Opinion
No. 2504.
November 20, 1944.
Soans, Pond Anderson, of Chicago, Ill., and Edward A. Lawrence, of Pittsburgh, Pa., for plaintiff.
Green McCallister, of Pittsburgh, Pa., for defendants.
Action by the Simmons Company against Max Cantor and another, doing business as Royal Bedding Company, for injunctive relief and accounting for alleged infringement of trade-mark, wherein Jean Yahr and another intervened.
Judgment for plaintiff.
See, also, 3 F.R.D. 281.
This is an action for relief against alleged infringement of a trade-mark. After hearing, the Court makes the following findings of fact and conclusions of law:
Findings of Fact.
1. Plaintiff is a Delaware corporation and has a nationwide business in the making and selling of beds, springs, box springs, cots, hospital beds, rollaways, steel furniture, lounges, day beds and mattresses. It has factories located at Atlanta, Georgia, and Kenosha, Wisconsin.
2. Max Cantor and Max Yahr, the original defendants, with Jean Yahr and Simon Cantor, intervening defendants, are partners under the name of the Royal Bedding Company, and are engaged in the manufacture and sale of mattresses and bed springs, principally in Pennsylvania and adjoining states. They, or some of the defendants, have been engaged in this business for more than twenty years. They have two factories, one at Pittsburgh, Pennsylvania; the other at Buffalo, New York.
3. Plaintiff's business in the year 1901 was carried on under the name of the Simmons Manufacturing Company. It included the manufacture of beds, springs, cots, etc., which extended throughout the United States.
4. The plaintiff, since 1919, in the carrying on of its business, has divided the territory of the United States into three divisions, one of which is the Central Division which includes the states of Wisconsin, Michigan, Illinois, Indiana, Ohio, Missouri, Oklahoma, Texas, Kansas, Louisiana, Tennessee, Minnesota, North and South Dakota, West Virginia, a part of Colorado and about one-third of the western portion of Pennsylvania.
5. Plaintiff manufactured mattresses in 1918 or 1919. The mattresses were first manufactured at Atlanta, Georgia. Since 1919 the Company has distributed beds, springs, mattresses, box springs, etc.
6. In the year 1915, the Hirsch Spitz Manufacturing Company at Atlanta, Georgia, manufactured bed springs, beds, mattresses, etc., including an all-felt mattress to which was applied a label bearing the trade-mark "White Knight". The business of the Hirsch Spitz Manufacturing Company extended throughout the United States. "White Knight" mattresses were shipped as far north as Virginia, Pennsylvania, New Jersey and New York. From the year 1915 until the year 1919, mattresses bearing the "White Knight" label were manufactured by the Hirsch Spitz Manufacturing Company.
7. In 1919, Hirsch Spitz sold its business to the plaintiff, which succeeded to the business of the Hirsch Spitz Company. The business was then carried on by plaintiff, and plaintiff continued to manufacture the "White Knight" mattress and use the "White Knight" label.
8. Plaintiff, since 1919, continued the manufacture and sale of the "White Knight" mattresses to which a label bearing the name "White Knight" was applied, which manufacture and sale has been continuous to date.
9. In 1927 and 1928, plaintiff manufactured and sold in its Central Division, "White Knight" mattresses bearing the label "White Knight". At least fifteen of these sales were made in the Western District of Pennsylvania. After 1928, plaintiff continued to manufacture and sell "White Knight" mattresses. Its sales throughout the United States in the years 1931, 1932 and 1933 totaled 1,393.
10. In the Central Division, from 1933 to the end of March 1942, the Kenosha plant of the plaintiff, which served its Central Division, manufactured 4,973 mattresses, to which various styles of "White Knight" labels were applied according to the following tabulation:
Mattresses. 1933 251 1934 608 1935 1,608 1936 834 1937 680 1938 179 1939 211 1940 221 1941 187 First 3 mos. 1942 194
11. Some of the "White Knight" mattresses made at Kenosha were shipped to dealers in the western part of Pennsylvania in the year 1935. Three of the invoices therefor, which are records of shipments, specified that the mattresses were to have a "White Knight" label. At least one of these dealers, the Geis Store, advertised these mattresses in the local newspaper in October, 1935.
