Trinidad Asphalt Mfg. Co. v. Standard Paint Co.

163 F. 977, 90 C.C.A. 195, 1908 U.S. App. LEXIS 4594

• Court: Court of Appeals for the Eighth Circuit
• Decided: August 11, 1908
• Docket: No. 2,621
• Status: Published

Opinions

HOOK, Circuit Judge.

About the year 1891 the Standard Paint Company, a West Virginia corporation, commenced to make and put upon the market a prepared roofing material of felt, saturated.with a gum composed of the residuum of animal fats. Because of the close resemblance of the gum to rubber and the durability and flexibility of the roofing, it then adopted the word “Ruberoid” as a trade-name, and in 1901 caused it to be registered in the Patent Office as a trade-mark. •In the application for registration it was said the trade-mark was appropriated to solid substances in the nature of soft, flexible rubber in the form of flexible roofing, etc. It extensively advertised, and built up a large business. In 1904 the Trinidad Asphalt Manufacturing Company, a Missouri corporation, put upon the market a roofing of similar appearance and of similar composition, except that vegetable oils were used in treating the felt, and it applied thereto the name “RubberO.” There were about 40 other concerns engaged in that business, many of whose products resembled those of complainant and defendant, and because they possessed some of the characteristics of India rubber were called and known to the trade as “rubber roofings,” though in none of them was rubber an ingredient. The Standard Company sued the Trinidad Company for an injunction and an accounting on two grounds: First, infringement of trade-mark p and, second, unfair competition, in that the use by defendant of the word “rubbero,” its similarity to “ruberoid,” and the form and dress of defendant’s roofing as put upon the market were calculated to and did deceive the public, when buying it, into the belief they were buying the roofing of complainant. The trial court gave the complainant a decree, and the defendant appealed.

First, as to complainant’s trade-mark. It is clear that by the adoption of the word “ruberoid” as a trade-mark it was sought to appropriate the exclusive use of the term “rubberoid,” and complainant’s rights are to be judged accordingly. If the latter cannot be appropriated as a trade-mark, because it is a common descriptive word, and its use, therefore, belongs to the public,; complainant cannot maintain its claim to the one it selected. A public right in “rubberoid” and a private monopoly of “ruberoid” cannot co-exist. They are inconsistent and trespass upon each other, and under the law of trade-niark the latter must give way. To the' contention that “ruberoid” is fanciful or arbitrary it must be said that no one can restrict or destroy the public right by the coinage and monopoly of a word that is a near imitation of one the use of which is open to all for the truthful description of articles of trade and commerce. The act of Congress (Act March 3, 1881, c. 138, § 1, 31 Stat. 503 [3 U. S. Comp. St. 1901, p. 3401]) prohibits the registration of á trade-mark so closely resembling that of another as to create mistake or confusion in the mind of the public, and certainly the public is entitled to like protection against encroachments upon a common descriptive term. To the visual perception there is a close resemblance between “rubberoid” and “ruberoid,” and the pronunciation is so nearly identical the difference would not ordinarily be noticed by the attentive ear. They are substantially alike in suggestion. Nothing can be gained by the mere dropping of a “b”' from the appropriate word expressive of the advertised qualities of complainant’s product. For similar reasons it was held that the word “Matzoon” could not be appropriated as a trade-mark for a medicinal beverage because of its similarity to “Madzoon”; the latter being the transliteration of the ancient Armenian name of the preparation. Dadirrian v. Yacubian, 39 C. C. A. 321, 98 Fed. 873. In Goodyear Co. v. Rubber Co., 128 U. S. 598, 604, 9 Sup. Ct. 166, 168, 32 L. Ed. 535, it was said:

“The designation ‘Goodyear Rubber Company’ not being subject to exclusive appropriation, any use of terms of similar import, or any abbreviation of them, must be alike free to all persons.”

Because of its very structure and meaning the word “rubberoid” is not a fanciful one, and it owes nothing to complainant for its existence or its descriptive relevance to the roofing productions in question. It was a part of our common vocabulary long before complainant began operations, the.Patent Office discloses applications of it to compositions resembling but not containing rubber, and it had found its way into the lexicons. The suffix “oid” signifies likeness or resemblance to the thing indicated by the word to which it is attached. Thus “granitoid” means like granite, “crystalloid” like crystal, and “rubberoid” like rubber. The latter is the common English term signifying a resemblance to rubber in appearance or characteristics. Indeed, it would appear that many of the rubber roofings, so called, that are common in the markets, could more appropriately and truthfully be described as “rubberoid.”

