Western Stove Co. v. Geo. D. Roper Corporation

• Decision Date: 22 January 1949
• Docket Number: Civ. No. 7202.
• Citation: 82 F. Supp. 206
• Court: U.S. District Court — Southern District of California
• Parties: WESTERN STOVE CO., Inc. v. GEO. D. ROPER CORPORATION.

82 F. Supp. 206

WESTERN STOVE CO., Inc. v. GEO. D. ROPER CORPORATION.

Civ. No. 7202.

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

January 22, 1949.

Lyon & Lyon, Charles G. Lyon and Reginald E. Caughey, all of Los Angeles, Cal., for plaintiff.

John F. McCanna, of Chicago, Ill. and Harold W. Mattingly, of Los Angeles, Cal., for defendant and intervener.

J. F. T. O'CONNOR, District Judge.

The plaintiff, Western Stove Company, Inc., a California corporation, has brought suit herein against the defendant, Geo. D. Roper Corporation, a Delaware corporation, for infringement of its alleged common law trade-mark, "Town and Country" on gas ranges, and for unfair competition; praying, inter alia, for a preliminary, perpetual, and a mandatory injunction, to which suit the said defendant, Geo. D. Roper Corporation, a Delaware corporation, has answered, praying, inter alia, the intervention of Geo. D. Roper Corporation, an Illinois corporation, and for the dismissal of the complaint. By way of answer and counterclaim in intervention, the said Geo. D. Roper Corporation has entered the case for infringement of its alleged common-law trade-mark, "Town and Country", on gas ranges, for unfair competition, and for infringement of its alleged trade-mark, "Town and Country", registered under the Trade-Mark Act of February 20, 1905, 33 Stat. 724, likewise praying, inter alia, for a preliminary and a perpetual injunction against the plaintiff herein. Counsel for all sides have been using the phrase, "Town and Country", and "Town & Country", apparently indiscriminately and synonymously, and this phrase will be so understood and so used by the court in this case.

The matter in controversy, exclusive of interest and costs, exceeds the sum of $3000.00; there is complete diversity of citizenship among the parties hereto, and this court has jurisdiction of the whole controversy.

The case has been submitted to the court for a decision on the pleadings, plaintiff's, defendant's and intervener's Stipulated Statement of Facts, and on briefs, from which the following facts appear:

(1) The plaintiff herein, Western Stove Company, Inc., a California corporation, was organized in 1923, and continuously thereafter has manufactured and sold stoves and ranges in intrastate and in interstate commerce throughout the United States, manufactured in two plants: one in Culver City, California, and the other in the State of Texas; with the volume of business in 1947 exceeding $7,500,000;

(2) The defendant herein, Geo. D. Roper Corporation, a Delaware corporation, is doing business in the State of California; has a regular and established place of business in the City of Los Angeles; and sells and distributes in certain localities in the United States, including the State of California, gas ranges and stoves manufactured and sold by Intervener;

(3) The Intervener herein, Geo. D. Roper Corporation, is an Illinois corporation, and has a regular and established place of business in the City of Rockford, State of Illinois. It was incorporated in 1919, and it and its predecessors in interest since 1885 have been continuously engaged in manufacturing and selling gas stoves and ranges at Rockford, Illinois; and said gas stoves and ranges have been sold, and are now being sold, by Intervener in interstate commerce in all states of the United States; the Intervener being one of the largest gas stove manufacturers in the United States with an annual volume of business in the sale of stoves during the past few years of approximately $10,000,000 to $15,000,000.

The Stipulated Statement of Facts in this case covers nineteen pages and voluminous attached exhibits, and the court feels it will be necessary to refer only to sufficient facts therein to apply the principles of law that will govern the decision herein.

The factual chronology of the condensed controlling events in the case are as follows —

Plaintiff's factual chronology:

In 1941, plaintiff planned to manufacture and sell a large gas range, and actually did manufacture one in the year 1941, placing one in the home of Henry Honer, President of plaintiff corporation, without any trade-mark thereon except the trade-mark "Western Holly". Plaintiff did not go forward with plans for manufacture and sale of stoves of this type and size because of war conditions, but, on or about November 1, 1946, Western Stove Company, Inc., commenced the manufacture of a large stove similar to that which it had manufactured in 1941.

On or about November 1, 1946 certain advertising agencies began the preparation of advertising material for use in connection with an advertising campaign for this stove, and Henry Honer and Mr. Roderick A. Mays, of one of the advertising agencies, had several discussions relative to the use of a suitable trade-mark for this range as "Town & Country".

