# Petition for Writ of Certiorari — Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385604_0103%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1968 - **Citation:** 393 U.S. 934 ## Text ae . > ‘ ¥ >. e : - . > a ‘ ” ’ 4 ’ 6 ” . ° oil - 4 “4 ° © . . a I] ; . — o> , 4 e . ; "is * . ‘ 8 \ P ° é =~ oa ° * |] ‘ ® . ° if : * . © >. . . a . = > « a ® e - ” ~ . ° . . : . e ° : Fy . ‘ i i , - e wn « - . ° . * o t . . a d . . = ; ee . ea ‘ 7 a é ? ° © . w ‘. . ° 4 é LIBRARY ea aa Office-Supreme Court, U.S, SUPREME COURT, Lh & Shiai IN ale . - “JOHN F. DAVis, PLE SUPREME COURT OF THE UNITED STATES. Ocroner’ Tem, 1968. DRESSER INDUSTRIES, INC. A’ Corporation, Petitioner, a Fe HERAEUS ENGELHARD VACUUM, INC; —* : | A CoRPoraTION, ~— ake . | Respondent. PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT. . Jerome Guson | se ~ 38 South Deurborn Street , Chicago, Illinois 60603 _ | Attorney for Petitioner Of Counsel: | Dean A. OLDs | Feat . 5 . @ Metvin F. Jacer 3 : . Hume, CLement, Hume & Lee ~ ) | ; -38 South Dearborn Street Chicago, Hlinois 60603 gir ir Coe sree cane Rosert W. Mayer «@ Republic National Bank Building aa Texas 75221 | : , ae Vo Selle Sire! Prese—Chicoge 60610 a . oe - ‘ * ‘ 9 Pe : @. ° pe mn > aioe ae e Ee Mlk ily >> SaaS ca tis aa As e 2 bs . - ° : \ . ee . . ; ‘ : 3 | | | e ! . $ = , : , : . of j . J | | | : ‘ *, 4 - . . 7 } | ! PR | | et | : Ve , ‘ | | = ; 7 7 2 . } . ’ : 7 : } ; ; * * ; . . | : . . 1 * . ; : : . 9 | | : ‘ &. ‘ . >. ° H . é Fi | . . ; : . * A > - é - | | | . ° .° * e % se ai . } . i. ; ”- | 3 . A | * : °% 3 , ‘: es | o . a 2 | he . . D | | e , x . oD Fae : | | . , , “ » ” ® " . ike : ‘ae a | : 2 ; . f . : | | P > F ‘ - ! ; * * P ' , : ) , . 5 f j | | . te xa & INDEX | Opinions Below ..... POT ST te oe pmemint ‘aie bebe ‘ enn RE Ee po ee ene D \* Sg : ANuestions Presented ........ pla CAL each eee 2 Federal Statutes Sve OO. 3 ®t P ; Statement .......... wien Ree AN asdeteevuueee er ae PO Soin an kes denkas cae te ee - 3° OE RE Te CAN sik Miata EMA esa oS _ The peer Issue AE ney ree Pore Me be 8 Reasons for Granting the Writ ; .....5...<2.. pore | 8 Argument ......... Ae eekccsia) paisa sees 10. WS. Shin's vec cees cack. Seer inky eee 29 APPENDICES . A—Opinion of District ‘Goons +o ab iings gokece cue A-1, FONE i esssiacces peek oieke ils nin Sis: Saag A-26. il joie of Court of Appeals ; ay '. for the Third Cireuit ...........: Nereeeeee BA L ; C—Cases Concerning geri Saahieae tn SM ck 0-/ é ~ Cases Applying Singer to Hold + a ee A Trademark Genetic '........ sevceiees cos Joe f Cases Refusing to Apply Singer ccccesecscele OB .. D—Statutes Involved ...............04. ie Ye 1 .% > ee : ° ’ Ht 2 he te Pat e . ‘ a TABLE OF CITATIONS ‘-. PAGE ? tts xan : Bayer Co. Vv United"Drug Co., 272 Fed. 505 (S.D. N.Y. ee Ae ER eee Gare eae Pen 18 ee Bourjois & Co. v. Kaieel, 260 U.S. 689 (1923). np pepe 18 . . Collis Co. v: Consolidated- Machine Tool Corp., 41, ey: i F.2d 641, 644: (8th Cir. 1930) ........ Via Mae ves's 13 The Edna Smelting, & Rfg. Co., v. Nathan Mfg. Gaie... 30 App. D.C. 487 (D.C. Cir. 1908) euéhyauuasrcee 13 Enders Razor Co: v. Christy Co., 85 F.2d: 195, Be | (6th Cir. 1936) ...... Kewenuwes CP eee Pree - 13: Hazeltine Corp. v. United ‘States, 170 F. co 615 . .. ; ot ne (Ct. Cl. W95D),. op scecccivsccsescececs 4 Kieieahes a. Hughes v. Alfred H. Smith Co., 209 Fed. 37, 39 ae . Ee a 6 aes i kaek apbheausas ested eine eee 11 _ Kotabs, Inc. v. Kotex Co., 50 F.2d 810 (3rd Cir. os ery : denied, 284 U.S. 665 (1931) pdawekdeaten le exs 21 _ Marks v. Polaroid Corp., 129 F. Supp. 243, ,2728D._ Mass. 1955) aff’d., 237 F.2d: 428 (1st Cir. 1956) cert.: denied, ‘352 U.S. 1005 (1957) .. ose seeeceecseoees 17 President Suspender Co. v. ‘MacWilliam, 238 Fed. 159, 163 (2d Cir.) cert. denied, 243 U.S. 636 (1916) 11,17 ' Prest-O-Lite Co. v. Davis, 215 Fed. 349, 351, 352 (6th SR Tae oe ak canes 11, 13° ~ Riverbank Léborttories x: Detioneik Products Corp., 165 F. Supp. 747, 764 '(N.D. Il. 1958)........... Ee ae 5 Ross-Whitney Corp. ve Smith, Kline & French Labo- ratories, 207 F.2d 190 (9th Cir. 1953) A Es FCB = Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896) . (iptinces kekveetesiie 2, 8, 9, 10, 12, 13; 15; 16, 17, 18 ' Telechron, Ine. v. Telicon Corp., 97 F. Supp. 131 (D. Del. 1951) aff’d., 198 F.2d 903 (3rd Cir. 1952) .... 12, mS \ Cases | ; : _ Eb PAGE United States v. ‘Continental om Co, 378 US. 441 | Sin me PRRR PS Re Rise we 20 United States v. E. I. duPont de Nemours é Co., ee U.S. 377 (1956) OS PERE ARR peta OPE -a i ed Oe bes 20 - United States v. Grinnell Corp, a 384 U.S. 563 (1966). 20 Yale Electric Corp. v. Robertson, 26 F. am 972 ate Cir. ° 1928) Rhames «lav ouk ba Waa Meier bans Zs a oe re 15 U.S.C. § 1114(1) (1946)... 2.20... shiva 15°U.8.C. § 1115(a) (1946) ........ceeeeeeteeeecee BW 15 U.S.C. § 1125(a) (1946) ......... Jodae aman: 3 28 U.S.C. § 1254(1) ek piece ee Trademark Act of 1905, Ch. 592, a 16, 33 Stat. 728 . . 20, a Mucetammous 3 Chicas Uyrar ComPEriTion AND TRADEMARKS aM 1164-1166 SUE Soin vsbdnt -enns din ves aceite . 13,17 . DERENBERG, TRADEMARK Pnorecriox AND Unram TRaD-— ING 622 (1936) ............ PGE Re eh buthte winsdor eo o> 16 “Diramonn, Advertising Can Preserve Trademark ie - Rights, Avvertisine Ace, December, 19, 1966 ..... : 15» Handler and Pickett, Trade Marks and Trade N. ames, 30 Coium. L. Rev. 168, 187. (1930) . Lidevandunctes 17. 1 Nims, Unrar Comperrrion AND TRADEMARKS 578 (4th ed. 1947) ....... Huvcebieveszecvevdeecesss 17 1 Nis, Unram Comprrrrion AND- -Paapenanns 581 ~ (4h ed, 1947) .... cee pee c ceed biteGee¥skace 13 2 Nims, Unrar CompErrrion 1 AND TRADEMARKS 374° (4th ed. 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Reet . 3 ” ‘ P : ™ ; z a . 3 - ies ‘. | | . . . | | | | | or © . , i . . ri ‘ s&s . a . ~ SUPREME COURT OF THE UNITED STATES | | OCTOBER Tens ; 1968. 7 a No. eoeeee -eee 4 _ DRESSER INDUSTRIES, INC., A Chaieseniaiaals Petitioner, eg serie ; -HERAEUS ENGELHARD VACUUM, IN C., on A Corporation, be 7 hee Soe ie ee pt beacon ‘PETITION FOR A WRIT OF CERTIORARI TOTHE ’ UNITED STATES COURT OF APPEALS ~ . FOR THE THIRD CIRCUIT. Dresser Industries, Ine. prays that a ‘writ of eertiogari issue to review the judgment of the United States Court of Appeals for the Third Circuit entered i in the above entitled cause on May 24, 1968. | OPIN IONS BELOW “The opinions raising the questions upon which cinerea is sought are the opinions of the Court of Appeals, printed oy in Appendix B hereto, infra, p. B-1, reported unofficially at 158 U.S.P.Q. 65 (3d Cir. 1968), and’ the District Court, printed in Appendix A hereto, fra, p. At, reported at 267 F. Supp. 963 (W.D. Pa. scihod 9 2 rte roe ae JURISDICTION : “ The juriadiction of the Third Circuit Court of Appeals and of the District Court was based on tlie Lanham (Fed- . - eral Trademarks) Act (15 U.S.C. §§ 1051-1127) and 28 US.C. § 1338(b). The judgment of the Court of Appeals was entered on.May 24, 1968 (Appendix B, infra, p.. B-1). The jurisdiction of this Court is invoked under 28 U.S.C. | $ 1254(1). | QUESTIONS PRESENTED 1. Is this Court’s decision in Sénger Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896), that a trademark which be- comes a generic name “during the life of a monopoly created by a patent” passes to the public when the patent expires, repudiated by the decisién below that a failure of proof of genericness during the patent term “does not affect the application of the rule of the Singer decision”? 2. Does a federally registered tradematk become pre- sumptively generic as a matter of law. under Singer upon expiration of an, improvement patent where the public has ” the right to make virtually the same product a decade before _ the patent issues, where there i is no evidence of genericness ‘during the patent term, where the patent expires over eighty years before the alleged trademark infringement begins, and where numerous related patented and — ented products are sold under the mark? 2 3. Do the patent laws supersede the Lanham Act and create a greater public right to-use a trademark generically for a once-patented ‘product than for a — which has never been patented? ' 4. Alternatively, because ‘of the unanimous modern and * better-reasoned view that an expired. patent on a trade- wae marked product has no bearing whatever on the question - of whether the mark has become generic, should this Court overrule the Simger er genericness presump- tion? 5. Does the Sherman Act “relevant market” test of identical product competition rejected by a majority of this Court in the “cellophane” case apply | under the Lanham. . Act in arbitrarily defining “relevant purchasing public,” so as to exclude (a) more than half the actual buyers. of competing products sold under the mark and (b) all advertising of and use of the mark on numerous) products related to the identical competing product? 6. Under the Lanham: Act ‘may a registered, multi- product trademark be a generic term as to one product and a valid trademark 9 as to ear related sical . FEDERAL STATUTES INVOLVED The Statutes involved are Sections 1114(1), 1115(a), and 1125(a) of the Lanham Act (15 U.S.C. §§ 1114(1), 1n16(a) and 1125(a)). —.. Q These provisions are set forth in Appendix D, infra. . ; . . Pr . 4 Y STATEMENT Petitioner : ' - Petitioner, Dresser Industries, Inc., a diversified business having its, principal offices in Dallas, Texas, filed... suit . against Respondent, Heraeus Engelhard Vacuum, Inc., in * the District Court at Pittsburgh, Pennsylvania in 1964. a Petitioner’ markets over 300 diffetent types, models and . “Petitioner” includes predecessors in interest. t« ar © 4 sizes of air and gas handling pumps and accessories under - the house trademarks ROOTS and ROQTS-CONNERS- VILLE through its Roots-Connersville Division of Conners- ville, Indiana. Petitioner’s ROOTS pumps of various de- signs range in price from $95 to $20,000 or more, and range from football to automobile size. The trademark ROOTS has been used by petitioner since 1859 and has been feder- ally’registered to petitioner since 1922. Since the beginning of its business in 1859, Petitioner has at all times marketed numerous types of pumps, blow- ‘ers, valves, meters, gauges, generators and other products VILLE. Since 1949 Petitioner’s major products have been screw pumps, centrifugal pumps, lobe pumps and. lobe gas meters. Screw pumps differ from lobe pumps and placement principle. Centrifugal pumps, by contrast, oper- ate on the aerodynamic principle. Petitioner has obtained eighty-eight patents spate the period from 1860 to the - date of trial and covering 27 different products,:such as pumps, casings, meters, governors, valves, forges, washing machines, butter churns, dust — and drive shaft _ eontrols. ee ' Lobe pumps, which have limitless vestetionn in lobe de- sign, have been known since “at least 1630. The earliest United States lobe pump patent, inv@jving figure 8 shaped lobes, i in 1835 to one. D. M. Walker and expired in . 1849. pump. -, Pétitioner’s first lobe pump patent, granted in 1860 and expired in 1874, covered an improvement in the pump dis- closed in the 1835 patent. This patent (No. 30,157, later reissued as Re. No. 2369 in 1866), which expressly men- ed an improvement over a previously invented under the trademarks ROOTS or ROOTS-CONNERS-.. meters in design, but all operate on the'rotary positive dis- . . tioned the 1835 patent, modified the 1835 figure 8 lobe design - and the pump casing to reduce air leakage when the lobes rotated. The public has been free to manufacture figure 8 lobe pumps, with_or without the improved lobe design covered by Petitioner’s 1860 patent, for almost a century. At the time of trial, lobe pump competitiof{ was vigorous, with at least six major companies competing in the field. For over a century Petitioner has asggciated the ROOTS or ROOTS-CONN ERSVILLE. trademarks, or both, with its entire range of products, and has engaged in substantial multi-product advertising under ROOTS. In furthering the public association of ROOTS with all its products, Peti- tioner has also employed a logo tying the mark to repre- sentations of its lobe, centrifugal and screw pump lines: WARoots ; Air and Gas Dynamics) y | ROOTS and related marks’ are used by Petitioner throughout the operation of the Roots-Connersville Divi- sion, including on the products (by casting or on name- . plates), in trade magazines, catalogs and other literature, — in industrial directories, on signs, and on thousands of cartons, labels, stationery pieces, invoices*and gther busi- _ness forms. For the 90-year period ending in 1949, Peti- tioner’s sales of all its products exceeded: $100,000,000. From 1950 to 1965 sales also exceeded $100,000,000. In the ten years prior to trial, Petitioner expended $1,084,000 in advertising ROOTS products. The 1922 federal trademark 6 6 . | registration for ROOTS was augmented by further regis- trations for ROOTS-CONNERSVILLE in 1955, 1956 id 1958; and for ROOTS i in 1961, covering various products. - _ Petitioner’s ROOTS products are sold to a broad seg- ‘.ment of the public; any individual or business in need of air nontaeg or vacuum equipment. Roughly . 