Petition for Writ of Certiorari — Wolfe v. National Lead Co. (No. 734)

FILE COPY. - . ’ FILER

i CEB 45 1980

-) Iu the Supreme Coby! |

Xd | OF THE | ae a

«i S United States -

Octoner Tenn, 1959° oe

: No 734

Bern arb Mo Worrr and FPrepegien J. |

DANNENPREESER, ifviduals And. eo

partuers, dome business under the

hates and styles Dutth Paint Corn

pany and ** Mamniny, Mitehell Paint ?

Company.” ; yh ‘ Petition rR, |

Vs.

- iene

NATIONAL Lexy Company, ant

al corporation Coane Res por wh,

‘PETITION FOR THE WRIT OF CERTIORARI

to the United States Court of Appeals

~ for the Ninth Circuit ,

‘CVn loprr,

: . : Jobe Russ Bu ry

Sa berats

: Attornen for Petitioners.

:

Prep LECEN BERGER,

2 Russ Boildany

San Francisco t. Califgurmia

yr Cortipne I for Petition Me.

Ta rs eter renin

Subject Index

‘ Citgtions to opinions below’ ..2..... 6. .cecceeeeeeneeeeenes 3:

" Quéstions presented ......:..0c..ceeeeeeees PUA a Ree Pera eS

- Jurisdiction Drea res tte iecs sme eakaskies pina eves 7

Statutes RE Wienke Piss otien sens caeusees ee ca ae

Statement of. PSE a ccdccsens sec eeceeeeeweneecs cere 4

Reasons for Granting the writ eg RS re RRS oe OE SE WwAeR s

_Conelusion Litwaseadees Fainuknicnwieds Seana taek sadense OB

ae > | ere

. Appendices: .

a A. Proceedings in Lower Courts (separately bound). .,

B. . Abstract of: Record re uses of word “Dutch”. |

C. Excerpts from \Webster’s New international Dictionary.

D. Dollar ‘Valuation of US. Imports of Pigments, Paints °

and Variiishes, from The Netherlands, 1902-1958.

/

Table of Authorities Cited»

: : Cases . |

- Altoona Theatres v. Tri-Ergon Corp. (1935) 294 U.S| 477° 20.

Armstrong Co. v. Nu-Enamel Corp. (1938) 305 US. aaa ..21, 22

Champion Plug Co. vy. Sanders (1947) soe US S98 ...:... — we

Columbia. Mill Company v. Aleorn (1893) 150 U.S. 460. ‘

eee Renceesesabesensesenetssersescccccgmscss MAB, 12, 21

Corbin v. Gould (1890) 133 U.S. 308 ....... png HOP Ee 10, 11, 18

_) Hafnilton Shoe Co. v. Wolf Brothers (1916) 240 U.S. 251 .. 3, 21

ii ‘. Taste or Auruorizizs Crrep .

Kellogg Co. v. Nat. Biscuit Co. (1938) 305 ce El ey ee

“Menendez v. Holt (1888) 128 U.S..514 ..........8...6. pile

Mercoid Wo. v..Mid-Continent Co. (1944) 320 U.S. 661...

Mishawaka Mfg.Co. v. Kresge Co. (1942) 316 U.S. 208 :.

~ Muneie Gear Co. v. Outboard Co. *(1942) 315 U.S, 759 ....

Panama Railroad v. seine Shipping Co. (1897) 166 US

WS axe dey ce hin ttesnee sens sedadeehens VAdouadneleeties

Paramount Corp. v. “Dr Ergon Corp.: (1935) 294, US. 464°:

eT v. Eisner & Mendeloon Co. (1900) 179 US. 19.

~ Saxlehner v. Wagner (1910) 216 U.S. 375 .............2..

Se hriber Co. v. Cleveland Trust Co. (1938) 305 U.S. 47 .... |

Smith v. McCullough, (1926) 270 U.S. 456 ..... a, ‘inde bens

Standard Paint .Co. v. Trinidad Asph. Co. (2982) 220 US. |

" ‘446, 305 U.S. 335, footnote Wo... 2... tiie eee eee. 11,.13,21.

Straus v. “Notaseme Co. (1916) 240 U.S. 179 ..... A eveuas

Toledo Co. v. Computing Co. (1923) 261 US. 399 Ree ee

United Drug Co. v. Rectanus Co. (1918) 248 U.S. oe: Faaaan

* United States v. Denver & R.G.R.R. (1903) 191 U.S

Wolfe et al. doing. business’as Duteh Paint Co., ‘ete. v. Na-

tional Lead Co., November 7 i, 1955, .390 U, 3S. Me badas kee 2,19

He -%

y ae

as _ Statutes ae |

rade-mark Act of 1905 as amended .......: 4 s+ee Eb ones ‘4,1:

Trade-mark_ ae § ROR pe pearems Sane ce wie

ow

‘Rnited State

~ Ocroser Term, 1959

No.’ -

BeRNarp M. Wotre and FRreverick J.

DANNENFELSER, ‘individuals and co-

_ partners, doing business under the

‘names and styles ‘‘Dutch Paint Com-

pany”’ and ‘‘Manning-Mitchell Paint ‘

_ Company,”’° - Petitioners,

Vs.

NationaL Leap CoMPaNY, |

a corporation, Respondent. 7

PETITION FOR THE WRIT OF CERTIORARI

to the United States Court of Appeals

~~ for the Ninth Circuit

ol

Petitioners pray that the writ of certiorari. issue

to’ review a final judgment ofthe United States Court’

‘of Appeals for the Ninth Circuit entered on its Docket

No. 16157.0n November 27, 1959; and to review. an

s

Iu the Supreme Court -

U

t e..

jntiitiniibaan judgment of ‘the United States Court

of Appeals for the Ninth Cireuit entered on its Docket

No. 13737 on May 17, 1955. Petitioners further pray _

for a reconsideration by this Court of the denial of

“4

-their petition to review the. interlocutory —judement---—

4

-entered- May 17, 1955 (October term, .1955, Wolfe et. ~

al., doing business as Dutch Paint Co., ete., v. National

Lead Co, November 1, 1955, 350 U.S. 63):

CITATIONS TO OPINIONS BELOW

The Distriet Court made-no. opinion on the merits

: ;

-of the éause. Its findings of fact and conclusions of

law (RA. 62-84)! are unreported and are reproduced _.

in Appendix A, pages 2-23. The interlocutory opinion

of the Court of Appeais is reported in 223 F.2d 195.

. and is reproduced in Appendix A, pages 26-49. Fol-

lowing remand of the cause pursuant to the interloc Me.

tory opinion of the Court of Appeals, the. Distriet

Court made two opinions; the first (RB. 35-52)? is

reported~at—156_F.Sypp. 883. and is reproduced in_.

Appendix A, pages 53-68, and the second ¢RB. 53-72)

is unreported and is: reproduced 1 in Appendix A, pages

69-75. The final | ple - the Court of Appeals ( Ri.

433-440) is reported in 2 2 F.2d 867 and is re sore

in Appendix A, pages sip

‘The record references (RA: _) in this petition refer to- -

the pages of the record ori Apeeal No. 13,737 before this Court

‘ in the Oetober term, 1955, No. 357.

2The record references (RB ) in this petition refer to.

the pages of the reeord on: Appeal No. 16,157 aatom this Court

on the instant transeript.

a)

JURISDICTION

The final judgment of the. ‘Court of heseiin was

erttered on November 27, 1959 (RB.441). J urisdiction

" of this Court is invoked under U.S. Code, Title 28, -

_-—Seetidn 1254(1). ~ALurisdict tion of: this Court ovét the

initerlgcutory judgment is based - ‘upon Keltogg Ogg Co. ve

' Nat. Biscuit Co. (1938) 305° U.S. 111, 115-116;. Smith

‘. McCullough (1926) 270 US. 456, ‘461; Hamilton

Shes Co. v. Wolf Brothers (1916) 240 U.S. 251, 257-

258; United States v. Denver & R.G.R.R. (1903) 191

_ U.S. 84, 93; Panama Railroad v. Napier Shipping Co.

(1897) 166 U.S. , 280, 283-284; and dictum in. Toledo ,

-Co, v. Computing. Co (am) 261 U.S. 399, 418.

