# Respondents Brief — Cridlebaugh v. Rudolph

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Respondents Brief
- **Published:** January 1, 1943
- **Citation:** 318 U.S. 779

## Text

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MAR 17 1943

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IN THE

Supreme Court of the United States

October Term, 1942.

No. 755.

JOHN CLAYTON CRIDLEBAUGH, Trading as
Marvel Company,
Petitioner,
vs.

MAURICE L. RUDOLPH, Trading as Rudolph Poultry
Equipment Company,
Respondent.

Brief of Respondent

A. Miinarp Taytor,
Of Counsel.
Wm. S. Hopazs,
900 F Street, N.W.
Washington, D. C.

I. F. Huntzinger Co., Appellate Printers, Camden, N. J.

INDEX TO SUBJECT MATTER

PAGE

The Petition for Writ of Certiorari Does Not Meet

the Requirements of Rule 38 ..............24.6. 3
DOP BIeWe CROCS 65 dace cc seb asencrscesenndacess 4
The Second and Third Questions ...............+5- 7
ee ONO TORU aioe oc deen se vicces ceenwes 11
oe | Peer eerie rr ee 13
ee UN MUNI oo rice x te cus carsasdasnassceseee ae
ee TOVORER GIUTION ois dices cas eeasninecceeess 15
PE Te ET OC ETS T RTT eee ee 17

CASES CITED

Aero Equipment Corp. vs. Herring Wisler Co., 84
AG 5 Serer re ery rere et 6

Burroughs Adding Machine Co. vs. Rockford Milling
manem. Co., Bee ©. R, GOO onc ccc cdecdseseusse 6

Corbin Cabinet Lock Co. vs. Eagle Lock Co., 150
ee See ee errr ey rere eee ere 9

Electrical Fittings Corp., et al. vs. Thomas & Betts,
"| 6: S Seerevrrr tery rere 6

Herman Body Co., et al. vs. St. Louis Body & Equip-
mant Co. ot al G6 F. (2) SiO ois cvccccccscivess 6

Linde Co. vs. Morse Co., 246 F. R. 834, 837 .......... 6

INDEX
PAGE
MeCormick Harvesting Mach. Co. vs. Aultman, 168
IS PPT Tee Cert rere rT re 9
Millard vs. Chase, 108 F. R. 399, 401 ................ 5, 6
Miller vs. Brass Co., 104 U. S. 350 .............06. 9
Mills Novelty Co. vs. Monarch Tool Mfg. Co., 49 F. (2)
a Bee he rire en emerge sory ery ere 6
Pecheur Lozenge Co., Inc. vs. National Candy Co., Inc.,
ie SF | ere ree eer err Tree re. 15
Permutit Co. vs. Grover Corp., 284 U. 8S. 53 ........ 7
Seymour vs. Osborne, 78 U.S. 516 ................ 9
Schriber-Schroth vs. The Cleveland Trust Co., 305
The ee benedcasauddiss nteewabnieeadeesaeealn 8, 10
U.S. Consolidated Seeded Raisin Co. vs. Selma Fruit
ee 8 OR PT eee ee 6
U. S. Industrial Chemicals vs. Carbine and Carbon
Cag Te Ov es PE os cvs due Sp enewesedeowees 9
Willemette-Hyster Co. vs. Pacifie Car & Foundry Co.,
SGT Ca) Ge Oe we ktekcasksieesaes beeen 6
STATUTES
U. 8. C. Title 28, Section 2270 .....ccscccccccccseece 4
U. B..C. Fitde BS, Bentiee SD ono csccvecsscecesenpans 8
AUTHORITIES
Nims, Unfair Competition and Trade Marks, 2nd Ed.
th. DO vduuactoesnuardcnceswateenenedeoaee 15

IN THE

SUPREME COURT OF THE UNITED STATES

October Term, 1942.

No. 755.

Joun Crayton CriptesaucH, Trading as Marvel Company,
Petitioner,
vs.

Maurice L. Rupoipy, Trading as Rudolph Poultry
Equipment Company,
Respondent.

BRIEF OF RESPONDENT.