60-70% of Petitionér’s sales cover pumps priced from $95 to $1, 000, and 80-90% cover pumps priced under $5;000. Approximately half the buyers have no technical paieiieiis or engjheering background. For example, ROOTS lobe pumps have been sold to calliope. operators, a two-man — tropical fish business, a maker of toy balloons,. neon sign shops, and dry cleaning plants. Typical orders from this group involve lower priced pumps, and are generally by. telephone but occasionally by post card, letter and purchase . order. There is usually nq competitive bidding and, because of their lack -of technical training, these purchasers are assisted by Petitioner’s trained sales engineers. Among the non-technically trained purchasers are purchasing agents for corporate purchasers. They may-shop the market for “pumps or, if the item is.large- and expensive, they may pas bids from competing suppliers. * By contrast, the other half of the purchasers of ROOTS ' . products. are engineers or others with technical training. These may be affiliated with industrial firms, governmental agencies, and colleges. and universities using or dealing in pumps. All of Petitioner’s major products (centrifugal, lobe and screw pumps) are offered to this market under the ROOTS trademark for both vacuum and positive pressure service in numerous applications, and some customers pur- chase Petitioner’ s entire pump line. Respondent W. C. Heraeus, GmbH, of Hanan, ieee is glad 3 in the air and gas handling field, dealing mainly in vacuum instal- lations and equipment. It sold this equipment in the United . States from 1955 and 1963, -— during this period adver- - '.tised figure 8 lobe pumps as “. .. the ROOTS pump”, “High Speed Roots pumps” and i eeaiaten sonsseritapenastale PUMPS”. In 1958, while Heraeus was advertising “the ROOTS pump” in the United States it _ applied in Germany to register ROOTS PUMP. as its “own trademark, claiming that it had created the mark. It also challenged other Ger- man companies, claiming trademark rights in ROOTS PUMP, asserting that-it'was not a generic term, and argu- ing that it was not moneenary © to keep the designation free for public use. In 1959 Petitioner protested the use of its vagietinel _. ROOTS trademark by the Heraeus United States distribu- : tor, which terminated the use of the mark stating that / . no new material will be sent out using any referenée to the: Roots trademark”. Heraeus. did not repudiate or dis- avow the er of Petitioner's rights by its/ istribu- tor. © : In 1963 Herasds organized Riasicitall Hevates Engel- hard Vacuum, Ine., as its United States ‘subsidiary and marketing outlet, and the subsidiary resumed the parent’s advertising use of ROOTS. Both Respondent’s lobe pumps (ranging from $1,300 upwards) and Petitioner’s screw, cen- trifugal and lobespumps were marketed under ROOTS to and through the same purchasing public, including purchas- ing agents, in the same industries. Screw and centrifugal pumps are often interchangeable with lobe pumps, all of _ them pushing and pulling air simultaneously. cease its use. ~The present litigation ensued. - The Genericness Issue s: _ «, Twenty-eight individuals familiar with the omnia of | air and gas handling equipment i in the steel, plastics, food, flour, sanitation and other industries testified that to them . ROOTS signified Petitioner. Respondent stipulated at trial . ‘that to corporate’ purchasing agents ROOTS signified Peti- tioner. Dean Harold E. Hoelscher, Dean-of the Univer- Bon oe sity of Pittsburgh School of Engineering and Professor of _ Chemical Engineering, and Dr. Richard J. Grosh, Associate ne Dean of Engineering of the Purdue School of Engineer- ing and Director of Ixidustrial Developmeni for the shore Research Foundation, als6 testified ‘that: ROOTS was ° recognized trademark. of Petitioner and was not a sigh | term. Respondent introduced no testimony of members ofthe purchasing public, but relied solely on Dr. Ascher. H. Sha- piro, Head of the Department-of Mechanical Engineering of Massachusetts Institute of Technology. He testified that ROOTS was a generic term in 1 association with a lobe pump. ‘REASONS FOR GRANTING THE WRIT - 1. The Court of Appeals has decided a question of fed- eral trademark law in direct conflict’ with the applicable decision of this Court, Singer Mfg. Co..v. June Mfg. Co¥, 163 U.S. 169 (1896), and with decisions of other Conrts of ‘Afpeals, by applying ‘Singer absent genericness proof dur- ing the patent term. All other reported federal court de- cisions on point have refused to apply Singer under these . . circumstances. ee Upon ‘ited challenged by Petitioner, Respondint claimed ° that ROOTS was.a generic term and that it would:not . a 2. The Court of Appeals decision also raises an im- ~ portant question of ‘federal trademark law which has not been, but should be, settled. by this Court under modern _ conditions: Should the patent-expired genericness aspect of Stinger be overruled? 3. The Court of Appeals decision raises a further im- portant question of federal trademark law which has not been, but should be settled by this. Court: Whether a trade- mark can to the same buyers: simultaneously be a valid _ trademark for certain products and a generic term as to - another related product. 4. The Court of Appeals decision raises yet a firther . important question of federal trademark law. which has not been but should now be settled by this Court: Does the correct genericness/confusion test encompass as the “relevant purchasing public” all buyers of all products sold under the mark, instead of only those persons who buy the single product with respect to which defendant has been _—* to infringe. | &% ay a | ARGUMENT 1. The Court of Appeals has held Petitioner’s century- . old’ trademark ROOTS, a trademark of incalculable value, generic under Singer Mfg. Co. v. June Mfg. Co.,,163:U.S. = 169 (1896), primarily because one of Petitioner’s products was covered by an improvement patent which expired over | ninety years before trial. Both that court and the District’ . ‘Court said that the mark was geneffic in fact, yet they mentioned Singer some nineteen times and expressly ap- plied it as a doctrine of law. The: District@ourt found that the 1860 patent, “disclosed” the lobe pump engineering prin- ciple’ (it was /actually disclosed prtor to the 1835 patent) ) — found Singer controlling (A-21): ae “The word Roots in this context is incapeble, in ’ the Singer doctrine and under statutory law [the Court © never indicated what statutory law], of registration as - a trademark. This being so, there is no basis for aa tiff’s action ...” (Emphasis added). The Court of Appeals agreed: “We console that the Dis- | trict Court did not misapply the Singer. decision in this | case.” (B-13). Thus, legal, not factual, genericness was derived from the expired patent without more. Even the courts below seemed to. realize that there is no tenable legal basis for the facile rule that a trademark becomes generic W rhen it is used on a patented product. Yet, _ they nevertheless applied Singer and, indeed, extended it ‘far beyond the point where the courts yeti = , it may not be carried. . In the first place the rule .of sale as stated ce this Court, i is very narrow (163 U.S. at 199) : “But where during the life of a monopoly wii by. a patent, a name, whether it be en or be that if - ae of the Saivtintale has become by} his consent, either ex- press or tacit, the identifying and generic name of the | thing patented, the.name passed to the public with the . cessation of the mmapely: whjeh the patent created © _ (emphasis added) . é J A calla owner may not enjoy trademark rights i in fhe name - by which the public came to know the patented product * ; a and thus retain “. . . the real fruits of. the monopoly when _ that monopoly had passed away.” (163 U.S. at 18%). It. is id ’ critical that genericness exist during the lifetime of the patent, in this case 1860-1874. Obviously if” the nfark does not become generic during the patent.term there can be no trademark extension of the patent monopoly. : : The’ requirement of genericness during the patent term has heretofore been® recognized uniformly by all federal © courts faced with the question. Hughes v. Alfred-H. Smith Co., 209 Fed. 37, 39 (2d Cir. 1913); Prest-O-Lite Co. v.~ Davis, 215 Fed. 349, 351 (6th Cir. 1914); President Sus- pender Co. v. MacWilliam, 238 Fed. 159, 163 (2d Cir.), Cert. denied, 243 U.S. 636 (1916) ; Ross-Whit..cy Corp. v. Smith, Kline & French Laboratories, 207 F.2d.190 (9th © Cir. 1953) ; Hazeltine Corp. v. United States,170 F. Supp. 615 (Ct. Cl. 1959). Without such proof, the icine patent is not even germane. ‘ _ Now; however, the Court of Appeals has expressly re Re: the basic réquirement (B-10, 11): _ the narrow construction which the plaintiff seeks to place upon the rule laid down in the Singer decision ~ a ba} cannot be pted. ... [W]e do not read the Singer . decision to’ hold that only because the Singer name had ‘become generic before the expiration of the term of the ' patent did the name pass into the public domain. ) 12 _Aviordiagy, » e conclude that whether ‘Roots’ became | _-@ generic designation during the term of the patent or -thereafter lots not affect the application of the rule of the Singer decision to the facts of this case. — added)”. The: Court was led to this tredeoudiiiite “conflict with Singer becausecthe record is bereft of any evidence. of genericness from 1860-1874. In fact, the only mention the ‘lence (A-5). a , aca F - The absurdity. of ignoring the clear ‘requirement could rot be clearer than here, where even during the patent term Petitioner had no‘ lobe pump monopoly. In 1849, when the 1835 patent (not mentioned by either court hefein) expired,” the public had the right to make-a figure 8 lobe pump, ‘and. in 1874 it had the right to make the same lobe pump . . covered by, Petitioner’s 1860 patent. Did the public do so? ' | The Court of Appeals ‘answered this question : “At least half a dozen major companies manifacture and sell this _ type pump.” (B-2). Through direct conflict with the Singer dodteine’ a long- 7 forgotten improvement patent has been catapulted over ninety years to work injustice and injury. Only review by” this Court can cure this manifestly incorrect and — holding. _ 2. The Court of Appeals application of Singer-is also in direct-conflict with the-decisions holding that the doctrine is inapplicable where the trademark is applied to ‘an extensive line of products. The rule was stated. succinetly by the Telechron District Court in holding a mara: at trade- mark not generic: RE as “ “The Singer Sootetine’ si | never or ipplied lke . the mark is used in connection with an entire line of -. District Court made of this period was that in 1867 and. 1873 Petitioner’s products ‘had earned awards ne excel- : products, such as here, for a generic name can only be. ‘, a name of a particular article. .An arbitrary term ap- *, plied to a whole line of products cannot be generic. *. This distinction has been noted by. an expert specialist a in the profession. Mr. Nims has written: ‘A name . used on different. articles made b the same concern - cannot be the generic mame foror even though that! one article phasis added). ¥ Telechron, Inc. v. Telicon Corp., 97 F. Supp. 131 wo. Del. 1951), aff'd, 198 F.2d 903 (3rd Cir. 1962) pe apparently — overruled sub silentio). 7 The same view ‘of ‘Singer - was followed by the Sixth . Hireuit Court of Appeals i in Enders Razor Co. v. Christy - Co., 85 F.2d 195, 197-98 (1936). Defendant claimed that . the trademark KEEN KUTTER fell into the public domain as generic for a type of razor when the razor’ patents .. expired. The Court of Appeals _Teversed a genericness_ holding ‘because the trademark KEEN KUTTER was ap- plied: té an ‘extensive line of cutlery products,’ including’ knives, saws, hatchets, and various cutting ‘tools, and that the: ‘same- advertising emphasis had been given the mark | with respect to all the products. o: The same principle has been follawed. in. . Prest-O-Léte Co. v. Davis, 215: Fed. 349, 352 (6th Cir. 1914); and The . Edna Smelting &- Rfg. Co. v. Nathan Mfg. Co., 30 App. D. €. 487 (D.D:C. 1908) and was discussed with approval in Collis Co. v. Consolidated Machine Tool Corp., 41 F.2d 641, 644 (8th Cir. 1930). See also, 3.CatLMann, UNFAIR _CoMPETITION AND TRapE-Makks, 1164-1166 (1950) ; 1 Nims, Unrarr CoMPETITIQN AND TRapEMARKS, 581 (4th ed. 1947); . Riverbank Laboratories v. Hardwood ‘Products Corp., 165 F.. Supp. 747, 764, (N.D. Ill. 1958) (“Where products or. services are related, as in. the Enders case, and one name is x ‘Ihe « applied,to them all, it is uhlikely that the relevant buying public will understand the name as a generic —— for but one of the products. ”). The Court by isolating only one produet for genericness was led to the extraofdinary result of the divisible trade- mark, a legal concept: heretofore ‘unknown. The District ' Court expressly held fhat ROOTS was not generic and was a valid trademark in association with. the lobe’ gas meter, of substantially thé same design ’as the figure 8 lobe pump; lobe pumps of other configurations; centrifugal pumps; screw pumps; and any and all other products sold by Petitioner under the ROOTS trademark (A-23). It found ROOTS generic only in association with pumps “in- corporating. the design or principle referred to in Patent ° No. 2369,” but then cancelled Petifioner’s federal registra- tions covering all “rotary positive displacement lobe-type ‘pumps, blowers and compressors” (A-23, 24). Since lobes are made in thousands of designs, what are now the rights of the public and Petitioner? No one knows. ' Moreover, the holding also jeopardizes the validity of many famous, extremely valuable multi-product trade- marks. For. example, the following selected trademarks, taken from the United States Trademark Association “List . of Well-Known Trademarks,” arg used on the indicated poe and frequently others: BAND-AID adhesive bandages, ' spray antiseptic CANTEEN vending and food services CARBORUNDUM abrasive and refractory products CATERPILLAR crawler tractors | SOMPTOMETER calculating machines - DIXIE paper and/or plastic cups, plates, ete. FRIGIDAIRE appliances ' JELL-O gelatin dessert -# v i) , 15° _ LEVI’S jeans and sportswear 7 ’ LINOTYPE typesetting machine. . _ ° MASONITE hardboard, products | _POLAROID photographic equipment ? Q-TIPS cotton swabs and cotton balls \ SCOTCH brand transparent, — electrical tape, etc. SIMONIZ waxes and polishes ‘ VASELINE petroleum jelly, hair tonic: — Are millions of dollars in multi-product trademark use and - advertising now utterly wasted when the genericness test is applied? And is advertising of the peeing type now to no avail? “Full names are important, with products as well as people. Johnson & Johnson makés a whole family of “products under the Band-Aid brand,. from Band-Aid brand adhesive bandages to Band-Aid brand air-vent © adhesive tape to Band-Aid brand spray antiseptic. We like to be*talked about, but just as there’s more than one ‘woman named Smith, ‘there’s a more than one * product with the Band-Aid brand. A whole family of products carry the,Band-Aid brand to indicate ‘made by Johnson & Johnson.’ So, .always’ follow the ‘Band- Aid’ brand with the produet name.’ The heretofore uniform view is that Singer is iceantl cable where the mark is used on numerous related products, . and the refusal to follow this authority places the Third Circuit. squarely in conflict with the Sixth, Eighth and District of Colambia Circtits. It also imposes far-reaching implications on the public and the owners of many femous trademarks. ‘ ! 