Se

QUESTIONS PRESENTED

| 1 Does the use of the trade-mark “Dutch Paint”.

and the trade-name ‘Dutch Paint Company” cégsti-

tute infringement of, and unfair competition with, the

trade-mark **Duteh Boy’? | |

2. Cana person be held guilty of fraudule nt adop-

_ tion of a trade -mark and a trade- -name when .

(a) the trade -mark and trade-name sage were

astablished by his predecessor a number of years he-

fore*he acquired the business in question ;

on

?

“

(b) his attorney had given him an opinion that ame: :

conduct was law ful;

(e). the attorney Sei the claimant, had given the

claimant an opinion that such use of the trade -mark

| and trade- -nhame was lawful; and rae

STATUTES INVOLVED

Act of February 20, 1905, é. 592, Section 5, 33 Stats.

724, at 726,sas amended by the Act of March 2, 1907, «.

2573, 34 Stats. 1251; as amended by the Act of Febru-

ary 18, 1911, «. 113, 36+Stats. 918, at 919, as amended

by the Act of January 8, 1913, ¢. 7, 37 Stats. 649, which .

provides ‘without substantial change ee the

various amendments of Section 5 '

“* * * no mark which nit ** * merely in

words.or devices which are descriptive of the |

goods with which they are used,‘or of the char-

acter or quality of such goods, or merely a geo-

graphical name or term, shall be registered under °

the terms of this Act:° °°.” ;

“Act of July 5, 1946, ¢. 540, ‘Mection 49, 60 Stat. 446:

, “ Nothing heeelis [in this chapter] shall ad-

versely, affect the rights er the enforcement of

rights in marks acquired in good. faith prior to

the effective date of this Act [July 5, 1947].”’

_- STATEMENT OF THE CASE

Pe ile brought a civil action for declaratory.

judgment against responde nt alleging that they and

their predecessors had been engaged in the business of |

manufacturing and selling paints and paint products

since as early as August 1941; that they had employed

$

4

(d). a United States District Court pa held that mts

his conduct was law ful? ' ; :

'

®

5 ,

- the trade name “Duteh Paint’ Co.’ ” and the ¢ the trade name

‘“Duteh Paint’’ in in conducting their business; and that

_ a controversy arose from certain notices of infringe-

ment which respondent sent petitioners charging them

_. with ‘infringement of United States Trademark Regis-.

tration No. 351,264 issued October 26, 1937° for’ the ©

. trade-mark ‘‘ Dutch Boy” (R.A. 3-12). Respondent, in

ae

a counterelaim, charged petitioners’ with trade-mark

} infringement and unfair competition (RA. 15-20).

‘The ‘trial before the late Hon. Herbert W. Erskine —

~ took 25 court days (RA. 62, App. A, 2). The. record

” comprises 2426 printed pages (RA. 88-25 13). There:

— were approximately 3,000 pages of typed. transcript

and approximately 450 exhibits (RA. 2515).

After briefing but hefore oral argument Judge Er-

skine passed away (RA. 2514) and the parties by stip-

ulation. submitted the cause on the original record for

decision by the Hon. Edward | P. Murphy (RA. 63,

App. A 3). Oral arguments on this record. took six

court days (RA. 63, App. A 3).

Upon this extensive record and these complete argu-—

ments, Judge Murphy granted petitioners the declara-

tory judgment for which they prayed and disinissed

respondent’s counterclaim (RA. 84-86; App. A, pages

24-25). This judgment was supported by detailed find--

ings of fact and sate ara of law AS A, 7 a

_A, 2-23), - 7

fo

LP,

° Upon review, the Court of Appeals refused to follow

the findings of fact of the Distriet Court: made ae

own fact determinations; reversed the judgment of the |

str

6

District Court; and remanded the cause to the District

Court with dinections to dismiss the petitioners’ com-

- plaint, to grant. the respondent an injunction, to pro-

ceed to take an accounting of the petitioners’ profits,

and to determine the respondent’s damages (RA. 25: a

2548, App. A 26-47; RB. 29-31, App. A'47-49). 7

“After having ordefed an accounting, the District’

~ Court entered judgment in favor of respondent and

against petitioners in the sum of $239,457 86 (RB. 72-

73, App. A, 76) representing profits in the sum. of |

$178,657.86 and attorneys’ fees in the sum of $60,800

. (RB: 59-60, App. A, 74-75). The. Court of Appeals

affirmed (RB. 441, App. A, 87).

7 his petition seeks’ review of the final judgment of

~ the Court of Appeals as well as the interlocutory pro-

ceedings leading up to the entry of judgment.

| _ REASONS FOR GRANTING THE WRIT

Petitioners on May 10, 1946, bought the Dutch Paint

‘Company, a small paint factory in San Francisco. At

the time of this purchase, Dutch Paint Cémpany was °

’ producing and selling ‘products: under the “Dutch”

label (RA. 65, Finding. 10, App. A, 5-6). The prede-

cessor Company Was an established business at the time

petitioners acquired it. It had heen in existence since

“March of 1941 (RA. 495). ‘It registered in the ‘San

Francisco Recorder, a local legal paper, as the Dutch

Pe . \ : - .

\

\: ae

aad

are :

age eo

. Paint Company j in neti of 1941 (RA, 495). It advers

tised continuously i in both the alphabetic and classified "he

sections of the San Francisco Telephone Directory —

- commencing With the August, 1941 issue (RA. 961:

_ 964). When petitioners bought this business, it was

producing about 100 gallons of *‘Dutch’’ paint a day

_. (RA. 483) and it had a number of established custom-

ers (RA. 479-480, 628-631). ae

Petitioners continued the “Duteh”” paint line which

they acquired. until prohibited from so doing by the

’ order of the Court of Appeals (RB, 212). Petitioners’

sales in Dutch Paint and their profits as determined :

by the District pout are as follows (RB. 60-72) :

Year Ending e Gross Sales - “Profit -

April 30, 1947» $126,743.00 °$30,437.28°

- April 30, 1948 «245,830.00 - 6,639.66

Apfil 30, 1949 =”: 431,625.00 - ° 40,217.05

April 30, 1950 515,323.00. 44,867.20

Pa April 30,1951 ~ 549,021.21 —«69-765.35—s

April 30, 1952 363,167.12 + 12,853.98.

- April 30, 1953 292,501.30 10,954.28

April 30, 1954 | 180,540.75; 1,258.10

April 30, 1.955 181,663.37% . 2,138.50

April 30, 1956 - ~~ 51,144.08 ©. 28,547.11

Totals | —- $2,937,558.83- $109,637.21 ~

‘The record discloses and the District Court and the

Court of Appeals both found that respondent had used

“a “*Dutch Boy” trade-mark long prior. to petitioners’ *

commencement in the business (District Court Find-

3The figures in italies represent losses for the years in question.

<a

8 aa es

vx e.

— ings 25-31, dink A, 9-11, Court of Appeals Opinion,

Footnote 1, App. -A, pp. 28-30).

This Court, will note that the only feature common;

to respondent's trade-mark and to petitioners’ terms if '

the singlé word “Dutch” ae

The record discloses ‘that’ the word © ‘Duteh™ had ;

been used in the paint,business by ‘many people eom-

mencing prior to the first use of **Duteh Boy”’ by re-

spondent and continuing at least ‘as late as the first use

by petitioners and .their predecessors of the word

“Dutch’& The Distriet Court so found (Fittdings 3 32-

48, App. A, 11-16) and although .the Court of Appeals

minimized the effect of these. uses, the Court of Ap-

péals likewi ise recognized the-proof of many. such uses

3 (App. AY 42-44, footnotes 14-15). To Savé this Court |

the labor of referring to the voluminous records and

exhibits: petitioners have incorporated an abstract of

the record with respect to these usages as Appendix IS

_ to this petition.

The record further discloses and this Court ean take

judicial notice of the fact that the word ‘*Dutch”’ was

frequently™ysed in a ‘deseriptive and geographical

sense at least as late as 1941 when petitioners’ prede-. ,

» Cessor udopted ‘the trade name *Duteh Paint Com-

pany’ ‘and offered its products for sale, ‘On this issue

: the District Court and the Court of Appeals were: in

accord (District Court Findings 43-46, App. A, 14- 15,

Court of Appeals Opinion, App. A. 34). For the cvi-

venience of the Court the dictionary definitions taker

from W ebster’s New International Dictionary, Second

‘ ° &

“oar .

