276 F. 447 | E.D.N.Y | 1921
The plaintiff brings this action for infringement of trade-mark and also upon a charge of unfair competition. Plaintiff is a corporation organized under the laws of Pennsylvania, and having its principal place of business in Pittsburgh in that state. It has for some 16 or 17 years placed upon the market aluminum dishes or vessels for use in household and kitchen work. It evidently has at all times had its attention fixed upon the idea of “cooking” utensils, for which the metallic material aluminum is particularly advantageous.
The corporate title of the company is the Aluminum Cooking Utensil Company. It has during these years sold extensively and advertised very widely at great expense its so-called “Wear-Ever” aluminum vessels and utensils. The result has been that the public has recognized, as a standard or staple article, aluminum vessels of the “Wear-Ever” grade or brand.
In 1903, the plaintiff attempted to file the trade-mark “Wearever,” and stated that the class of merchandise upon which it intended to place its trade-mark was aluminium and aluminium alloys. With the same limitation in idea which was present when the name of the company was chosen, it was further stated that the trade-mark is particularly intended for use upon cooking utensils made of aluminium and aluminium alloys, with utter disregard of the apparent fact that a pan or dish might be used to heat water for shaving or washing, and thus not be brought within the class of cooking utensils, except in so far as the water might be cooked or heated in the same way as if used in the preparation of food.
The testimony in this case shows that in the Patent Office cooking utensils are considered and classified as a different line of commercial manufacture from articles for laundry purposes or articles for household work, like cleaning or scrubbing, though a pail or dish for the mere containing of hot water, and in which water might be heated, would fall in either class.
, The defendants are manufacturers of tin wash boilers. They first put them on the market under such trade-names as Boilrite or S. B., and then later, appreciating the value of the name “Wear Ever,” and knowing that the plaintiff did not manufacture or sell a wash boiler, they have added to their lines of merchandise a better grade of tin wash boiler, either with copper bottom or in some instances made entirely of copper, around which they have 'placed a paper wrapper entirely covering the sides of the boiler and stamped in large letters with the words “Wear Ever,” and also having upon the side, in colors, the picture of a young woman holding before her, by the handles, a wash boiler. This picture resembles in general characteristics the figure of a young woman (extensively used by the plaintiff in its advertisement) holding and raising in front of her by the handles a utensil, to which she seeks to attract attention and to indicate the light and attractive character of the article.
The defendant has cited a number of valid trade-marks such as “Wearever” applied to rubber goods, “Everwear” for harness, shoe leather, etc., “Wearever” applied to tooth brushes, to establish the proposition that the words Wear Ever as a name or sign cannot be monopolized by the person who first uses it as a trade-mark upon a class of articles entirely dissimilar or not connected with some other line of articles upon which the same word is placed as a trade-mark.
,Tinny such cases have been cited by the plaintiff showing decisions in the Patent Office and on appeal therefrom, where applications for trade-mark have been disallowed on the ground that conflict between marks applied to goods of similar classes would deceive the public. H. Wolf & Sons v. Lord & Taylor, 202 O. G. 632, 41 App. D. C. 514, where it was sought to use the word “Onyx” for underwear after having been registered for hosiery; the case of Anglo-American, etc., Light Co. v. General Electric Co., 215 O. G. 325, 43 App. D. C. 385, with reference to use of the word “Mazda;” the Fishbeck Soap Co. v. Kleeno Mfg. Co., 216 O. G. 663, 44 App. D. C. 6, where “Kleeno” was sought to be filed for washing materials after having already been filed for polishing material; in Wilcox & White Co. v. Leiser, 276 Fed. 445, decided in the Southern District of New York, it was held that the word “Angelus” could not be used on a phonograph after having been filed to cover a player piano; Van Zile et al. v. Norub Mfg. Co. (D. C.) 228 Fed. 829, where a germicide and cleanser was held to be in the same general class with a washing powder.
When the two classes so overlap and border upon each other that utensils in the laundry class are used to boil or cook water and washing solutions as well as soiled clothes, and on frequent occasions to cook vegetables or to heat glass cans for canning, etc., it will be seen how close the classes are in this direction. The use of cooking utensils for the preparation of starch, heating of water, and even boiling of clothes, or for use as a child’s bath-tub, show the closeness of demarcation from the other direction.
The evidence in this case shows that hardware stores sell racks for canning fruit and vegetables in wash boilers, and the public generally fail to recognize any such distinction as that occasioned by the Patent Office classification, particularly as the aluminum dishes and the wash boilers would be sold side by side in the same store.
Confusion could have been avoided if the plaintiff had at any time considered it necessary or advantageous to depart from its use of the word “cooking,” and the lack of necessity for limiting 1heir trademark is shown by the fact that the certificate of incorporation of the plaintiff company included the making and selling of aluminum articles for “household use” as well as articles for cooking.
The plaintiff manufactures cuspidors out of aluminum, and undoubtedly would have already put upon the market aluminum wash boilers, except that their size has made the cost prohibitive.
In Van Zile v. Norub Mfg. Co., supra, it was held that the term “unfair competition” covered the sale of an imitation article at cut rate prices, where the articles so resembled each other, and were to be used for the same purpose, that customers buying at retail would fail to notice that they were obtaining the defendant’s product, and where the defendant would thereby be able to obtain unjust enrichment by what was in effect unfair competition.
In Aunt Jemima Mills Co. v. Rigney, 247 Fed. 407, 159 C. C. A. 461, L. R. A. 1918C, 1039, it was held that the words “Aunt Jemima,” when used with respect to pancake flour, or associated in the mind of the public with a particular product, could not be taken by another manufacturer as a brand for maple syrup, because of the certainty that the public would consider the name in its association with the well known article, and thus even though no injury was inflicted by competition, and even though the sale of the pancake flour might be enhanced by the preparation and sale of a syrup, the court held that the defendants could not take undue advantage and unjustly enrich themselves at the expense of the plaintiff.
The record makes it plain that the defendants are competing unfairly with the plaintiff by trading upon the public’s belief in the “Wear
For all these reasons the plaintiff is entitled to a decree.