It is the settled rule that no one can appropriate as a trade-mark a generic name, or one descriptive of an article of trade, its qualities, ingredients, or characteristics, or any sign, word, or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth. Canal Co. v. Clark, 13 Wall. 311, 323, 20 L. Ed. 581; Goodyear Co. v. Rubber Co., 128 U. S. 598, 9 Sup. Ct. 166, 32 L. Ed. 535; Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625, 35 L. Ed. 247. A reference to a few of the many cases in which it has been applied may more clearly signify its purport than the bare statement of the rule itself. The following have been held to be descriptive terms, and therefore not the subject of trade-mark: “Nourishing Stout” as applied to a malt liquor (Raggett v. Findlater, L. R. 17 Eq. 29); “Gall Cure” to a medicine (Bickmore, etc., Co. v. Mfg. Co., 67 C. C. A. 439, 134 Fed. 833): “Whirling Sprav” to a syringe (Marvel Co. v. Pearl, 66 C. C. A. 226, 133 Fed. l60); “Standard” and “Computing” to scales (Computing Scale Co. v. Standard Computing Scale Co.. 55 C. C. A. 459, 118 Fed. 965); “Steel Shod” to boots and shoes with soles studded with nails (Brennan v. Dry Goods Co.. 47 C. C. A. 532, 108 Fed. 624; Id. [C. C.] 99 Fed. 971); “Aluminum” to a manufactured article composed in part of that metal (American Washboard Co. v. Mfg. Co., 43 C. C. A. 233, 103 Fed. 281, 50 L. R. A. 609; “Instantaneous” to a tapioca ready for use (Bennett v. McKinley, 13 C. C. A. 25, 65 Fed. 505); “Iron Bitters” (Brown Chemical Co. v. Meyer (C. C.) 31 Fed. 433, affirmed in 139 U. S. 540, 11 Sup. Ct. 625, 35 L. Ed. 247); “Acid Phosphate” (Rumford Chemical Works v. Muth [C. C.] 35 Fed. 524, 1 L. R. A. 44); “Indurated Fiber” to wares made of wood pulp (Indurated Fiber Co. v. Amoskeag, etc., Co. [C. C.] 37 Fed. 695); “Cramp Cure” (Harris Drug Co. v. Stucky [C. C.] 46 Fed. 624); “Hygienic” to underwear (Jaros, etc., Co. v. Fleece Co. [C. C.] 65 Fed. 424); “Valvoline” to lubricating or valve oil (Leonard v. Wells, 53 L. J. Ch. 233, 32 W. R. 532); “Croup Tincture” (In re Roach, 10 Off. Gaz. 333) ; “Crack-Proof” to rubber goods (In re Goodyear Rubber Co., 11 Off. Gaz. 1062); “Crystalline” to artificial stones (Ex parte Kipling, 24 Pat. Off. Gaz. 899); “Fireproof Oil” (Scott v. Standard Oil Co., 106 Ala. 475, 19 South. 71, 31 L. R. A. 374); “Aromatic Schiedam Schnapps” to gin (Burke v. Cassin, 45 Cal. 467, 13 Am. Rep. 204) ; “Snowflake” to crackers and biscuit (Larrabee v. Lewis, 67 Ga. 561, 44 Am. Rep. 735); “Cough Remedy” (Gilman v. Hunnewell, 122 Mass. 139); “Selected Shore Mackerel” (Trask v. Wooster, 28 Mo. App. 408); “Rye and Rock” to a mixture of rock candy and rye whisky (Van Beil v. Prescott, 82 N. Y. 630); “Dessicated Codfish” (Town v. Stetson, 3 Daly [N. Y.] 53); “Headache Wafers” (Gessler v. Grieb, 80 Wis. , 48 N. W. 1098, 27 Am. St. Rep. 20); “Microbe Killer” (Alff v. Radam, 77 Tex. 530, 14 S. W. 164, 9 L. R. A. 145, 19 Am. St. Rep. 792).- “Rubberoid” easily falls in the above class, when applied to articles with no rubber in their composition, but appearing to have and possessing its qualities and characteristics. There are cases in which words and phrases have been upheld as trade-marks upon the ground that they were suggestive, rather than descriptive; but they have no application here.