Petitioner, John Clayton Cridlebaugh, has filed a petition
for a writ of certiorari, addressed to the United States Cir-
cuit Court of Appeals for the Third Circuit, directing the
certification to this court of the records in the case of
Cridlebaugh vs. Rudolph reported in 131 Fed. (2nd) 795,
decided November 20, 1942.

The opinion of the Court of Appeals (R. 195) contains a
full statement of the case as it was presented by the appeal

2

record. It is deemed unnecessary to repeat it here. How-
ever, in view of certain issues raised by the petition at
bar, it should be particularly noted that in the answer
(R. 15a) defendant denied validity of the Jones reissue
patent in view of six prior U. S. patents which are specif-
ically enumerated. Also (R. 18a) that the answer set up
five alleged prior art patents, including the original patent
to Jones as anticipatory of the Cridlebaugh patent. The
answer also challenged the sufficiency of the reissue oath
(R. 17a).

The record does not show that the patents referred to by
the Appellate Court in its opinion (R. 202) were discussed
by any witness. It does show that they are in evidence as
Exhibits 164a and Exhibits 166a to 17la. Further, the
record fails to show that the petitioner made any objec-
tion whatever to the entry of these exhibits in evidence
or consideration thereof by the Trial Judge.

The District Judge (R. 134a to 155a) without passing
on the question of validity in view of prior art, sus-
tained the charge of infringement of the two patents and
of the trade mark, sustained the charge of unfair competi-
tion, and dismissed the counterclaim for libel, all of which
will more fully appear in the opinion and Findings of Fact
and Conclusions of Law. The usual interlocutory decree
for injunction followed (R. 3) and injunction duly issued.
From this judgment, respondent appealed.

The Circuit Court of Appeals, by written opinion, com-
mencing Record page 195, reversed the District Court,
holding that each of the patents in suit, i.e., the Jones
Reissue No. 19,562 and the Cridlebaugh patent No. 2,079,107,
was invalid in view of the above mentioned prior art
patents, contained in the record before it; that the Jones
reissue patent is invalid because (1) the facts of record
show that Jones was not in a position to make a valid re-
issue oath (R. 197); and (2) that the original patent did

ESR EAN SAIN ARLEN IORI RNR IGRE DERANGEMENT ILE AEE ALR GT RAE LOR pT EDR

3

not disclose the subject matter of the reissue claims (R.
199, 200). The lower Court also held that Petitioner’s trade
mark ‘‘Spees’’ is descriptive and therefore not a valid
mark, that it was not infringed, and that unfair competi-
tion had not been proved.

THE PETITION FOR WRIT OF CERTIORARI DOES
NOT MEET THE REQUIREMENTS OF RULE 38.

The petition at bar is open to the objection that it fails
to meet any of the requirements of Rule 38, Section 5. For
instance, although seven separate grounds for review are
alleged, there is no charge that the Court of Appeals has
decided any federal question of substance not previously
determined by this court. The petition also fails to show
that any decision of the United States Court of Appeals
for the District of Columbia is involved in the present
case. The petition therefore definitely fails, so far as the
requirements of paragraphs 5(a) and 5(c) of Rule 38
are concerned.

The petition also fails to definitely set up any ground
justifying review by this court under the provisions of
paragraph 5(b) of the Rule. Petitioner concedes (p. 7
of the combined petition and brief) that ‘‘there is at pres-
ent no conflict between decisions of Circuit Courts rela-
tive to the subject matter here involved.’’ Aside from
this, there is no charge that the case at bar involves the
decision of any important question of local law. Nor is
it charged that the lower court has decided any important
question of federal law which has not been, but should be
settled by this court. There is no charge that the lower
court has decided any federal question in a way probably
in conflict with applicable decisions of this court. Neither

4

is there any showing by cited authority that the lower
court has so far departed from accepted and usual course
of judicial proceedings, or so far sanctioned such a de-
parture by a lower court as to call for an exercise of the
power supervision of this court. Therefore, it does not
affirmatively appear that the petition sets up any of the
accepted grounds upon which this court customarily issues
a writ of certiorari.

The First Question.

The first question which the petitioner seeks to have
reviewed and determined is ‘‘whether in the absence of a
challenge of validity by either of the parties to a suit for
patent infringement, a court may nevertheless pass on that
question.’”’

