*1 stеps Judge immediate to ensure defend- took that found The District patent that removed number was evidence to establish ant failed plaintiff leaving factory; and from all laws cartons the anti-trust violated resulting patent. that no intent deceive or Defend- misused its otherwise damage cir- accordingly dis- shown. Under these ant’s counterclaim denial principally on cumstances cannot rule that we relied Defendant missed. partial new by plaintiff defendant’s motion to defendant a letter sent charged in- trial abuse the District constituted an defendant which fringing of Court’s This remanded patent sales discretion. Court plaintiff’s * ** solely the cause to Court the District “weatherstrip Seal-Eaz” his * * * granting weatherstrip purpose for the the defend- his “modified new ant leave to file a motion for a letters own Aleóte.” Defendant’s accompanying describing new This did not order a trial. Court literature trial. his “Seal-Eaz” devices accused show being promoted for and “Aleóte” were carefully all other We have considered clips. sale with points defend- and authorities raised lacking ant, appeal but have found them Shortly was docketed after this Court, petition was merit. The District defendant’s with this granted Dis- Court is affirmed. to remand file a Court allow defendant trict on the basis
motion for a new trial newly evidence evidence. This discovered by plaintiff shipments sales and
concerned weatherstrip and sash of combination equip-
balance units other window
ment, clips, marked containers patent After in suit.
with notice of the hearing argument, the District partial motion for denied CO., FULLER PRODUCTS Plaintiff- new trial. Appellee, that the basis Defendant asserts newly hearing on for remand secure COMPANY, The FULLER BRUSH diligence Defendant-Appellant. due discovered evidence evidence, and such secure effоrts No. 13314. newly convincing quality (2) the of the Appeals States Court of United Chicago and W. I. evidence. discovered Seventh Circuit. Chicago Cir., Co., 7 & E. R. R. v.Co. Feb. 131-132. Defend concludes that this Court ant therefore Rehearing 4, 1962. April Denied remanding have con the cause must justified. trial was a new sidered did not contest defendant’s dil
igence. The Court scheduled a
hearing After defendant’s motion. affidavits, briefs, of the
consideration argument, the District shipped plaintiff had some of were not covered products suit, bearing patent in cartons He determined number. that this
patent of error in seleсtion of the result shipping depart cartons ; that, errors, on notification of the ment *2 Dickerson, City, Mahlon New York W. Plibben,
George
Chicago, 111.,Davis,
N.
Noyes,
111.,
Lindsey,
Chicago,
&
Hibben
Browne,
Saterlee,
Cherbonnier, Dick-
&
City,
erson,
Reilly,
York
John H.
New
City,
Johnson,
Jr.,
Harold
York
G.
New
Conn.,
counsel,
Hartford,
appellant
Miller,
McCoy,
Fleetwood
W.
Theodore
apрellee.
Chicago, 111.,for
SCHNACEENBERG, ENOCH
Before
Judges.
CASTLE, Circuit
“FULLER,”
Judge.
than
ENOCH,
other
are also labeled
Circuit
trade
Plaintiff,
insti-
indicating
name,
The Fuller Brush Com-
tuted action in the United States
*3
pany
distributor,
to be the
and
sold
are
Trade-
decision of the
review
Court to
the
door-to-door
“Fuller
Appеal
in Can-
Board
Trial and
Men;”
early
(4)
De-
Brush
as
as
that
Proceedings brought
Fuller
cellation
cember
The
Brush
Fuller
Com-
defendant,
against
Products Co.
pany
vanity
extended its mark
cases
327)
(121
Company,
Fuller
containing rouge
powder;
and face
and
Reg-
Patent Office
involved U. S.
(5)
Company
that
The Fuller Brush
645,-
May 14, 1957, No.
istration dated
user of “FULLER”
door-to-
supplement.
food
vitamin
for
selling
variety
door
a wide
of house-
Office
S.
The U.