Even a proper name may in time become by common acceptation the generic designation of an article, and after the expiration of the monopoly arising from letters patent become publici juris, like an ordinary descriptive term, and therefore not appropriable as a trademark. This was held to be so of “Rahtjen’s Composition” and a preparation of paint (Holzapfel’s Co. v. Rahtjen’s Co., 183 U. S. 1, 22 Sup. Ct. 6, 46 L. Ed. 49); “Singer” and the sewing machine (Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118); “Goodyear Rubber” and a class of goods made by the process known as Goodyear’s invention (Goodyear Co. v. Rubber Co., 128 U. S. 598, 602, 9 Sup. Ct. 166, 32 L. Ed. 535); “Webster” and the dictionary (Merriam v. Pub. Co. [C. C.] 43 Fed. 450; Merriam v. Clothing Co. [C. C.] 47 Fed. 411); “Fairbanks” and a make of scales (Fairbanks v. Jacobus, 14 Blatchf. 337, Fed. Cas. No. 4,608); “Harvey” and “Worcestershire” and the table sauces of those names (Razenby v. White, 41 R. J. 354; Rea v. Deakin, 11 Biss-. 23, 15 Fed. Cas. 95, Case No. 8,154). In the same way a fanciful word may become the very name of the thing to which in the beginning'it was arbitrarily applied. Before this.controversy arose complainant publicly declared it selected the word “ruberoid” for a trade-mark, because of the resemblance of its product to rubber. It advertised the f^ct to the world, and pointed to the common characteristics. The truth of its statement is so obvious, and the connection between the misspelled name and the thing so manifest, we need not search for some remote likeness to other words found in the lexicons that have no possible application to the artificial roofing in question. That the roofing of complainant possesses characteristics of rubber in composition is plain to the most ordinary inspection, and it is also plain that the average person would take the word adopted as signifying that fact. It seems altogether clear that complainant’s trade-mark is invalid.

The rule as to unfair or fraudulent competition does not necessarily involve the right to the exclusive use of a word or symbol, for though one’s trade-mark may be invalid the circumstances attending its use by another may be such as to constitute an invasion of his rights and a fraud upon the public. It proceeds upon ethical considerations and has its foundation in business honesty. The evil against which it is directed has a twofold aspect, .the deception of the purchasing public, and the consequent piracy of the reputation and good will which a competitor has earned by fair conduct and the quality of his goods, and which constitute a valuable asset in his business. Briefly stated, the rule is that one should not be permitted to sell his goods as the goods of another. If he uses a generic name or descriptive term which a competitor has employed before him, he should not by other words, signs, or symbols, or by the dress, appearance, or form of package, so imitate his competitor’s course or way as to deceive the ordinary purchaser, giving such attention as purchasers usually do. But all must submit to the competition which comes alone from the fair and truthful employment of generic names and terms descriptive of the qualities and characteristics of articles of trade and commerce, unaccompanied by other acts designed to induce confusion and error in the mind of the public.

We discover nothing in defendant’s conduct justifying the charge of unfair competition. In the last analysis the charge rests solely on the use of the word “rubbero” and the similarity thereof to “ruberoid,” or its equivalent, “rubberoid.” Complainant has no monopoly of the resemblance to rubber of roofing that has none in its composition, and obviously it cannot secure a monopoly of the appropriate term descriptive of that resemblance by invoking the doctrine of unfair competition. The word “rubberoid” is part of the common heritage, and all who can truthfully apply it to their products are entitled to do so, taking due care that they do not otherwise trespass upon the rights of competitors. The defendant being entitled to the proper use of the word “rubberoid,” the complainant cannot justly complain of the use of “rubbero.” That complainant marketed its roofing in rolls and defendant did the same is not significant. That was the usual, ordinary course of those engaged in the business. The form was not peculiar or fanciful, but was one of convenience, due to the physical ■ characteristics of the material. It is as natural that such roofing should be in rolls as carpet, matting, or paper, or as dress fabrics in bolts, thread on spools, or matches in boxes. Similar considerations apply to the cutting of the roofing into strips of convenient width and the designation of the weight or thickness thereof. There was no imitation of the arrangement, color, design, or general appearance of the wrappers and markings on the packages. On the contrary, those of defendant were in such marked contrast to complainant’s as to repel all suggestion of design on the part of the former to misrepresent the origin or ownership of its product. Moreover, its name and address were plainly printed on the labels. It would be a result unsustained by reason or authority if one, after vainly attempting through a trademark to secure a monopoly of a generic or descriptive word, should nevertheless be granted one by decree of a court, applying the doctrine of unfair competition to those who simply used the word in the appropriate naming or description of their goods, but in other respects plainly distinguished them from the goods of their competitor.' Yet that is practically what complainant is attempting in the second branch of its case, for it has no other basis than the mere use by defendant of the word “rubbero.” If at complainant’s instance a court should enjoin the use of “rubbero,” then logically none of the large number of other manufacturers who make roofings resembling rubber can lawfully call their products “rubber roofing” or “rubberoid roofing,” because of similarity to the term selected by complainant, and thus complainant would be allowed to fence off and appropriate to its exclusive use a part of our common vocabulary. As well might a manufacturer be decreed the exclusive' right to call his sugar sweet or his vinegar sour.

