De Walt, Inc. v. Magna Power Tool Corporation

• Decision Date: 14 April 1961
• Docket Number: Patent Appeal No. 6638.
• Citation: 289 F.2d 656,129 USPQ 275
• Parties: DE WALT, INC. (Pennsylvania Corp.), DeWalt, Inc. (Delaware Corp.), (Assignee by mesne assignments, substituted), Applicant-Appellant, v. MAGNA POWER TOOL CORPORATION (Yuba Consolidated Industries, Inc., substituted), Opposer-Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

129 USPQ 275, 289 F.2d 656 (1961)

DE WALT, INC. (Pennsylvania Corp.), DeWalt, Inc. (Delaware Corp.), (Assignee by mesne assignments, substituted), Applicant-Appellant, v. MAGNA POWER TOOL CORPORATION (Yuba Consolidated Industries, Inc., substituted), Opposer-Appellee.

Patent Appeal No. 6638.

United States Court of Customs and Patent Appeals.

April 14, 1961.

Rogers, Hoge & Hills, James F. Hoge, New York City (Mercer L. Stockell, New York City, of counsel), for appellant.

Flehr & Swain, Paul D. Flehr, San Francisco, Cal. (John F. Swain, San Francisco, Cal., of counsel), for appellee.

Before WORLEY, Chief Judge, RICH, MARTIN and SMITH, Judges, and WILLIAM H. KIRKPATRICK, Judge.^*

RICH, Judge.

DeWalt, Inc. applied for registration on the Principal Register of the words "Power Shop" as a trademark for woodworking saws, application Ser. No. 14,135 filed August 17, 1956. The original applicant was a Pennsylvania corporation, now replaced through mesne assignments by a Delaware corporation of the same name. Use since February 10, 1953, was claimed, which date applicant sought to amend to "at least as early as October 10, 1949."

Notice of opposition to the registration was filed February 25, 1957, by Magna Power Tool Corporation, a corporation of California, as maker and seller of the "Shopsmith,"¹ a multiple-purpose power tool, claiming prior and extensive use in a descriptive sense of the words "power shop." Paragraph 5 of the Notice of Opposition reads:

"The term `Power Shop\' in connection with woodworking saws and woodworking shops has a common accepted meaning both in the trade and to the public, viz., a shop or workshop in which the tools are power tools rather than hand tools. Woodworking saws are commonly found in such power shops."

Opposer asserts it would be damaged by the registration because, as applied to woodworking saws, "Power Shop" is a common, descriptive, generic term the registration of which would be a threat to opposer, its customers, or any other member of the public selling power tools similar to those of the parties, since it would make possible harassment by litigation based on the registration. It was further alleged that registration would be contrary to sections 2(e) and 2(f) of the Trademark Act of 1946, 15 U.S. C.A. § 1052(e, f) and in derogation of prior rights of the opposer and of all others similarly situated.

The basic "Shopsmith" tool, for which an extensive line of accessory tools is sold, is a combination shop tool, as distinguished from a hand tool, powered by a substantial electric motor and capable, by various adjustments or conversions, of serving as a vertical drill press, a table saw, a lathe, a disc sander, or a horizontal drill press, all intended primarily for use in woodworking. It is five feet long and weighs over 200 pounds. By substituting various tools it can also be used for grinding, buffing, mortising, jointing and shaping. An advertising piece attached to the Notice of Opposition shows that this tool was promoted by use of the prominent, and we may say apt, phrase "The Complete Power Shop in One Tool."

The woodworking saw sold by DeWalt, in connection with which it has employed the designation "Power Shop," is a competitive item in a similar price range. Technically it is known as a radial-arm saw and is the smallest member of a line of such saws sold by DeWalt which have ranged from one-half to fifteen horse-power. The smallest member, which was originally a half horsepower model but which has been constantly increased in power, commenced its market career some time prior to 1948 as the "Moto-Miter Box." In 1949 Mr. Dudley, a district manager of DeWalt on the West coast, got the idea of promoting the "Moto-Miter Box," theretofore sold primarily to building contractors, to the home workshop market through hardware and department stores. Since he disliked the name "Moto-Miter Box" and considered it unsuitable for use in connection with such a promotion, he selected the name "Power Shop," persuaded the company to adopt it, and the term "Power Shop" has ever since been used in connection with the small DeWalt saw. That designation has appeared in many different forms and, if we may be permitted to judge from what we can see in the current daily papers, the form of use is still undergoing changes. But from the record we may say that the two words "power shop" have sometimes been in larger type than "DeWalt" and sometimes smaller. They have been used in single quotes, double quotes, and without quotes. They have sometimes been used in such manner as in no way to distinguish them from other descriptive terminology. On the whole record, however, there seems to have been substantial use of the words as a trademark; or at least it is clear DeWalt attempted to make a trademark use of them.