Patent
products,
hold
and
use of “FUL-
that
trademark
shows the
involved
expan-
LER” for vitamins was a natural
proceeding consists
cancellation
in the
of such
sion
business.
script
on
letters
in white
of “FULLER”
containers, The
As used on its vitamin
background.
oval
black
Company's
appears
Fuller Brush
Court, plaintiff also
the District
In
script
as “FULLER” in white
letters
restraining
sought injunction
The Fuller
background
enclosed
a darker oval
infringement
Cоmpany
from
Brush
plaintiff’s
much
with the words “Brush Co.” in
“FULLER’S”
trademark
own
letters, also
smaller white block
within
prayed account-
products, and
on vitamin
immediately
oval,
script
below the
ing
suffered.
for
“FULLER.”
sell their
and defendant
Both
Fuller Products Co. was founded
company is
products
Each
door-to-door.
cosmetics,
prod-
It
food
markets
surname
for
founder whose
named
its
its
and household necessities under
ucts
was “Fuller.”
or “FULLER’S
mark “FULLER’S”
Appeal
registrations
and
QUALITY”;
it holds
petition
flavoring
for can-
compounds,
spices,
hair
dismissed
food
Board
Opinion,
shaving
the Board drеssings,
In its
and skin lotions.
cellation.
Fuller
record showed
stated
The District
marks “FUL-
had used the
continuously used its trademark
had
QUALITY”
and “FULLER’S
LER’S”
amounts since
in substantial
on vitamins
to The
for vitamins
having previously
October, 1952,
used
“FULLER” for vita-
continuously
products
food
and cos-
it
also held
The Board
mins.
amounts
sincе
in substantial
metics
“FULLER”
“FULLER’S”
marks
expansion in
from
its
and that
legal contemplation, identical.
were, in
vitamins,
products
cosmetics to
food
However,
denied cancellation
the Board
expansion.
a natural
(1)
also found
because it
doing
Company’s ap-
Company
been
business
had
In The
registration
name,
Fuller Brush
its mark for
plication for
trade
“The
under
(2)
the mark for
that was
first use of
Company,”
it
since
alleged
subsisting
or
to have been on
numerous
is
owner of
record
vitamins
the
registrations
disclosing
1956, approximately
January 4,
its mark “FUL-
about
including brushes,
рlaintiff’s use. Defend-
years after
LER” for
brooms,
four
registration
like;
furniture,
mops,
contends
ant
glass,
polishes;
prepara-
denture
and toilet
metal
for cosmetics
floor
August
cleaners;
polishing
15, all-purpose
had
filed
become
and
cloths;
tions
cream;
shaving
salts;
аrose,
when
bath
hand incontestable
lotions;
repellants
shampoo;
Fuller Brush
moth
first
vanity
disinfectants;
cosmetic in
case
that cosmetics and
sold
rouge
containing
powder.
and face
which bear
names
marks
toiletries
to ler”
as
for vitamin
a conflict of evidence
at
There was
registration
application
case time that
cosmetic
the sale
whether
or was made
or will
and whether
and that the
had been discontinued
damaged
dis- be
had
of said
not The
mark on cosmetics mark? 15
continued use of its
U.S.C.A.
§
years,
as
periоd
nine or ten
for a
2. Has the
established that
How-
found it had done.
it has exclusive
in the surname
ever,
view
did not
the District
sup-
“Fuller” as
to vitamin food
control-
mark on cosmetics as
use of the
plement?
having
that,
ling in his determination
*4
by
3. Has the use
descriptive properties
The
the defendant of
of
mind the
conjunction
the mark
items,
in-
“Fuller”
Company’s
in
with
even
infringed
the
plaintiff’s alleged
upon
words
expansion
its
“Brush Co.”
cluding cosmetics,
of
natural
common law
a
vitamins was not
business to
Qual-
the marks
The
“Fuller’s” and
“Fuller’s
The District Court
one.
