O. & W. Thum Co. v. Dickinson

• Decision Date: 01 August 1917
• Docket Number: 2906,2907.
• Citation: 245 F. 609
• Parties: O. & W. THUM CO. v. DICKINSON. SAME v. A. K. ACKERMAN CO.
• Court: U.S. Court of Appeals — Sixth Circuit

245 F. 609

O. & W. THUM CO. v. DICKINSON.

SAME v. A. K. ACKERMAN CO.

Nos. 2906, 2907.

United States Court of Appeals, Sixth Circuit.

August 1, 1917

Petition for Rehearing Denied November 6, 1917.

Chappell & Earl, of Kalamazoo, Mich., and Kleinhans, Knappen & Uhl, of Grand Rapids, Mich., for appellant.

Willard F. Keeney and Roger C. Butterfield, both of Grand Rapids Mich., for appellees.

Before WARRINGTON, Circuit Judge, and COCHRAN and HOLLISTER District judges.

WARRINGTON Circuit Judge.

June 11, 1914, the O. & W. Thum Company, a Michigan corporation brought suit in the United States District Court for the Western District of Michigan, Southern Division, against Albert G. Dickinson, a citizen and resident of Grand Rapids, Mich., to enjoin his alleged infringement of a registered trade-mark; and on July 14th following the same company commenced suit in the United States District Court for the Northern District of Ohio, Eastern Division, against the A. K. Ackerman Company, an Ohio corporation, to enjoin its alleged infringement of the same trade-mark and also for unfair competition. ^[1] The defendants answered and the two cases were heard together and decided upon the evidence so presented; and a decree was entered in each case dismissing the bill, with costs. The Thum Company appeals from each decree The two bills of complaint are in the main similar in averment and in relief sought as to alleged infringement of trade-mark; the chief differences in averment relate, in the Dickinson suit, to certain alleged conduct of defendant Dickinson, and, in the Ackerman suit, to acts alleged in respect of that company as a broker engaged in the sale of Dickinson's products, while injunctive relief additional to that sought to restrain infringement is prayed in the Ackerman suit respecting certain acts charged in the bill as constituting unfair competition. ^[2] The plaintiff and defendant in the first case are rivals in the manufacture and sale of sticky fly paper; and the plaintiff and defendant in the second case are rivals in the sale of such paper. The defendant in the second case handles and sells only such paper as the defendant Dickinson produces, though by no means all; and this includes sheets of fly paper, cartons, and cases, such as Dickinson causes to be placed upon the market. If we ascertain, then, what the two main rivals, plaintiff and defendant in the first suit, have done and are doing in this line of business, we shall at the same time learn substantially all that is done by the Ackerman Company

The plaintiff's predecessors began the manufacture of sticky fly paper about 1883 at Grand Rapids, Mich., and the business has ever since been continued in that city by such predecessors and the plaintiff. The defendant Dickinson, through a corporation, began the same business in Grand Rapids in 1902, and (through that corporation and another and later individually) he has been engaged in this business since that time. The business of the Thum Company and that of defendant have been developed into large proportions, extending throughout this country and into foreign countries. The evidence has taken a wide range, and has brought out a number of controversies, which so far as necessary will be noticed as we progress.

I. Infringement of Trade-Mark. The Thum Company has several registered trade-marks. The particular mark which is claimed to be infringed is No. 57,567, entitled 'Trade-Mark for Sticky Fly Paper,' and was registered November 13, 1906. The following appears in the statement found in the certificate of registration:

'The trade-mark has been continuously used in the business of said corporation by it and its predecessors, from whom it derived title, since January, 1888, * * * and the particular description of goods * * * upon which the said trade-mark is used is sticky fly paper.'

And in the verified declaration it is stated that the trade-mark had been in actual use as a trade-mark of applicant or its predecessors 'for ten years next preceding the passage of the act of February, 1905 (Act Feb. 20, 1905, c. 592, 33 Stat. 724), and that to the best of his (affiant's) knowledge and belief such use has been exclusive. ' Neither of these statements nor the validity of the trade-mark is questioned.

