THOR CORPORATION v. Automatic Washer Co., 1-60.

• Decision Date: 30 June 1950
• Docket Number: No. 1-60.,1-60.
• Citation: 91 F. Supp. 829
• Parties: THOR CORPORATION v. AUTOMATIC WASHER CO.
• Court: U.S. District Court — Southern District of Iowa

91 F. Supp. 829

THOR CORPORATION v. AUTOMATIC WASHER CO.

No. 1-60.

United States District Court S. D. Iowa, Central Division.

June 30, 1950.

COPYRIGHT MATERIAL OMITTED

Herbert H. Brown of the firm, Toulmin & Toulmin, Dayton, Ohio, and George R. Hise of the firm Miller, Davis, Hise & Howland, Des Moines, Iowa, for movant Automatic Washer Co.

Will Freeman of the firm, Bair, Freeman & Molinare, Chicago, Ill.; and Wm. F. Riley of the firm, Evans, Riley, Duncan, Jones & Hughes, Des Moines, Iowa, for plaintiff.

SWITZER, District Judge.

The motion before the court is one by the defendant Automatic Washer Company to strike several paragraphs of plaintiff's complaint under Fed.Rules Civ.Proc. rule 12(e) and (f), 28 U.S.C.A., in an action involving rights in trade marks between competing washing machine companies. A motion to make more definite and certain what plaintiff intended to mean by the use of the words in its complaint of "primary mark" and "secondary mark" was joined to the motion to strike. Plaintiff voluntarily submitted satisfactory explanation of these latter words by separate pleading and thus removed that motion from our consideration.

The bill of complaint by the plaintiff Thor Corporation is one asking for a declaratory judgment under Sec. 2201 and 2202, Title 28 U.S.C.A., wherein plaintiff seeks a decree mainly that the trade mark registration purportedly covering the words "Spin-dry" owned by the defendant company through registration No. 408,153 under the Trade Mark Act of 1920, now 15 U.S.C.A. § 1051 et seq., is invalid and void on the ground that such words are descriptive and incapable of exclusive appropriation. Also, that the plaintiff in the use of its trade mark "Automagic" on its products in no way infringes rights of the defendant because of its incorporated name "Automatic." The matter would be triable to the court alone.

Prior to the filing of the bill of complaint, the Automatic Washer Company under date of March 10, 1950, had directed a letter to the plaintiff company charging it with infringement and unfair competition in the use of the words "Spin-dry" and "Automagic." This letter was written to the Thor Corporation after the appearance in "Life" magazine of an advertisement of the "Thor Automagic Spinner-Washer," wherein the words in question appeared. That letter to the Thor Corporation reads as follows:

"We have observed your advertisement in a recent issue of "Life" using the trademark "Spin-dry" in connection with your washing machines. This trade-mark "Spin-dry" is owned by us and is registered as Registration No. 408,153.

"In addition, we notice that you use in association with "Spin-Dry" the word "Automagic". As our name is Automatic and has been associated with washing machines for many years, as also has been "Spin-Dry", this combination of names merely aggravates infringement.

"We have been advised by our patent counsel * * * that as a matter of law the foregoing trade-mark and name are being infringed, that this action is unfair competition and will undoubtedly damage us.

"We therefore are requesting that you refrain from further use of these names and particularly "Spin-Dry."

"We also wish to protest that you are using our name "Spin-Dry" in a descriptive or generic sense in which it is not properly used * * * ."

As stated, this accusatory letter impelled plaintiff to institute this action to test the validity of the trade-marks in question and to determine infringement and unfair competition.

The exhaustive briefs and the many specifications of claimed error in the pleading make it necessary in fairness to counsel to set out the objections made by defendant's motion to strike.

In Moore's Federal Practice, Vol. 1, p. 660, the rule is stated: "It should be noted that under subdivision (f) of Rule 12, a court should hesitate to strike matter unless it clearly appears to be `redundant, immaterial, impertinent and scandalous.' Thus, where certain evidential facts, when read with the bill as a whole, give a fuller understanding thereof, they should not be struck. In suits involving multiple and complex issues greater latitude in pleading may be allowed since the impertinence may not be so clear."

However, Rule 8(e)(1) of the Federal Rules of Civil Procedure, providing — "Each averment of a pleading shall be simple, concise, and direct." and Rule 12(f), that —

"* * * the court may order stricken from any pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter." circumscribe the range of pleading and compel the court to strike such as offend, subject to a liberal discretion generally by the court in this respect.

Defendant asserts that many paragraphs in plaintiff's bill violate these rules in great measure and should be so stricken, specifically objecting to the following paragraphs and parts of paragraphs for the reason: —

Par. 6, pleading the trade mark "Thor" is immaterial to the issues.

Par. 7, pleading the spending of $3,000,000 by the plaintiff for advertising its products manufactured under the primary trademark "Thor" is not pertinent.

Par. 8, the word "Thor" is not in issue.

Par. 9, the extent of plaintiff's advertising in magazines of national circulation is evidentiary.

Par. 15, wherein plaintiff states — "that such words (`spin' and `dry') are used in the ordinary everyday dictionary meaning, and that no trade-mark or identifying significance is intended or found in such words when used as set forth in the `Life' magazine ad." is a legal conclusion and not a statement of a cause of action, is impertinent, immaterial and...