3. Before this case the’ business and legal satin _ believed that the 1896 Singer doctrine-had become anach- 2 Diamond, Advertising Can Preserve siediedieshs Rights, ApvER- TISING Aaz, December 19, 1966. a 16 ronistic and obsolete. Between 1896 and the passage of the Lanham Act in 1946, Singer was applied 36 times by the federal courts to hold a trademark generic, while an excep- tion was followed, and the trademark found valid, in 18 cases. By contrast, from 1946 to the present (excepting the present case) Singer has been applied to hold a mark generic mp 3 times and has been rejected 8 times. (See Appendix C, infra). At the same time the rate at which patents expired almest doubled from 1,510,566 between 1896 and 1946 to “a ,123,346 from 1946 to the present, and the granted federal . trademark or service mark registrations increased from - 391,031, in the earlier 50 year period, to 436,263 in the last - 22 years. Thus, during a period of dynamie national in- crease in technology and patenting, and the advent of tele- vision and other mass advertising media of trademark ex- _ posure, the treffti has been clearly away from Singer. As early as 1936 the distinguished authority Professor Walter J. Derenberg recognized this trend, and wrote of Singer in Trape-Mark Protection anp Unrar Trapine 622 (1936) : “In the course of years, there have been so many devi- _ations from and exceptions to this theory, that its ptac- tical importance and effect have become almost negli- gible. One wonders whether this principle, in its origi- nal form, as,laid down by the Supreme Court in the Singer case, is not too inclusive today.” Other recognized authorities have consistently main- tained that patent expiration has rio bearing on generic- ness. For example, the Restatement, Torts, Sec. 735 (1938), states as follows: « “There is no rule that a trade-mark for a patented article ceases to be a trade-mark on the expiration of the patent. ... it is unnecessary to discriminate between “yeases where the patentee used the designation as a 17 trade-mark before the patent was granted and those in which the trademark use and the grant of’ the patent were simultaneous or those in which the designation was adopted after the patent was granted.” ‘ And in President Suspender Co. v. MacWilliam, 238 Fed. 159, 163 (2d Cir.), cert. denied, 243 U.S. 636 — Ge court stated the rule as follows: “There i is no presumption of Taw, without proof of the fact . . . that a name used on a patented article passes ~ to the public on the expiration of the patent.” a Accord, Marks v. Polaroid Corp., 129 F. Supp. ‘243, 272 (D. Mass. 1955), aff’d 237 F.2d 428 (1st Cir. 1956) cert. denied, 352 U.S. 1005 (1957) ; 1 Nims, Unrar Competition AnD TrapEMaRKS 578 (4th ed. 1947); 3 Catumann, Unrar CoMPETITION AND TRADEMARKS, 1164 (1950); Handler and ‘Pickett, Trade Marks and Trade — 30 Colum. L. Rev. 168, 187 (1930). ° Notwithstanding all of this mal other authority, how- ever, the Court of Appeals has now emasculated Petitioner’s century-old trademark by reviving Singer in all ‘its pre- 1900 gloryg(B-13) : “And, finally, the plaintiff says the Singer decision is outmoded and of sharply limited application. We can- not agree.” * This approach deals the development of porate trade- mark law a half-century setback by -re-instituting a legal presumption of geneYicness arising from patent coverage. The Court of Appeals denies that this is what it did, but its express Singer holding belies its protestations that genericness is simply a question of fact to be determined wholly apart from patent coverage. If this were-true, ‘why was Singer mentioned at all? Its sole raison d’etre is the - dual proposition that a trademark on a patent-expired prod- ‘ a -— 18 uct is more infirm than that on an unpatented product, and that the public has a greater right to use a trademark generically where the trademarked. product is patented. Neither aspect bears scrutiny. : _ As a viable legal doctrine Singer on this point has long . since outlived its usefulness. It has.no place in modern trademark law, and has engendered only exceptions, occa- sional lip service, and an inability of courts to appreciate its inherent limitations. To condone a modern Singer renais-| sance without review by this Court would work a profound,. sweeping legal retrogression and a-repudiation of the ad- monition of Mr. Justice Holmes in Bourjois ¢ Co. v. Katzel, 260 US. 689 (1923), that trademarks and good will com- prise “. .. a delicate matter that may be of great value but that eually 1 is destroyed, and therefore should be protected with corresponding care.” . 4. The Court of Appeals, in departing drastically from the widely accepted: genericness test stated ‘by Judge Learned Hand in Bayer Co. v. United Drug Co., 272 Fed. 505, 509 (S.D. N.Y. 1921) : \ on xs _ “What do the buyers understand by the word for nil use the parties are contending?” | raised an important t question of federal trademarks la which has not been, but should be, settled by this Court. . In this case, the courts were motivated by the antitrust law product competition test of “relevant market,” and applied a truncated version of it in the trademark field’ in liew of the “relevant purchasing public” test. Since many persons never buy pumps or blowers, less than all ‘of the general public comprise the “relevant pur-. | ‘chasing public’—those who have purchased or who may . _ purchase them—in which likelihood of confusion and trade-' - mark meaning are tested. Within that segment pump — 19 and blower trademark recognition has been established . (where ROOTS is as famous a trademark as WESTING- HOUSE and FORD are to the general public), and indi- | viduals are likely to assume that all products advertised under .ROOPS emanate from or are somehow associated . with Petitioner: It is t6~them, not college professors or ~~~’ patents, that a word has relevant meaning, since ‘it is‘ only _ they who have, had the myriad marketplace associations — that influence thought processes and create likelihood of confusion or trademark or generic meaning. Nevertheless, forgetting buyers completely, the Court of ) Appeals viewed the entire matter as one of product com- petition. It characterized the “market” as follows (B-2): The goods. with which the parties compete i in the market ‘in this country are rotary positive displacement lobe- type vacuum pumps. (emphasis added) And further adopted this view (B-13, 14): In. this case the district court found that the relevant market shared by the parties was rotary positwe dis- placement lobe-type pumps. incorporating the design disclosed in the Roots 1860 patent and that it was only \ as to pumps incorporating this design that the word ° had beeome generic. (emphasis added) On this basis the courts disregarded the extent to which screw and centrifugal pumps compete with lobe pumps, and the fact that all ROOTS products are sold and advertised under the mark to the buyers of lobe pumps. By limiting the market to identical products in which the parties are in direct competition the courts in effect re- stricted the relevant purchasing public to buyers which buy | lobe pumps exclusively, specifically those costing in excess | of $1,300 and which are sold mainly by competitive bids. - That “market” excluded the actual buyers of 60-70% of L) tate 2 —— ay > ween ee 20. Petitioner’s lobe pumps. The test used by the lower courts — thus incorporated only 30-40% of a lobe pump buying public. Actually there is no such thing as a lobe pump buying “public, singe buyers of lobe pumps also buy centrifugal pumps, screw pumps and countless other types of pumps. In restricting the test to competition between $1,300 and up lobe pump and $1,300 and. up lobe pump, the Courts ‘followed somewhat: the “relevant market” approach re- jected by this Court in the “cellophane” case, United States. , 'y. E. I. duPont de Nemours & Co., 351 U.S.'377 (1956)..In that case in determining “relevant market” under Section — - 2 of The Sherman Act the test was not whether cellophane competed only with cellophane, i in which case duPont would have had 75% of the relevant market, but whether cello- phane competed with flexible packaging materials of all types, in which case duPont had less than 20% of the mar- ket. The same broad view was also taken in United States v. Continental Gan Co., 378 U.S. 441 (1964) (relevant mar- ket glass and metal containers) and United States v. Grin: nell Corp.,. 384 US. 563 (1966) (relevant market entire accredited. central station service property protection in- dustry). | . In this case the rebiveist sigianalais public, defined for.a totally different purpose than determining monopoly power, must include all buyers and potential buyers of any and all: types of pumps. It cannot consist of an adumbrative, indeed non-existent, group of buyers of higher-priced lobe pumps only. «As. this Court observed in “cellophane,” “Industrial activities cannot be confined to trim categories.” 351 U.S. at395. . The basic District Court thbory that “since trademarks _ have significance only in the context of competition, the class of buyers here must be restricted to include only those for whose business the parties are competing” (A-10) went out decades ago with the old 1905 Federal Trademarks Act _ product competition test (Trademark Act . 1905, ch. 592, $16, 33 Stat. _— es ‘wy i 21 Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or color- _ ably imitate any such trade-mark and affiz the same to merchandise of substantially the same descriptive prop- erties as those set forth in the registration . . . shall be liable to an action for damages therefor at the suit of —. the owner thereof .. . (emphasis added) | Today, however, the 1946-Lanham Act defines infringe- ment where trademark use “is likely to cause confusion, or to cause mistake, or to deceive.” 15-U.S.C. §-1114(1) (D-1).. Thus, product competition is no longer the test. Additional law is-collected in 2 Nims, Unrarr Competirion AND TRADE- MARKS 374 (4th ed. 1947), which concludes that “Lack of competition between the parties no longer is a defense to an action for unfair competition.” See also Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928); Kotabs, Inc. v. Kotex Co., 50 F.2d 810° (3rd Cir. ss cert. denied, 284 U.S. 665 (1931). | ; The trap which the tunnel vision test created was tors: | seeable. The courts restricted their discussion to sophis- ticated purchasers of relatively expeffsive ($1,300 and up) - lobe pumps who purchased with care. Yet, ignoring al] the non-technically trained buyers and buyers of legs expensive products, the courts, on the testimony of one college pro- fessor and no proof as to even a majority of the purchasing public, held the mark generic to all, including the un- sophisticated purchaser, even though the meaning to him was never even tested. The result is impossible. Respondent and others are apparently now free to use ROOTS with impunity in selling $95 off-the-shelf pumps to non-techni- -cally trained. calliope operators and fish store owners. It is difficult to imagine a more bizarre result. Public pro- . tection and elementary fairness and justice at the very least dictate that if the mark is to be held generic among this segment, this segment of the. market be included in the genericness test. . 22 “CONCLUSION - The incorrect application of Singer and the application of an incorrect test for “relevant purchasing public” have led to an intolerable result. Petitioner urges that the writ be granted, so that this Court may review the important ques- tions of federal trademarks law presented and determine whether i _e case- — be overruled. 4 Respectfully submitted, JEROME Gison eo 38 South Dearborn Street -. | Chicago, Illinois 606038 ‘Of Counsel: . Dean A. OLps Me vin F. Jacer . Hume, Ciement, Hume & Lee _ 38-South Dearborn Street Chicago, Illiiois_, 60603 Rosert W. Mayer : Republic National Bank Building “9 — Texas 75221 , \e 4 Attorney for Petitioner Aa* | APPENDIX A | OPINION OF DISTRICT COURT . a Wu.son, J. | The plaintiff in this action is rae Industzins, ‘a. | a Delaware corporation having its principal ‘place of busi-. ness at Dallas, Texas. The defendant is Heraeus Engelhard . - | Vacuum, Ine., a Delaware ‘corporation having its principal place of ialeen at Monroeville, Pennsylvania, in this District. In the complaint, plaintiff alleges that this action is brought under the federal trademark statute, 15 U.S. C: ' §§ 1051- 1127, and that the jurisdiction of this Court is based upon 15 U. 8. C. § 1121 and 28 U. S. C. §.1338. Plaintiff, through its’ Roots- Scuminentiie division, mann- factures and sells rotary positive displacement vacuum "pumps. - Defendant’s corporate parent W. C.. Heraeus, . GmbH, of Hanau, Germany, manufactures i in that country similar pumps for which defendant is the marketing agent in the United States. Defendant markets pumps ranging in price from about $1,300 to $25,000 and up. Competitive . bidding accounts ‘for about 30 to 50 percent of ‘the sales in this range, with the percentage of competitive bidding ris- ing as the price increases. The remainder of sales are made as a result.of-i ‘inquiries and orders from prospective buyers. © Its buyers include federal. departments and agencies, com- panies in the aerospace, steel, chemical and electrical indus- ’ tries, and universities and laboratories. It advertises ae products in selected trade and technical journals. The con-— troversy here is over the use by the defendant of the word Roots in advertising the rotary positive displacement 3 vacuum pumps manufactured by W..C. Heraeus. The. parties have stipulated that defendant has not affixed the A-2 | word Roots to any of its manufactured products. ‘Nor has defendant affixed the word Roots to any of the boxes,’ containers, or wrappers in which ‘its products are shipped - Je throughout the country. In the complaint, plaintiff sets forth ; its alicwationé iad , 7 three counts. The first count is styled “Trademark” In- fringemen ” Plaintiff alleges that it is the owner‘of six, - - trademarks, the registrations of which are in full force .. - ~ and effect, and which have been variously and continuously used on the several products manufactured and sold by plaintiff. Plaintiff alleges: that the use of the trademarks, both on its goods and in advertising with respect to them,. - together with “continuous and. expensive maintaining of high standards of excellence of products,” has resulted in a very favorable consumer identification of the trademarks . with it and its products. Plaintiff finally alleges that despite its long-established prior right to the use of the trademarks in connection witha wide variety of products, defendant began in 1963 to use one of the trademarks, the word ROOTS, in connection with the advertisement .and sale of blowers and pumps, and that such use wrongfully _ identifies and represents the defendant’s products with and as those of the plaintiff, and does and will cause con- fusion, deception or mistake, in violayion of 15 U. S.C. § 1114(1).. The second count is ‘styled. ‘Pederal Unfair Competi- tion.” . Plaintiff Tepeats the allegations in the ‘first count — -and alleges that defendant’s use of the word ROOTS with ~ respect to its products constitutes a false designation of . te origin, in violation of 15" U.S. CO. §1125(a). The third count is styled: “Common Law Unfair Com- . petition.” Plaintiff repeats the. allegations made in the first and second counts, -_ alleges that re defendant ee ee — , » s we Ge AS v ‘ ; | 3 ue o. £ or bY had Levinas of the prior use of Ahe plaintiff's trade- marks, defendant used the word ROOTS in advertising its products, thereby promoting its products ‘in such a . manner as to suggest association with plaintiff and to cause — _ ant’s products, :an ~~ eased from ee ' sales.