Telechron, Inc. v. Telicon Corp.

• Decision Date: 09 September 1952
• Docket Number: No. 10512.,10512.
• Parties: TELECHRON, Inc. v. TELICON CORP.
• Court: U.S. Court of Appeals — Third Circuit

198 F.2d 903 (1952)

TELECHRON, Inc. v. TELICON CORP.

No. 10512.

United States Court of Appeals Third Circuit.

Argued February 5, 1952.

Decided September 9, 1952.

Philip Handelman, New York City (Handelman & Ives, New York City, Walter H. Schulman, New York City, on the brief), for appellant.

James F. Hoge, New York City (Hugh M. Morris, Alexander L. Nichols, Wilmington, Del. (Hector M. Holmes, Boston, Mass., Lenore B. Stoughton, George M. Chapman, New York City, on the brief), for appellee.

Before GOODRICH and HASTIE, Circuit Judges, and MODARELLI, District Judge.

HASTIE, Circuit Judge.

This is an appeal from a decree for plaintiff, Telechron, Inc., against defendant, Telicon Corporation, pursuant to a complaint charging trade-mark infringement and unfair competition. The district court adjudged that plaintiff's "Telechron" is a valid registered trade-mark, that "Telicon" as used by defendant is a colorable and infringing imitation of "Telechron" and that defendant be permanently enjoined from the use of "Telicon" both as part of its name and in connection with the merchandising of radio and television sets and equipment.

A careful and elaborate district court opinion,¹ with nearly 100 supporting footnote references to particular items in the large record of two hearings, and the clear briefs and arguments of counsel have simplified our task of identifying, analyzing and disposing of the decisive issues. And since we agree with the ultimate conclusions and the judgment of the district court, this opinion will be restricted to particular points upon which additional discussion may be helpful.

We begin with the status of "Telechron" as a registered trade-mark. In 1918 Henry Warren obtained letters patent for a timing device, the novel feature of which was a self starting synchronous electric motor successfully adapted to the operation of a clock. At the outset the device was manufactured and sold by Warren Clock Co. That company changed its name in 1926 to Warren Telechron Co., which in 1946 became Telechron, Inc. Ever since 1918 this corporation has been engaged in the manufacture and sale of synchronous electric motors and clocks and sundry related timing and switching devices. The enterprise has been highly successful.

In 1919 the inventor Warren coined the word "Telechron" which has been used ever since by the Warren Clock Co. and its successors in connection with their products and, since 1926, as part of the corporate name of the enterprise. In 1923 the corporation registered "Telechron" as a trade-mark for clocks, and in 1924 as a trade-mark for electric motors. There have been appropriate renewals of registration.

"Telechron" was formed by prefixing the Greek root "chron" with "tele", itself a combining form of Greek origin. "Kronos" was the mythological "God of Time". Adverbially, "tele" signified "from afar". Thus the etymology of the coined word yielded a connotation of "time from a distance".

The district court has protected "Telechron" as a statutory trade-mark lawfully registered under the Trade-Mark Act of 1905, 33 Stat. 724, 15 U.S.C. c. 3 (1946 ed), now 15 U.S.C.A. § 1051 et seq. However, defendant insists that the mark was not entitled to registration in first instance, reasoning that the word "Telechron" is "descriptive" within the prohibition of Section 5(b) of the Trade-Mark Act that "no mark which consists * * * merely in words * * * which are descriptive of the goods with which they are used, or of the character or quality of such goods * * * shall be registered under the terms of this subdivision of this chapter". 15 U.S.C. § 85 (1946 ed.), now 15 U.S.C.A. § 1052.

