Sylvania Electric Products v. Dura Electric Lamp Company

• Decision Date: 27 August 1957
• Docket Number: No. 12089.,12089.
• Citation: 247 F.2d 730
• Parties: SYLVANIA ELECTRIC PRODUCTS, Inc., Appellant, v. DURA ELECTRIC LAMP COMPANY, Inc., and Michael Portnow.
• Court: U.S. Court of Appeals — Third Circuit

247 F.2d 730 (1957)

SYLVANIA ELECTRIC PRODUCTS, Inc., Appellant, v. DURA ELECTRIC LAMP COMPANY, Inc., and Michael Portnow.

No. 12089.

United States Court of Appeals Third Circuit.

Argued May 17, 1957.

Decided August 27, 1957.

Leslie D. Taggart, New York City (Pitney, Hardin & Ward, Newark, N. J., Robert C. Nicander, New York City, Howard M. Cohen, New York City, Arthur J. Martin, Jr., Newark, N. J., on the brief), for plaintiff-appellant.

Alex Friedman, New York City (Harry B. Rook, Newark, N. J., Mock & Blum, New York City, on the brief), for defendants-appellees.

Before STALEY and HASTIE, Circuit Judges, and SORG, District Judge.

STALEY, Circuit Judge.

The argument is advanced upon this appeal that a certain symbol descriptive of a feature of a product may be registered as a trade-mark notwithstanding the fact that the feature admittedly performs a utilitarian function.

Sylvania Electric Products, Inc., brought an action in the district court under the Lanham Trade-Mark Act, 15 U.S.C.A. § 1051 et seq., for alleged trade-mark infringement, and for injunctive relief against unfair competition. The complaint prayed relief in the form of accounting, treble damages pursuant to 15 U.S.C. § 1117, delivery up for destruction of the alleged offending products, and a temporary and permanent injunction to restrain defendants from using the features to which plaintiff claims exclusive right.

From the year 1936, plaintiff's predecessor began the manufacture of photographic flash-bulbs with the air-leakage indicator which is the subject of the dispute in this case. This indicator is known as the "blue dot," and is composed of cobalto-cobalti cyanide, which is applied in an appropriate suspension on the top of the inside of the glass globe, opposite the base. It takes the form of a circular dot about one-eighth of an inch in diameter. Upon its application, this cobalt salt possesses a pink color. The vehicle in which the salt is suspended is evaporated during the course of manufacture when the atmosphere is exhausted from the globe and the globe is sealed to the stem. The cobalt salt applied to the inside of the flash-bulb changes to blue when the exhaustion of atmospheric air is complete. If the bulb is defective so as to permit air leakage, the spot remains pink. The color of the spot serves a dual purpose; it readily indicates to the producer those bulbs which were defective in the course of manufacture; it indicates also to the consumer those bulbs which later developed air leakage and thus were unsuitable for use at that time.

Defendant Dura Electric Lamp Co., Inc., began in 1950 to sell photographic flash-bulbs with a blue dot similar in all material respects to the blue dot used by Sylvania. Although plaintiff Sylvania had registered the blue dot as a trade-mark with the patent office in 1951, defendant Dura had never claimed the blue dot as a trade-mark. On July 11, 1952, approximately two years prior to the commencement of this suit by Sylvania, Dura had filed a petition in the United States Patent Office against Sylvania for the cancellation of Sylvania's registration of the blue dot, alleging that it was functional in character and therefore not the proper subject of trade-mark registration. The cancellation proceedings were suspended upon Sylvania's motion, pending the final disposition of the present suit.

The district court in this case found that Sylvania's use of the blue dot on its photographic flash-bulb was functional in shape, color, and position, and as such, could not be the subject of a trade-mark registration; that the blue dot acquired no secondary meaning; and that Dura did not engage in unfair competition. D.C.N.J.1956, 144 F.Supp. 112. From the judgment of the district court dismissing the complaint, plaintiff Sylvania has taken this appeal.

A determination of the validity of the "blue dot" trade-mark is, of course, prerequisite to any discussion of trade-mark infringement. The registration of a trade-mark by the Patent Office furnishes an evidentiary presumption of validity. A registered trade-mark may be cancelled by direct attack as prescribed by statute. However, it may also be collaterally attacked in any action where the validity of the mark is properly in issue. James Heddon's Sons v. Millsite Steel & Wire Works, Inc., 6 Cir., 128 F. 2d 6, 9, certiorari denied, 1942, 317 U.S. 674, 63 S.Ct. 79, 87 L.Ed. 541. Here Dura attacks the validity of Sylvania's registration of the blue dot with the argument that since it is functional it is not registrable. The district court agreed with Dura's contention and so do we.

Appellant frankly admits that the blue dot on its bulb is functional. Indeed, from the record, the finding of the district court to this effect is inescapable. Although the issue of whether an identifying mark which performs a function is registrable as a trade-mark is not new, appellant has been unable to direct our attention to any case or authority which permits such registration and our independent research has uncovered none. The general rule inhibiting the registration of functional marks is given in the Restatement of the Law of Torts, § 715 (1938):

"A trade-mark is any mark, word, letter, number, design, picture or combination thereof in any form of arrangement, which * * * (c) is not * * * a designation descriptive of the goods or of their quality, ingredients, properties or functions * * *."

The purpose of this rule is obviously to prevent the grant of perpetual monopoly by the issuance of a trade-mark in the situation where a patent has either expired, or for one reason or another, cannot be granted. See In re Walker-Gordon Laboratory Co., 1931, 53 F.2d 548, 19 C.C.P.A. Patents 749.

Case authority uniformly denies registration as a trade-mark to a functional feature of an article.¹ In re Winchester Repeating Arms Co., 1934, 69 F.2d 567, 21 C.C.P.A. Patents 1016; In re Walker-Gordon Laboratory Co., supra; Sparklets Corp. v. Walker Kidde Sales Co., 1939, 104 F.2d 396, 26 C.C.P. A. Patents, 1342; In re Forged Steel Products Co., 1941, 121 F.2d 492, 28 C.C.P.A. Patents, 1269.

Reliance of appellant is placed principally upon Capewell Horse Nail Co. v. Mooney, 2 Cir., 1909, 172 F. 826. In that case the mark in question consisted of a symbol in the form of small checks on the head of horseshoe nails. In upholding the validity of the trade-mark in that infringement suit, the court expressed doubt as to whether the mark performed any function, but made it quite clear that it recognized the rule that functionality prevents registration when it expressed the issue in the following manner:

"Whether the defendant used the check mark in manufacturing horseshoe nails, as a gripping surface or for the purpose of imitating the complainant\'s mark and manufacture so as to pass off his nails as those of the complainant." 172 F. at page 828.

The alleged trade-mark under consideration would be invalid even if the only objection raised against it were that it performs a function apart from any identifying characteristic. However, the Lanham Trade-Mark Act, 15 U.S.C.A. § 1052, spells out an independently sufficient reason to deny registration to Sylvania's symbol of the blue dot. That section recites that no distinguishing mark shall be refused registration unless it:

"(e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive * * * of them * * *."

The specific prohibition of the act denying registration to descriptive marks precludes the valid registration of the blue dot, whether it takes the form of a symbol, as it did here, or whether the mark be composed of the words "blue dot." It is of no significance that the alleged trade-mark may not be descriptive of the entire ...