{ confusion, ao or mistake as to the origin of:defend- Plaintiff: seeks = Cae relief and ‘monetary dam- | ages. | : In its answer, defendant easentially denies that. the designation ROOTS in ‘the form asserted by plaintiff con- _ stitutes a trademark, and alleges that any alleged trade- ‘mark or registration of which ROOTS is all or a.significant portion is invalid and unenforceable against defendant in that the, Word Roots is and has been since at least. 1900 in fie. public’ domain as signifying “an engineering principle and/or an equipment -type and/or-an equipment type incorporating said principle,” or that the designatior - ~ Roots was abandoned as a trademark by plaintiff. Defend- ant says that its use of the word Roots has been merely descriptive of the equipment it makes and that it has been using the word Roots in a generic sense and in good faith - and it had been so used prior to the ‘later registrations of - the word Roots as a trademark by the plaintiff. Defendant ‘alleges that. the later registrations of the word Roots as -a trademark by the plaintiff were fraudulently obtained, and that plaintiff has violated the anti-trust laws in that it has interfered in free commerce and competition by seeking to prevent others from using the words Roots_in--— connection with fluid. handling~ equipment. ‘Defendant finally alleges that the word Roots has: become a generic 4 ' designation for a type of. fluid handling equipment and — " ¢annot be exclusively appropriated by plaintiff. In its — couhterclaim, defendant alleges that despite the fact that <2 ,%* t A4 the word Roots has been in the public domain, has come ' to identify a principle or type of equipment and has become generic with respect to identifying such type of equipment, plaintiff has applied for certain trademark registrations involving use of the word, and that therefore the registra- tions were “improperly if not fraudulently obtained,” ° and that plaintiff has thereupon unfairly competed with defendant in attempting to restrict the lawful use of the word Roots. As relief, defendant seeks the cancellation of plaintiff’s registrations of the word Roots, assessment of damages suffered by defendant as a result of plaintiff's ' allegedly fraudulent registration and unfair competition, and punitive damages for violation of the anti-trust laws. The corporate background of this controversy, as stipu- lated to by counsel, is important to an understanding of the .contentions of both parties. In 1846, Alanson Roots and. his sons Philander and Francis founded the Roots Woolen Mill in Connersville, Indiana. For almost three decades the Roots Mill manufactured and sold nationally a variety of cloth products. Between 1854 and 1859, the Roots brothers established, as a sideline to the woolen mill, a separate business under the name of The P. H. & F. M. Roots Company to develop, manufacture and sell rotary air blowers and related products. A patent for a rotary blower was issued to’ P. H. Roots in 1860 and reissued in 1866. [Appendix “A”.] When the Roots Mill burned to the ground in 1875, the Roots brothers be- came active solely in thé P. H. & F. M. Roots Company. In 1929, The P. H. & F. M. Roots Company, which had previously become a division of The Stacey Engineering Company, was merged with the Connersville Blower Co., and the resulting corporate entity was known as Roots- Connersville-Wilbraham, a division of the International Stacey Corp. In 1934, the assets of Roots-Connersville- Wilbraham were transferred to The Connersville Blower A-5 Company, Inc., and its name changed to Roots-Connersville Blower Corp. In 1944, Dresser Industries, Inc., purchased all the stock of International Stacey, acquiring thereby the stock of Roots-Connersville Blower Corp. In 1952, . Roots-Connersville Blower Corporation sold all its assets to Dresser, and was then dissolved.. Dresser Industries in that year created a division called Roots-Connersville Blower, the name of which was shortened, in 1965, to Roots-Connersville. In this manner, plaintiff became the owner of, inter alia, the patents and trademarks owned by The P. H. & F: M. Roots Company and its. successors. Through the years, the product line of Roots-Connersville has been greatly expanded ‘so that it now manufactures all sort of air and gas handling equipment—pumps, blowers and exhausters based on various engineering’ principles, gas meters, and accessories—and is now developing elec- tronics instruments. Meanwhile, the design disclosed by the 1860-66 ania in the words’ of defendant’s counsel, “took hold the world over.” Blowers of this type, manufactured by The P. H. & F. M. Roots Company or its foreign licensees, were exhibited at and won the highest prizes awarded by the International Exhibitions of Paris in 1867, Vienna in 1873 and Philadelphia (United States Centennial) in 1876. The P. H. & F. M. Roots Company catalog of 1878 is replete with testimonials from users and descriptions of use in a variety of installations ranging from forcing blast fur- ‘naces through ventilating buildings to powering church organs. That the design principle disclosed in the 1860- . 66 patent has generated considerable interest in engineering and industrial circles, and has retained its appeal to the present time, is borne out by the fact that between 1866 and 1965, more than 50 patents have been issued in this country for designs of equipment based on the rotary A6 positive displacement principle disclosed in the original ‘ P. H. Roots patent. Perusal of the technicdl literature and advertising introduced at trial indicate that the diversity of uses of equipment embodying this principle has in- creased with the advances made by technology in all fields in this century. Since the 1950’s advances in medium-to- high-vacuum technology and its applications and a height- ened national interest in aerospace research and develop- ment have created a demand for large and costly installa- tions for which the rotary positive displacement vacuum pump is eminently suitable. It appears from catalogs» introduced into evidence that at least half a dozen major companies now manufacture and sell this type of pump. These pumps, often large and expensive as set forth above often are sold as a result of an inquiry by or a direct order from the prospective user. In these sales, adver- tising may play a significant role, and in advertising, the - descriptive words used are often of paramount importance. Other sales are made as a result of competitive bidding. Many invitations to bid, introduced at trial, indicated that the prospective purchasers, among whom were the National Bureau of Standards, the United States Air Force, Grum- man Aircraft Engineering Corporation and the General Electric Company, specified “Roots-type,” “Roots,” “roots,” or “Roots type” pumps. In this contéxt, it is readily seen that it is of considerable commercial impor- _ tance to plaintiff, on the one hand, to restrict the use of the word Roots to its own products, and to the defendant, © on the other, to be free to use the word Roots with respect - to advertising its products. In 1955, W. C. et in the United States, its vacuum equipment through Consolidated Elec- trodynamies Corporation (now Consolidated Vacuum Corporation) on an exclusive distributorship basis. , bad e . A-7 , Consolidated advertising the Heraeus rotary positive displacement pumps under designations such as “Roots Pumps,” “Roots Blowers,” and the like. Plaintiff pro- _tested such use, contending at first that the word- Roots had, in industry, come to mean products of Roots-Conners- ville, and that Consolidated’s use of the word in its adver- tising would be likely. to cause confusion. Consolidated deferred to plaintiff’s protest, and, as suggested: by plain- tiff, began advertising the Heraeus rotary positive dis- placement pumps as “Heraeus Roots Pump” or “Roots Type Pump.” Later, after plaintiff had obtained regis- . tration of the word Roots as a trademark in 1961 it _ objected to Consolidated’s use of the word in any manner in its advertising, whereupon Consolidated discontinued use of «the word Roots entirely. In 1963, defendant was — formed as a subsidiary of W. C. Heraeus, GmbH, and begun distributing Heraeus products in this country. In its advertising, defendant referred to Heraeus rotary © positive displacement pumps variously as “Heraeus Roots Pumps,” “Roots pump,” and “Roots: blowers.” Plaintiff protested against such use, but defendant refused to accede, contending that its use of the word Roots was as a generic term designating and identifying an engineering principle or an equipment type. Defendant continued to use the ‘word Roots in its advertising and this action ensued. Defendant, in March 1965,.some four months after the complaint in this action was filed, discontinued the use of the word Roots in its trade journal advertising pending the decision on this action, although it continued the use of the word Roots in it® catalogs thereafter. Plaintiff alleges ownership of six trademark registra- tions and one non-registered design mark involving the use of the word Roots [Appendix “B”]. Defendant has not contested whatever right plaintiff may have to its a i i A8 design or word trademark registrations involving ROOTS- CONNERSVILLE. Although these marks are thus not at issue, they remain pertinent to this action in that they indi- cate the extent to which plaintiff made use of the word Roots in the years following the Roots-Connersville. merger in 1929. It is clear that prior to the merger, the P. H. & F. M. Roots Company used the word Roots, either in plain Roman or in the design covered by the 1922 registration, used for some time to mark machinery, as the company continued to use up its'supply of pre-merger nameplates. the larger machines, even as late as 1950. However, the post-merger advertising bore the name of the company, with the name being changed in the advertising to reflect the successive corporate changes of the company, and a new logotype appeared. This was the non-registered design mark ROOTS-CONNERSVILLGE [Appendix “B”, No. 7]; in it the word ROOTS ‘is emphasized over, but is nevertheless joined with, CONNERSVILLE to sake the _ design. This mark was used on far more nameplates than any other trademarks, almost completely replaced the de- sign ROOTS in the company’s advertising, and was used as late as 1955. Concurrently, ROOTS-CONNERSVILLE, No. 3], with both words being given equal ‘emphasis, ‘was design making its appearance late in the-1940’s. During this period, the products were referred to in the text of the advertising as “ROOTS-CONNERSVILLE” or “R-C,” but never as “Roots.” In 1955, another ROOTS- CONNERSVILLE design [Appendix “B”, No. 2] came into use and was registered, but its use at first was supple- alone or with other trademarks, to advertise and iden- tify its products. After the merger, the design Roots was. The design Roots was. also used in castings for some of either in plain Roman or in simple design [Appendix “RB”; used in advertising and in product marking, the simple. mentary to rather than exclusive of the earlier marks, which however were discontinued in 1960. In 1961 the word» ROOTS in plain Roman was registered ; it was at first used » ‘with and emphasized over “Connersville,” “especially in machine marking, but has been used alone in adivertising. since registration. Roots-Connersville and its predecessors have, with few exceptions, employed the trademarks described above to ‘designate its entire product line. Defendant, on the other hand, has’ employed ROOTS only to designate, and in ad- vertising only, W. C. Heraeus rotary positive displace: ment vacuum pumps. It has been defendant’s chief con- tention that its use of the word ROOTS has been to describe | the type of pumps or to refer to the engineering prin- ciple involved in their design and construction. Defendant has contended that this type of equipment and this. prin- ciple have become so widely known to those versed in the art that the word ROOTS has become descriptive or has — acquired a generic ‘significance when applied to pumps, and as such cannot be registered as a trademark. The word ROOTS is derived, as has , been seen, from plaintiff’s predecessor in interest, The P. H. & F. M. Roots Company, which in turn took its name from.the | - Roots brothers who founded it. As ROOTS is thus an ordinary surname, it was incapable of being exclusively appropriated as a trademark at common law. However, by statute, surnames may be accorded registration as trademarks provided certain conditions are met. Thaddeus Davids Co. v. Davids Mfg. Co., 233 U. 8. 461. Registra- tion of a surname as a trademark is conditioned upon the mark’s becoming distinctive of the applicant’s goods in commerce, prima facie evidence of which is—“substan- ° tially exclusive and continuous use thereof as a mark by A-10 © the applicant i in commerce for the five years next preced- — ing the date 6f the filing of the application.” 15 U.S.C. § 1052 (f): Defendant makes much of the five-year exclu- sive use. condition in attacking the Validity of plaintiffs last two registrations, but in view of this Court’s findings and decision that the word ROOTS is generic, this con- tention is not deemed material tothe disposition of this - action and will not be further considered. ery Where, during the: life. of a patent, a ‘name, whether it. be arbitrary’ or that of the inventor, has become the identifying and generic name of the ‘hing patented, this name passes to the public with the expiration of the patent. Singer Mfg. Co. v. June Mfg. Co., 163 U. 8. 