§§ 85, 121-128, supplies no evidence of title, nor any prima facie proof of validity. This trade-mark stands exactly as though it were claimed as a common law trade-mark. It is clearly invalid because it consists substantially in its entirety of descriptive matter. The words "Five Disc Cylinder. Made in U.S.A." are the only words appearing upon it, and the describes exactly the product to which it is attached, and describes the defendant's product as well as the plaintiff's. If this trade-mark were given validity it would be a serious embarrassment to competitors in advertising, or even in stating correctly and honestly what the nature of their article was. The whole question of the validity of this trade-mark as a registered trade-mark is ruled, in my judgment, by the decision of this Court in the Metallic Ink Case.
This leaves the question of unfair competition to be dealt with. At the outset of this, we are met with a question of jurisdiction. There is no diversity of citizenship, and the jurisdiction, if any, must depend upon the ruling announced in Hurn v. Oursler, 289 U.S. 238, 53 S. Ct. 586, 77 L. Ed. 1148. In other words, the Court acquires jurisdiction because there is in the case a substantial Federal question raised by the existence of the design patent and the registered trade-mark, even though these might be determined all invalid.
However, I agree with the defendant that this element would not give jurisdiction of any acts of unfair competition prior to the dates of these patents ( Stark Bros. Nurseries & Orchards Co. v. Stark, 255 U.S. 50, 41 S. Ct. 221, 65 L. Ed. 496), and we are, therefore, upon this question brought down to a rather small period of time, that is, the period of time from May 5, 1936, until the summer of that year when the defendant discontinued the use of their alleged infringing structures. I do not find any evidence that the defendant has made or sold since that time padlocks bearing a deceptive similarity to the plaintiff's. However, that would not be ground for refusing an injunction.
Additional facts may be found in connection with the charge of unfair competition.
In the first place, I am satisfied that the defendant's padlocks -- certainly Cut No. 1 and probably Cuts Nos. 2 and 3 of Stipulation Exhibit A -- bear a deceptive similarity to the plaintiff's lock.
Secondly, I think that the defendant undoubtedly copied the plaintiff's lock with the intention of producing a padlock which looked like it. Because of the peculiar character of the business involved, I am not ready to say that the defendant intended or had in mind palming off upon the public his lock as that of the plaintiff, but he certainly intended to compete with the plaintiff, and as part of his program of competition he wanted a lock which closely resembled the lock of the plaintiff, for whatever advantage that would give him. The plaintiff's lock was of attractive form and appearance, and, of course, Reese had the right to copy its style, so far as that was in the public domain.
Thirdly, Slaymaker, in this case, finds itself in a somewhat peculiar situation when it comes to assert good will as to this particular article. There is no evidence whatever that the trade-mark or style of the lock have acquired any secondary meaning. It will be noted that the plaintiff's name does not appear anywhere upon it. That was deliberately withheld. As the plaintiff's sales manager explained, it was believed that it would injure its business with its general customers if it were known that it sold to chain stores, and so the plaintiff did not want it to be known by the public generally that it was selling to chain stores because the knowledge would probably get to its other customers. It felt that it was of more advantage to it to forego whatever good will might arise from attaching its name to its article than to try to establish in the mind of the public any connection between itself and its padlock. One incidental advantage of this policy was that the plaintiff needed to spend only a negligible amount for advertising.
So, we have a situation where the trade-mark in its essence consists of descriptive matter not subject to appropriation and where there has been no advertisement or course of business which has in any way connected the article with the plaintiff. No secondary meaning has arisen, and no personal good will in the sense of a connection in the mind of the public between the maker and the product.
The best statement that can be made for the plaintiff's case is this: that it has sold a good article through the chain stores; that the public may have become familiar with the articles by means of its form and appearance and the matter which appears upon it; that the defendant by imitating it has made it possible for the chain stores to sell to the public the defendant's article under the impression, not that the public is buying the plaintiff's article, but that it is buying the same article which it was accustomed to buy. There is no evidence to indicate that the chain stores have attempted or will attempt to mislead the public in any way, but the defendant has at least made it easier for them to switch to his article without putting them to the necessity of announcing or explaining the change. Thus, in a remote way, the defendant may have benefited by the excellence (if it is present) of the plaintiff's article. However, there is no evidence that the public, generally, has suffered in any way by the substitution; there is nothing to show that the defendant's article is not just as satisfactory as the plaintiff's. Nobody has suggested that the chain store buyers -- nine or ten of them -- have been in any way misled or deceived by the similarity into believing that they are buying the Slaymaker lock when, as a matter of fact, they are buying the Reese lock. Nor is there any evidence that the public wants the plaintiff's locks because they are the plaintiff's. The most that can be said is that some people may possibly believe that they are buying the same kind of goods they bought some time ago, when, as a matter of fact, they are buying something different which may or may not be just as good.
The point is that unless the plaintiff can show some damage or some injury arising from the imitation either to himself or some fraud upon the public, he can not maintain this bill, and I do not think that he has been able to show it. He has an invalid trade-mark; he has a legend which contains descriptive matter only, not subject to his appropriation.He has failed to show that it has acquired any secondary meaning in the minds of the public, and it seems to me that the major element of his case fails.
The statements of fact contained in this opinion may be taken as special findings, and the statements of law may be taken as conclusions of law, under the Equity Rule 70 1/2, 28 U.S.C.A. following section 723.
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