Williamson-Dickie Mfg. Co. v. Davis Mfg. Co., Civ. A. 15494.

• Decision Date: 11 February 1957
• Docket Number: Civ. A. 15494.
• Parties: WILLIAMSON-DICKIE MANUFACTURING COMPANY, 509 West Vickery Boulevard, Fort Worth 1, Texas, v. DAVIS MANUFACTURING COMPANY, 240 Market Street, Philadelphia, Pennsylvania and Solomon Davis, Joseph R. Davis, David Davis, All of 240 Market Street, Philadelphia, Pennsylvania.
• Court: U.S. District Court — Eastern District of Pennsylvania

149 F. Supp. 852

WILLIAMSON-DICKIE MANUFACTURING COMPANY, 509 West Vickery Boulevard, Fort Worth 1, Texas, v. DAVIS MANUFACTURING COMPANY, 240 Market Street, Philadelphia, Pennsylvania and Solomon Davis, Joseph R. Davis, David Davis, All of 240 Market Street, Philadelphia, Pennsylvania.

Civ. A. 15494.

United States District Court E. D. Pennsylvania.

February 11, 1957.

Paul & Paul, Philadelphia, Pa., Church & Church, William E. Schuyler, Jr., Washington, D. C. (Francis C. Browne and Andrew B. Beveridge, Washington, D. C., of counsel), for plaintiff.

Maxwell L. Davis, Zachary T. Wobensmith, 2nd, Philadelphia, Pa., for defendant.

KIRKPATRICK, Chief Judge.

This is an action for trademark infringement brought by one manufacturer of boys' clothing against another. The plaintiff relies upon three trademark registrations, jurisdiction being grounded upon the Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., and also upon common law trademark rights. The defendants deny infringement and trademark rights in the plaintiff and, in a counterclaim, ask dismissal as to one of the plaintiff's registrations, which has expired, and for a decree that the other two be cancelled as invalid and void. The expired registration is for the trademark "Dickie's Best", issued under the Trade-Mark Act of 1920 and expired January 5, 1948, by the provisions of Section 46(b) of the Trade-Mark Act of 1946. The other two trade-marks are "Dickie's" and "Dickie's WearNforced".

"Dickie's" is the only one of the trademarks as to which the Patent Office proceedings need be considered, since that is the one which, if any, the defendants infringe. The matter is of some importance because, if the registration was regular and valid, the certificate is prima facie evidence of the registrant's ownership of the mark and of the registrant's exclusive right to use the mark in commerce in connection with the goods specified in the certificate. 15 U.S.C.A. § 1057 (b).

The defendants' case for cancellation is that the trademark was not registerable because it was (a) merely descriptive or deceptively misdescriptive and (b) primarily merely a surname.

As to (a), I can only say I cannot believe that there is the least likelihood that anyone today would be led by the plaintiff's trademark to think that the plaintiff was manufacturing the false shirt bosoms, once popular under the name of "dickies".

As to (b), it will be noted that the plaintiff in its application for registration, in order to avoid the possibility that registration might be refused on the ground that "Dickie's" was primarily merely a surname, included in its original application a statement under oath that the trademark had been in substantially exclusive and continuous use for a period of five years, thus invoking the provisions of Section 2(f). The examiner evidently concluded that the word was not primarily merely a surname, advised the plaintiff that it was unnecessary to rely on Section 2(f), and directed it to file a new declaration with the claim of continuous use omitted. The defendants' contention is that the issuance of the registration upon a declaration which omitted facts needful to bring Section 2(f) into play was beyond the authority of the Commissioner of Patents and, therefore, void and of no effect.

I think that the examiner was clearly right in deciding that resort to Section 2(f) was unnecessary. "Dickie" is, in ordinary usage, primarily a nickname or a diminutive of the given name "Richard" rather than a family name or surname although in this particular case there is a Dickie family involved. In construing Section 2(e) in Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145, the Commissioner of Patents pointed out in a well reasoned opinion that the important question is whether or not "the purchasing public, upon seeing it on the goods, may not attribute surname significance to it". The use of "Dickie" as a diminutive of the given name "Richard" is so general that it seems to me quite safe to say that the public would not be likely to attribute surname significance to it particularly since it is a rather uncommon family name. The registration was regular and valid, and the Commissioner did not exceed his power in issuing it. The prayer of the counterclaim as to the trademark "Dickie's" is denied.

The trademark and name used by the defendants for the clothing manufactured by them is "Dickie Davis". It was selected because one of the individual defendants had a son named Richard Davis who was called Dickie. Thus the question of a defendant's right to use of his own name is not presented, as it might have been if the plaintiff were objecting to the defendants' use of the "Davis" part of their trademark. In any event, there is no reason to doubt that the defendants originally adopted the trademark without any intention of palming off their goods as those of the plaintiff.

The plaintiff did not produce any evidence of actual cases of confusion in the minds of buyers and others resulting from the similarity of the trademarks. However, that is unnecessary and it has been held many times that the Court can make a finding of confusing similarity from a comparison of the mark or names themselves in the setting in which they are used by the respective parties. I am of the opinion that the marks are confusingly similar and I so find.

In the nature of things, no general principles relating to this fact question of confusing...