» 4 : Oa

_ .Edition, copyrighted 1941, are set forth in Appendix

€ attached to this petition. : ee

; This Coyrt can also take judicial notice that the

Netherlands have been substantial producers of ‘paint

products. and that genuine Dutch” paint products

have been imported into this country at all times from

at least as early as 1902 until the present date with the

~ exception of six months during.World War I and with

the exception of a few years during World War LI.

_ This appears from official statistics of the Department

of. Commerce which show that during the period com-

Ymenceing 1902 and ending 1958 a total of. more than

$23,000,000 of paint preducts have been imported -into ne

the United States from the Netherlands. For the con-

venience of the Court a tabulation of the statistics -

_ taken from the pertinent official government reports is |

appended to this petition as Appendix D.

This case is unique in judicial annals. It is the first.

_ and only repotted decision known to counsel’in which

a composite trade-mark includjng a descriptive or geo-

graphi¢ word commonly used in the trade and tnpro-

tectable per se has been held to grant a monopoly over

the otherwise unprotectable word per se. When valid-

_ ity of a mark depends én its difference frc.a the com-

‘mon property ef the trade, that difference should not

he ignored in adjudiéating infringement and unfair

‘competition. -

Specific reasons for grantiiig writ a

° . : bi eer a :

l.. In granting respondént a trademark and tradé

hame-monopoly ever the. word ‘Duteh"’, the interloe- . ~

\;

oD ew: a

‘ ee GS,

utory decision of . thoglourt of Appeals is in conflitt

a. with Columbia Mill Company ree: — 150

U.S. 460. ..

First} the “record. disclosés and_ the Distrigt Court,

found that when respondent first adopted the ‘* Dutch.

_Boy™ mark in -1907 for white lead ‘that the word

**Duteh’’ had ‘already been appropriated by others in

the paint field in connection withthe sale of competi-

tive products’ (Findings 32 and, 34; App.’ A, 11-12).

Ly the time that respondent: later expanded its use of

thé trademark ‘*Dute h Boy” t¢ prepared’ paints, the

word **Dutch’’ had been adopted Hy a number of addi-.

tional competitive. businesses. The Court of Appeals

did not find any of these findings clearly erroneous,

Since the word ‘Duteh” had already been appro-

priated bv “the trade at the time respondent first en-

ployed it, the decision of the Court of Appeals is in

square contlictawith Columbia Mill. Company v. Alcorn

(1893) 150 U.S. 460, There the’ Court pointed out,

“page 464: = : ‘

“* ** The word- ‘Columbia’ ‘a having been tees pre:

viously appropriate «l anidl* used on “barrels and

sacks Of flour; was not subjeet to exelisive appro-

priation thereafter hy the complaitiant, so as to

‘make it a vid trademark such as the law will

recognize and, ain taal 7

At page 463, ‘the Court adopted Corbin -v. Gould

pe (1890) 133. U.S. 308. In that case this Court consid:

ered a composite mark comprising the word “Tycoon”

and a diamond shaped order. The word *Tyeoon,”’

‘like the ward * ‘Dute he” , had been used in the trade, —

Ss

11

but the composite mark had not been used. At page

314, this Court said:

7, 60.0 © 7 (the word “Tycoon”) belonged to the

publie, as the common property of the trade, and,

’ therefore. was not subject = ) appropriation by any °

, one person.” 1 | : :

Second, the word “I dutch” is incapable of exclusive

appropriation by anyone. It is geographical of the:

Netheflands, dt- is ‘descriptive of imports fre. the —

Netherlands. It is descriptive of various process's and

colorings commonly used in the paint field. It has been

in constant use by others to a greater or lesser extent.

_ in the paint field prior to respondent's adoption of

“Dutch, Boy” arid continuously thereafter up to and _

including the denial of the original petition for,cer-

' tiorgri in this ease’

In Columbia Mill Company v. Alcorn (1893) 150

U.S. 460, this Court held, page 464:

‘Second. The word ‘Columbia’ is not the subject

of. exclusive appropriation under the general rule

that the word or’ words, in common use as desig-

nating locality, or section of a country, cannot ‘be

“appropriated by anyone as his exclusive trade-

mark.”’ |

Ina somewhat related sense, this Court i in. Standard

Paint Co. v. Trinidad Asp’ Co, (1911) 220 U.S. 446,

struck down a trademark for the descriptive word

“-Rubberoid”. At page 453, this Count quoted the

_- opinion. of the Court of Appeals, which said:

“A public right in rubberoid and a private’ mo- —

e 'endpoly of rubberoid cannot cdexist.”’

: 12 -

Similarly, it. is submitted that a public right -in

Dutch” and a ) priv ate monopoly of ~ Daten * eannot

coexist.

The rule of Columbia ‘Mill Company was promul-

gated into ‘statute by the. Act. of February 20, 1905

(quoted tis petition, -page 4) which was in effect

when petitioners’ _predecessors first began to use the

expressions ‘Dutch Paint Company’? and **Duteli

Paint”. ._ a Seek ‘

Petitioners submit that this square conflict on two

independently supportable grounds between the deci-

- sion of the Court of Appeals and the decision of this

Court in Columbia Mill Company should be resolved

by the grant of the petition.

2: In granting the respondent unfair competition |

~ relief. because of petitioners’ use of ‘*Dutch Paint”

* and *Duteh Paint Company ’*the interlocutory deci-

sion of the Court of Appeals is in conflict with Stand-—

ard Paint Co, v. Trinidad Asph. Co. (1911) 220 U.S.

6. | : |

We have shown above that the word ‘Dutch’ is net

entitled’ to technical trademark protection hecause re-

‘spondent was not the first appropriator of the term —.

:* arid because the term is both geographical and deseripi-

tive. Nonetheless the Court of Appeals awarded the

‘respondent injunctive relief f and, an ae counting based

upéri the theory of unfair competition.

. This Cottrt held that sucha result was 3 improper in

Standard Paint Co. wv. Trinidad Asph. Co, (1911) PH)

U.S. 446. The Court considered **Rubero id’* versus

13

“RubberO”. After first holding that the sii were .

# descriptive aind thus. incapable of being a valid trade-

mark, this Court turned to the unfair competition as- -

pects and held ‘that there was no unfair pe. :

At page 461 this: Court stated :

~ ieee ® Te only imitation by the Asphalt Coni-

pany of the roofing of the Paint Company is that

which exists in the use of the word ‘ rubbero,’* and

this only by its asserted resemblance to the word ©

j ‘ruberoid’. To prechide its use because of such

resemblance would be to give to the word ‘ruber-

~ oid’ the full effect of a trade-mark, while denying »

‘its validity as such. It is true that the manufac-

turer of particular goods i is entitled‘ to protection

_ of the reputation they have acquired against un-

fair dealing, whether there he a technical trade-

mark or not, but the essence of such a wrong con-

sists in the sale of the goods of one manufacturer

or vendor for those of another. Elgin -Nationa!

Watch Co, v. Illinois Watch Co., supra. Such a

wrong is not established against the Asphalt Com-

pany. It does not se the word ‘rubbero’ in such a‘

way as to amount toa fraud on the public.”’

Similarly in the case at bar the only similarity; be-

tween the petitioners’ labels and the’ respondent's

labels is that which exists in the use of ‘the word

‘Dutch’? To precludé its usé beeause of such resem-

blance is to give the word **Dutch”’ the full effect of a

trademark, while denying its. validity as. such, |

This: square. conflict between. the decision: of the

“Court of Appeals: in granting unfair competition re-

_lief with respect to the geographieal and deseriptive

word ** Dutch’ and the decision of this Court in deny-

2 oN

”“

.

oe ae

ing unfair competition relief with respect to-the de-

‘seriptive word ‘‘RubberO”’ should be resolved by the

@ «

granting of the petition,

3. In awarding respondent an accounting of peti-

tioners’ profits.and in assessing profits and attorneys’

fees against petitioners, the Court. of Appeals has so

far departed: from the accepted and usual course of

judicial proceedings and has ‘so far. sanctione d-such a

departure by the District Court as to eall for an exer-

cise of this Court’s power of supervision.

The Court of. Appeals in its interlocutory cpinion

justified the award of profits by its determination that”

~ “there Was a deliberate and intentional design to cause’

. confusion and mistake and to deceive ‘purchasers

(Appendix A, p. “46). In its judgment on the mandate:

the District Court recited specific ally that petitioners

were “guilty of fraudulent conduet” (Appendix <A, p.