169. How- ever, the mere expiration of the patent covering the thing _. patented does’ not cause the name of the thing to pass, along with the teaching of the patent, into the public domain. The test is whether the name of the patented thing has become generic, that is, whether the name of the patented thing has come to mean primarily what kind of thing it is, rather than. that it comes from a single - source. The test for deciding whether. a name has become a generic title of a product is “What ‘do the buyers under- stand by the word for whose use the parties are con- * tending?” Bayer Co. v. United Drug Co., 272 Fed. 505. Before this question can be answered, however, ‘it is _ necessary first to determine the composition, of the class: ‘of buyers for whose trade. the parties are competing. Plaintiff takes an expansive view of this class, and would include in it all potential customers for its entire product line, which in its specialized way is quite diverse. However, since trademarks have significance only in the — context of competition, the class of buyers here must be - Testricted to. include only those for whose business the ‘parties are competing. In determining the composition a S ee of this class, it is necessary to consider the end-use ‘of these goods, their price, relevant advertising. and media, and actual and attempted sales. Vacuum pumps are used by companies in the metallur- gical, aerospace, electronics and chemical industries, both in production and in laboratory installations, by federal departments and agencies, and by universities and labora- tories. The vacuum pumps manufactured and sold by both plaintiff and defendant range in price from $1,550 to $75,000. However, it is important to note that while vacuum pump units are themselves rather expensive, they are but components of larger and costlier installations. For instance, defendant’s president testified that he was personally involved in the. sale of space chambers . priced at one-and-three-quarter million dollars and an installation -at Jet -Propulsion Laboratories in Pasadena costing four million dollars. Defendant’s evidence showed that 30 to 50 pereant of its sales in the lowest price range were made on the basis of competitive bidding and that the percentage of sales thus made increased with the price of the unit so that all sales in the higher price range, as well as all federal government sales, were made on the basis of competitive bidding. The’ - evidence showed that while direct sales in the lower price range were made through the customers’ purchasing agents, - often men with little technical background, these purchases . were nevertheless made on the basis of specifications drafted by the customers’ engineers, in the same manner.as, - although perhaps less formally and extensively than, sales on competitive bidding. Defendant has advertised its pumps by means of cata- | logs which were distributed in the usual manner to interested persons or companies active in the fields men- 2 : - A-12° tioned above, and by means of advertisements which ap- — peared in such. trade or ,technical publications as “Iron Age,” “Metal Progress,” “Iron and Steel,” “Research/De- velopment,” and “Vacuum Technology.” Defendant’s:cus- .'tomers have included United States Steel, Republic Steel, Boeing Aircraft, Lockheed Aircraft, the National Bureau - of Standards and Brookhaven Laboratories. It is clear that the market for which the parties are - compéting is not of the over-the-counter type, where pur-. chases are made with haste and without reflection. Nor is it a.market wheré the purchasers are ignorant ef the char-, acteristics of the goods offered. Instead, the market is © seen to be relatively small and selective, where products are sizeable and expensive and their, end use is in installa- tions even more sizeable and expensiye, and the buyers are ' possessed of considerable technical knowledge and experi- ‘ence. It is in this context that the question—‘What do the | ‘buyers understand by the word Roots io must be decided. A- major part of the evidence is addressed to this ' question. Both parties offered the testimony of various officers_and employees of their respective companies. This testimony was understandably partisan and of but little robative value.’ Plaintiff also offered, as evidence of consumer identification of the word ROOTS with ‘Roots- Connersville and-its products, testimony of three of its cus- tomers and statements by twenty-five others of its eus- tomers. Considering the selectivity involved in obtaining this evidence, it is of little validity as a poll; and consider- ing the fact that but one of the customers is — in the "vacuum field, these statements have little weight. Important evidence_on this point was presented by the | parties in offering the testimony of academic experts and AAs in offering technical and professional literature, for this tended strongly to show what engineers and other technical __ people in this field understood the word ROOTS to mean when they encountered it and what the word ROOTS meant — when they themselves used it, in the texts and illustrations of patents, in textbooks, “in classrooms; ‘in ‘research -and reference articles, i in handbooks, in writing or respond- -ing to competitive. bids, in communicating with each other, and .in’ shop talk among themselves. Plaintiff’s experts were Richard J. Grosh, Associate Dean of the School of | Engineering of Purdue University, and Harold E. Hoel- | scher, Dean of the School of Engineering of the University — of Pittsburgh. Both testified that the word ROOTS meant. . Roots-Connersville om” its _ products,. that “Roots-type” | meant—“of the sort manufactured by Roots-Connersville,” and that the expressions “Roots pump” or “Roots prin- \ ciple” as applied to pumps or blowers, were misnomers or ‘imprecise uses of words and as such inconsonant with the best engineering practice. Defendant’s expert was . Ascher H. Shapiro, Ford Professor of Engineering and Head of the Department of Mechanical Engineering &t the Massachusetts Institute of Technology. He testified that the word ROOTS, when applied to pumps or blowers, ' designated pumps or blowers operating according to a. _ certain. particular concept or principle. This. principle, which Professor Shapiro testified was known throughout . the world to those working in the field of air and gas handling as““the Roots principle,” was defined by him as— : “[T]}hat of. a pair of counter-rotating impellers ma: casing which is approximately oval or elliptical shaped. . The rotors have a number of.lobes on them, usually ' two, but sometimes three or four. They mesh with each other in such a way as to prevent back leakage. ' “And also, as they rotate they encapsulate volumes of air between the lobes and the casing, and transport 6 "aw ° so that the’ general direction of flow is a cross-flow. "-\_ That is, crosswise to the axis of the two rotors.” ~ Record, p. 361, line 24 to p. 362, line 9. Professor | Shapiro identified the Roots principle, so de- ’ fined, with the principle disclosed in the 1860-66. P. H. Roots patent and with the principle of-oeperation of the pumps manufactured by W. C. Heraeus and advertised by Heraeus © and by defendant as “Roots pumps” or “Heraeus Roots pumps.” Professor Shapiro testified that the word ROOTS ‘ had acquired such currency among those i in the air and gas ‘handling field as descriptive of this principle and of the equipment’ manufactured according to this principle that ‘it was not necessary to-wpe the suffix “-type” to complete the meaning conveyed by the word ROOTS. Professor Sha- « piro testified that for some years, from 1950 to 1957, he taught a graduate course at MIT on fluid handling ma- chinery. This course, which was also taught by other MIT ’ faculty, members to undergraduates, was designed to give students a familiarity with characteristics of various types . of pumps. Professor Shapiro’s testimony indicated that he © ‘and his associates taught that the word ROOTS signified _. @ specific type’ of pump and was descriptive of this pump and its underlying principle and that this pump, called the Roots pump, was distinct from any other type of pump and _ different in its characteristics. Professor Shapiro testified that what he taught in this course was in.accord with the general understanding of engineers all over, that is, that. a Roots pump was a rotary pump consisting of two counter-. - rotating and intermeshing impellers in a casing, and that such a pump was known as a Roots pump. "Also of great. significance i in determining what the word ROOTS means to the relevant buyers is the literature offered by both parties. This literature was compendious; those volumes from the inlet :side to the discharge side | A‘15 = it included copies of patents, texts, pees ot stadia dias, articles in technical and professional periodicals,: reprints of presentations before learned societies, training ; manuals and specifications accompanying advertisements i ' for bids##Plaintiff’s evidence showed that machines de- - / signed and constructed on what the defendant. has called the Roots principle i.¢, the principle disclosed in the 1860- _ 66 P. H. Roots patent, have been quite frequently referred to by terms other em Roots-pumps, -blowers, -compressors. and the like. Plaintiff’s evidence ‘showed these machines identified as “mechanical pumps,” “mech anical blowers,” ~ and “mechanical boosters,” “lobe type pumps,” [“-blowers” and “-boosters”], “rotary pumps,” [“ -blowers” and “ -boost- -ers”] “positive displacement pumps,” [“-blowers” and “boosters” ], et ‘cetera. eae Defendant’s evidence teed a widespread -ansige, of long standing, of ROOTS to designate this equipment. De- fendant offered the 1916, 1941, 1951 and 1958 editions of © __ the Mechanical Engineers’ Handbook [commonly known as “Marks” after. its editor]. Marks, characterized. by | - Professor Shapiro as a very well-known handbook used by mechanical’ engineers of all types and by chemical’ : engineers and aeronautical engineers, and a “best seller” ’ among engineering books, contained numerous references to and discussions of the-“Roots pump”. and the “Roots “blower.” ‘The illustrations in Marks labeled “Roots blower” - depicted a machine consisting of twin-lobed.counterrotating ° impellers mounted in a casing, the configuration identified _ by Professor Shapiro as a blower or pump constructed on , the “Roots principle” and known as a “Roots blower.” » . Defendant offered copies of several patents, issued between 1915 and 1964 and belonging to various persons and com-* panies, plaintiff and W. C. Heraeus included, which related to ene on or auxiliary equipment for — and > A-16 blowers. The language of the patents contains references to “Roots” or “Roots type” pumps and blowers and indi- cates that the teachings of the patents relate to “Roots” or “Roots type”, pumps and blowers. In many of these patents, the principle of operation of the pumps and blow- | ers is described in terms essentially identical té those used - by Professor Shapiro to describe the “Roots principle,” and the figures accompanying the text display a pump or blower whose configuration is identical’ to that which Professor Shapiro identified as the “Roots” configuration. Defendant offered several reports of the National Advisory Committee for. Aeronautics [the predecessor of NASA] dated 1926, 1927, 1932 and 1936, which. deal with tests performed upon the “N. A. C. A. Roots type super- charger,” the illustration of which shows. it to be a ‘ma- chine conforming to the “Roots principle” as defined by Professor Shapiro. Defendant offered numerous texts, handbooks, encyclopedia entries, articles in professional and trade periodicals. and monographs published by the American Vacuum Society and others which deal with thes “mevty ower,’ Se “Roots booster,” and the “Roots pump,” and which contain illustrations and textual de- scriptions making it clear that the authors were speaking of machines conforming to Professor Shapiro’s definition of the “Roots pump” and the “Roots principle.” Defendant offered a publication of the Training Section of the In- . dustrial Relations Department of the Aero-space Division of the Boeing Company entitled “Practical Vacuum System Design.” This publication, used in training Boeing personnel in vacuum technology, devotes a section to “Mechanical Booster Pumps” and states:—“The pump most suitable for this use is the Roots type rotary lobe pump. In this type pump . . . two kidney shaped eeccen- tries are used, so mounted that they interlock to trap a A-17 compressible volume of gas . . . The lobes ‘never touch each other or the casing, . . .” Defendant offered four invitations for bids: the first from the National Bureau of ’ Standards, which stated—“The two stage high capacity unit shall consist of. a Roots-type dry blower... and a’ 300 CFM rotary oil sealed piston mechanical high vacuum pump second stage;” the second from Grumman Aircraft Engineering Corporation which calls for “diffusion ejector pumps, roots. blowers, or mechanical pumps as appro- - priate ;” the third from NASA which called for “diffusion- ejector pumps, roots blowers, or meclianical punips as ap- propriate ;” and the fourth from the Arnold Engineering Development Center of the United States Air Force, which calls for “a 6-stage cascade of Roots blowers plus one stage of rotary oil sealed pumps,” with a reference to a schematic diagram which shows, next to the label “Roots Blower,” the symbol tentatively adopted by the American Vacuum Society to designate pumps operating on what Professor Shapiro described as the “Roots principle.” Defendant offered three examples of the advertising — usage of the word Roots by plaintiff’s own Dresser Vacuum division : the first, an advertisement appearing in the Octo- ‘ber 1964 issue of “Research/Development” which con- tained, next to the label “Roots Blowers (by Dresser/ Leybold)” a photograph of a machine which appears to be a pump constructed in accordance with what Professor Shapiro called the “Roots principle,” and the second and third, the 1965 and 1966 “Vacuum Technology Buyer’s Guide and Directory” which list under the heading “Blow- ers” the company “Dresser Vacuum” and the specifications “rodts type” and under the heading “Blower-Pump Com- binations” the company “Dresser Vacuum” and the speci- fications “Roots type.” Defendant offered a reprint of an article from the “1961 Transactions of the Eighth Vacuum A-18 Symposium and Second International Congress [1962],” the authors of which are shown to be employees of the Roots-Connersville Blower Division [the predecessor of the Roots-Connersville division of the plaintiff], in which the following appears :—“Roots-type compressors are quite simple. Two figure-eight shaped counterrotating impellers operate within a case... . .” In this reprint there is an illustration showing a diagram of a pump operating on what Professor Shapiro described as the “Roots principle” and which is labeled “Roots type compressor showing principle of operation.” Defendant introduced a copy of a letter from the president of the Roots-Connersville Blower division of plaintiff, dated February 8,.1960 and written to the advertising manager of Consolidated Elec- trodynamics Corporation, which was at that time dis- tributor for W. C. Heraeus pumps, in which it is stated :— “Tf it is necessary to refer [in CEC advertising of W. C. Heraeus pumps] to the Roots lobe design this can be fur- ther clarified by an indication that the design is of the Roots principle.” ; It seems to the Court that the letter just quoted coming ’ from plaintiff at a time prior to any lawsuit or dispute * between the parties is of the utmost significance. The © letter speaks of the Roots-lobe design and “that the design is of the Roots principle.”