Star Bedding Company v. Englander Company

• Decision Date: 02 January 1957
• Docket Number: No. 15434.,15434.
• Citation: 239 F.2d 537
• Parties: STAR BEDDING COMPANY, Appellant, v. The ENGLANDER COMPANY, Inc., Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

239 F.2d 537 (1957)

STAR BEDDING COMPANY, Appellant, v. The ENGLANDER COMPANY, Inc., Appellee.

No. 15434.

United States Court of Appeals, Eighth Circuit.

January 2, 1957.

Lawrence C. Kingsland, St. Louis, Mo. (Estill E. Ezell, Edmund C. Rogers, and Kingsland, Rogers & Ezell, St. Louis, Mo., on the brief), for appellant.

Edwin A. Rothschild, Chicago, Ill. (Alfred W. Petchaft, St. Louis, Mo., and Sonnenschein, Berkson, Lautmann, Levinson & Morse, Chicago, Ill., on the brief), for appellee.

Before GARDNER, Chief Judge, VOGEL, Circuit Judge, and HARPER, District Judge.

GARDNER, Chief Judge.

This was a civil contempt proceeding brought by appellant on allegations that appellee had violated and was continuing to violate the terms and provisions of a consent decree entered in a suit for alleged trade-mark infringement, which decree enjoined and restrained appellee, The Englander Company, Inc., "from using, in the sale of mattresses or similar goods, the word `Star' or any representation or symbol of a star, or any other colorable imitation of plaintiff's said trade-mark; and from otherwise infringing said trade-mark". The consent decree entered on December 3, 1945 terminated a trade-mark infringement action which appellant had commenced on January 5, 1945 against Stix, Baer & Fuller Co. and in which The Englander Company, Inc. had intervened. Appellant seeks a contempt adjudication only against The Englander Company, Inc.

As noted above, the original civil action out of which this present contempt proceeding arises was a trade-mark infringement suit. In that case the complaint charged that mattresses manufactured by appellee and sold at retail by Stix, Baer & Fuller Co. bearing a label consisting of the words "8-Star" in association with eight small five-pointed stars infringed appellant's trade-mark rights in the word "Star" and in a symbolic trade-mark comprising a five-pointed star. There were no allegations of unfair competition, passing off, or other collateral issues. The complaint tendered the issue as to confusing similarity between the label used in 1944 by appellee and appellant's registered trademarks. The complaint prayed for an injunction restraining defendant:

"(a) from using in the sale of mattresses or similar goods the word Star, or any representation or symbol of a star, or any other colorable imitation of plaintiff\'s trademark;

"(b) from otherwise infringing plaintiff\'s registered trademark."

In that action appellee intervened and took over the defense, denying that its label infringed appellant's trade-mark. In its answer it further alleged that appellee's label was a grade-mark, not a trade-mark, that stars were commonly understood to indicate grade and that a trade-mark for pillows was not infringed by a label affixed to mattresses. The issues framed by these pleadings were never tried but the litigation was voluntarily settled by the entry of a consent decree which recited appellant's ownership of its trade-mark and appellee's infringement thereof by its label, and which gave to appellant the injunctive relief against trade-mark infringement as above set forth.

The present proceeding was commenced by appellant December 10, 1954 by filing its petition for an order of contempt charging appellee with violation of the consent decree. The petition, in substance, charged that prior to the filing of the petition appellant had notified The Englander Company of its violation of the injunction but that notwithstanding, The Englander Company, with full knowledge of said injunction and of its violation thereof, had made and had sold and was selling and offering for sale mattresses to which it had applied the representation of a star and symbol of a star in infringement of appellant's trade-marks and in violation of the injunction. The petition contained allegations charging irreparable injury and prayed that appellee be punished for contempt and for injunctional relief.