In support of this question, the Petitioner takes the
ground that because Respondent’s brief in the Court of
Appeals did not seriously urge the invalidity of either of
the patents in suit, that said court was precluded from
passing upon the validity of these patents. Petitioner has
not cited any case decided by this court or any other
court which even remotely supports this position. In fact,
as will be pointed out later, the weight of authority is to
the contrary.

In the case at bar, the patents considered by the Court
of Appeals to invalidate the two patents in suit were of-
fered in evidence during the trial, were before the trial
Judge at all times thereafter, and were certified to the
Court of Appeals as a part of the appeal record.

The jurisdiction of the Appellate Court is found in
U. S. C. Title 28, section 227a. This statute clearly relates
the jurisdiction of the Appellate Court to the issue of an
interlocutory injunction. Under the present Rules of Civil

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6 RIALTO EARP A aR BOTA eG a

5

Procedure no assignment of error is required when an
appeal is taken. Therefore, on the record certified to the
court, the broad issue is whether the facts of record justify
the issue of an injunction.

In the case at bar the Circuit Court of Appeals based
its authority for reviewing the prior art in the record
before it and finding invalidity of the patents on the broad
ground of public policy, citing Densmore vs. Scofield, 102
U. S. 375, 378. While this ground alone seems to be
sufficient for the purposes of this case, the court could have
cited other cases which deal specifically with the question
raised by the petitioner’s first point. In the case of Mil-
lard vs. Chase, 108 F. R. 399, 401, the Circuit Court for the
First Circuit had before it an appeal from a decision of
the lower court in which a patent was found to be valid
and infringed, notwithstanding the existence of a certain
prior art patent to one Powell, which the Trial Court
considered ‘‘too remote as an anticipation.’’ With the
record which went before the Appellate Court two other
prior art patents were included, but they were not stressed
in the argument before the court, the appellants having
rested their case on the patent to Powell. Thus, the cir-
cumstances closely parallel those of the case at bar. With
respect to this situation, the court said :—

“Tt is a thoroughly settled rule as to patentability,
and the range of the claims in a patent, imasmuch as
these matters concern the public at large, the court
will not allow parties to frame their issues in such a
way as to take from it the scrutmy of all of the ques-
tions which may be involved. The rule applies to this
case, and requires us to examine the range of the
claims, and all the material questions involved in the
patentability of the process in controversy.’’ (Italics
ours).

os ae

6

The court went on further to comment that the rule
applied to the case before it and that it declined ‘‘to rest
it where the respondents offered to rest it.’’

The court further pointed out (page 404) that:—

‘‘This appeal comes to us as an injunction issue,
with a decree for accounting, after a hearing on bill,
answer and proofs. Therefore, in accordance with
settled practice, the merits of the case are fully before
us, and we are enabled to dispose of it finally.’’

The ease of Millard vs. Chase, supra, was cited with ap-
proval and followed in the case of U. 8. Consolidated Seeded
Raisin Company vs. Selma Fruit Company, 195 F. R. 244
(C. C. A. 9). Other cases in point are: Linde Company vs.
Morse Company, 246 F. R. 834, 837 (C. C. A. 2) ; Burroughs
Adding Machine Co. vs. Rockford Milling Machine Co., 292
F. R. 550 (C. C. A. 7) ; Herman Body Co. et al vs. St. Louis
Body & Equipment Co. et al., 46 F. (2) 879 (C. ©. A. 8);
Mills Novelty Co. vs. Monarch Tool & Mfg. Co., 49 F. (2)
28, 29 (C. C. A. 6); Aero Equipment Corp. vs. Herring Wis-
ler Co., 84 F. (2) 619; and Willemette-Hyster Co. vs. Pacific
Car & Foundry Co., 122 F. (2) 492, 499 (C. C. A. 9).

These opinions are unanimous in holding that an appeal
in equity brings before the Appellate Court the entire
record and that in accordance with settled practice, the
merits of the case are fully before the court for final dis-
position. Certainly, in view of the facts of record, the
Appellate Court in the case at bar would not have been
justified in upholding infringement of either of the patents
in suit, if the appeal record contained convincing evidence
that the patents were invalid. To have affirmed infringe-
ment of patents which the court considered invalid, would
have been a miscarriage of justice.

