Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co.

E.D. Pennsylvania

Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co.

149 F. Supp. 852, 112 U.S.P.Q. (BNA) 383, 1957 U.S. Dist. LEXIS 3946

CourtDistrict Court, E.D. Pennsylvania

DecidedFebruary 11, 1957

DocketCiv. A. 15494

StatusPublished

Cited by1 cases

This text of 149 F. Supp. 852 (Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co.) is published on Counsel Stack Legal Research, covering District Court, E.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook

Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co., 149 F. Supp. 852, 112 U.S.P.Q. (BNA) 383, 1957 U.S. Dist. LEXIS 3946 (E.D. Pa. 1957).

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Opinion

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'

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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'

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149 F. Supp. 852, 112 U.S.P.Q. (BNA) 383, 1957 U.S. Dist. LEXIS 3946, Counsel Stack Legal Research, https://law.counselstack.com/opinion/williamson-dickie-manufacturing-co-v-davis-manufacturing-co-paed-1957.

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