. Kingsland.

Before STEPHENS, CLARK and WILBUR K. MILLER, Associate Justices.

STEPHENS, Associate Justice.

This is a special appeal from two orders of the District Court of the United States for the District of Columbia, one enjoining the appellant Speed Products Company, Inc., from proceeding in the United States District Court for the Southern District of New York with an action there pending between the appellant and the appellee Tinnerman Products, Inc., until after the jurisdiction of the District of Columbia court had been exhausted in the instant proceeding; the other advancing the instant proceeding for trial. The principal question on the appeal is whether or not the injunction was properly issued. The facts are as follows:

On May 22, 1943, Speed Products made application in the United States Patent Office for registration of a trade-mark comprising an ornamental design and the expression "Speed" applicable to office specialties such as perforating and fastening devices, stapling machines, and the like. The application was opposed by Tinnerman as the owner of several trade-marks containing the word "Speed" applicable to hardware products. The Patent Office sustained the opposition, and on July 1, 1946, denied Speed Products' application. On November 7, 1946, in the District of Columbia court Speed Products commenced an action, under Rev.Stat. § 4915 (1878), 35 U.S.C.A. § 63, against the Commissioner of Patents seeking a decree directing him to register the trade-mark applied for. On November 14, 1946, Speed Products commenced action in the New York court against Tinnerman. Its complaint in that suit in a first cause of action, again founded upon Rev.Stat. § 4915, also sought a decree directing the Commissioner of Patents to register the trademark applied for. A second cause of action sought a declaratory judgment that none of Tinnerman's trade-marks was infringed by Speed Products and an injunction restraining Tinnerman from threatening Speed Products or its customers with infringement suits. On December 5, 1946, the Commissioner appeared in the District of Columbia court by answer. On the same date Tinnerman applied for (and on December 18 was granted) permission by the District of Columbia court to intervene, as an answering defendant and counterclaimant, in the Speed Products action against the Commissioner in that court. Tinnerman's answer resisted registration of the trade-mark applied for by Speed Products; and its counterclaim prayed for a declaratory judgment that its own trademarks were valid, for an injunction against infringement thereof by Speed Products, and for damages for alleged infringement. On December 27, 1946, Tinnerman moved in the New York court for dismissal of the first cause of action therein upon the ground that that court lacked jurisdiction to proceed under Rev.Stat. § 4915 in the absence of the Commissioner as a party. Tinnerman moved also that the second cause of action be stayed upon the ground that the issues therein had been raised by his counterclaim in the proceeding in the District of Columbia court. On March 27, 1947, the New York court denied both motions. It held that it could properly proceed with the first cause of action under Rev.Stat. § 4915 despite the absence of the Commissioner as a party; and it ruled that the second cause of action ought not be stayed since the jurisdiction of the New York court had attached first as to that cause. Speed Products Co., Inc. v. Tinnerman Products, Inc., 73 U.S.P.Q. 181.

In the fall of 1947 it became apparent to Speed Products and Tinnerman that the two suits, the one in the District of Columbia court and the other in the New York court, would be reached for trial at about the same time. Both parties moved in the District of Columbia court to have the time of trial in that court changed. Specifically, Tinnerman on September 25, 1947, moved for an order advancing the date of trial; Speed Products on October 13, 1947, moved for an order suspending proceedings until the action in the New York court had been tried — this upon the ground that the New York action was prior as between Speed Products and Tinnerman and that the New York forum was the more convenient for the parties. Then Tinnerman on October 15, 1947, again in the District of Columbia court, moved for an order enjoining Speed Products from proceeding in the New York court until the action in the District of Columbia court had been tried. The District of Columbia court heard all of these motions at the same time and on November 3, 1947, entered two orders. In one, responsive in part to the Tinnerman motion of October 15 just described, it enjoined Speed Products from proceeding in the New York court with the first cause of action therein, i. e., the action under Rev.Stat. § 4915. In a second order it directed that trial of the issue arising under the Speed Products complaint and the Tinnerman answer in the District of Columbia court, i. e., the Rev.Stat. § 4915 action therein, should be advanced; it ordered also that the trial of the issues arising under the Speed Products complaint and the Tinnerman counterclaim should be stayed until trial of the same issues had been had in the New York court. Speed Products then filed (under D.C.Code (1940) § 17 — 101) a petition for allowance of a special appeal from the first order enjoining it from proceeding with the Rev.Stat. § 4915 action in the New York court, and from that portion of the second order advancing for trial in the District of Columbia court the Rev.Stat. § 4915 action therein. We allowed the appeal.

Three principal questions are raised by the appellant Speed Products with respect to the granting of the injunction. First, did the District of Columbia court have jurisdiction to proceed against the Commissioner of Patents alone. It is contended that the Commissioner was not a proper party and that the court therefore did not have jurisdiction. This question is answered by Tomlinson of High Point v. Coe, 1941, 74 App.D.C. 364, 123 F.2d 65. There Tomlinson, a manufacturer of furniture, sought in the Patent Office to register as a trade-mark the term "The Williamsburg Galleries." This was first held by the Commissioner to be registrable and was published in the Official Gazette. Thereafter an opposition to the registration, based upon the use of a similar tradename, was filed by Colonial Williamsburg, Inc. The Examiner of Interferences sustained this opposition and the Commissioner of Patents affirmed. Tomlinson then brought suit against the Commissioner in the District Court of the United States for the District of Columbia under Rev.Stat. § 4915, not joining Colonial Williamsburg, Inc., as a defendant. The Commissioner moved to dismiss upon the ground that he was not a proper party, and the District Court granted the motion. On appeal we reversed, holding that the Commissioner was a proper party. We distinguished Coe v. Hobart Mfg. Co., 1939, 70 App.D.C. 2, 102 F.2d 270, and J. C. Eno (U. S.) Limited v. Coe, 1939, 70 App.D.C. 337, 106 F.2d 858. Speed Products attempts to distinguish the Tomlinson case from the instant case upon the ground that in the former the opposing party in the Patent Office had not a registered trade-mark but only a trade-name. But this distinction is relevant only to the question of the correctness of the decision of the Commissioner, not to the question whether under Rev.Stat. § 4915 the District Court had jurisdiction to entertain the action against the Commissioner alone to compel the registration of the trademark.

The second question is whether or not the District of Columbia ...