On page 23 of the record and brief, petitioner cites the
ease of Electrical Fittings Corporation et al vs. Thomas &

one SEP APNE Ven ALIA IT. Mea ‘ * z 3
¥ My DAE AE ATE RONALD SS SM OR RE FORA ND MTA CSI eH OR a LPN it RONDE BR SSIOy

7

Betts et al, 307 U. & 241, asserting that analogy can be
drawn to that decision. This position is untenable because
in the Electrical Fittings case, supra, the District Court
held claim 1 valid and claim 2 invalid and entered a decree
dismissing the bill for failure to prove infringement. The
plaintiff did not file an appeal, but filed a disclaimer in the
United States Patent Office. The defendant filed an appeal
from so much of the decree as adjudicated claim 1 valid.
This court held that the Court of Appeals ‘‘had jurisdic-
tion to entertain the appeal, not for the purpose of pass-
ing on the merits, but to direct reformation of the decree.”’
It will be seen therefore that only questions of formality
were involved in the Electrical Fittings case, and that the
conditions were very different from those of the case at
bar. In view of the settled practice, as set forth in the
cases hereinbefore cited, there does not appear to be any
justification under the Electrical Fittings case for this
court to take jurisdiction.

The Second and Third Questions.

The second question which the petitioner asks to be re-
viewed is whether the rule of Permutit Company vs. Grover
Corporation, 284 U. S. 53, E

‘‘operates to bar an applicant from claiming opera-
tional as distinguished from structural characteristics
shown in the drawing but not specifically described in
his specification.”’

This question is somewhat misleading because it is di-
rected at that part of the opinion of the Court of Appeals
(R. 199, 200) finding that the original patent to Jones No.
1,962,395 (R. 164a) contains insufficient disclosure to sup-

REL OP A ALS

port the matter which was introduced and claimed in the
reissue patent.

The opinion below raises no question as to the adequacy
of disclosure of the original Jones patent with respect to
the claims thereof. The conclusion on this subject was
definitely limited to the failure of the original patent to
support the new matter inserted in the Jones Reissue patent
No. 19,562. This is the issue raised by the third question.
Therefore, Points No. 2 and No. 3 will be discussed together.

The third question is whether the lower court erred in
holding that the introduction into a reissue claim of op-
erational, as distinguished from structural characteristics
shown in the drawing of the original patent is not permitted
by statute, and further, that the court erred in holding
the Jones Reissue patent No. 19,562 invalid for that reason.

The lower court stated (R. 199):

‘‘The present is not a case of including in the re-
issue application something inherent or incidental
to the device originally disclosed. It is precisely the
opposite and is an attempt to include an idea antag-
onistic to the disclosure of the original application.’’

The rule is well settled that the provisions of Section
R. S. 4888 U. S. C. Title 35, Section 33, calls for a dis-
closure sufficiently clear to ‘‘enable any person skilled in
the art or science to which it appertains, or with which it
is most nearly connected, to make, construct, compound
and use the same.’’ This rule has been repeatedly stated
by this court, and was again restated in the Permutit case
above cited, and in the case of Schriber-Schroth vs. The
Cleveland Trust Company et al, 305 U. S. 47. In the last
mentioned case, this court found that the application of
the patent in issue, which appertained to a piston for in-
ternal combustion engines provided with lateraliy disposed
webs, contained no reference in terms to flexibility of the

1 LR Ri Sk SIRS Cn Raia TI ahs RS SIREN Got YORE ELEN he Di ahs AR REISS

9

webs, or to the function of the webs to secure flexibility of
the skirt of the piston. It was also found that neither the
drawings nor the specifications of the patent in suit con-
tained dimensions showing thickness or other proportions
which might suggest a flexible structure.

In the case at bar, the original Jones patent 1,962,395 (R.
16a) contains no reference whatever to any rotative mount-
ing of the mask upon the pin 17, i.e. a rotative movement
forwardly and backwardly with respect to the head of the
fowl. The patent drawing negatives any such function, be-
cause the pin 17 is shown as a flat pin with the narrow edges
at the top and bottom, and there is no clear indication of the
shape of the holes 16 through which the pin passes. The
specification, page 1, commencing at line 60, merely states
that the securing means is a pin 17 ‘‘adapted to extend
through aligned holes 16 and also through the breather
opening in the beak B.”’