On November 27, 1946 a wire was sent to Bacon & Thomas, Washington, D. C., requesting a search on "Town & Country", and a reply was received on November 29, 1946, indicating that "Town & Country" was available as a trade-mark.

Advertisements of this range as "Town & Country" by the plaintiff were first printed in December of 1946 and a quantity printed and sent to various customers of Western Stove Company, Inc., and a number of customers of plaintiff, all of Los Angeles, California, were orally advised in the latter part of December, 1946, and early part of January, 1947, by Mr. Barnes, Sales Manager of Western Stove Company, Inc., and by Mr. Henry Honer, President of Western Stove Company, Inc., that this company was bringing out a large stove under the name of "Town & Country".

On January 10, 1947, a communication was forwarded from Mr. Barnes to all salesmen of Western Stove Company giving information, including price, of the "Town & Country" stove, and was followed up by letters of January 15, 1947, to all its seven hundred dealers giving information as to the "Town & Country" stove.

On January 8, 1947 an employee of Western Stove Company, Inc., delivered to Process Arts Company, Culver City, California, a requisition sheet for two silk screens to be used for the purpose of placing the trade-marks "Western Holly" and "Town & Country" on the large stoves then in process of being manufactured by Western Stove Company, Inc. The "Town & Country" stove, as manufactured by Western Stove Company, was designated as model D-472-GLC; and, in January of 1947, models were delivered to certain department stores in Los Angeles, Calif., but none of the stoves had any trade-mark thereon other than the trade-mark "Western-Holly".

In addition to the advertising in newspapers, the "Town & Country" range of Western Stove Company Inc. was made known to the public by means of radio advertising, in spot announcements. Commencing with January 19, 1947, and continuing on January 21st and January 23rd, 1947, spot announcements were given over the radio, and, commencing on December 1946, pamphlets were prepared giving the specifications and features of the "Town & Country" range of Western Stove Company Inc.

The first stoves which had the trade-mark "Town & Country" thereon by the use of the silk screen obtained from Process Arts Company were delivered to May Company, Los Angeles, California, and to Barker Bros., Los Angeles, California, on January 30, 1947, and, subsequent to January 30, 1947 all of the large stoves manufactured by Western Stove Company, Inc., have had the trade-mark, "Town & Country", thereon when delivered to customers; and the said stoves were first sold in interstate commerce in March, 1947, with trade-mark "Town & County" thereon.

Neither Western Stove Company, Inc., nor any of its officers or those in authorities or its attorneys had any knowledge of the adoption or contemplated use of the trade-mark, "Town & Country" by the defendant and/or intervener, prior to the receipt of a telegram from Geo. D. Roper Coporation on January 24, 1947, advising of the adoption of the trade-mark "Town & Country" by Geo. D. Roper Corporation.

Defendant's and/or the intervener's factual chronology:

On October 7th to the 11th, 1946, Roper exhibited at the 28th Annual Convention of the American Gas Association, at Atlantic City, New Jersey, a certain gas range which it featured as the "ultimate in automatic gas cookery", and this range was commonly referred to by the trade individuals attending this Convention as "The Roper $1000.00 beauty". It was not until January, 1947, however, that the first of these ranges made under production manufacture was ready for delivery, although several pilot models were produced in December 1946, and, for the purpose of factory and manufacturing identification, this range was designated model 9310; and

Following the Atlantic City Convention, Roper promptly proceeded with plans for advertising and selling model 9310 range nationally, and sought a distinctive trade-mark for the same. At a meeting in November 1946, at the Roper plant attended by Cy. Edwards, advertising manager for Roper, residing at Rockford, Ill. and by E. "L." Jeanmaire, of the advertising agency of Hollingsworth & Collins, Rockford, Ill., the name of "Town & Country" was selected as a trade-mark.

On December 27, 1946, Cy Edwards, advertising manager of Roper, wrote to John F. McCanna, patent attorney for Roper, asking whether Roper would be allowed to use the name "Town & Country" as a trade-mark on its new range. Responding to said letter, said attorney made an investigation through the records of a wellknown trade-mark bureau in Chicago, Ill., and on January 9, 1947, verbally advised said Cy Edwards that, in said attorney's opinion, Roper could register the name, "Town & Country", as a trade-mark for gas stoves and ranges in Class 34 in the United States Patent Office, under the Trade-Mark Act of 1905; and

On or about December 16, 1946, one of Roper's sales representatives made an interstate sale of a Roper model 9310 gas...