Like "Shopsmith," the "DeWalt Power Shop" has been promoted as a multiple-purpose tool. One piece of literature, copyright 1949, calls it the "machine of 1001 uses" (initially 101 uses, which was felt to be too modest) and specifies the following ten main categories: tilting arbor saw, cut-off saw, dado machine, shaper, router, tenoner, sander, horizontal drill, grinder, and metal cutter. By using other attachments which DeWalt sells as accessories, still other functions can be performed.

The general factual background of the issues here may be summed up as follows: Commencing at about the same time in 1949, the applicant, DeWalt, and opposer, Magna, have both used the words "power shop" in connection with the sale of multiple-purpose power tools which are basically woodworking saws. DeWalt, after using these words in a variety of ways for about seven years, decided to register them as a trademark. Magna, after using the identical words to describe its "Shopsmith," making no claim to any trademark rights in the words "power shop," opposes the registration because it considers that the registration may interfere with a continuation of the descriptive use it has been making of those words over a long period of time.

As might be expected, the parties take up diametrically opposed positions, Magna claiming that the words "power shop" are wholly descriptive of power saws and DeWalt insisting that they are not and saying that even if they are, they have become distinctive of its goods through long use and substantial advertising which has given them a secondary meaning. As is so frequently the case, the truth of the matter appears to lie somewhere in between.

There is also a dispute as to which party was the first to use "power shop" in its promotion of saws but in the view we take of the case this question of priority is of no legal significance.

The Trademark Trial and Appeal Board sustained the opposition, holding Magna to be a prior user by reason of published advertising in September, 1949, whereas DeWalt's proofs did not satisfactorily establish a date earlier than October 9, 1949.² As noted above, the priority issue is a close one, both parties having started use about the same time. But since this is not a dispute over which of two claimants is entitled to a trademark on the basis of priority, it is our view that priority is not the determining factor.

The board did not rule specifically on the question whether "Power Shop" is a descriptive term, for which reason DeWalt says that that issue was never reached by the board. The board did, however, make the following statement from which we think it may reasonably be inferred that the board did consider the term to be descriptive:

"* * * opposer and its franchised dealers have, since September, 1949, and at considerable expense, continuously and extensively advertised its "Shopsmith" tool through newspapers, nationally distributed consumer and trade publications, and other media, and have consistently used the term "Power Shop" and/or "Power Work Shop" in its advertising copy to describe its product." Emphasis ours.

Our review of the record shows the foregoing statement of fact to be well supported. The principal facts to be taken into account are that nearly four million copies of a circular were distributed during the years 1949-1953 which described the "Shopsmith" and had on its cover in bold type the phrase "The Complete Power Shop in One Tool." The same slogan or descriptive phrase appeared in many advertisements and on a thousand point of sale panels which were set up as "Shopsmith" displays in stores from coast to coast. Other similar expressions used in 1949 and 1950 in national advertising were such as "All-Purpose, Farm-Fitted Power Shop," "heavy-duty power shop," "the complete power shop in one unit," and "complete power workshop." We consider "power shop" simply a short form of "power workshop." All of this extensive use occurred before DeWalt made application to register "Power Shop."

On the basis of the foregoing there can be no question but that "power shop" as used by Magna in its "Shopsmith" promotion was used descriptively. On this basis it can be said to be "descriptive." The phrases in which use occurred make sense.

On the other hand, apart from Magna's use, it is not self-evident that the term "power shop" is descriptive of a saw. There is merit to DeWalt's argument that a "shop" is a place, not a tool, and that a saw is not a shop. We also agree that it is not at all necessary to use the term "power shop" to describe either Magna's multi-purpose tool, the unique "Shopsmith," or DeWalt's radial-arm power saw. In a certain context "power shop" may have a clear descriptive connotation but in another context it becomes merely suggestive of the great usefulness and versatility of some machine or other which it wholly fails to "denominate," as appellant says. This poses something of a dilemma. DeWalt may very well have some enforceable common law trademark rights in "Power Shop" by reason of its use and advertising of the term; but those rights, whatever they are, cannot be such as to enable it to...