The issue raised here does not relate to the sufficiency
of the disclosure of the original patent for the purposes of
the claims thereof. That is a moot question. The issue is,
however, directly related to the sufficiency of the original
disclosure to support the matter introduced for the first
time in the reissue patent in the way of amplification of the
specification and broadened claims.

This court has many times held that interpolations in a
reissue patent of new features or ingredients or devices
which were neither described, suggested, nor substantially
indicated in the original specifications, drawings, or Patent
Office model, render the reissued patent invalid. Many
cases could be cited, but typical examples are Seymour vs.
Osborne, 78 U. S. 516; Miller vs. Brass Company, 104 U.S.
350; Corbin Cabinet Lock Co. vs. Eagle Lock Co., 150 U. S.
38, 42; McCormick Harvesting Machine Co. vs. Aultman,
168 U. S. 606, 610; U. S. Industrial Chemicals Inc, vs. Car-
bide & Carbon Chemicals Corp., 315 U. S. 668, 676.

10

Exception is taken by petitioner to the statement in the
opinion of the Court of Appeals (R. 198) as follows:

‘“The intent and effect of the added paragraph of
specification in the reissue application was to import to
the pin or securing member a pivotal function in the
rotation of the pin from the tipping of the top of the
mask forwards or backwards due to the movement of
the fowl’s head, thereby causing removal of dust and
dirt which would otherwise collect on the pin where it
enters and leaves the breather opening in the beak’’.

As indicated (R. 199) it is that pivotal function of the pin
which the plaintiff relies upon specially for alleged novelty
of the invention, and as a support for his charge of infringe-
ment.

Petitioner’s position is that this new matter is an oper-
ational as distinguished from a structural characteristic.
This is immaterial. Schreiber-Schroth v. The Cleveland
Trust Co. et al, supra. It will be observed, however, that
it is in fact a structural characteristic, because if the mask
were not mounted freely for this pivotal movement and so
described in the original specification, i would not be free
to perform the functions attributed to it in the reissue case.
The pin 17 is flat and there is not the remotest description
in the original patent of any correlated structure by which
the pivotal movement is obtained, or anything to indicate
that this alleged rotative function is an inherent character-
istic.

The action of the Court of Appeals on these issues is
definitely within the purview of the decisions of this court.
The contention of the petitioner with respect to Questions
No. 2 and No. 3, therefore, is absolutely without merit.

11

The Fourth Question.

The fourth question raises an issue with respect to that
portion of the opinion of the lower court (R. 197) where it
was held that Jones was not ina position to make the requi-
site oath to the reissue application which resulted in the
grant of the Jones reissue No. 19,562. The facts appear-
ing of record are that prior to the issue of the Jones patent
No. 1,962,395 (R. 164a) Cridlebaugh (owning a 49% in-
terest) warned Jones that his protection was inadequate
(R. 72a), and advised him to attempt to get broader claims
‘‘before it was too late.”

Cridlebaugh admits (R. 69a) that it was his suggestion
that the reissue was filed (XQ. 319), and that he collabo-
rated with the patent solicitor in the preparation of the re-
issue application (XQ. 321 to 324). Respondent calls atten-
tion to XQ. 330 (R. 71a) and the answer, and particularly
to that portion appearing on Record 72a. Also, note that in
his answer to XQ. 331 (R. 72a) Cridlebaugh admits that at
that time he had in mind what he considered the shortecom-
ings of the Jones patent.

The reissue oath is not a part of the record certified to
this court, although it was a part of the record before the
Court of Appeals. However, the references thereto in the
record at pages 7la and 73a, XQ. 350; page 75a, XQ. 357,
clearly indicate the lack of good faith on the part of Jones
in making his reissue oath. Cridlebaugh also admits (R.
75a, XQ. 360 and 361) that the Jones original patent shows
a square pin, but that he is unable to find any place in the
specification which describes the pivoting action.

