Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before SPARKS and MINTON, Circuit Judges, and LINDLEY, District Judge.
In this action appellant charged appellee with unfair competition in the manufacture and sale of barometers, hygrometers, and thermometers. It also charged appellee with infringement of appellant's trademarks and design patents, and with copying appellant's advertising material and copyrighted catalogs. Appellee admitted jurisdiction of the District Court but denied that it was guilty of any act of infringement or unfair competition, and further denied that the amount involved exceeded $3,000.
The court found the facts specially and rendered its conclusions of law thereon favorable to the defendant, and entered a decree dismissing the cause of action on the merits. After finding that it had jurisdiction under the patent laws, and by reason of the diversity of citizenship of the parties, it substantially found the following facts which are supported by substantial evidence: Appellant is the owner of design patent to Teague, No. 89,619, issued April 18, 1933, for seven years for a thermometer; design patent No. 93,969, to Brown, issued December 4, 1934, for a term of fourteen years, for a thermometer; and a design patent to Brown, No. 100,362, issued July 14, 1936, for seven years, for an instrument case.
Commenting on the charge that the Teague patent was infringed by appellee's desighs referred to as exhibits 15 and 17, the court found that appellant, to support its claim of novelty for the Teague patent, relied upon minute differences, such as slightly narrowing clasps for holding the glass tube to the scale, a slight change in the shape of the side flanges which are used for stiffening the scale, and a slight change in the bulb guard. Thermometers with flanged sides, clasps, handles and bulb guards having substantially the same appearance are old in the art. The Teague patent is neither novel, nor ornamental, nor does it involve invention. Its single claim, for an ornamental design for a thermometer as shown, is entitled only to the narrowest construction. Appellee's thermometers, as shown by the exhibits referred to, are widely different in appearance from the design claimed in this patent. They have a distinctively different handle and are otherwise dissimilar.
With respect to the design patent No. 93,969 to Brown, it is charged that this patent is infringed by appellant's exhibit 19, which is one of appellee's products. This patent discloses a thermometer used for taking the internal temperatures of meat during roasting. It shows a thermometer consisting of a tube and scale plate of modified octagonal contour at the upper end of the tube. Such thermometers were shown to be old by United States patent No. 1,538,042 to Hurlburt; United States patent No. 1,983,166 to Chaney; United States patent No. 1,037,210 to Curphey and Poince, and by a publication, Bulletin No. 254 of the University of Minnesota, dated April, 1929.
Thermometers comprising glass tubes and scale plates or targets of rectangular contour secured to the upper end thereof are also old, as shown by the Chaney patent No. 1,983,166, and other exhibits specifically referred to in the finding. The claim in suit is for an ornamental design for a thermometer as shown, and is entitled to only the narrowest construction. The design exhibited in this patent is neither novel nor ornamental, and does not involve invention. Appellee's accused thermometer (exhibit 19) has a rectangular scale plate with rounded corners, is cylindrically convex or bowed and is provided with a sliding pointer. It does not resemble in appearance the design claimed in this Brown patent.
It is contended by appellant that appellee's instrument case, which is exemplified by exhibit 21, infringes Brown's design patent No. 100,362. The patent discloses a case which is generally rectangular and has a single opening in its face extending from end to end, a single glass plate in that opening, and a base with a series of protruding horizontal ribs or bars extending from the central portion of the front to the sides and around the ends of the case. Appellee's case has a front subdivided into a large, substantially square central opening, and two relatively narrow and vertically elongated openings at the sides. The side openings are separated from the central opening by vertical bars. It has horizontal slots in the front of the case below side openings and has a narrow inset base. Brown's claim is for an ornamental design for an instrument case as shown, and it is entitled only to the narrowest construction. In design and appearance appellee's case differs substantially from the design shown in the patent. If the claim is given a broad construction, as contended by appellant, it is not for a design which is ornamental in the sense of the patent laws and the creation of the design did not require the exercise of inventive genius.
It is further contended by appellant that its copyrights for its 1937 catalog were infringed by appellee's 1940 catalog. The District Court found that appellant's bill of particulars specified that the cloud and sky background appearing throughout appellee's 1939-1940 catalog are charged to infringe appellant's copyrights. The court found that appellant used black cloud effects for a background, and this was used only on four pages of its catalog for 1937. The cloud effects used by appellee in its 1940 catalog were blue in coloring and otherwise dissimilar. The two catalogs do not look alike. Appellee's catalog is characterized by a blue color and appellant's catalog is characterized by red and black.The District Court was of the opinion that appellant could not acquire any exclusive copyright to backgrounds with cloud effects.
Appellant further charged in its bill of particulars that appellee by the use of the mark "Airguide," infringed appellant's rights under registration No. 174,180 for the trademark "Stormoguide" used by appellant on some models of barometers; registration No. 252,957 for the mark "Thermoguide" used by appellant on some models of thermometers; and registration No. 280,982 for the mark "Humidiguide" used by appellant on some models of hygrometers.
The court found that appellant's instruments are generally known and advertised and designated as "Taylor," and that name has been the dominant and primary indicium of the origin of its goods. Appellant has used "Stormoguide," "Thermoguide," and "Humidiguide" in connection with only some of its models of barometers, thermometers and hygrometers, respectively. The District Court was of opinion that the word "Guide" was merely descriptive of the function of instruments for indicating temperature, pressure and moisture or condition of air, and that appellant acquired no exclusive rights to the use in trade of the word "Guide" in connection with thermometers, hygrometers and barometers. The court further found that appellee commenced to use the word "Airguide" in 1932, and has continuously used it since then on a line of instruments, and appellant had knowledge of appellee's use of that word since 1932. In June 1933, appellant filed in the United States patent office notice of opposition to appellee's application for registration of "Airguide." The patent office dismissed the opposition and held that the suffix "Guide" was a common word used merely as descriptive of the function of the instrument, and that appellant had no exclusive rights to the word "Guide" and that word was not a dominant feature of "Stormoguide," "Thermoguide" and "Humidiguide." No appeal was taken from that decision and it became final.
The court further found that appellant made no complaint to appellee against the use of the word "Airguide" prior to the filing of this suit on December 27, 1939. During that period appellee increased its line of instruments and expanded its business and used the mark "Airguide" thereon. It has also advertised its "Airguide" products and generally included its corporate name "Fee & Stemwedel, Inc." upon its products and boxes. Appellant does not claim that any actual confusion between the goods of the parties has occurred, and it offered no evidence to that effect. It has never used the word "Airguide" on its products and never acquired any exclusive rights to the use of the word "Guide." The court further found there was no intent on the part of the appellee to sell its instruments as those of appellant or to conceal the fact that its products were its own, and it concluded that appellee has the right to use the word "Airguide" as a designation for its instruments.
Appellant also claims that appellee's use of the names "Eton," "Kent," "Oxford" and "York" for designating the different models of instruments is unfair because they are English in character or suggestion, and to that extent follow or are similar to the names "Warwick," "Essex" and "Mayfair" which are used by appellant for designating its different models. The court found in this respect that the names "Eton" and "Kent" were adopted and used by appellee before appellant used any names of English character and suggestion, and that both parties used many other names not English in character and suggestion for designating different models. The District Court concluded that appellant had acquired no exclusive rights to names merely because they were ...