Walgreen Drug Stores v. Obear-Nester Glass Co.

• Decision Date: 29 August 1940
• Docket Number: 11655.,No. 11654,11654
• Citation: 113 F.2d 956
• Parties: WALGREEN DRUG STORES, Inc., v. OBEAR-NESTER GLASS CO. CORNING GLASS WORKS v. SAME.
• Court: U.S. Court of Appeals — Eighth Circuit

113 F.2d 956 (1940)

WALGREEN DRUG STORES, Inc., v. OBEAR-NESTER GLASS CO. CORNING GLASS WORKS v. SAME.

Nos. 11654, 11655.

Circuit Court of Appeals, Eighth Circuit.

July 19, 1940.

As Modified on Denial of Rehearing August 29, 1940.

Wayne Ely, of St. Louis, Mo., and E. S. Rogers, of Chicago, Ill. (V. M. Dorsey, of Washington, D. C., and John H. Bruninga and John H. Sutherland, both of St. Louis, Mo., on the brief), for appellants.

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

Before GARDNER and SANBORN, Circuit Judges, and COLLET, District Judge.

GARDNER, Circuit Judge.

The appellee, Obear-Nester Glass Company, brought suit against appellant Walgreen Drug Stores, Inc., charging the infringement of its trade-mark No. 231,759, registered August 23, 1937. Appellant Corning Glass Works was permitted to intervene, and it took over the defense of the suit. The real controversy is between Obear-Nester Glass Company and Corning Glass Works. For convenience we shall refer to the Obear-Nester Glass Company as plaintiff and the Corning Glass Works as defendant.

Plaintiff alleged in its complaint that it had sold glassware, and particularly glass bottles, since a time prior to January 2, 1896, at which time it adopted the trade-mark "Rex," and molded it into or affixed it to glass bottles; that it registered its trade-mark "Rex" October 23, 1900; that it re-registered it August 23, 1927, and that it continued to use the trade-mark on its goods, and that a good will developed thereunder of great value, and that it does a large volume of business; that defendant Corning Glass Works has transported and sold in interstate commerce glassware, including bottles, bearing the trade-mark "Pyrex," which trade-mark is alleged to constitute an infringement of plaintiff's trade-mark.

The Corning Glass Works, in its answer, denied infringement, alleging that it had adopted "Pyrex" as its trade-mark in 1915 and continuously thereafter used it to identify glassware made by it with special properties adapting such glassware for chemical, industrial and optical uses and purposes and where thermal endurance is of value; that it has used this trade-mark since 1922 on its nursing bottles made of heat-resisting glass; that it has extensively advertised its products bearing the trade-mark "Pyrex"; that its trade-mark is of great value as indicating the source or origin of the glass bearing this mark; that its wares bearing this mark are well known throughout the United States, and that Obear-Nester has acquiesced in its right to apply "Pyrex" to its glassware and that it is estopped by reasons of its knowledge and acquiescence in its use of this trade-mark on its products to now claim that defendant is not entitled so to do.

The lower court made findings which in general sustained the allegations of plaintiff's bill of complaint. It found that plaintiff's trade-mark "Rex" was widely advertised and had become well known in the trade as identifying plaintiff's products long prior to the year 1915; that a substantial business was engaged in by plaintiff in glassware from 1917 to the date of the filing of the bill of complaint; that in 1915 Corning Glass Works adopted and began to use the word "Pyrex" for a line of glassware; to-wit, baking ware, and thereafter applied the mark "Pyrex" to laboratory ware; that still later, after making nursing bottles for a number of years, it applied the mark "Pyrex" to those bottles. The court made no definite finding as to whether Corning Glass Works did or did not have knowledge of the use of the trade-mark "Rex" at the time it adopted "Pyrex" as its trade-mark, but found that the Corning Glass Works denied such knowledge and had failed to establish that it used due care and caution to ascertain whether or not there had been a prior use of a confusingly similar mark, and that it admitted that it would have adopted "Pyrex" regardless of whether it had had knowledge of a prior use of the trade-mark "Rex." The court further found that on March 13, 1917, the Corning Glass Works registered "Pyrex" as its trade-mark for glass, and on October 14, 1924, registered it for nursing bottles; that in 1928, plaintiff first learned of the existing direct conflict between its and Corning's products, arising out of the use of both "Pyrex" and "Rex" on nursing bottles, and that plaintiff had notified Corning of the alleged infringement in 1930. The court also found that there was a manifest likelihood of confusion in the minds of purchasers between goods sold under the plaintiff's trade-mark "Rex" and the goods sold by Corning under the trade-mark "Pyrex," and that actual confusion had resulted; that plaintiff had not acquiesced in the use of "Pyrex" by defendant, and that defendant had sold in interstate commerce glassware bearing the mark "Pyrex," in infringement of plaintiff's trade-mark "Rex."