50). a Stal

The District Court entered a final judgment against

petitioners for their profits in the amount of $17s,-

657.86 and attorneys’ -fees in the amount of $60,800.00,

None but the very wealthy could face such a judement

without bankruyfAey. | : .

The undisputed facts in this record preclude such a

conclusion and demonstrate that respondent has been

given a windfall to petitioners’ detriment and: that

_ petitioners have been and are being deprived of their

property without due process of law.

‘The - record discloses without controversy that the

business which petitioners, acquired in May, 1946 was

~

15

‘a going concern «which had -used the trade name

“Dutch Paint .Co.’”’ continuously since August, 1941 -

(Findings 10-11, Appendix A, pp. 5-6). When peti-

tioners bought this business, it was’ producing a com-

plete line of ** Dutch Paint” (Finding 13, Appendix

A, p.6). : ee"

In the early spring of 1948 petitioners consulted

James*Naylor, an attorney in San Francisco with a.

good reputation for competence and integrity, and

asked Mr. Naylor whether petitioners had a right to

- use’ the “Dutch” label and the name “Dutch Paint

Co."’. Mr, Nay’ or advised petitioners that they had

every right to usé the Dutch name, the Dutch label and»

the Dutch Paint Co. as a trade style ( RB. 257-258).

Although it was unknown to petitioners. at the time,

Mr: Naylor’s opinion was and is:confirmed by respond-

ent’s upper level interoffice memorandum ° from: its

patent department manager to ‘its Pacific Coast mana-

ger in which it was stated (Exhibit ‘151, RA. 806-807) :

“* * * we have no proprietary legal - exclusive |

right to the word ‘Dutch’ in connection with paint

and paint products. ‘Dutch’ is a geographical ©

name, and as such, it is not registrable as a trade-

mark, but jf used exclusively, it may acquire sec-

ondary trademark: significance, However, our

mark is ‘DUTCH BOY’ and we can only enforce

that mark. against ‘others. under. the trademark

laws.”’ \ :

° Mr. Naylor's opinion and respondent’s interoffice

memorandum were further confirmed by the District

Court in the original judgment entered in this cause

on January 2, 1953 ( — ee A, pp. 24- 25).

16

-’ Then, 14 years after the establishment of the busi-

ness and 9 years after petitioners had atquired the

_business, the Yourt of Appeals held that petitioners’

conduct was wrongful from the very beginning when

it reversed the trial court judgment on May 17, 1955

( Appendix A, pp. 26-47): Thereafter and although

. petitioners’ were prosecuting a “petition for a writ of

certiorari to this Court they changed labels as quickly

as the “y could (RB. 212).

Petitioners submit that when the conduct of a lay-

man 1s approved by the advice of competent legal

-counsel and the decision of a federal court, he cannet

soundly be deemed guilty of fraudulent conduct.’ The

fact that a Court of Appeals finds that the opinions of

hoth parties to the litigation are erroneous and finds

that a Djstrict Court is erroneous demonstrates a

‘difference in Jegal viewpoint, but it most certainly

does not follow that the person.is fraudulent in his

conduct, sy he

In the casé at bar it is quite significant that every:

dollir of profits with which petitioners were charged

and for which respondent obtained judgment was

made after petitioners had obtained advice of counse!

that their conduct, was proper.

__ It isa strange rule of reason which subjects a party

to a quarter of a million dolfar judgement, which gives

him no salary for his own efforts in making sales of |

almost $3,000,000, and which os a part of the judgment

charges him with his opponents’ attorneys fees—wher

his own conduct was deemed legal by his counsel, by

his opponents’ counsel, and by a District Judge, when

asc ae

similar conduct’ 1 was held to bee prope by the only

analogous decisions of this Court, and. when a Statute

provides that the word in dispute is unprotectable. to’

anyone. A fraudulent intent shor'1 not be imputed

ex post facto on such.a record.

Even in“malicious prosecution cases, advice of coun-

sel* and a fav orable decision® are held to be conclusive

on the issue of good faith and probable cause for

questioned conduct. There is no reason or logie why a

user. of a common trade word should be singled. out —

for different treatment and his property taken away |

from him by a back breaking: judgment.

“4. This petition should be granted in the public

interest. The mark which respondent edopted is a

. composite mark covering the unitary.thought ‘Duteh.

Boy”; the trademark registration granted respondent

a prima facie monopoly to that composite mark; and

the advertising expenditures and sales of respondent

were concerned with that composite mark. Now the

malicious prosecution in ALI, Rest.,. Torts, See. 666; Psinakw v.

Psinakis (3rd Ci¥. 1955) 221 F. 2d 418, 424; Seaboard Oil Ca. v.

Cunningham (5th Cir, 1931) 51 F. 2d 321, 325, cert. den. .284

U.S. 657, 76°L. Ed. 557, 52 S.Ct. 35; and Cragin v. De Pape

(Sth Cir. 1908) 159 Fed. 691, and to claims for attorneys’ fees

in patent infringement actions; .irtmosre v. Dayless Mfg. ce. .

‘(7th Cir, 1953) 208 F. 2d 1, 6-7, cert. den. 347 U.S. 920, 98 L.

Corp. (Del. 1951) 99. F2 Supp.- 803, 808, rev'd on other grounds

195 F. 2d 971, cert. den. 344 U.S. 844, 97 L. Ed. 657, 73'S. Ct. 61.

See also Stewart v. Sonneborn {LS79) 98 U.S. 187.

5A favorable decision by the initial fact finder has — ‘n held

to be an absolute defense to actions for.malicious prosecution in

cases such as Sheffield v. Cantwell (7th Cir., 19388) 101 F. 2d 351:

352; “Engleman ¥. Progressive Machinery Corporation ( Mass.,

— 156 F. Supp. 46, 47-48.

‘Advice of counsel.has been said to be a defense to actions for.

| Ed. 1075, 74 8. Ct. 518;. and Packwood: v. Briggs & Stratton, -

Aaah Ne

Court has deprived the petitioners of the right to use,

not that composite mark, but the unprotectable indi-

vidual element: ‘Dutch’? used in that mark.

| in Corbin v. Gould (1890) 133 U.S: 308, this Court

_ referring to the composite mark comprising the word

*Tyeoon’’ and a diamond shaped border, said, page

314: ak: ‘! :

** Even. coneeding that the complainants may

claim.a tr ademark for the combination of the dia-

=P: mond and the words ine ‘losed, in it, as deseribed

in their application te’ the, Patent Office, there

Was, upon the authorities above cited, elearly no

trademark’ in the word ‘Tycoon’ ‘considered by”

a. 32 3 a

-The result here is quite analogous ty the efforts of

a patentee to extend his monopoly to the individually

unprotec table elements of a combination patent.’ Ti

paraphrase Mercoid Co. v. Mid-Continent Co. (1944)

320 U.S, 661, 667 | '

—The ‘tredioniath is fou a contiolingition only. ‘Since é

none of the separate elements of the combination.

is claimed as the trademark, none of them when

dealt with separately is protected by the trade- .

mark monopoly, Whether ‘the parts are new or

old. the combination is the t trademark and it is.

distinct from any of them. If a limited monopoly

over the word Dutch’? were allowed, it would

not be a monopoly accorded trademark usage x

the trademark laws but a. monopoly born of

commercial desite to avoid the rigors of - el -

tition fostered by the anti-trust laws. If ‘such

an expansion of the trademark monopoly: could -

he @ffeeted by decree, the integrity of the trade-

mark system would be seriously compromised.—

19

ieaiainiied has now r extenited this semnsiale'« to the

‘ publie in general. ‘This situation has become manifest

through respondent’s conduct following denial of the’

earlier petition for the writ of certiorari in Wolfe et -

ai., doing business as Dutch Paint Co. ete., v. National

Lead Co, (1955) 350 U.S. 883.

When respondent first questioned petitioners’ use of

the word ‘Dutch”’, it made an investigation. of other

names containing the ,word ‘Dutch’ listed in the --

trademark directory of the National Paint, Varnish

and Lacquer Association (RA. 884). It found about

‘thirty, and. as of the date of trial about half of the

names employing the word ‘‘Dutch”’ were still in use

-

(RA, 884). Respondent held its objections to the var-

ious uses of ‘‘Dutch’’ in abeyance until the final out- °

come on the first appeal. (RB. 104). When certiorari

was denied, respondent gathered together its files and. _

“took up again’* (RB. 104). In this same connection -

the record discloses that Charles F, Kaegebehn, man-

: ager of the. patent department of respondent (RA.

