Yale Electric Corporation v. Robertson

• Citation: 26 F.2d 972
• Decision Date: 11 June 1928
• Docket Number: No. 305.,305.
• Parties: YALE ELECTRIC CORPORATION v. ROBERTSON, Commissioner of Patents, et al.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

26 F.2d 972 (1928)

YALE ELECTRIC CORPORATION v. ROBERTSON, Commissioner of Patents, et al.

No. 305.

Circuit Court of Appeals, Second Circuit.

June 11, 1928.

Henry F. Parmelee, of New York City (Melville Church, of Washington, D. C., and William S. Pritchard, of New York City, of counsel), for appellant.

Taylor, Durey & Pierson, of Stamford, Conn. (Archibald Cox, Louis H. Porter, and F. Carroll Taylor, all of New York City, of counsel), for appellee.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

L. HAND, Circuit Judge (after stating the facts as above).

The original examiner concluded that the use of the word "Yale" upon the plaintiff's goods was confusing to the defendant's buyers, but based his decision upon the ground that the mark sought to be registered was only a proper name, whose registration the statute did not allow. The commissioner affirmed this decision on the same ground, without passing on the evidence of confusion. The Court of Appeals of the District of Columbia in turn affirmed the Commissioner, but, because of a change in the law, solely on its own finding that there was likelihood of confusion between the wares of the two parties. The District Judge took more testimony, and also reached the conclusion that there was likelihood of confusion. As the case came up, he was, and we are, required to accept the findings of the Patent Office on such an issue of fact, unless the evidence to the contrary is altogether convincing, Morgan v. Daniels, 153 U. S. 120, 125, 14 S. Ct. 772 (38 L. Ed. 657), for the new evidence was not of a kind to change the result. The proof as a whole is far from convincing against the finding; the record contains many instances where the defendant's buyers did, or said that they should, suppose the plaintiff's flash-lights to be one of the defendant's products, and it is extremely probable that mistakes will continue unless the practice ceases.

Therefore, so far as we can see, only two points of law need be considered: Whether the defendant's goods have "the same descriptive properties" as the plaintiff's, which is a condition upon its opposition to registration; whether, in view of the fact that it makes no flash-lights or batteries, it may complain of the plaintiff's use of its name. The law of unfair trade comes down very nearly to this — as judges have repeated again and again — that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises. Therefore it was at first a debatable point whether a merchant's good will, indicated by his mark, could extend beyond such goods as he sold. How could he lose bargains which he had no means to fill? What harm did it do a chewing gum maker to have an ironmonger use his trade-mark? The law often ignores the nicer sensibilities.

However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful. Aunt Jemima Mills Co. v. Rigney, 247 F....