Petitioner challenges the warning given Jones by a part
owner of his application, as being insufficient to justify the
finding that Jones was not in position to make the reissue
oath. It is the position of Respondent that it is wholly wm-

URSA DN RL TC Sa NN HRT B66 mrt ES

12

material whether Cridlebaugh owned any wterest at all
in the original Jones application if, as a matter of fact, he
had warned the applicant Jones, as he did after careful ex-
amination of his application, of certain specified inade-
quacies of the protection of his pending application. In the
face of this warning Jones proceeded at his own risk, and
issued his patent without attempting to correct the inade-
quacies. Even after Cridlebaugh’s notice he failed to take
any action until after his patent issued, whereupon within
a short time, abetted by Cridlebaugh, he filed an applica-
tion for reissue, supporting it by making oath to facts
which were inconsistent with his previously acquired knowl-
edge. The Court of Appeals correctly found that because
of this pre-knowledge, Jones was not in a position to make
oath that the inadequacies were unknown to him until after
issue of the original patent. The fact that Cridlebaugh had
a definite interest in the patent application, with the con-
templation that he would later manufacture the device, lent
much greater legal force to his warning.

The reissue oath should have been included as a part of
the record certified to this court. It is not here, and this
court, therefore, is without the full facts. Petitioner has
not overcome the prima facie effect of the correctness of the
decision of the Court of Appeals in this respect, arising
from the fact that said court had all of the record before it.

Petitioner, (page 8) asks this court to take jurisdiction
because of the alleged ‘‘disastrous effect of the decision of
the Circuit Court of Appeals on the business of the peti-
tioner’’.

Petitioner, however, fails to point to any part of the rec-
ord which supports this contention. Neither Respondent
nor the public generally should be penalized because peti-
tioner has gambled with his patent protection by bringing
an ill-advised suit in the federal courts for infringement
thereof, under conditions which would result in the chal-

13

lenge of validity. This act was voluntary on his part and
he is now in no position to complain.
The record in this case fails to show any special circum-
stances within the purview of the cases cited by Petitioner
on page 7, and his argument in this particular is without
merit.
The fourth question is without merit.

The Fifth Question

Under this heading, petitioner asks this court to review
the finding of the Court of Appeals to the effect that peti-
tioner’s trade mark ‘‘Specs’’, as applied to masks for fowls,
is a descriptive mark and that, therefore, the petitioner is
not entitled to the exclusive use of the word or its synonyms
(R. 203, 204).

That the mark is descriptive per se is tacitly admitted by
petitioner (page 13), where he asserts error in the holding
that he is not entitled to the exclusive use of the word
‘*Spees’’ or its ‘‘synonym.’’ There could be no synonym
of ‘‘Spees’’ if it were not a descriptive word.

However, the real position of petitioner (page 22 of his
brief) is that the descriptive sense of the word ‘‘Specs’’, as
applied to the inventions involved in the case at bar, is in-
congruous. Numerous authorities are cited allegedly up-
holding this principle. It is not denied here that the au-
thorities cited in the main correctly state the principle of
law, but it is Respondent’s position that these cases are not
similar to the case at bar. They cite examples that could
not be considered descriptive, without doing violence to
common sense.

The situation is different here. For instance, the opinion
below (R. 196), points out that Petitioner’s devices are at-
tached to the beaks of the fowl for the purpose of obstruct-

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14

ing their forward vision. This is not denied. The word
‘Specs’? implies a device to be used for some effect with
respect to vision, and hence in the case at bar ‘‘Specs”’
necessarily describes the product as well as its use. The
peculiar characteristics of the device with respect to vision,
and its location on the beak of the fowl for that purpose,
similar to the position of eyeglasses on the human nose,
makes the word definitely descriptive in a trade mark sense.
The position of the Court of Appeals in this respect is not
at all contrary to any of the cases cited by the petitioner.

The word ‘‘Specs’’ being of a definite descriptive nature,
the Petitioner obviously is not entitled to the exclusive use
thereof. In the case at bar, Respondent used the word
‘‘Goggles’’. There is no showing in this record, and Pe-
titioner has not asserted that he has ever used the word
‘‘Goggles’? as a trade mark, or any other word but
‘‘Spees’’. Clearly there was no error on the part of the
Court of Appeals in this respect and the fifth question on
which review is asked is clearly without merit.

The Sixth Question

By the sixth question, Petitioner asks this court to re-
view the action of the Court of Appeals in determining the
status of the word ‘‘Specs’’ as a valid trade mark, even
though there had been no finding of infringement by that
court.