From these facts, the court found infringement and entered decree reciting, among other things, that plaintiff was the owner of the trade-mark "Rex" applied to glassware, and particularly to bottles and the like, and that defendant had infringed upon plaintiff's rights by the use of "Pyrex" upon goods of the same descriptive properties as those upon which plaintiff had used and was using its trade-mark "Rex." The court perpetually enjoined defendant from the use of the trade-mark "Pyrex" upon glassware, "and from counterfeiting, copying or colorably imitating the trade-mark `Rex,' and affixing it to merchandise of the same descriptive properties as those upon which the trade-mark `Rex' is employed by plaintiff." The decree also provides that the defendant shall account for profits "derived through the infringing use of the trade-mark `Pyrex,'" and for damages because of the infringing use of the infringing trade-mark "Pyrex."

The following facts are established either by admissions or by undisputed testimony, and although not embodied in the court's findings, we think them material to the issues in this suit.

The plaintiff has never manufactured any glassware, other than bottles. For many years subsequent to January 2, 1896, it applied the trade-mark "Rex" only to prescription bottles sold to druggists for that specific use. For a short time prior to 1919, the mark "Rex" was applied to liquor bottles, but this use was discontinued in 1919 and has never been resumed. At the time plaintiff procured its certificate of registration for the trade-mark "Rex," October 23, 1900, it stated that, "The class of merchandise to which this trade-mark is appropriated is bottles, and the particular description of goods comprised in said class upon which the trade-mark is used is prescription bottles. It is also usually displayed on the boxes or packages wherein the bottles are packed for shipment by stamping, printing, or affixing it on the box or package." When it applied to re-register the trade-mark on April 25, 1927, it stated in its application as follows: "Be it known that Obear-Nester Glass Co., a corporation * * *, has adopted and used the trade-mark shown in the accompanying drawing, for prescription bottles made of glass, Class 33, Glassware." From the date of the first registration of its trade-mark until 1928, with the exception of the application to liquor bottles, plaintiff has never at any time applied the mark "Rex" to anything other than prescription bottles.

The Corning Glass Works had, prior to 1915, perfected a manufacturing process by which it produced a special quality of glass which resists temperature changes and other shocks. The name "Pyrex" was applied to that glassware in 1915. The word has its origin in the Greek word "pyr", meaning fire, and the Latin word "rex," meaning king. Corning had theretofore applied the terms "Nonex" and "CRX" to glass of this character as indicative of its non-expansion qualities. Upon the adoption of the trade-mark "Pyrex," Corning applied it to many articles of glassware it was manufacturing, including all kinds of cooking utensils. It began the manufacture of laboratory equipment made of its heat-resisting glass and applied to that equipment the mark "Pyrex." Later, it manufactured electrical glass, such as insulators, industrial ware, such as pulleys for machinery, vacuum bottles, and many other articles of general as well as technical use. It manufactured a two-hundred inch telescope mirror disc for the California Observatory from its Pyrex glass and applied the name to the product. It manufactured the Mount Palomar two hundred-inch telescope mirror from its glass and applied the mark "Pyrex" to that product. It has spent millions of dollars advertising products of its manufacture from Pyrex glass as having peculiar heat-resisting qualities and characteristics not possessed by ordinary glass. The name "Pyrex," subsequent to 1915 and prior to 1922, became known throughout the country almost as a household word indicative of the products made of a particular kind of heat-resisting glass. The name "Pyrex" has been so thoroughly established as describing a heat-resisting glass that the late edition of the Merriam-Webster International Dictionary, Unabridged, contains the following definition:

"Py' rex (pi' reks) (Gr. Pyr. fire — L. rex king). A trade-mark applied to a variety of glasses and glassware usually resistant to heat, chemicals or electricity; hence (sometimes not cap.), glass or glassware bearing this trade-mark, — py' rex, adj."

Corning has never at any time manufactured or sold prescription bottles, but in 1922, it began the manufacture of a nursing bottle made for the purpose of permitting the heating of infants' food in the bottle without injury to the container. It applied the mark "Pyrex" to that product. In 1924, it obtained a certificate of registration of the trade-mark "Pyrex" applied to nursing bottles. It manufactured and sold many thousands of these bottles between...