12. In 1935, plaintiff manufactured and sold throughout the United States a bed spring which it called "White Knight", and to all of these "White Knight" springs a metallic tag was applied bearing the trade-mark "White Knight".
13. The Central Division of the plaintiff, during the years 1935 to 1942, inclusive, used 25,020 "White Knight" spring tags or plates, as follows:
1935 8,915 1936 8,969 1937 6,224 1938 700 1939 112 First 3 mos. 1942 100
14. From 1935 to 1938, a substantial number of these springs were shipped into the Western District of Pennsylvania. A number of the shipments were delivered in Pittsburgh. Twenty-nine of these "White Knight" shipments were included in the invoices and five of them were shipped as "White Knight" springs. The latest of these Pennsylvania invoices is dated November 14, 1938.
15. Mattresses, box springs and bed springs are often made and sold by the same manufacturing concern, and it is not unusual for a company to put the same trade-mark on all three products. They are sold in the bedding departments of department stores and it is general practice to display a mattress for sale on top of a bed spring. These products are all for sleeping purposes; they are related goods.
16. On June 23, 1942, the plaintiff ordered, and on June 29, 1942, received 2,000 "White Knight" labels from Leon Freeman Company; and in July, 1942, additional labels of the same kind were received. Twenty of these labels were used in June, 1942, 2,976 were used in July, and 1,498 were used in August, 1942. In July, 1942, plaintiff exhibited at the National Furniture Exhibition at Chicago, mattresses bearing the label "White Knight". Shortly after July of that year, plaintiff commenced an extensive and expensive advertising campaign. To all these mattresses made by plaintiff since June, 1942, there was applied the above label.
17. On July 15, 1942, plaintiff applied for registration of its trade-mark "White Knight" for mattresses in the United States Patent Office, and Registration No. 398,736 was issued to it on November 17, 1942. In the application for the trade-mark it was stated that the trade-mark "White Knight" had been continuously employed by it for mattresses since 1914. There is no evidence that the defendants have applied for registration of their "White Knight" trade-mark, nor have the defendants filed any petition to cancel the plaintiff's registration.
18. There is no evidence that any of the activities of plaintiff in respect of the "White Knight" trade-mark came to the attention of the defendants prior to September, 1942, nor is there any evidence that any of the defendants' activities in respect of the "White Knight" trade-mark, were brought to the attention of the plaintiff before September, 1942.
19. The trading territory of the defendants includes Pennsylvania, Ohio and West Virginia. They hold themselves open to fill orders received from any part of the United States. They have exhibited their mattresses and springs at the annual National Furniture Exhibition in Chicago for a number of years, — at least as far back as the year 1942.
20. In March, 1938, defendants adopted their label bearing the name "White Knight", and beginning March, 1938, began to sell to the Joseph Horne Company in Pittsburgh, mattresses bearing said label. The sale of mattresses by defendants, bearing the trade-mark "White Knight", extended to other companies in Pittsburgh, and also, in adjoining states.
21. In July of 1942, the defendants had an exhibit at the National Furniture Exhibition at Chicago, and had on display there a mattress bearing a "White Knight" label. Defendants did not know of plaintiff's use of the "White Knight" label until shortly before September 18, 1942, when defendants wrote to plaintiff, charging it with infringement of defendants' rights in respect of the "White Knight" trade-mark, to which letter plaintiff replied October 26, 1942, alleging that the infringers were defendants and not the plaintiff.
22. The defendants have extensively advertised their "American Beauty" mattress, which at one time was an inner-spring mattress and is now an all-felt construction; but there is no evidence that defendants have advertised their "White Knight" mattress. The sales of defendants' "White Knight" mattress have greatly increased since the extensive "White Knight" advertising campaign of the plaintiff in 1942.
23. Defendants sold box springs bearing a "White Knight" label since 1938.
24. Mattresses or bed springs, when treated with proper care, will give good service for twenty years.
25. The name "White Knight" is not descriptive of mattresses, bed springs or box springs, nor is it geographical or the name of any person or concern. It is inherently arbitrary and distinctive.
26. Prior to August, 1942, sales of mattresses were predominantly inner-spring mattresses. After that date, it was unlawful to manufacture inner-spring units for general civilian consumption; hence, all of defendants' production since said date has been felt mattresses.