695), had counseled res ondent’s Pacific Coast man-

ager on March.17, 1948 mas ** oe you are ina good

position by a show of force to discourage continued

use of this phrase" (RA. 807, Ex: 151). One need not

speculate as to the results of respondent’s use of the

denial of the writ in this case. Of thé approximately:

fifteen users, substantially all of them agreed to stop

using the: ‘word * ‘Duteh™ (RB. 105).

In this way, respondent has lifted itself by sits, own

hoot straps to obtain a virtual trademark Thonopoly

over the word ‘Dutch’. First, it satisfied the Court

- 20

>

of Appeals that there was no connection between the

third party users of .the word ‘*Duteh”. and petition-

ers’ use of the word ‘Dutch’: which would stand in |

the way of .a favorable judgment and decree,.and then

as soon asthe decision of the Court of Appeals had

hecome finalized by the denial of the petition, it- stic-

cessfully obtained agreements of substantially all of

. the fifteen remaining users of the *‘ Dutch’’ expression

to stop using the word **Dutch’’,

Respondent’s monopoly of the word **Duteh” now ”

opérates to the deprivation not only of these petition--

ers, but of the entire public as well. There is no. on¢

left to dispute respondent's monopoly. One would be

foolhardy to do so at the risk of ‘sustaining the con-

tiseatory damages and attorneys’ fees which have been

imposed upon petitioners in this case,

Petitioners submit that the solidification of Fespond-

~ Jent’s umwarranted monopoly over the word ‘ Duteh™

after the denial of certiorari in this ease cries out for

reconsideration of the denial of the original eg? in

this case, just as ‘it did in Paramount Corp, v. Tri-

Ergon Corp, (1935) 294. U, S. 464, and Alteons The-

utees v. Tri-Ergon Cor ». (1935). 294 U.S. 477, wherein

the, petitions were granted (293 U.S. 528) after dertial

(293 U.S. 587) in part’ because of respondent's post

denial coercive trade activittes ( see Petitions for Re-

| hearing: No. 254, pp. 2-6; -N6. 255 and 256, pp. 2-3).

.

Moreover, in view of the fact that substantially all

users of ‘Duteh’’ have now stopped using the word

“Duteh’’, a resulting conflict of decisions is impreb-

able, just as it was in such cases as Sehriber. Co. v.

- ——

Cleveland Trust Co. (1938) 305 U.S. 47, 50; and Mun-

\ 765-766.

- 5. The principal authorities cited by the Couit of

Appeals do not furnish independent t grounds for sup-

porting ‘the judgment. — *

240, US 2 (cited by Court of Appeals, App. A,

pages fn and 34) involves a conflict hetween the

words * nericah Lady” and “The American Girl.”

The aoe” paze 297, distinguished but did not over-

rule Columbia Mill Co. v. Alcorn (1893) 150 U.S.

460. In so doing, this Court stated, page 257:

point. “3

In the case at bar, the mark in controversy is

Columbia“Mill Co. and to * ‘American shoes’’ cited: by

way of example in Hamilton Shoe Company and not

“Dutch Boy” or **The Dutch Man’? comparable* to

dicated in Hamilton Shoe Com pany.

' Armstrong Co. v. Nu- Enamel Corp. (1938) 305 -

U.S. 315 (cited by Court of Appeals, App. A, pate 35)

distinguishes but does noteoverrule ‘Standard Paint

cie Gear Co. v. Outboard Co. (1942) 315 USS. 759,

- Hamilton Shoe Company v. Wolf Brothers (1916)

6. -02 © 2 BP Gh ‘mark here in sinhinntens were. |

‘American shoes* these cases would be quite in *

‘“Dutch”’ comparable to “Cohimbia’ ’ adjudicated in °

‘‘American Lady’? and ‘The American Girl” adju-

Co., v. Trinidad Asph. Co. (1911) 220 U.S: 446 (see

305 U.S. 335, fuotnote 24). This Wourt said, page 3355

In so doing the’ Court said, page 335; &

“* * * Hore we have a secondary meaning to the

descriptive term, *‘Nu-Enamel.’ This establishes,

ihe

Spike ' 22

a entirely apart from any trademark act, the com-

mon law right of the Nu-Enamel. Corporation to

be free from the competitive use of these. words as

a trade-mark or trade name.”

he Armstrong there was proof of secondary meaning

by: virtue of defendant’ s pleading, page 320: .

« ‘Defendant admitted ‘that the name: “Nu-

. Enamei” has come to mean and is understood to

mean, throughout the Unitéd States, including the

State of Illinois and the City of Qhicago, the.

plaintiff and plaintiff's products. only, and? the -

word ‘*Nu-Enamel’’ is a. mark by which the goods

of the plaintiff are distinguished, from other

goods of the same class’;.* * *”’

¢ ,

“Tn the present case Ns meaning of the word

.& “Dutch” is not admitted; in the present case there is

“hi evidence or proof of secondary meaning; ‘and in

the present case there are no findings of fact either by

‘the District’ Court or, the Court of Appeals that

Dutch’ does have secondary meaning. If such find-

ings had been-made, they would have been clearly

erroneous for the reason that respondent was never

the exclusive proprietor’. of the word “Dutch”, and -

for the reason that it introduced no evidence ‘even’ «

tending to show s secomeaty, # meaning in 1941° when peti-

®One of the essential shen ‘to establishing secondary tmean-

ing of a geographi¢al or descriptive term is proof that the pro-

prietor has had at least some-exclusive use of the term. Ellay ,

Stores, Inc. v. Savitz (Pa. 1939) 30 F. Supp. 462, 463; Corning *

Glass Works v. Pasmaatier (N.Y. 1939) 30 FP. Supp.. 477, 482. See.

also U.S. Code, Title 15, Section 1052 (f).

TBoth on reason and authority: the alleged trademark must + have

-acquired a secondiry meaning before the petitioners began to

manufacture and spH their product. Quaker State On 7

a

*s

tioners’ predecessors adopted and began te promote

“Dutch Paint Company” or in 1946, when the peti-

tioners themselvés assumed proprietorship of the -

Dutch ‘Paint Company and. Dutch paint labels, or at

any other time.* | es wee 7

Menendez v. Halt (1888) 128 U.S. 514 (cited by

Court. of Appeals, App. A, page 40) involves a wholly

arbitrary term ‘*La Favorita’’ used as a- brand on

_ flour. This Court upheld the validity and infringe-

_ ment of the trademark as against a former partner.

~ of the trademark proprietor. With regard to a single

_. prior public use of the. mark, : this Court said, page

521: :

“* * * such use was discontinued before Holt &

Co. appropriated the words to identify their own |

‘flour, and there was no attempt to resume it.”’

‘This should be distinguished from the’ case’ at bar

Wherein the public never discontinued to use the word 7

“Dutch” until long after respondent's adoption of

‘Dutch Boy’’ and then only under compulsion from _

respondent. At all times prior: to respondént’s adop: |

tion of “‘Dutch Boy” and. petitioner’s acquisition of

Dutch Paint and Dutch Paint Company, there have

heen one or more users of the word “Dutch.”

Co, v. Steinberg (1937) 325 Pa. 273 280, 284, 189 -Atl” 473, 476,

478; Upjohn Co. v. Witliam. 8. Merrell Chemical Co. (6th Cir.

1920) 269 Fed. :209,- 212-213;. Maveo, Inc. v. Hampden Salés

Ass'n (1948) 273 App, Div. 297, 302. 77 NYS 2d 510,515.

‘Ay late as thé trial of this cause, Charles F. Kaegebehn, manager

of the patent department of respondent (RA. 695) admitted to the -

Distriet Court,

“e.* * the word ‘Dutch,’ as fer as my understanding goes,

~ hasn’t any signifieance in paint, per se.. When one says ‘Duteh «<-

Paint,’ it doesn't mean anything to me, sir.” (RA. 861).

2

D4

United Drag Co. v. Rectanus Co, (1918) 248 US.