In Singer Mfg. Co. v. June Mfg. Co., supra, the Supreme Court held that the name “Singer” had become the generic designation of a certain class of sewing machines, and therefore the Singer Company could not appropriate it as a trade-mark, though it had exclusively used it many years. It also expressly recognized the right of any manufacturer of that type of machines to apply the name “Singer” thereto, provided it was clearly and unmistakably specified in connection therewith that they were the product of the maker, and not of the Singer Company. 163 U. S. 207, 16 Sup. Ct. 1016, 41 L. Ed. 131. The requirements of honest competition mentioned by the court in that case were fully met by the defendant here.

In Centaur Co. v. Heinsfurter, 28 C. C. A. 581, 84 Fed. 955, an injunction was sought restraining the defendant from using the word “Castoria.” It was held that the word had become the descriptive name of the medicine to which it was applied, and therefore plaintiff could not appropriate it as a trade-mark, though it had long enjoyed the exclusive use of it.' Mr. Justice Brewer, speaking for this court, said of the claim of unfair competition:

“But, as we hav.e heretofore observed, in -the present ease, outside of the use of the word ‘Castoria,’ there is nothing to mislead the public into the" belief that the Castoria manufactured and sold by the defendants was in fact manufactured and sold by the plaintiff. On the contrary, the information was full and specific that the defendants were the manufacturers and vendors.”

'This excerpt aptly fits the case at bar. True, in both these cases there were patents which had expired, and the names “Singer” and “Castoria” had become the generic names of the articles during the existence of the monopoly.' When the patents expired, and the exclusive right to manufacture ceased, the right to use the names also became a public one through a species of dedication. But in respect of the question now being considered those cases are -indistinguishable in principle from the one before us. It is immaterial that names like “Singer” and “Castoria” became public property by acquiescence of those who first employed them, instead of being naturally so by reason of structure and original meaning, as is the case with an ordinary appellative like “rubberoid.” The important thing is the fact that they are public property, not how they became so. If they are, it follows from that quality alone that all may truthfully apply them to their products,. and that no one can lawfully monopolize vthem. Though the cases cited also involve other questions, they recognize and enforce the established rule that unfair competition cannot arise from the mere use of words belonging to the public, accompanied by a fair and truthful statement of the ownership and source of manufacture.

In Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625, 35 L. Ed. 247, the rule was expressly applied. The complainant had for a long time made “Brown’s. Iron Bitters,” when defendant put upon the market a medicine which he called “Brown’s Iron Tonic.” The court, after first observing that there could be no valid trade-mark in the words “Iron Bitters,” addressed itself to the claim of unfair competition, and after considering the similarities of the form and dress of the packages found that they afforded no ground for complaint. So, as in the case at bar, the question finally resolved itself into one of the mere use of complainant’s words, or words similar thereto. The court said:

“But if tlie words ‘Iron Bitters’ cannot be lawfully appropriated as a trademark, it is difficult to see upon what theory a person making use of these or similar words can be enjoined. We understand it to be conceded that these words do not in themselves constitute a trade-mark. It follows, then, that another person has the right to use them, unless he uses them in such connection with other words or devices as to operate as a deception upon the public.’’

And then the court disposed of the addition of the patronymic “Brown” by finding from the facts in the case defendant had the right to use it also. The same rule was applied on the circuit in Brown Chemical Co. v. Myer (C. C.) 31 Fed. 453, by Judge Thayer, and in Gessler v. Grieb, 80 Wis. 21, 48 N. W. 1098, 27 Am. St. Rep. 20, and Alff v. Radam, 77 Tex. 530, 14 S. W. 164, 9 L. R. A. 145, 19 Am. St. Rep. 792.

In Reddaway v. Banham, L. R. App. Cas. [1896] 199, the decree directed by the House of Lords to be entered by the lower court recognized the right of defendants to use the name “camel hair belting” under restrictions similar to those imposed by the Supreme Court in the Singer Case. By long use the name had come to signify plaintiff’s goods. The decree which was directed (page 222) was “for an injunction restraining the defendants and each of them from using the words ‘camel hair’ as descriptive of or in connection with belting manufactured by them or either of them, or belting (not being of the plaintiffs’ manufacture) sold or offered for sale by them or either of them, without clearly distinguishing such belting from the belting of the plaintiffs.” (The italics are ours.) In respect of distinguishing, Lord Morris said:

“That, to my mind, is obviously clone when the respondents put prominently and in a conspicuous place on the article the statement that it was camel hair belting manufactured by themselves. Having done so, they would, as it appears to me. fully apprise purchasers that it was not RecLdaway’s make, by stating that it was their own.” Pages 221, 222.

The decree is reversed, and the cause remanded, with directions to dismiss the bill.