27. Defendants sold felt mattresses manufactured by them bearing the mark "White Knight" to merchants in and about Pittsburgh, Pennsylvania, and the adjoining territory, from March 1938 until October 1942, without encountering any opposition from the plaintiff.
28. Defendants, alone, sold mattresses under the trade-mark "White Knight" in the State of Pennsylvania and adjoining territory from March of 1938 until September. 1942. Defendants also supplied these mattresses in adjoining territory to Pennsylvania without opposition or protest from plaintiff until after plaintiff received defendants' letter of September 18, 1942.
29. Plaintiff has never abandoned the use of the trade-mark "White Knight" in connection with the sale of mattresses, bed springs or box springs in the State of Pennsylvania or any other state adjacent thereto, in which defendants have sold their merchandise.
Conclusions of Law.
I. The notation "White Knight" is capable of adoption as a trade-mark for mattresses, box springs or bed springs.
II. Plaintiff established its exclusive right to use the notation "White Knight", throughout the United States including Pennsylvania, as a trade-mark for mattresses and related products such as box springs and bed springs prior to 1938, and such right has continued until the present time.
III. Plaintiff has never abandoned the use of the trade-mark "White Knight" in connection with the sale of mattresses, bed springs or box springs in the State of Pennsylvania or any other state adjacent thereto, in which defendants have sold their merchandise.
IV. Defendants have infringed the rights of the plaintiff by selling mattresses and box springs without the authority of plaintiff, bearing the trade-mark "White Knight" since March, 1938.
V. Since November 17, 1942, the defendants infringed upon the rights of the plaintiff under its U.S. Patent Office Registration No. 398,736, which is valid, by introducing into, or shipping in interstate commerce, mattresses and box springs bearing the mark "White Knight", without the authority of plaintiff.
VI. Plaintiff is entitled to an injunction restraining the defendants from continuing the aforesaid infringements, with costs.
VII. Defendants are not entitled to relief on their counterclaim.
This is an action for injunctive relief and an accounting for alleged infringement by defendants of plaintiff's trade-mark "White Knight" used in connection with the sale of mattresses, bed springs and box springs. Defendants denied that the alleged trade-mark of plaintiff was valid. They also averred that they had a valid trade-mark for the same kind of goods substantially the same as plaintiff's, and sought relief for infringement thereof. The facts are fully set forth in the foregoing findings of fact.
The first question that arises is: Does plaintiff now have, and has it had, a valid and exclusive trade-mark designated as "White Knight" in connection with the sale of mattresses, box springs and bed springs, since a time prior to 1938 in the trading territory of the defendants? In Columbia Mill Company v. Alcorn, 150 U.S. 460, 463, 14 S.Ct. 151, 152, 37 L.Ed. 1144, it is stated:
"* * * The general principles of law applicable to trade-marks, and the conditions under which a party may establish an exclusive right to the use of a name or symbol, are well settled by the decisions of this court in the following cases: Canal Co. v. Clark, 13 Wall. 311 [ 20 L.Ed. 581]; McLean v. Fleming, 96 U.S. 245 [ 24 L.Ed. 828]; Manufacturing Co. v. Trainer, 101 U.S. 51 [ 25 L.Ed. 993]; Goodyear's Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 9 S.Ct. 166 [ 32 L.Ed. 535]; Corbin v. Gould, 133 U.S. 308, 10 S.Ct. 312 [ 33 L.Ed. 611]; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 11 S.Ct. 396 [ 34 L.Ed. 997]; Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 S.Ct. 625 [ 35 L. Ed. 247].
"These cases establish the following general propositions: (1) That to acquire the right to the exclusive use of a name, device, or symbol as a trade-mark, it must appear that it was adopted for the purpose of identifying the origin or ownership of the article to which it is attached, or that such trade-mark must point distinctively, either by itself or by association, to the origin, manufacture, or ownership of the article on which it is stamped. It must be designed, as its primary object and purpose, to indicate the owner or producer of the commodity, and to distinguish it from like articles manufactured by others. (2) That if the device, mark, or symbol was adopted or placed upon the article for the purpose of identifying its class, grade, style, or quality, or for any purpose other than a reference to or indication of its ownership, it cannot be sustained as a valid trade-mark. (3) That the exclusive right to the use of the mark or device claimed as a trade-mark is founded on priority of appropriation; that is to say, the claimant of the trade-mark must have been the first to use or employ the same on like articles of production. (4) Such trade-mark cannot consist of words in common use as designating locality, section, or region of country."