9) (cited by Court of Appeals, App. A, p. 44, foot-

note 16) involves competitive uses of the trademark

‘Rex’ in which the. respective parties used the mark

Jn different territories, Petitioner entered a territory

already occupied .by respondent, and complaitfed of

-confusion.: This Court held this to be nonactionable

stating, pp. 103-104: |

“Fre? hatever confusion may have arisen thom

-contlieting Use of the mark is attributable to peti-

tioner ‘§ entry ‘into the field w ith notice of the sit-

—ulition; amd petitioner cannot complaimof this.”

Similarly in the case at bar, whatever confusion has

_ arisen from the Gonflicting uses of the marks in ques-

tion is attributable to respondent’s .entry into ‘the

‘ Duteh” field with notice of the fact that the public

had already occupied thé field. _ Respondent should not.

complain.

Saxiehner v. Eisner & Ridin Co. (1900) 149

U.S. 19 (cited by Court of Appeals, App. ‘A, page

“45) he dd that the pr oprietor of * Hunyadi”’ for spring

water was not entitled té exclusive use of the -word

hecatise, page 36, it ‘‘orce became public property”

This Court held: |

e * * The right, to indry idnal appropriation once

lost is gone forever.’

’

Indeed, in subsequent litig ration involving this same

mark, this ‘Court in Sarl hner v. Wagner (1910) 216

U.S. 375 adhered to ‘its earlier rying and held that

there was no right in the original trademark. proprie-

“ter to prevent the use of the word on artifiéal spring

© | }

e

"25

water not coming from the propritor’s wells.? On-

page 381, this Court stated:

‘“«* * * one is at liberty to refer to a gedgraphical

expression to signify the source of one’s model.

‘“Hunyadi’ at best is now nly a geographieal ex-

. pression in effect.”” ~ |

ee.

. In the case at bar, the farts are even stronger for

petitioners because’ heré respondent never has estab-

lished even a fleeting ‘right to ‘individual appropria-

tion” of the **Dutch’’ name. :

| Straus v. Notaseme Co. (1916) 240 U.S. 179 (cited

by Court of Appeals; App. A, p. 46, footnote 19) does:

not involve a descriptive or geographical term, but it -

involves, p. 182, a distinctive ‘“‘ted square with the

diagonai black band’? which was used both’ by peti-

tioners and respondent. The petitioners were enjoined

from further use of the-mark in controversy but, p.

183, ‘‘so far as the decree chargéd them with profits it

is reversed. $s " This case; therefore, does not warrant an

award of profits for -use of a descriptive or geographi-

cal term.

In Champion Plug iOare . Sanders (1947) 331 US

125 (cited by Court of Appeals, App. A, p. 47), peti. |

tioner rebuilt, respondent's **Champion”’ spark plugs

and used respondent's trademark ‘‘Champion”’ on the -

‘plugs so repaired. This Court affirmed a decision of

s

This ease should govern over. the view of the Court of Appeals

that petitioners* use of the ord Dutch is “not claimed to have

any relation to any product now or ever made in Holland or any

process, color, or other .deseription related to Holland or the *

Dutch.” (App.: A, page 34.) See alsu French Rejiblic v. Sara-

toga Vichy Co, (1903) 191 U.S. 427, 439-441.

26

the Court of. Appeals which denied an accounting, and

“held ‘hat the petitioner was required clearly and dis-

tinetly to mark the plugs ‘‘repaired”’ or.“‘used”’. This |

casé, therefore, daes net support the decision here tey-

dered for review. oO

e Mishawaka Mfy. Co. v. Kresge Co, (41942) 316 U.S.

203 (cited by Court of Appeals, App. A, p. 47) in-

volves a trademark consisting of a+red cireular plug

émbedded in the center of a heel for shoes. There was

no geographical or descriptive significance to the

» mark, and the mark was held to be properly registered

under the Trade-Mark Act of 1905, In the case at.bar,

*buteh’? would not have been registrable under the

Act of 1905, and hence Mishawaka Mfa. ¢ "o. can fur-

nish no support: for the instant decision.

CONCLUSION |

For the foregoing reasons, petitioners pray that this

petition for the writ of certiorari should be granted.

Dated, San Francisco, California,

February 24, 1900. oe ;

+ Respectfwlly submitted,

Cart Horre,

Attorney for Petitioners.

Frep LEUENBERGER,

Of Comnsel for Petitioners.

- (appendix A te seperately bound;

Appendices B, C and D follow)

~~

“ Appendix B . oan

In this appendix, petitioners catalog and abstract

the record with ‘respect to general usage in the trade

of the word ‘‘Dutch”’ in éonnection with the manu-

facture and sale of paint products.

“Amsterdam Oid Dutch” by Great Lakes Varnish

“Works, Ine., Chicago, Illinois. This listing appeared

in the 1947 trademark. directory* for white enamel

(Request 21, RA. 103). This concern commencing in

approximately June 1939 and continuing to date, em-

ployed a label bearing: the words ‘Amsterdam Old

Dutcli’’? on white enamel which it manufactures and

sells. (Request 34(a), RA. 159-160). Exhibit 23 is a

photostatie copy of the ‘‘Amsterdam Old Dutch”

label (Request 34(b), RA. 160). Karla J. Howe, the

President and one of the founders of this firm, testi-

_ fied as to this use (RA. 293-302). Exhibit 75 isa label

bearing the ‘mark “‘Amsterdam Old Dutch White

Enamel” (RA. 294). This is'a label used at the prés-

ent time (RA. 294). The witness identified invoices

dated October 8, 1940, and September 16, 1940 (Ex-

_ hibits 76, 77, 77A, 77B and 770, RA. 295-297). This

_ .Jabel was first used in the late thirties and prior to

-. February 1940, the date of death of John G. Shilvock,

the one who originated this name (RA. 297), This

product was generally distributed in ‘the Middle

Western states (RA. 298). This label is just one. of a.

*The trade-mark directories referred to in this summary are pub-

lished by the: Trade Mark Bureau of the National Paint, Oil and .

Varnish Association. - Sée RA. 177-204.

“i

> good. many products that this firm sells (RA. 299).

This firm is a customer of respondent, and Charles

F. Keegebehn, manager of respondent's .patent de-

partment. (RA. 695) had‘ no reports of confusion as to

the use of this label (RA, 734). This notation is listed

in the 1947 trademark directory (RA. 894).

“Dutch” and ‘Dutch Paint Co.” by North Jersey

Paint-Co., Ine., Passaic, New Jersey. Commencing in

about the year 1930 and continuing until a date sub

sequent to June. 30, 1949, this firm employed a label

bearing the trade style,‘*Dutch Paint Co.’’ and. the

word **Duteh”’ on paints manufac tured and sold by it

(Request 40(a), RA, 167 168). Exhibit 34 is a photo-

static copy of a label employ ed by this concern (RA.

169). Subsequerit to June 30, 1949, 1 respondent pro-

tested to this-user by a notice of infringement (Re- |

quest 40(¢), RA. 169). No reports of confusion were,

brought to. respendent’s attention (RA. 738-740) 7

Charles F. Kaegebehn suggested to this firm that this —

sort of thing was an infringement of our ‘Dutch’

Boy’ trademark (RA. 742); This firm said it had no -

desire to continue the label but the matter was. in

stattis quo (RA, 743-744). Mr. Kaegebehn learned of.

‘this use about the time of the inst’ ‘tution of the present

action GRA. 855-856 ). This firm had some deaiérs: in

"Brooklyn, the Bronx and Bergen County, New Jersey

(RA. 858). This’ firin was one of the i5 oF SO persons

“who agreed to stop using the word *Duteh"’ after the

denial of certiorari in this Case (RB. 105-106),

“Dutch.” in one loins or another by General ‘Paint.

John Lb. Heinric h, re spondents” counsel and secre tary,

.

. Fs

: . :

¥. - , a

‘ . ° ae

. ° oan

identified this as one of .15 various users of ‘* Dutch” -

who agreed to stop using the word Dutch” upon t t!.

denial ‘of the original petition for eertiorant m + this

case (RB..105-106).

**Dutch’”’ in AS form or another by M & B nnibie:

turing Company. This is another of the 15 or so com-

panies who stopped using the word *“dDutch”’ after the

denial of the writ (R B. 105- 106). ” .

-“Dutch”’ in one forns or another by Markelk This i is

another of the 15 or so companies who stopped using

the word “Dutch” after the denial of the writ (RB.