. Here-the word ROOTS is used by a former president of plaintiff in a generic sense. This is the contention made by the defendant in the instant litigation. It is clear that the weight of the expert and documentary evidence favors defendant in its contention that ROOTS means, to buyers in the air and gas handling fields, an engineering principle or equipment designed in accordance with that principle. Plaintiff’s experts displayed an almost incredible bias, and by their reaction to the documents. FO EE A Oe en, ——— Seay _ oe A-19 produced. by defendant on their cross-examination ex- _ hibited a pedantic attitude which failed however to disguise their closed-mindedness. Plaintiff’s documentary evidence is addressed to the proposition that there are other names for this equipment. This proposition may be valid; but it does not answer the question—“What does ROOTS mean to the buyer?”—and so is entitled to little weight. Defendant’s expert, in contrast to plaintiff's experts, was objective in his testimony, which was direct and to the point. He candidly admitted that there were other terms which have been used to designate this particular type of pump, but the total effect of his testimony was that the term ROOTS has a ite meaning when applied to pumps and that the ra dee of a type of pump and of the engineering™principle followed in its construction, and that the term ROOTS is so understood by engineers and technical persons throughout the world. He testified that this knowledge came not only from his experience in the academic environment, but also from his contact with engineers and technical people in industry and business. The Shapiro testimony is ‘believable and persuasive. It came from an entirely disinterested witness of vast knowl- edge on the ‘subject. The Shapiro testimony is accepted by the Court as correct in fact. | The documentary evidence demonstrates that the word ROOTS has been used for many years to describe this type of pump and its underlying principle in patents, hand- books, texts, reports, articles and monographs; the neces- sary inference from such use is that the term ROOTS is' one which the writers have felt confident would convey a definite meaning to their readers. The invitations to bid demonstrate that buyers in the market for which the parties are competing understand the term ROOTS to signify what defendant says it does. Plaintiff’s own Dresser Vacuum di- A-20 - vision has used the term “Roots type” in the samé manner defendant has, a manner which plaintiff now contends is meaningless. Professor Shapiro’s tesffmony, together with the documentary evidence offered by the defendant, estab- lish the validity of its contention that Roots, when used — in the context of fluid — equipment, is a term. of generi¢ significance. The matter of secondary meaning, although distinet from.that of genericality, is nevertheless governed by the same considerations. The doctrine of secondary meaning - is applied where terms, incapable originally of registration as trademarks in their primary sense because of descrip- tiveness or genericality, can become registrable by virtue of their having acquired a secondary meaning which designates in the minds of the buyers the source of the goods as well as their type. The question to be answered in this instance is the same as that in the instance of genericality:—‘What do the buyers understand by the . word for- whose use the parties are contending?” The por- tions of this -opinion which discuss the evidence relating to genericality are here apposite, and what was said there is equally applicable here; it is sufficient here to note that plaintiff has not met its burden of establishing a secondary meaning for the term ROOTS. Plaintiff contends that where a trademark is used on a variety of different products, it cannot become generic as to any one product, even though that one product was subject to patent protection. This contention is supported by decisions in eases where, as in the case at bar, defendant had raised the issue of genericality to overcome plaintiff’s allegations of infringement. . However, this contention is based on a conclusion which follows accidentally, but not necessarily, from the factual premises of plaintiff’s. author- ities. In Telechron, Inc. v. Telicon Corp.,,97 F. Supp. 131 " (D. Del. 1951), aff’d., 198 F. 24 903, (3d Cir. 1952), defend- record disclosed that “neither during the life of the basic © A-21 ant sought to extend the genericality which TELECHRON allegedly had acquired as a name for a certain type of electric clocks (on which plaintiff had had patent pro- tection) to cover plaintiff’s entire product line so that defendant’s TELICON would not be infringing as applied to radios. The Court of Appeals, however, noted that the Warren patents nor thereafter did “Telechron’ become the name of any article of commerce.” 197 F. 2d at 907, and rejected defendant’s attempted extension of the Singer doctrine. In Enders Razor Co. v. Christy Co., 85 F. 2d 195. (6th Cir. 1936), KEEN’'KUTTER had been used by plain- tiff as a trademark for its line of bladed products for some forty years before it was issued patents on safety razors which it also marketed under the name KEEN KUTTER. The Court of Appeals rejected the application of the Singer doctrine, declaring : . “In addition to the circumstances that ‘Keen Kutter’. is a trade name constituting part of a trade-mark ap- plied to numerous articles, the name was used many years before the patents were obtained. Under these circumstances, the mark or name does not become pub- lic property upon the expiration of the patent rights. especially where, as here, the patents did not contribute’ greatly to the value of the trade mark.” 85 F. 2d 198. Thus Telechron and Enders Razor while containing lan- guage favorable to plaintiff’s position, are insufficient, on their facts, to dissuade this Court from finding, upon the evidence in this case, that ROOTS is a word of generic significance, merely descriptive of a type of vacuum pump and its underlying principle. The word ROOTS in this context is incapable, under the Singer doctrine and under statutory law, of registration as a trademark. This being so, there is. no basis for plaintiff’s action for trademark A-22 infringement as set forth in the first count of the complaint, and as to such action, the complaint must be dismissed. At the end’ of the trial in this case, I came to the con- clusion that plaintiff had failed to prove a case on which relief could be granted. Upon due reflection, after con- sideration of the oral arguments and briefs of counsel, this conclusion is adhered to. , ; This opinion is regarded as containing the findings of fact and conclusions of law on which the decision is based as permitted in Rule 52. But in summary and for clarity and specificity, the basic conclusions of law should be | stated. They are: 1. The word “Roots” in designation of pumps, blowers, compressors, or the like, incorporating the decions or prin- ciple referred to in Patent No. 2369 is in the public domain, and the plaintiff does not have any rights of trade mark or of .trade name in said word per se. 2. The word “Roots” ‘is free for use in the trade by defendant in sales promo- . tion when it'identifies said equipment provided said word “Roots” is further characterized, or used in an association, — to show that it is the product of a specific supplier other than plaintiff’s division “Roots Connersville.” 3. The defendant may. rightfully use and has so used said word “Roots” in the publict juris manner and form and has acted in accérdance with this conclusion. | Therefore, these conclusions require a further conclusion _ that there is no infringement as alleged by plaintiff in Count 1 of the complaint.* It follows also from -the three conclusions just stated that plaintiff has failed to prove a ease of federal unfair competition or common law unfair competition. Conclusions 2 and 3- permit defendant to continue to do what it has been doing. The word “Roots” being in the public domain coupled with the method of ad- meer epee rn mens a AP vp 8 L) SHS DOING EEE GEILE ORC ON Ee ee NEN RR pene = Nt © : * “at vertising heretofore practiced by defendant, no confusion _ these registrations to limit the use of the word ROOTS ' pertinent statute provides: registrations of trademarks numbers 710,549 and 724,195 -competition. Defendant seeks cancellation of these trade- §§2 and 15. of the word “Roots” as a trademark for these latter prod- A-23 results.. The eemplaint must be dismissed. The allegations of the counterclaim require discussion and decision. In the counterclaim defendant. alleges that the renewal of the registration of trademark number 153,840, and the [ Appendix “B”, Nos. 1, 5 and 6] were falsely and fraudu- lently obtained by plaintiff and that plaintiff has used to itself and thus has interfered, or has conspired with others to interfere with and restrain free commerce and - mark registrations under 15 U.S.C. 1119 and damages for false registration under 15 U.S.C. $1120 and treble dam- ages for monopolizing trade and commerce under 15 U.S.C. With respect to the cancellation of 5 seeped the “In any action involving a regiatensd enite the court may determine the right to registration, order:-the can- _ cellation of registrations, in whole or in part, . . . and otherwise rectify the register with respect to the regis- trations of any party to the action.” 15 U.S.C. 4 1119. . This Court has held that “Roots” as applied to rotary . positive displacement lobe type pumps is ® word of gen- eric significance: hence, —- plaintiff’s registrations of the word “Roots” as a rademark apply to “goed pumps, the registrations must be cancelled. “Roots”, applied to the rest of plaintiff’s product line, has not ba quired generic significance; hence, plaintiff’s registration ucts is valid. Specifically, trademark registration 153,840 A-24 ; [Appendix “B”,.No. 1], which relates to “rotary blowers, gas pumps, water pumps and vacuum pumps,” and trade- mark registration 710,549 [Appendix “B”, No. 5], which relates to “gas pumps, vacuum pumps, blowers, exhausters, and compressors,” must be cancelled insofar as they relate ‘to rotary positive | dis isplacement lobe-type pumps, blowers and compressors. These are products in which the parties » .are in competition; but with respect to plaintiff’s other products, the trademarks may stand as presumptively valid, _as there is no issue for this Court to adjudicate in that re- spect. What we have said here applies to Trademark Tegistration number 724,195, which is the trademark regis- tration for “rotary positive ax marae gas meters,” made by plaintiff. In its counterclaim, defendant sleo eseks monetary damages for plaintiff’s alleged fraudulent procurement of trademark registrations numbers 710,549 and 724,195 [Ap- pendix “B”, Nos 5,and 6] and alleged fraudulent renewal of trademark registration number 153,840 [Appendix “B”, - ,No. 1]; and for plaintiff’s alleged interference with com- “merce and trade by.using these registrations, once ob- tained, to prevent defendant from employing the word ’ “Roots” with respect to its goods. Defendant contends that trademark registration number 153,840 had been aban- doned before 1962, that plaintiff nevertheless applied. for and obtained renewal of its registration, and that plain- . tiff thereupon relied upon this renewal in applying for the © last two registrations. Me. With respect to defendant’s claims for jhiaaaigia arising from plaintiff’s alleged fraudulént registration of trade- marks and from plaintiff’s interference with trade and commerce, it is clear that no claim is made out upon which relief can be er re ga is os: in the evidence ll Ee | which indicates that plaintiff reliéd upon trademark reg- . istration number, 153,840 to prevent defendant or others — from the use of the word Roots, until after the inception of . this suit, when plaintiff began citing it along with the other two registrations in attempting to police its trademarks. In connection with the other two registrations, it is to be noted that the- mere assertion of genericality by an in- fringer does not ipso facto terminate a trademark owner’s rights to the mark. Plaintiff has, denied. ffm the outset — that the word ROOTS is generic; defendant has not shown - that this denial was not in good faith. Nor has defendant shown that plaintiff’s attempts to prevent others from using the word Roots has been other than a good-faith _ policing of its trademarks. For t’ ‘se reasons, defendant’s counterclaim must be; except with respect to the cancella- tion of plaintiff’s trademark registrations heretofore dis- cussed, dismissed. Tr 1s SO ORDERED. a Te an a cane Bone Se nae ee ee ee ee eS SR et eae . | oe — ot ae ae iad This cause.came-on for fFial and the Court having heard _ the evidence and considered’ the contentions of the — iti is hereby Ordered, Adjidged and Decreed as follows: 1. The Complaint herein is dismissed. 2. ‘With respect, to the Counterclaim: -a. The plaintiff’s ivadcneak. gistration 153, 340 and 710, 549 are hereby. cancelled insofar as they relate, _ to rotary positive displacement lobe ae pumps, blow- ers and compressors. b. The remainder of the Counterclaim is dismissed. 