Mattresses, box springs and bed springs are goods of the same class; hence the use by plaintiff of the trade-mark "White Knight" on bed springs was a continuation and extension of its use of the mark in respect of mattresses. See Aunt Jemima Mills Co. v. Rigney Co., 1917, 2 Cir., 247 F. 407, L.R.A. 1918C, 1039, certiorari denied, 245 U.S. 672, 38 S.Ct. 222, 62 L.Ed. 540; Vogue Co. v. Thompson-Hudson Co. et al, 1924, 6 Cir., 300 F. 509, certiorari denied, 273 U.S. 706, 47 S.Ct. 98, 71 L.Ed. 850; Wisconsin Electric Co. v. Dumore Co., 1929, 6 Cir., 35 F.2d 555; Akron-Overland Tire Co. v. Willys-Overland Co., 1921, 3 Cir., 273 F. 674, 676; Wall v. Rolls-Royce of America, Inc., 1925, 3 Cir., 4 F.2d 333; Rosenberg Bros. Co. v. Elliott, 1925, 3 Cir., 7 F.2d 962; Kotabs, Inc., v. Kotex Co., 1931, 3 Cir., 50 F.2d 810, certiorari denied 284 U.S. 665, 52 S.Ct. 41, 76 L.Ed. 563; Duro Co. v. Duro Co., June 1928, 3 Cir., 27 F.2d 339; Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 17 C.C.P.A. (Patents) 1103, 40 F.2d 106; California Packing Corp. v. Tillman Bendel, Inc., 17 C.C.P.A. (Patents) 1048, 40 F.2d 108; Sun-Maid Raisin Growers v. American Grocer Co., 17 C.C.P.A. (Patents) 1034, 40 F.2d 116; Cluett, Peabody Co., Inc. v. Hartogensis, 17 C.C.P.A. (Patents) 1166, 41 F.2d 94, 95; Kotex Co. v. McArthur, Dec. 1930, 18 C.C.P.A. (Patents) 787, 45 F.2d 256; Mohawk Carpet Mills, Inc., v. Bissell Carpet Sweeper Co., 58 U.S.P.Q. 30, June, 1943, Commissioner of Patents; Sears, Roebuck and Co. v. Allied Stores Corporation, 56 U.S.P.Q. 274 (January, 1943, Commissioner of Patents).
Plaintiff does a nation-wide business in the making and selling of beds, springs, box springs, mattresses, etc. It has carried on said business, and has used the trade-mark "White Knight" in the conduct thereof in Pennsylvania (including Western Pennsylvania), in adjoining states and throughout the United States during 1938, for many years prior thereto and has continued the same from 1938 up to the present time. I, therefore, conclude that since a time prior to 1938 and continuing up to the present time, plaintiff has a valid trade-mark in the notation, "White Knight", in connection with the sale of mattresses, box springs and bed springs in Pennsylvania, in adjoining states, and also, generally, throughout the United States.
Under the facts, as found in this case the two cases relied upon by defendants, Allen Wheeler Co. v. Hanover Star Milling Co., 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141, are not pertinent.
The next question is whether plaintiff's trade-mark "White Knight" is rendered invalid by the statement in the application that "the trade-mark has been continuously used and applied to said goods in applicant's business since 1914"; or is plaintiff, in equity and conscience, precluded from using the same. No authority has been cited by defendants in support of said contention. There is no evidence that defendants were injured by the alleged misstatement. The common law rights of the plaintiff to said mark are not affected; consequently, it follows that if there was a misstatement, neither in law nor equity does it preclude injunctive relief to the plaintiff.
At the oral argument, the question of plaintiff's abandonment of its trade-mark in Pennsylvania and adjoining states was mentioned. Defendants, in their written argument, do not make such contention. Their contention is that plaintiff does not have a valid trade-mark in Pennsylvania and adjoining states, nor has it had the same since at and prior to March, 1938. There is no evidence in this case of any intention by plaintiff to abandon its trade-mark. The burden of proof rests upon defendants to aver abandonment and to make proof that the trade-mark was not used with the intention to abandon the same. This has not been done.
Let an order for judgment be prepared and submitted in accordance with the foregoing findings of fact, conclusions of law and this opinion.