Standard Paint Company v. Trinidad Asphalt Manufacturing Company

• Citation: 31 S.Ct. 456,55 L.Ed. 536,220 U.S. 446
• Decision Date: 10 April 1911
• Docket Number: No. 106,106
• Parties: STANDARD PAINT COMPANY, Appt., v. TRINIDAD ASPHALT MANUFACTURING COMPANY
• Court: United States Supreme Court

220 U.S. 446

31 S.Ct. 456

55 L.Ed. 536

STANDARD PAINT COMPANY, Appt.,

v TRINIDAD ASPHALT MANUFACTURING COMPANY.

No. 106.

Argued and submitted March 16, 1911.

Decided April 10, 1911.

Messrs. John F. Green and Frederick N. Judson for appellant.

[Argument of Counsel from pages 446-449 intentionally omitted] Messrs. W. B. Homer and R. M. Homer for appellee.

[Argument of Counsel from pages 449-451 intentionally omitted] Mr. Justice McKenna delivered the opinion of the court:

The Standard Paint Company, which we shall call the paint company, a West Virginia corporation and a citizen of that state, brought this suit against the Trinidad Asphalt Manufacturing Company, herein referred to as the asphalt company, a Missouri corporation, having its principal office in the city of St. Louis, Missouri, in the circuit court of the United States in and for the eastern division of the eastern judicial district of Missouri, to restrain the infringement of a duly registered trademark for the word 'Ruberoid' to designate a certain kind of roofing materials for covering houses and other buildings. The paint company alleges in its bill that it has used the trademark for more than twelve years, and has advertised the roofing very extensively under the name 'Ruberoid' roofing, and have built up a large and valuable trade therein in all parts of the United States and in foreign countries.

The roofing is manufactured in three different thicknesses, respectively called one, two, and three-ply, and is then made up into rolls, the strips in each rool being about 3 feet in width and about 70 feet long. The rolls are covered with paper wrappers, on which are printed, in large type, the words 'Ruberoid Roofing,' and inclosed in the rolls are directions for handling and laying the same, and the name of the paint company as manufacturer. The roofing contains no rubber.

The asphalt company also makes a roofing, not, however, of the same material as that of the paint company, but of the same thickness as the latter, and cut in similar widths and lengths, and sells it under the name of 'Rubbero' roofing.

Two contentions are made by the paint company: (1) That its trademark is a valid one and has been infringed by the asphalt company. (2) That the latter has been guilty of unfair competition. The court of appeals decided adversely to both contentions. 90 C. C. A. 195, 163 Fed. 977. Of the first contention the court said it was clear that the paint company 'sought to appropriate the exclusive use of the term rubberoid,' and that its rights were to be adjudged accordingly; and that as the latter, being a common descriptive word, could not be appropriated as a trademark, the one selected by the paint company could not be appropriated. The court said: 'A public right in rubberoid and a private monopoly of rubberoid cannot coexist.' The court expressed the determined and settled rule to be 'that no one can appropriate as a trademark a generic name or one descriptive of an article of trade, its qualities, ingredients, or characteristics, or any sign, word, or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth.' For this cases were cited and many illustrations were given, which we need not repeat. The definition of a trademark has been given by this court and the extent of its use described. It was said by the chief justice, speaking for the court, that 'the term [trademark] has been in use from a very early date; and, generally speaking, means a distinctive mark of authenticity, through which the products of particular manufacturers or the vendible commodities of particular merchants may be distinguished from those of others. It may consist in any symbol or in any form of words; but as its office is to point out distinctively the origin or ownership of the articles to which it is affixed, it follows that no sign or form of words can be appropriated as a valid trademark which, from the nature of the fact conveyed by its primary meaning, others may employ with equal truth, and with equal right, for the same purpose.' Elgin Nat. Watch Co v. Illinois Watch Case Co. 179 U. S. 665, 673, 45 L. ed. 365, 378, 21 Sup. Ct. Rep. 270. There is no doubt, therefore, of the rule. There is something more of precision given to it in Delaware & H. Canal Co. v. Clark, 13 Wall. 311, 323, 20 L. ed. 581, 583, where it is said that the essence of the wrong for the violation of a trademark 'consists in the sale of the goods of one manufacturer or vendor as those of another; and that it is only when this false representation is directly or indirectly made that the party who appeals to a court of equity can have relief.' A trademark, it was hence concluded, 'must therefore be distinctive in its original signification, pointing to the origin of the article, or it must have become such by association.' But two qualifying rules were expressed, as follows: 'No one can claim protection for the exclusive use of a trademark or tradename which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection.' And, citing Amoskeag Mfg. Co. v. Spear, 2 Sandf. 599, it was further said there can be 'no right to the exclusive use of any words, letters, figures, or symbols which have no relation to the origin or ownership of the goods, but are only meant to indicate their names or qualities.'