3. The defendant i is awarded the loci of this action: - Joseph P. Willson, United States District Judge. Dated: February 13, 1967. aac Naik esti lahat dione basa aiisoaicat ache A.2f : : ree PH ‘ky Silay. y Ler Wee a N34 ee 7 | Leelee 0G oF Lh, Mba | 8 FR Ua chmmamed venenR, § A-29 RESID |. UNITED STATES PATENT OFFYCE. , PM, ROOTR, OF CONNERSYUALR, IXDIAXY, Se 4 © Specification of Letters Patent No. 30,187, dated September 25, 1860, ’ ™ oormey . ’ ‘To. all whom it may concern: ; xirips of packing af any certain points, and Be it known that T, I {1. Roors, of Con- hersville, in the county of Fayette and State of Tndiana, have invented a new and useful S$ Tuprovement in Rotary Blowers; and I de hereby devlare that the following is a full, clear, and exact description of the same, ref- ervnee being had to the accompanying draw- a forming a part of this xpecification, in 10 which— ; Figure 1. represents a side view. and Fig, 2a central vertical sections Similar letters of reference, in cach of the Qetveral figures, indicate corresponding parts 35° The nature of niy invention consists in the coubinatior with two pistons which form ares Of cirvles aul cach inclew’ one quarter the circumference of a given circle, of two recesses Which form quadrants of true circles, 2 when cach of said receses ovcupy: just one quarter of the circumference of_the said . + given circle, as hereinafter described. By ' this conibination #f pistons aid recesses con- structed as described but four small exsyatial ‘points ef contact during the sevaleniolt of Sloe gplchdone are experienced, and therefore at these points, narrow packing strips can availably be employed for rendering the pis- tons air-tight. during the time that the vacu- um ix “ew 4 formed. and these come into play periodically and successively or at the mo- ‘ment when one ceases its contact another supplies its place. ; It ix a_yery exential thing to have the points of positive contact located, for the machine when first made, if employed as a . Yotary pump can be run for some time with- out packing and when the parts have worn s as not to be sufficiently tight. the points of contact can be restored amd the machine rendered as dight. ax when first used. and thas the lox and expense attending the cm- struction of new pistons or the bringing-of the parts closer together, obviated. fn this mat r. my machine differs from all rs that T am familiar with and espe- cially from David. M. Walker's pump. paf- ented in 1835, whervasx, with the combination _of pistons and recesses constructed as Mr. David M, Walker describes in the patent granted) to him in 1835 on a hydrant pump, the: points.of contact are continually chang- i hile the pi is making its move- po Pw - ie curved peat aml there- pewible to availably. euiploy $8 40 43° 5 fore it is 4 . . . = s being so hi~ ee certainly could neg used effectively ax a blower. tt beings ew winep A a in.order to ha sinely , une of this character ¢ fe of oe for the Vlowing of sir A son the pistons air-tight, for if they are packed air- tight. the effective action of the air. will be leet to a preeat « by reason of its equpe het ween the abutments, Facet as To cnable others, skilled in the art, to make aml use my invention, [ will ; to describe its constructian and operation. A. and 43, represent. two double acting ro-—- tating aluitments made alike in all respects, 76 *C. CG, ave their shafts DD, D, D, D, are pistons which are all ali E, KE. E, F, are the recoce which receive the ewes are all alike, F, F, if a concave_ory Case extending p around so as just to clear the pistons as they revélve, . * IF. and . i. a ~ oe A er ay ; a wth of which may nigile Of a 80 py adapted ‘to the uses to which the ma- chine is to be — The_pistons D, D, D, D, and_ recesses FE. E, E, EF, are ares of circles and have one common radius. Which radjus is the chord of 85. . ah are of one-cighth the nifervnce of ‘the circle on which they ary formed, shown hy. the dotted circle’in Fig. 2. Phe abutments A, and B, are made to re- valve simultancoysly by means of two equal 90 cog wheels J, J, upon the shafts CC, of the alutmentx, ax scen in Fig. 1. Tn onder to have the parts operate very tightly, as in the case of .a blower, suitable metallie or wher packing ix to be inserted in the pi-ton 93 at the points +. +, said points being the only ones of pe-itive contact which are experi- enced daring the revolution of the abut- Athen very déue Guide die operated, it 100 ven Very ¢ u “ will be-«desirable to remove so pofeach of the pistons as represented in red at K. ax will allow the free ecape of the duids ax the pixtons enter the reomees sane are rangement will he useful for high velocities. le when the fluids are not very or Ww a dense fluid ix suddenly forced out of the rece, a concussion ‘ix the result similar to 73 atriki wolid suletance, whereas allowing © sufiiclent outlet, all wuch ca 110 * OE } 80,167 iden fa aveha and th ld ce at such Te is evident that reverting the - 20 reduced ave A through tho enlarged open- | tion a + ony the pistons by sat ing, that the operation is easy. or evice becomes a rotary steam 23" If, as a blower machine of o ting size pressure water wheel. " "Zs run at a velocity of 300 or 100 revolutions T Ax the =: ae of all the internal parts. . per ete 6 a vain ~— can be 4 ~¥4 are < got p Eapsneon ae ae 2 come 25 © as the oir recesses, in a | cave, it wi comparatively easy to con- blower, it we R thoreface'be’s useful, as con- xtruct them’ with pon sent cys wid erable moti vo power would. be saved! What I claim as my invention, and desire 10 thereby. to srcure by Letters Patent. is— “ee The operation is as follows: When'the pir bination of the pi pirtons D, D, and se tons are made to revolve in the direction of E, when so constructed ax ta pre- the‘arrows, the air or water or whatever | sent but four essential points, of positive uid ig acted upon, will be carried forward | contact as described and for the purposes 13 > at pistons i approach together, et | is| set forth yd . ; “1 he discharge pit vee S ee P. IL ROOTS. ° Zz iy ih beer fill ‘the stcee no,| Witnesses: backward escapement. In eT manber, the C. B. Eowanns, SAO CEE OSS TONNE EN Sanu. Exrawr. 7 ; ; Oo >PENDIX "At! Pi Rubs . A-sL Rhett ea =. MN? 2569. Ltiued dat Mb, j > 3 \e@ / i a ’ [ROE \ a) / : “ ” . Snail — > Sg <. . ® , T= papt . é QD ° ( ay Oy i\ fe 9 et atl ‘APPENDIX "a" A382 at Piha bo Bhar 22h Le Silay Bw 4 Rag i iii. aN ns APPENDIX NL \ \ ? “J \° invention appertaiis to make and -use the \ ganie, reference being had tothe accompanying » bw - . Fotary abutments, each provided with two or ufore pistons and a, ‘tute, respectively, convex anil concave arcs of _i each "+ equal radius with the pistons, and also occupy said given circle. By '*. the revolation of tlic 1 Sng the pistons air-tight during tho time that - the vacuum is being formed, and theso come A-33 UNITED STaTHs PATENT OFFIOH. P. H. ROOTS, OF UONNERSVILLE, IN DIANA. IMPROVEMENT IN BLOWERS, *—C. e Spoctiieation forming part of Letters Patent No. 30,167, dated September #, 1900; Relesus No. 2,860, dated ‘ ri hy aa “yf soe . & s o <« |. CONCENN 2 _ Beat known that I, P. H. : nersville, in the county of Fayette and State of Indiana, have invented a new and usefal Improvement in Rotary Blowers;-and I do hereby declare that the following isa full, clear, and exact description of,the sainé, anfficient to enable any ono skilled iu the art to which my Zo all whom it ag 1 Roors, of Con- dra nee, forming a part of this specification, hich— Fone: ‘Figure 1 represents a sido view, and Fig. 2 % central v section. Figs. 3, 4, and. 5 ave diagrams illustrating the construction and operation of the rh ame with threo or four pistons and a corresponding number of re-’ cesses on cach abatment. . fictently fight the points of contact can be re- stored and the machine rendered air-tight, as ~ when firat used, and thus the loss and expense attending the ‘construction of new pistonsor__, the bringing of the. closer to; ob- . viated. Iu this cular my machino differs _ from all others that 1 am familiar with, and especially from David M. Walker's pump, pat- ented iu 1835, whereas, with the combination - of pistons and recesses constructed as Mir. David M.° Walker describes“in the patent ted De Le agg a hydrant-pump tho points ‘ef contact: are continually changing whilo the piston is making: its movement through the curved recess, and thereforo it is impossible to'ava employ strips of pack- ing at any certain points; and this being so, his machine certainly could not be used Similar letters of reference in-cach of, tho | ively asa blower, it being essentially impor- several figares indicate corfesponding parts. | order to have a machine of this acter o The subject of my invention is a rotary- Liower pump or engine consisting of coacting ponding number of recesser, Which pistgns and recesses consti- — radius, as will bé hereinafter described. P< Be yao my saention, A Till Bost, oe t as representec gs. 2and 2, whero: rotary abutment consists of two Pistons, which form arce of circles, and each inclose one-quarter tha circumference of a given cir- e, avd of two recesses, which form ares of each one-quartertof the circumference of the pile combination of pis- tons sud. recesses, costracted as escribed, butfoursmall essential — of contact noes J bistons are oxpericncod, and therefore at theso points narrow packing- strips can. availably bo employed for render- into play periodically and successively, or at the moment when one ceases ita contact an- other supplies its place. It is avery essential et ag Aig aged 2 Ww em asa pump, ean bo ran tor Guano tele wheat packing, when the parts have worn so as not to be saf- wheels, J J, upon the te effectively for the blewing of air to pack the pistons eta tee if they are not packed a t tha effective action of the air.will be lost to a degres by reason its escape between the abutments. — In Figs.1 and 2, A and B represent two double-acting rotating abutments, made alike y 4 in all respects, © Caro tleirxhafts, DDD¢/ D are pistous,.which are’all alike. EEE are the recesses Which receive tho pistons, are all alike. F F-iga concave or caso ex- tending around so as-just to clear the pistons as cg Ae wite H and G are the induction and d openings, both of which may be made of a size adapted to the uses to which. . the machine is to be — Ps ; - The pistons DD DD and réecsses EE E E are arcs of es, and have one common the ¢hord of an arc of circlo in Fig, 2.) *4,.. , “ The ae aB » ——- — mu y by means of two . Y the shafts O 0 of the abut. ~~ gaved th / / © . “ It is evident that b from | tion and actin water tho device gine ora pressure-water-wheel. _ comparatively easy to ‘con- ! Having thus described my inven I claim as new, and desire to secure P t ige | z » perf cave, it will a them wi ‘ Pe ee SSC oe ee es EMARKS OF ROOTS-CONNERSVILLE AND PREDECESSORS Mark ect, thy - ‘Number ‘Date of Issue ‘First Use Last Use Beka ‘REGISTERED - = : > .. 153,840 ~ -Mar. 28, 1922 1859 +1950 ‘. + Reissue 1942° ae ; Reissue 1962 4 —. 617,425 Dec. 13,1955 1955 | current 3. RlooTs-ORNERSVILLE 632,648 - ug. 14; — 1967 = sel 4. ROOTS-CONNERSVILLE. , 665,972 i 19, 1958 : 1935 | 1960 "Benue ‘iden : | pe Jen. - 1961 1960 current 6. ss ROOTS 728,195” Nov. 21, 1961 1960. ‘owerli '%. 1935 1955 APPENDIX "3" St cee APPENDIX B-- OPINION OF COURT OF APPEALS. =) ee _ FOR THE THIRD CIRCUIT | ec: 5 ees (Filed May 24, 1968) Before Manis, Ka.opyer and es Circuit Judges, By Manis, Circuit Judge pute facie Y Biday Me These | are appeals from a judgment entered in the Western Distriet’ of Pennsylvania, in an action brought by the plaintiff, Dresser Industries, -Inc., .a aie en- gaged in the manufacture and sale of, inter alia, rotary .” _ positive displacement lobe -type vacuum pumps, blowers and. _ compressors, to enjoin the defendant, Heraeus Engelhard “Vacuum, Inc., a, corporation selling similar products manu- factured in Hanau,/Germany, by the defendant’s ‘parent . - corporation, W. Seracua, GmbH, from using the trade- i mark “Roots”*in catalogues and trade journal advertising 4 in.the United ‘States. Judge Willson, in a careful and ex- |} _ haustive opinion, set out the charges and countercharges of \ - the pleadings, as well as.the corporate history of the parties, - and the history of the 1860' patent issued to P. H. Roots on an improvement: in rotary blowers, and made comprehen- ‘sive findings covering the factual issues. No useful pur- _ . pose would be served in repeating here what has been so i well and fully stated by him, Dresser Industries, Inc. v. . - Heraeus Engelhard bis Inc, D.C. Pa.. mais 267 F. , Supp. 963. - . - __ 1 Letters Patent No. 30157 issued under date of September ' 25, 1860, and reissued under date of October 2, 1866, Reissue No. 2369, : . and the designs of the rotary blower are ‘set Out ji in Appendix A to ‘the opinion of the district eee an 267 F. sic Pp. 976-984. : | | B.2 | For this review it is sufficient to say that the design | " disclosed in the P. H. Roots 1860-1866 patent generated considerable interest in engineering and industrial circles, abroad as well as in this country, winning high awards in exhibitions held in.1867, 1873 and 1876. That design prin- ciple has retained its appeal to thé present time. Since 1859 rotary air. blowers, and related products were manu-. factured and sold by the plaintiff’s predecessors, P. H. & F. M. Roots Company and sucteeding predecessors in inter- est, and are-now manufactured and sold by: the plaintiff . . through its Roots-Connersville division. In 1955 Heraeus ‘began to. sell through a distributor i in the United States its _ rotary positive displacement pumps. In 1963 the defendant was formed: to sell these products. During this period the plaintiff protested, to Heraeus’ agent and later to the de- ‘ fendant, the use of the word “Roots” in advertising “Rogts pumps”, “Roots blowers” and “Heraeus’ Roots Pump”. $ * The. goods with which the. parties compete in the market in this country are rotary positive displacement lobe-type vacuum pumps. At least half a dozen major companies manufacture and sell’ this type pump. The defendant’s products range in price from about $1,300 to $25,000 and up; competitive bidding accounts for a good percentage of << the puréhases from the parties. The pumps are often sold as a result of an inquiry-or a direct order from a prospec- tive user. The market is relatively small and selective, the ing being made sometimes through customers’ pur- a ents but, generally, on the basis of specifications drafted by the customers’ engineers “for use in installations 9 which are large and expensive. In these sales advertising may play a significant role and the descriptive words used aré often of paramount importance.. ‘Invitations to bid 2The word “Roots” was not affixed to any of the defendant's products so or to the wrappings. : ~ 7} B:3 - indicated that the prospective purchasers, among whom were the National Bureau of Standards, the United States Air Force, Grumman Aircraft Engineering ‘Corporation and the General Electric Company, specified “Roots-type”, _ “Roots”, “roots”, or “Roots type” pumps.. In this con text it was of considerable importance to. the -plaintiff, on ‘the one hand, to restrict the use of the word “Roots” to its . own products, and to the defendant, on the other, to be free to use the word “Roots”.with respect to advertising its - products. - | ) 3 | The complaint charged that the use by the defendant ’ of the trademark “Roots” being identical to the plaintiff's trademark “Roots” and substantially identical to salient ‘portions of the plaintiff’s five other trademarks,* wrong- * fully identified and represented the defendant’s pumps as ' originating from the plaintiff and was likely to cause con- fusion, deception or mistake in the minds of the purchasing _ 9 publie as to the origin or relationship of the defefidant’s | products, in violation of section 32.of the Trademark Act of 1946, as amended, 15 U-8.C.A. § 1114(4), and copstituted unfair competition for which plaintiff demanded an account- ing and damages. The defendant by way of defense: as- serted that the designation “Roots”, since at least 1900, has’ been. in the public domain; widely used in the art to: * identify either an engineering principle or a type of equip- ° ment embodying that principle, and has become generic _* with respect to identifying that type of equipment. : counterclaim the defendant charged the plaintiff with fraud in ‘obtaining its trademark registrations and, with unfair a competition and illegal restraint and sought a judgment - dismissing the complaint, cancélling the plaintiff’s trade- mark registrations, and damages. The plaintiff's registered trademarks are set out in Appendix B ee ee 267 F. Supp. p. 984. _—s- 4 B44 } Following the trial of the case, the district court con- eluded that the word “Roois”, as applied to rotary. positive displacement lobe-type pumps, blowers “and compressors which embodied the design or principle disclosed in Patent Reissue, No. 2369, was a word of generic significance ; that the plaintiff did not have any rights of trademark or trade- ’ name in the word per se; that the word “Roots” was free for use in the trade by the defendant in its sales promotion, providing the defendant in using the word “Roots” did so in such a manner as to show that its goods were the products of a specific supplier other than plaintiff’s Roots-Comers- ville division. The court accordingly dismissed the com- plaint. With respect to the defendant’s counterclaim, the court ordered cancellation of the plaintiff’s Trademark Registration Nos, 153,840 and 710,549, insofar as they re- lated to’ rotary positive displacement lobe-type pumps, blowers and compressors, dismissed the remainder of the counterclaim and awarded the defendant .costs of the action. J udgment, was entered accordingly and these appeals fol- . lowed.’ The plaintiff, at our docket No. 16566, appeals. from - all portions of the judgment excepting that portion dismiss-- - ing the remainder of the counterclaim; the defendant, at our docket No. 16567, appeals from that portion of the judgment dismissing its counterclaim. : In deciding involving charges Bat the exclusive use of a has been invaded, there is no precise formula or rule of law which can be applied mechanically ‘to determine whether there has been an infringement of a trademark or name. Each case must be decided on its own facts and circumstances. Morgenstern Chemical Co. v. _.G@. D. Searle & Co., 3 Cir. 1958, 253 F. 2d 390, 392. As was observed in Q-Tips, Inc. v. Johnson & Johnson, 3 Cir. 1953, 206 F. 2d 144, 145, “when the final outcome on a given set of facts may vary, not with the legal concepts involved, but B-5 their application to particular states of fact, the pattern is . inevitably less clear than in cases where a definite rule is ‘to be applied.” How a particular word has ed and how it has been understood by the public or’the eisa question of fact. Telechron, Ine: v. Telicon, Corp., 3 Cir. 1952, 198 F’. 2d 903, 907. ca The function of a trademark Pro identify the origin or ownership of the article; the essence of the wrong is the passing off of the goods of one manufacturer or vendor as those of another. Canal Company v. Clark, 1871, 80 U.S. 311, 322; Trade-Mark Cases, 1879, 100 U.S. 82, 92; G. & C. Merriam Co. v. Saalfield, 6 Cir. 1912, 198 F. 369, 372; Re- statement, Torts, §§ 711, 712.. The right of the plaintiff must be based upon a wrong which the defendant has done to it by misleading customers as to the origin of the goods sold, thus taking away its trade. Such a.right is not: founded on a bare title to a word’or symbol but on a cause of action to prevent deception. Dupont Cellophane Co. v. Waxed Products Co.,2 Cir. 1936, 85 F. 2d 75, 81. In this - respect, the common law of trademarks is but a part of — the broader law of unfair competition. Hanover Milling Co. v. Metcalf, 1916, 240 U.S, 403, 412-413. This court in Gum:v. Gumakers of America, 1943, 136 F. 24 957, 958, observed: “Aside from the prohibition, - against infringing a patent, copyright or trade mark and except for the requirement . . . that he must identify his product as his own, any one hes the right to manufacture and sell a product similar or even identical in appearance to the original product with which it competes unless the original product has become associated tn the public thind with its producer.” That a surname, by virtue of actual © and exclusive use, may be registered as a trademark .is clear. Trade-Mark Act of 1946, §2, 15 U.S.C.A. 4 1052;. > \® B-6 Restatement, Torts, § 716; Thaddeus Davids Co. Vv. 7. Davids, 1914, 233 U. S. 461, 468. But where during the life of a monopoly created by a patent, a name, whether it-be arbi- trary or — of the inventor,-has become by his consent, . either express or tacit, the identifying and generic name of the thing patented, the name passed to the public with the eessation of the monoply which the patent ‘created subject to the duty imposed upon the one using the patent and the nafffe not to pass his goods off as the goods of the originator. Singer Manufacturing Co. v. June Manufactur- ing Co., 1896, 163 U.S. 169; Restatement, Torts, §§ 721, 727, 735. To that end, the law has required that the article be so marked with the maker’s name or otherwise.as to prevent confusion or deception. Yale & Towne Mfg. Co. v. Ford, 3 Cir. 1913, 203 F. 707, 709-710. However, whether a name has come to indicate the invention and constitutes its generic description is one of fact, to be proved by the evi- dence. President Suspender Co. v. MacWilliam, 2 Cir. 1916, — ' 238 F. 159, 163}°Ross-Whitney-Corp. v.‘Smith Kline & French Lab, 9 Cir. 1953, 207 F. 2d 190, 194-195. ° It has been said that the law is not made for the pro- tection of experts but for the public—that vast multitude, which includes the ignorant, the unthinking and the credulous, who, in making purchases, do not stop to analyze but are governed by appearances and general impressions. g@~ Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir. 1910, 178 F. 73, 75; J. N. Collins Co. v. F. M. Paist Co., D.C. Pa. 1926, 14 F. 2d 614, 615-616; Baker v. Master Printers Union of New Jersey, D.C. N.J. 1940, 34 F. Supp. 808, 810-811; Stork Restaurant v. Sahati, 9 Cir. 1948, 166 F. 2d 348, 359; Plough, Inc. v. Kreis Laboratories, 9 Cir. 1963, 314 F. 2d 635, 645; _8 Callmann, Unfair Competition and Trade-Marks, 2d ed. §81.2. This is not to say that trademark rights of manu- facturers or vendors selling to experts are unprotected but / a B-7 a the general principles of law are applied ‘in the light ‘of the character of the article, the use to which it is put, the. manner in which it is purchased, and the kind of people — who ask for it. Whether the class of buyers is sophisticated is a matter of importance in deciding the question of prob-. able confusion. Pyle Nat. Co. v. Oliver Electric Mfg. Co., 8° Cir. 1922, 281 F. 632, 635; Everlasting Valve Co. v. ‘Schiller, D.C. Pa. 1927, 21 F. 2d 641, 643. But the mere. fact that those ordering a preduet may be discriminating technicians does not of itself insure against the likelihood of confusion ; being skilled in one’s own art will not neces-. sarily preclude confusion if the similarity between the marks is too great. Compare, Bayer Co. v. United Drug © Co., D.C.N.Y. 1921, 272 F. 505 (defendant enjoined from using the trademark “Aspirin” in sales to chemists, physi- ‘© “cians or retail druggists but -allowed to sell under that. name direct, to consumers because as to them the word © meant the, article and not the source of manufacture) ;_ Morgenstern Chemical Co. v. G. D. Searle & Co., 3 Cir. 1958 253 F’. 2d 390 (Mictine dispensed only on physicians! Tie. scriptions was confusingly similar to Micturin which Was also dispensed on ‘physicians’ prescriptions but was for an entirely different ailment) ; Wincharger Corporation v. Rinco, Inc., C.C.P.A. 1962, 297 F. 2d 261+{powér supply equipment) ; Marks v. Polaroid Corporation, D.C. Mass. 1955, 129 F. Supp. 243, 273, aff. 237 F. 2d 428 (sale to motion , picture distributors). As a basis for any relief, the plain- tiff must prove that the, buying public is likely fo confuse ny, the goods of the plaintiff and defendant, which is a question _ of fact for the district court to decide. John R. Thompson Co. v.' Holloway, 5 Cir. 1966, 366 F’. 24 108, 113. _ With these principles i in mind we turn to the plaintiff's contentions on its appeal. Many points are raised and , argued at length but these boil down to purely questions of - ee BS . fact... The first issue raised ies the pleadings was whether the’ plaintiff had a trademark for which it was entitled to. , legal protection in the use of the name “Roots” to desig- _ “nate its pumps, blowers and compressors ‘incorporating the ‘ ". apritieiple disclosed in Roots’ Patent No. 2369. This the district court answered. in the negative. The second issue | raised was whether the use of “Roots” by the defendant in advertising Heraeus’ pumps operated-as a palming off of _ the defendant’s goods as those of the plaintiff or was likely- to’ cause confusion in the minds of the consuming public. , This was also answered in the negative. The plaintiff says that the finding of the di istrict court ‘that “Roots” was generic is dearly erroneous, that the district court erred in failing to find that the defendant’s use of “Roots” was likely to cause confusion, deception and mistake, and that the plaintiff’s witnesses unequivocally showed that “Roots” is regarded as a trademark, thereby ~ establishing a secondary meaning for that term. The chief attack by the plaintiff on these findings is ‘as to the weight which the trial judge gave to the defendant’s expert and. documentary evidence. The plaintiff contends that the trial judge should have given more weight to the plaintiff’s wit- nesses and experts as to the meaning of the word “Roots” to the purchasing public and should have answered this - question and the question of the likelihood of confusion in the way testified to’ by those witnesses. The evidence was sharply contradictory and the trial judge did give control-. ling significance to the, defendant’s evidence. It is settled law, however, that the question of credibility is peculiarly for the trier of fact. An appellate tribunal will not redeter- mine the credibility of witnesses where, as here, the trial judge had the opportunity to observe their demeanor and | to form a contlusion. Rule 52(a), Federal Rules of Civil Procedtire; Graver Mfg: Co. y. Linde Co., 1949, 336 U.S. ‘B-9. 271, 274-275; Smith v. ‘Mel.ane, 3 Cir. 1949, 174 F. 2d 819, 821; Q-Tips, Inc. v. Johnson & Johnson, 3' Cir. 1953, 206 F. . 20144, 147; Marks v. Polaroid Corporation, 1 Cir. 1956, 237 .. ” F. 2d 428, 435. Upon a-careful review of the record we are constrained to conclude that the findings of the district _ ' court are amply supported by the evidence. ; With the controversy as to these issues of fact thus resolved, the matter should be ended insofar as plaintiff’s appeal is concerned. But the plaintiff contends that the i _ district court erred as a matter of law. To. these conten- tions, therefore, we now turn. -” The plaintiff says that the district court etic’ as a "matter of law in its application of the Singer-decision to the present facts and that the court: misapplied the test of the | Bayer Co. case. In this regard, the district court stated: &> “Where, during the life of a patent, a name, whether — it be arbitrary or that of the inventor, has become the identifying and genéric name of the thing pat- ented, this name passes to the public with the expi-- ration of patent. Singer Mfg. Co. v.. June Mfg. . Co., 163 U.S. 169, 16 S.Ct. 1002, 41 L. ed. 118.. How- _ ever; the mere expiration of the patent covering the thing patented does not cause the name of the thing to pass, along with the teaching of the patent, into the public domain. The test is’ whether the name of the patented thing has become generic, that is, whether the name of the patented thing has come to mean primarily | what kind of thing it is, rather than that it comes from . a single source. The test for deciding whether a name. has become a generic title of a product is ‘What do the buyers understand by the word for. whose use the par- ‘ ‘ ties are contending?’ Bayer Co. v, United Drug Co. 2 Cir. 272 F.505.”- 267 F. Supp, page 969. The plaintiff’s. main argument. is that it is crucial “7 the application of the Singer decision that. genericness be We B-10 proved to etint during the life of the one we ‘i the patent, which in this case would be for the period ending in 1874, and that the documentary evidence introduced by the defendant bearing publication dates preceding 1874 _ failed to prove that the name had acquired a generic mean- ~ ing during the life of the Roots patent. TWle weight to be _ given the evidence of this nature in the case was for the district court and its findings adequately’ answer the ques- . tion of fact raised by the plaintiff whether “Roots” had become of generic significance during the term of the patent. - Regardless of this, however, the narrow construction which © the plaintiff seeks to place upon the rule laid: down ‘in the. Singer decision cannot be accepted. Wader the particular facts of that case, the Supreme Court decided that, the Singer name had become generic as a description of the product patented during the term of the patent and hence ~ the name passed to. the public with the expiration of the . patent. But we do not read the Singer‘decision to hold that only because the Singer name had become generic before - the expiration of the term of the patent did the name pass into the public domain. The theory underlying the Singer doctrine is stated in the Restatement of -Torts, .§ 735(1), thus: “A designation which is initially a trade-mark or trade name ceases to be such when it comes to be generally © understood as @ generic or descriptive designation for the type of goods, services or business in connection with which it is used.” Comment b thereto further states: “It is.not by the expiration of the patent or secret, but by the change of meaning in the market, that such a designation ceases to .. be a trade-mark under the rule stated in this Section.” The \ nub of the issue is whether a name still indicates exclusively = _ _. the source or origin of manufacture of [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385604_0103%3A1. Public record. Not legal advice.