This statute, essentially no different from an equivalent doctrine of equity jurisprudence,² unquestionably precludes the use as a technical trade-mark of a word which in primary meaning describes generally or in particular attribute some article or articles of commerce.³ At the other extreme it is equally clear that this limitation does not preclude the registration of a word which is a combination of nonsense syllables and thus yields no meaning on its face.⁴ Here we have neither of those extremes. We are dealing with a coined word, not found even in approximation in the English or any other familiar language before Warren devised it for the use of plaintiff's predecessor.⁵ But it is a "coined word with a penumbra of suggestion".⁶ For the derivation of the new word, already alluded to, was such as to suggest to those informed in etymology or grounded in classical Greek the involvement of some conception of "time from a distance". But this idea was too imprecise for meaningful description of any article or object of commerce. We are unable to see how at the outset it could have conveyed even the vaguest mental image of any particular thing or its attributes. Even later, when the synchronous electric clock had become well known we think the idea of "time from a distance" was not "descriptive". It was in the intermediate category of "suggestive" words which may become technical trade-marks.⁷

This distinction for purposes of trade-mark appropriation between descriptive and suggestive words is not arbitrary. The sense of it is made clear by just such a case as we have here. The basic reason for refusing to allow the exclusive appropriation of descriptive words in trade-marks is the danger of depleting the general vocabulary available to all for description and denomination of articles of commerce. It is unwise to risk the development of a situation in which those attempting to market their goods will find that they can not use apt normal words or phrases in depicting or characterizing articles because of language preemptions by others. So the legal protection of trade-marks is restricted in manner calculated to keep such descriptive words free for all.

The devising and registration of "Telechron" created no such danger of impoverishment of the language. "Telechron" had no existence as a word before Warren devised it. Though its elements were a familiar root and a familiar combining form it neither looked like nor sounded like any other word which someone else might want to use in merchandizing. Thus the only restrictive effect which could be anticipated from the exclusive appropriation of this coined word as a trade-mark would be to prevent subsequent innovators from devising and employing in confusing ways still other new words of similar sound or appearance. This is a small and relatively unimportant restriction upon future business. It is neither harsh nor unfair. It is amply justified by the large interest in protecting the entrepreneur who already has developed a new trade symbol and utilized it to designate his own output. Thus analyzed any suggestiveness in "Telechron" does not amount to that descriptiveness which invalidates a trade-mark.

A second argument against plaintiff's claim of exclusive right to "Telechron" is predicated upon the holding and language of Singer Manufacturing Co. v. June Manufacturing Co., 1896, 163 U.S. 169, 199, 16 S.Ct. 1002, 1014, 41 L.Ed. 118, "That where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created." Even if "Telechron" was not originally descriptive defendant contends that it has become generic, a familiar name given to timing and switching devices of whatever origin employing the principle discovered by Warren and for a time exploited and marketed exclusively by plaintiff under protection of patents.

It is not denied that at all times there have been other familiar words apt to designate these devices. Indeed this record is full of such use of such words as "preselectors," "synchronous electric motors" and "electric clocks." But, argues defendant, "Telechron" has become a kind of compendious synonym embracing all these devices. This could have happened, although it seems a bit awkward and unlikely in view of the dissimilarities of the articles and the doubtful occasion for much use of a single word to designate them all, except by way of indicating a common source. But the important thing is that this question of how a particular word has been used and how it has been understood is a question of fact. In the district court it was necessary to discover as a fact whether the public or the trade ever came to use or understand Telechron in the fashion alleged by the defendant.

We have found in the record, as did the district court, substantial and persuasive testimony relevant to this factual issue. It is unnecessary to repeat the district court's reference to and summarization of much of that testimony. The district court concluded that "Telechron" had not become the name of any article or category of articles. Rather the court found that "Telechron" continued to be understood by the public and the trade as a symbol of good will indicating merchandise from a single source, all in accord with the intention and representation of Warren and the plaintiff. On the evidence that finding was a reasonable and proper one. Therefore, we should and do sustain it.

With controversy as to this issue of fact thus resolved, there is no basis for the argument which the defendant predicates upon the holding and language of the Singer case. For while that case and other decisions which follow it⁸ do point up the possibility and even the likelihood that, when the monopoly of a patent expires, a word formerly associated with the patented article as a trade-mark may pass with it into the public domain, it is clear that this consequence depends upon whether to the public or the trade the word has in fact become a name for the article itself. It is common knowledge that "Cellophane", "Singer", "Aspirin" and many other names have in...