In answer to the petition appellee, in effect, pleaded that the design of the ticking in question known as "Dawn Gray" and consisting of clouds, sky and scattered stars depicting a gray dawn sky, was merely decorative and did not purport to indicate the source or origin of the mattresses covered by it, that the stars in the design had no trade-mark significance whatever, that appellee's goods covered by the ticking were offered for sale, sold and purchased by the public as "Englander" products under customary labels, that no advertising or promotional material prepared or used by appellee or its retailers made any identifying reference to stars or to any other feature of the "Dawn Gray" pattern, that there was no confusion and no likelihood of confusion, and further, that the consent decree did not confer upon appellant an unrestricted monopoly in the use of a common decorative device in fabric patterns or grant to appellant's alleged trade-mark the scope of a design patent.

At the hearing of the proceeding appellant offered in evidence the petition with attached exhibit and invoked judicial notice of the proceedings in the original case, including the entire proceedings. There is set out in the printed record on this appeal as being embodied in appellant's proof copy of the pleadings in the original action, label depicting appellant's trade-mark and copy of the consent decree in the original action. Appellee offered evidence in support of the allegations of its answer and its evidence was not controverted by any evidence offered by appellant so that it cannot be said that there is any real dispute as to the primary facts.

Appellant is in the business of manufacturing and selling feature pillows and feathers in the general class of upholstery. At all times here material it was the owner of two trade-marks comprising the word "Star" and the symbol of a star under which it sold its products, exemplified in the record as Plaintiff's Exhibit A as follows:

The appellee manufactures and sells mattresses. It uses the star as a decoration of the covering of its mattresses. These stars do not purport to be a trade-mark as such but are part of the fabric covering of the mattresses. As appears from the evidence the ticking covering the mattresses is imprinted with a design comprising a stylized representation of clouds, sky and scattered stars simulative of a gray dawn sky. The design was originated in 1953 by a freelance designer for Golding Bros. Company, Inc., a large fabric manufacturer. Golding manufactured it as a stock pattern for its 1954 line and offered it to all its customers, including appellee, and in September of 1954 appellee purchased a substantial quantity of such ticking which Golding then had in stock. Appellee did not originate the ticking or even know of its existence until the fabric was offered for sale in the ordinary course of business. Thereafter, during the winter season of 1954-1955, mattresses made up from such ticking were sold by appellee and its retail outlets generally throughout the United States. Its mattresses so made all bore a large label on which the trade-mark "Englander" prominently appeared. All national advertising carried on by appellee with reference to these mattresses prominently displayed the trade-mark "Englander" and identified the mattresses as products of The Englander Company, Inc., and the stars on the covering of its mattresses were not marks identifying their source or origin. There was testimony of various customers who purchased the "Englander" mattresses showing that they had purchased them under the "Englander" brand and trademark and that the word "Englander" was the only thing which performed the function of a trade-mark or designated source or origin. There was also evidence that stars are a common component of textile designs and have been long and widely used in mattress tickings. The designer of this ticking, with more than forty years' experience, testified that he had used stars in mattress-covering fabrics many times and that designs incorporating stars go back to the history of fabric making. The vice-president of the country's largest ticking manufacturer testified that he had sold ticking material containing stars for more than twenty years. As pointed out by the trial judge, there was no evidence of any confusion between the merchandise of The Englander Company, Inc. and the merchandise of appellant. The court found all the issues in favor of appellee and specifically found that the accused article was not a label originated by appellee but the covering or ticking on a mattress which appellee procured on the open market, that fabrics containing the star symbol are numerous, that the ticking in question was originated and manufactured, unsolicited and unknown to appellee, by Golding Bros., and that Golding Bros., with whom appellee had no connection, is a manufacturer of fabrics. The court, in effect, found that all the material, affirmative allegations of the answer were established by the evidence and the court concluded as a matter of law that there had been no infringement of appellant's trade-marks by appellee and hence, no violation of the consent decree, and dismissed appellant's petition.

In seeking reversal appellant does not allege any specific errors on behalf of the trial court but urges: (1) that as between appellant and appellee the consent decree of December 3, 1945 is conclusive as to its...