105- -106Y. :

“Dutch”’ in one form or another by Jack Roy. This

is another of the 15 or so companies w ho stopped using

the word Dutch” after the denial -of the writ (RB.

105-106).

“Dutch” in dne fora or-another by Tobias. This is

another of the 15 or se companies who. stopped using

the word “Dutch” after the denial of the writ (RR.

~TH5-106). | fos :

“Dutch Blend” by, Twenticth Century Paint Com-

pany, New York. Respondent: protested this use and

.

negotiated an agreement whe reby they abandone d the ©

mark in 1949. (2A, 2368-2369),

‘Dutch Blue” by Gillespie Varnish Company of ©

Jersey City, New Jersey. Petitioner Wolfe. identified

a color eard he'd had for. about three vears. on the

_inside of which was listed thei quick drying ename!

with the ds signdtion “Dutch Blue’ (Exhibit 126, RA.

I27-w29).

iv

_ “Dutch Blue’ by Pacific Paint and Varnish Com-

pany of Sain Francisco and Berkeley, California. Peti-.

tioner Wolfe also*had a color card making this refer-

ence to the color 52,452 ‘Dutch Blue’ (RA. 527-529,

Exhibit 126). j ae

“Dutch Blue” by Pervo Company of Los Angeles.

Petitioner Wolfe. had a color card three or more years

old at the, time of trial (RA. 527-529, Exhibit 126).

“Dutch Blue”? by Edward Smith & Co., Inc., of New

York, New. York. Petitioner Wolfe also had a color

ecard for this firm’s *‘quick drying ename!”’ indicating

the ‘colér ** Dutch. Blue” (RA. 928-529, Exhibit 126).

& “Dutch Boy”’ by Selby Lead Company. A. Vernon

- - (ireen, Presi lent of Tibbetts Corporation (RA; 2°57)

- identified this as an early use of ‘‘Dutch Boy” on

\ white lead paste. He recollected this as a youngster |

- CRA, 372-373). rh _ -

_ “Dutch Brand” by The Care Lumber Company. ‘Lhis

is another of the 15 concerns who stopped using the

word **Dutch”’ after ‘the de nial of the earlier, petition

for the writ of certiorari (RB. 106).

“Dutch Brand” by The Perry & Derrick Co., Inc .

of Cinéinnati, Ohio. This concern, for a period com- |

mencing about twenty vears ago and continuing ty

_date, has einployed. a label -bearing the notation .

Dutch Brand” in the designation of paint sold by it

(Request 33(a), and answer RA. 158-159). Exhibit

22 is a photostatie copy @f the “Dutch Brand” label

. .

8

Vv.

employed by said concern (RA. 15 9). Ferdinand J.

Derrick, president of this tirm, testified as to this use

(RA. 247-260). Exhibit 56 are samples of labels eur. |

rently used by this firm (RA. 247-248). Exhibits oT ,

and 58 are ne wspaper advertisements (RA, 249-: 250). of

- The dealers zre located within the metropolitan Cin- |

cipnati area (RA, 251). Exhibit 59-is ap invoice (RA.

,252-253). The use of **Dutch Brand". on paints ex-

tended back to 1928 (RA. 253°). The earlier labels.were *

entirely different and featured **Dutch Brand” and |

the mill more prominently than -the current labels

(RA. 254). This firm’s distribution, was a radius’ og

approximately : 20)-miles from Cinvinnati (RA. 254).

‘Exhibit D is a group of labels used on products othe ae

than the ‘*Dutch Brard’’ house paint (RA, 256). Re-

spondent’s Cincinnati branch manager was personally

aware. of the ‘Dutch. Brand’ since 1930 (RA. 263-

204). This firm is a-customer of respondent, and ré-

‘spondent has had noe complaints of confusion arising

out of the ‘Dutch Brand” on paint (RA. 709-710).

‘Dutch Country by Benjamin Foster Company,

Philadelphia, Pennsy!vania. This concern émployed a -

label bearing, the--werds ** Dutch Country” for paint

manufactured and sold by it commencing in the year

1934 and continuing until the year 1942 when it ‘dis-

continued the use of sue ‘+h dabel and such words (Re-

que st 46(a), RA. le -173). Exhibit 36 is a photostatic

copy of A folder éimple: wed by this concern (Request

46(b), RA. 173). This label was still listed in the 1947

@

vi

d

directo y but Charles Kaegebehn had information that .

this firm discontinued the use of .that designation in

about 1942 (RA, 886). |

‘Dutch -ostoay by Fe deral Paint Company, Ine.

33 Rector Street, New York, New York. This concern,

commencing haat the year 1925, and continuing to

date, employed a label bearing the words *‘*Diiteh

Enamel’? to describe an enamel manufactured and

sold by it under its trade-mark, Fedeo (Request 31,

RA. 150-151). Exhibit 18 is a photostiitie copy of por-

_ tions of an advertising folder nsed in sales promotions

_ depicting a can with the ‘Dutch Enamel” label ape

- plied: (Request 31(b), Exhibit 18, RA. 152). This con-

cerm sells its predue ts, including “Dutch Enamek’,

pringipally in states east of the Rocky Mountains (Re:

quest 31(¢), RA. 152), George H. Miles, Vice -Prési-

dent of: the company, testified as to a manufacture

and sale of Dutch Enamel’? (RA, 235 et- seq.). Ex-

. hibit 50 1s an empty can with the name “Duteh En-

amel”’ lithographed thereon (RA, 236-238). The words

- “Duteh Enamel’ have been Cisplayed on such ans

substantially in that form and manner siyce 1925

(RA. 238). E\bibit 51 is-a paper label used wher the.

lithegraphed cans were scarcé (RA. 238-239). Exhibit:

52 is an advertising folder (RA. 240), ‘*Duteh* En-

amel**is available not only in the United States,-but

to any prospective buyer (RA, 241). Pillsbury & Mar-

tignionl? is the company’s sales cee

deale ‘Yr in San Francisco (RA, 241). **Fedeo” is a

_ principal trademark of: the company (RA, 242). Ex.

hibit Beis a label used on smaller sized cans of ‘Dutch

‘ar

\ pr

vii

Enamel” (RA. 243). Exhibit C ist sample color ecard .

(RA, 244-245). On Exhibit. 50 “Duteh ‘Enamel”” ap-—

pears on the top ef the label, and Fedeo ‘appears in

~ - the center (RA, 704). Charles: F. Kaegebehn was not

aware of this use until the litigation CRA: 704-705).

This company’ is a customer of. Natigynal Lead Com- °.

pany (RA. 705). G: i Mere

“Dutch Kalsomine’’. by ‘The Muralo Company of.

N. Brighton and Staten Island, New York. This firm

‘y ‘listed ‘*Duteh Kalsomine”” for kalsomine on August 3,

“1910 us appears from the 1912 Tradémark Register

(Request 16, RA. 99-100),. The Court of Appeals for

the Diktvict of Columbia dismissed respondent's oppo-

sition to the registration of this trademark:on March >

6, 1911 (Request 26(a), RA, 108-109), . Respondent

never brought an unfair competition action against

this firm {Request 26¢b), RA, 110). ‘This firm, gon- -

tinuously since February 10, 1909, has employed the

words ‘Dutch Kalsomine” to designate kalsoraine in

dry powder form ( Request 26(¢), RAAU0). This firme

has advertised the **Dutch Kalsomine’’ as such #n

newspapers and trade paper publications and. the

product has been nationally distpibuted “(Request °

26(d), RA. 110-111). Trademark registration 86,725

Was issued to this firm on May 28, 1912 (Exhibit’8,

RA.-112-115). Alfred F. King, Jr., president ‘of this

> * firm, testified as to the current usage (RA. 204-219),

Exhibit 43 is a sample carten (RA. 207). The product

is sold nationally (RA. 208). The demand for kalso-

mine today isa fraction of What it was in the 1920’s

hecause casein paints such as Kemtone have now

é eee 7 ’ |

‘nie along (RA.. 209- 210). ‘Exhibit 44 is a Dutch

zene color chart (RA. 210-29P):. This. firm has °

pushed the product because it is smal fraction

_of its sales (RA. 212-213). Exhibit 4¥ 1g ani advertise-

—_ from National Painters Magazine for August,

950 in which Dutch Kalsomine is carried at the bot-

ac of the advertisement and included atmong other

trade products that are listed and manufactured by

this firm (RA. 214). A. Vernon Green, President of

Tibbett’s eee (RA. 357), remembered “Old,

-. Dutch Kalsomine’’ made by The Muralo Company in *

New York as far back as along in 1907 (RA. 370),

Charles ‘William Blakiston,.a paint and wallpaper

’ merchant in San Francisco, (RA. 862), has known of

. Fis “the Muralo’ water paints: since 1930 - and carries

‘‘Dutech Kalsomine”’ im stock (RA. 867). Mr. Blaki-

“~~ ston confirmed Mr. King’s testimony that these caseill ,

type water paints have largely supplanted. kalsomine .