This finding brings into issue exactly the same points
as were advanced with respect to the first question, supra.
It is Respondent’s position that the record certified to the
Appellate Court was there for all purposes, and therefore
the lower court was justified in finally settling this question,
as well as all other questions raised by the record. The au-
thorities cited in the preceding discussion relative to the

ES AI EE RET ET —

15

first question,” apply with equal force here, and obviously
for reasons stated in connection therewith, the sixth ques-
tion is without merit.

The Seventh Question

The seventh question puts in issue Petitioner’s challenge
of the legality of the determination by the Court of Appeals
that the showing as to alleged confusion in trade was not
adequately established by the plaintiff (R. 204).

It appears to be the Petitioner’s opinion that mere asser-
tion of possibility of confusion is sufficient to establish un-
fair competition, i.e. that it is unnecessary to support the
charge by any convincing evidence.

Numerous cases are cited (p. 24) allegedly in support of
this contention, but an examination of these authorities defi-
nitely shows that they do not bear out Petitioner’s asser-
tions.

A typical example is the reference to Nims on Unfair
Competition and Trade Marks, Second Edition, Section 335,
referred to on page 24. It will be noted that Nims states
that eases of confusion must be decided on the facts as to
the marks used by the parties and on evidence of the market
conditions surrounding the every day use of the marks to
determine whether or not the defendant’s acts will be likely
to cause confusion.

Entirely aside from the general rule, as stated in Nims,
the lower court in the authorities pointed out in its opinion
(R. 203, 204) states the correct rule of law to be followed
in these cases. That is, the lower court followed the ruling
of this court in Pecheur Lozenge Company, Inc. vs. Na-
tional Candy Co. Inc., 315 U. S. 666, 667, to the effect that
where jurisdiction of this question rests upon diversity of

* Pages 5 and 6, supra.

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16

citizenship, the rights of the parties in respect thereto are
to be determined according to local law. There is no dis-
pute between the parties that the local law applicable is
the law of the State of New Jersey.

Petitioner has not pointed out a single authority which
contradicts any of the Federal or State citations in the
opinion of the lower court (R. 203, 204). These cases uni-
formly hold that some showing of actual confusion, or at
least some facts indicating a probability of confusion,
should be made before any ruling on the question is justi-
fied. In the case at bar (R. 96a, 97a) specimens of the Re-
spondent’s labels in actual use were offered in evidence
without objection. No labels of the Petitioner were ever
filed for comparison, and there is no evidence whatever of
any confusion having arisen by reason of Respondent’s use
of the word ‘‘Goggles’’ on the labels exemplified in Ex-
hibits D-22 and D-23.

The only evidence of unfair competition is found in three
letters (R. 162a). These are referred to in the opinion of
the Court of Appeals at page 204. Petitioner admitted that
these letters reached him in the regular mail delivery (R.
61a-62a). They were not addressed to the Respondent. Pe-
titioner personally answered each of these communications.
No other persons, except Petitioner’s employees and his
attorney, ever knew anything about them. (R. 85a to 88a).
On this state of facts, and particularly in view of Petition-
er’s extensive advertising (R. 84a and 89a) the Court of
Appeals was clearly justified in holding that ‘‘the meager
instances of confusion to which the plaintiff points are more
properly attributable to carelessness or inattention on the
part of the inquirers rather than to the conduct of the com-
petitor’’.

The fact is that if Petitioner’s theory in this respect were
sustained, it would be very easy for anybody te establish
a case of unfair competition by merely alleging the con-

17

clusion that such existed. Such a situation would be intol-
erable. The seventh question is definitely without merit
and should be disregarded.

CONCLUSION.

In conclusion, it is iterated that

(1) a careful review of the questions raised in the
petition clearly indicates that the Petitioner has failed
to base his petition on any ground coming within the
purview of any portion of Rule 38, Section 5.

(2) Even if the petition should be held to come with-
in any of the provisions of Rule 38, Section 5, the seven
questions raised here are each and every one without
merit, because they are unsupported by settled author-
ity, and do not state sufficient reasons to justify this
court in taking the case for review.

Respectfully submitted,

WM. S. HODGES,
900 F Street, N.W.,
Washington, D. C.

A. MILLARD TAYLOR,
Of Counsel.

March 16, 1943.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA34086415_1459%3A3. Public record. Not legal advice.