ity” upon
Company’s
supplement?
vitаmin
a
food
mark was
only the field of brushes
one
celebrated
plaintiff
Is the
entitled to recover
expansion
items,
to
that its
related
any
from
damages
the defendant
and all
was bound
item of vitamins
the unrelated
plaintiff
which
by
has sustained
reason
confusion,
expending
tо
of
plement bearing
sup-
defendant’s sale of vitamin food
greater
exploitation
its own
of
sums
packages
or sold in
vitamins,
plain-
applied
after
mark as
to
bearing
cartons
word
“Fuller” ?
applied to
prior
mark as
use of
tiff’s
operate to
itself
could nоt in
plaintiff
Is the
entitled to recover
right
any
give
mark
use its
defendant
to
gains
profits,
from the defendant
and ad-
on vitamins.
vantages which the defendant has de-
rived,
made,
may
received and
or which
plaintiff,
found for
District Court
defendant,
have accrued to the
from its
holding
valid
to bе
mark on vitamins
sale of vitamin food
in addi-
reversing
infringed,
the decision
any
damages
tion
plain-
to
and all
which
Appeal Board
Trial and
may
have sustained?
in the
Patent Office
States
of the United
restraining
Proceeding;
use
Cancellation
plaintiff
Both the
and the defend
cоnfusingly
mark, or
of defendant’s
using
ant are
the true
of their
surnames
goods
mark,
on vitamins or
similar
first,
founders. Defendant was the
descriptive properties; award-
same
many years, to
and to
use
name
make
gains
profits,
ing plaintiff
and advan-
the name famous for certain of its items.
may
tages
derived
have
defendant
products
These items included no food
using
of vitamin
from sales
organ
at the time that the
indication, and
aas
source
“FULLER”
inception, plaintiff’s
ized. From its
plaintiff from
sustained
all
trademark was
to food items.
referring
infringement;
apply
the first
to
its mаrk
accounting
a Master to
to
secure
matter
agree
products.
to vitamin
We
profits
assess
and to
prior
use of a non-
Company appealed
protec
distinctive name mark affords no
stating
Court,
the contested is-
expansion
goods
tion for
of trаde to
other
as follows:
be
sues to
descriptive
than those of
prop
the same
plaintiff’s proof
goods
met the
1. Has
erties as the
with which the mark
statutory
requirements
for cancellation
identified
has
such
become
use.
Borg-Warner
Corp.
York-Shipley Inc.,
from the
Cir., 1961,
7
F.2d
Corp.
“Fuller” for
293
vitamin
Philco
Mfg. Co.,
supplement;
is,
Cir., food
v. F. & B.
7
has
170 F.
tiff demonstrated that the
cert. den. 336
defendant
2d
U.S.
69
register
not entitled
777
regard my opinion
damages.
record
there is no basis
in this
Plaintiff
any damages
heavily
for
Shoe
the award of
Hamilton-Brown
relies
251,
Bros.,
tiff.
36 S.Ct.
240
Co. v. Wolf
U.S.
Mfg.
(1916); Aladdin
intentional demonstrated. has the burden
proving competent what its evidence may actual were. The result only approximate,
be but some reasonable computation
basis of
East
must be used.
man Kodak Co. of New
v. Southern
York
CO., Inc.,
E. F. DREW &
Plaintiff-
Photo
273 U.S.
47 S.Ct.
Appellant,
accounting
(1927).
as indicated and the is re- computation plaintiff’s manded for actual part. part,
Affirmed in Reversed
and remanded. CASTLE, Judge (dissenting Circuit
part). The record support does
or conclusion that the defendant marked vitamin food with “Ful- ler” in an effort to trade on reputation. There no evidence that lost sales reason of de-
fendant’s “Fuller” on its vitamin supplement; reduced price because of defendant; sales plaintiff’s reputation was harmed sales; or that expenditures
made prevent prospec- being
tive customers from misled. In