Does the trademark of the paint company come within the broad rule or within the qualifying ones? In other words, does it have relation to the origin or ownership of the roofing, or is it merely descriptive of the roofing? It is conceded that there is no rubber used in the preparation of the roofing. It is put forth as being in the 'nature of soft, flexible rubber.' It is described in the certificate of registration as follows: 'The class of merchandise to which this trademark is appropriated is solid substance in the nature of soft, flexible rubber in the form of flexible roofing, flooring, siding, sheathing, etc., and the particular class of goods upon which the said trademark is used is solid substance in the nature of flexible rubber.' And it is said that the 'trademark consists in the arbitrary word 'Ruberoid." Rubberoid is defined in the Century Dictionary as a tradename for an imitation of hard rubber. It is a compound of the word 'rubber' and the suffix 'oid,' and 'oid' is defined in the same dictionary as meaning 'having the form or resemblance of the thing indicated, 'like,' as in anthropoid, like man; crystalloid, like crystal; hydroid, like water, etc. It is much used as an English formative, chiefly in scientific words.' Rubberoid, therefore, is a descriptive word, meaning like rubber; but the paint company insists 'Ruberoid' is suggestive merely, not descriptive, 'because there is in fact no rubber used in its composition, and its only resemblance to rubber is in respect to its flexibility and its being waterproof.' But this contention makes likeness and resemblance the same as identity. If the roofing of the paint company was identical with rubber, it would be rubber, and not, as it is represented to be, as we have seen, 'in the nature of soft, flexible rubber.' It may rightly be called rubberoid, and so may be roofing made by others than the paint company, having the same rubber-like qualties,—flexibility and not pervious to water. The word, therefore, is descriptive, not indicative of the origin or the ownership of the goods; and, being of that quality, we cannot admit that it loses such quality and becomes arbitrary by being misspelled. Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning, as different, to bring the example to the present case, as the character of an article is from its origin or ownership.

We content ourselves with applying the principle of the cases which we have cited, and will not review the many cases in which it has been considered determinative or otherwise. These cases are collected in the opinions of the circuit court of appeals, and need not be repeated.

The second contention of the paint company is that the asphalt company has been guilty of unfair trade and competition. The latter company urges that we are without jurisdiction to consider the contention, and cites A. Leschen & Sons Rope Co. v. Broderick & B. Rope Co. 201 U. S. 166, 50 L. ed. 710, 26 Sup. Ct. Rep. 425, in which a claim to a trademark for a distinctively colored streak applied to or woven in a wire rope was declared invalid. The bill, in addition to the infringement of the trademark, alleged unfair competition. The defendant in the case demurred on the ground that the trademark set up in the bill was not a lawful and valid trademark. The demurrer was sustained and the bill dismissed and the decree of the circuit court was affirmed by the circuit court of appeals. The case was appealed to this court, and we affirmed the decree holding that the trademark was invalid. Excluding a right to take jurisdiction because the bill set forth unfair competition, we said: 'Nor can we assume jurisdiction of this case as...