The trade-mark so registered consists of an assemblage of figures shown in black ink and arranged as follows: (a) One full ellipse, centrally located, and near each end of its major axis a fractional ellipse, all arranged in succession, with their major axes extending lengthwise of the sheet on which the figures are displayed; (b) four circles disposed thus, one above and one below the adjacent parts, respectively, of the complete ellipse and each fractional ellipse; (c) the borders of the ellipses and circles may be said to be in the form of a scroll, the several borders having four figures, each resembling a bowknot, one at each end of the major and minor axes of the complete ellipse, and, so far as shown, of each fractional ellipse, and also at points equidistant upon the periphery of each circle.

According to one of defendant Dickinson's exhibits he made application to register a trade-mark in 1914, consisting of one full and two fractional elliptical figures, which so far as shown are so nearly true ellipses that they may fairly be called one full ellipse and two fractional ellipses, with their major axes disposed lengthwise of the sheet. Their borders are in single lines and terminate at each end of the major axes in what seems to be a Maltese Cross. A panel bordered in single line is disposed centrally within each main and fractional ellipse. Four sketches of flies in enlarged scale are disposed similarly to the four circles of plaintiff's trade-mark. The defendant's entire mark, as it was used throughout 1914 and as it has been since, is shown in black ink.

The statement accompanying defendant's application contains the following:

'The trade-mark has been continuously used in my business and in the business of my predecessor, the Grand Rapids Sticky Fly Paper Company, of Grand Rapids Michigan, * * * since 1904.'

Defendant offered testimony to show that this application was practically allowed August 31, 1914, which as we have seen was after the instant suits were begun. Attention, however, has been called to a decision of the Court of Appeals of the District of Columbia rendered April 2, 1917, in a case between the parties to the first of the present suits, in which the decision of the Commissioner of Patents allowing the defendant Dickinson's application, was reversed. Judge Robb, in announcing the opinion, said of the two marks here in question:

'Comparing the two marks, we cannot escape the conviction that there has been a studied attempt on the part of the applicant to put on the market a fly paper closely resembling that of opposer.'

In the practical use that has been made of these two marks certain matter has been displayed upon them to which attention should be called. Within the full ellipse and fractional ellipses of plaintiff's mark the word 'Tanglefoot' has been carried, which in itself is a trade-mark and was registered by plaintiff, in connection with other matter, December 11, 1894, No. 25,660, and was registered separately, in special style of type, November 13, 1906, No. 57,566. The validity of this mark is not in dispute. Within the four circles of plaintiff's mark the following appears:

(a) 'In cool weather warm slightly before opening;' (b) 'Catches the germ as well as the fly; (c) 'Pat. in the United States and Canada, trade-mark registered;' (d) 'Ask for Tanglefoot, it is the best fly destroyer.'

Beneath the complete ellipse it is stated:

'Made by the O. & W. Thum Co., Grand Rapids, Mich., U.S.A., and Walkerville, Ont., Canada.'

The word 'Sticky' is displayed within the complete and fractional ellipses of defendant, though only the ends of the four interior letters appear above and below the panels before mentioned, and upon each panel it is stated:

'The best fly paper, kills fly and germ, not poisonous.'

The letters of 'Sticky,' so far as shown, are in form similar to those of 'Tanglefoot.' The following appears immediately above the main ellipse:

'Open slowly; if paper tears, warm slightly.'

And immediately below:

'Grand Rapids Sticky Fly Paper Co., Grand Rapids, Mich., U.S.A.'

Now whether we consider these two marks according to their respective forms alone, or in connection with the accompanying matter of each, we fail to discover any reason for the resemblances brought about, unless the purpose was to imitate. The main figures of each are elliptical in form and disposed alike upon the sheets bearing the marks. The four circles of plaintiff's mark and the four flies of defendant's mark are positioned alike with reference to the complete and fractional ellipses. The test is to be found in the ensemble. If, for instance, an ordinary view is taken of all the parts together of each mark, so that each part is considered in relation to the whole, a substantial resemblance is apparent. It is in this way, since it is the natural way, that effective impressions of users are acquired; and the tendency to confuse one mark with the other, when either is seen separately, must be evident as respects the average purchasing user. The tendency here to confuse ultimate users-- indeed, to enable the palming off of defendant's goods as those of plaintiff-- is made more certain and continuous by the fact that the marks of plaintiff and defendant, respectively, are exposed on both sides of every sheet of sticky fly paper put out by either; and thus in dealings between retailers and ultimate users these marks necessarily come to the view of such users both...