and that -Kalsomine sales have dropped 75% ‘in the

* last teh years (RA. 869).

| Ssoutch Kraft” by Grand Rapids Paint and d Enamel ‘,

—. Co.*of Grand Rapids, ‘Michigan. This firm employ ed

a label bearing the words ‘‘Dutch Kraft’ for paint

which it sells but does not manufaéture,. commiehejns

on or about October 26, 1928 and continuing - to date»

~ (Request 36(a), RA. 162- -163). Exhibits 25 and 26

are photostati¢ gopies ‘of “Dutch Kraft” labels (RA...

163), Exhibits 27, 28 and, 29 are photostatic copies

of cover pages of olor charts used by this’ firm (Re-

quest 36(e), RA. 163-164). This firm obtained ‘the

_"__yegistration of “its **Duteh Kraft’ mark on April

.

e \

P ae x ix

id ©. }

30, 1929 ‘ies No. 255,844 (Request 36(d), Exhibit

30, RA. 164). On June 10, 1947, registration 430 4196

. issued ‘to this firm for ‘‘Dutch Kraft’? mark (Request |

36(e), RA. 164-165). Exhibit 136 i is a *‘Dutch Kraft”’

label (RA. 554). Charles F. Kaegebehn’ s investiga-

id

tion disclosed that this ‘Dutch Kraft’? name was used °

-loeally in Southeast Michigan, that it had been used

there for.quite a few years, and that as far as:re- ~

spondent could find -out, it had .not -been ‘sold much

_ outside of that area ( RA. 847).

“Dutch Lad” by Pr octor Painf & Var nish. This is

another of the 15 concerns who stopped using the

word ‘‘Dutch” after the denial of the — petition

for the writ of. certiorari (RB. 106).

‘“Dutchland Enamel” by Packar& Pairit and ton

nish Company at Cambridge, Massachusetts, com- .

meheing in or abeut June 1931 and continuing to date

this firm: employed a label bearing the word ‘‘ Dutch-

land’’ for. an enamel which it manufactured: and- sold

¢ Request 38(a), not denied, RA. 166-167), Respond-

~~ ent-associated this phrase descriptively with enamel

and its inv estigation disclosed that it-had been used

for some years locally in New England (RA, 853-854),

-. “Dutch Maid” by 8. Offerman, Inc., New York,

New York. This firm registered Five trademark ‘‘ Dutch

Maid”’ in the 1947 Trademark Directory for. paints,

‘ shellacg and varnishes. Mr. Kaegebehn was unable

to find such a product sold, under. that. name (RA.

887) but no ‘further testimony as* to. this, use—Was-

presented. °

\

X> Fe

“Dutch Masters’’ by Dutch Masters Paint and

Varnish Co. of Brooklyn, New Yorke This concern, -

-. and its predecessor, Varnish Products Co.,.commenc-.

ing ‘on or about November 11, 1926, and ‘continuing |

_ to date, employed labels on which appears the words ~

‘Dutch Masters’’“and an associated representation.

of the head and bust -of.a man for ready mixed paints |

and varnishes, sold by it principally in New York

City and its environs (Request 30, RA. 147-149): |

ERhibit 16 is a -photostatie copy of two “Dutch Mas" *

ters’’ labels. The mark ‘‘Dutch Masters’’ was regis-

tered in the Patent. Office on October 4, 1927, as No.

233,524 (Retuest 30, RA. 150). Theodore Shapiro, a’

- partner and one of the founders of the firm, “testified

‘that the mark was used on a full Kine of house paints,

both interior, and_exterior, decératiye enamels and —

construction specialties (RA. 225-226). Exhibit 47 is

a ‘‘Dutch Masters’’ floor and deck enamel labe!; Ex-

hibit 48 is a ‘Dutch Masters” decorative trim color

‘label; Exhibit 49 is a ‘Dutch Masters”’ quality house’

> paint label (RA. 228-229). These are current labels

(RA, 229).- The ‘‘Dutch Masters’’ products have. a

wide-distribution inthe metropolitan area of greater

New York and along the Atlantie seaboard down to |

Florida. and north to the New England states (RA.

231). The company advertised the “‘Dutch Masters’”

brand of paints in the press, outdoor signs, window

displays and a limited amount of radio ‘work (RA.

231). The company had a regular dealer in Portland.

Maine,-yntil he passed away a yeay ago (RA. 233).

The company advertised in newspapers in Newark. —

South Carolina, Miami, ond loc al boroughs (RA. 233),

Exhibit 132 is a ‘‘Dutch Masters” label (RA. 552):

The company has been a customer of. National Lead

for over 20 years, but Charlés F. Kaegebehn had. no

reports gf confusion (RA. 707). . |

_ 4 » “Dutch Mill’ by. Stgndard, Brands Paint Stores. .

Petitioner Bernard M. Wolfe obtained a label from a

- ¢an of a pile of approximately 100 cans in a floor

- display at this firm’s store in Los Angeles (RA. 537-

* 538, Exhibit wid Since approximately 1947 or 1948,

Mr. Wolfe visited two stores: in Fresno and Los’ An-

geles. (RA. 539-540), Walter J. Schulps, an outside ....

“sales representative for respondent (RA. 1972) saw

this. brand, on sale: at, a\Standard Brands store in

Bakersfield in his territory (RA. 2017).

“Dutch Mill’? by M. G. Stonemartn'& Son of Albany,’

New York. Commencing in or about the month of

October 1934 and continuing to date, this firm em-

ptoyed a label bearing the. words’ “Dutch Mill’’ for

some paint: sold® by -it (Request 37 (a), not dénied.

RA. 165). Exhibit 32 is a copy ‘of a: sample of the

“Dutch Mill’? laSel employed by said concern’ (Ré-

* quest 37(b) and answer, RA. 165-166). Charles Kaege-

_behn went to: see the owners of this business and

noted that, the firm sells paints and doesn’t make them,

This label was used on a second grade of this firm’s

- paint. This firm also handled respondent’s products

- under’the “Dutch Boy” trade mark and the «witness

had tio reports of confusion in the trade concerning —

this use (RA. 737- 73 38). Respondent was first aware

| of this use in December 1949 (RA. 852-85 3).

>

: ee

“Dutgh Proceas’’ by National Manufacturing Com.”

‘pany and Hayes-Taylor of “Tonawanda, New . York. °

This mark is listed in the 1947 Trademark. Directory

aa _ and respondent’s inquiry disclosed that they had not: -

‘used the designation for years. (RA. 889-890). Re-

spondent. offered no evidence as to. the duration of

this use. — nr F oh

“Dutch Standard” by Harrison Paint and Varnish

Company, of Canton, Ohio. Commeneing ‘on or about

June 2, 1933 and continuing to date, this concern has _ |

. cube labels bearing the words “Dutch Standard”’

_in the designation of ‘ready mixed: paints enamels and

varnishes sold by it (Request 29(a), RA. 142). Ex-

hibit.12 is a phofstatic. copy of a Dutch Standard -

label, employed by this concern (Request 29(b), RA.

142-143). Exhibit 13 is a .photostatic copy of a color —

chart: employed by this concern in 4he-promotion in

the sales of Ditch Standard paint and enamels (Re-

quest 29(¢), RA. 143). In the year 1947 the respond: |

ent protested the use by said concern of the figure of

a boy in the traditional dress of Holland but made no

protest against the continued use of the Dutch Stand- -

ard brand (Request 29(b), RA. 143-144). This firr

obtained registration No. 371,933 on October 17, 1939

in which it disclaimed the words ** Dutch Standard”’-

apart from the mark as shown (Request 29(e), Ex-

hibit 15, RA. 145-147). Gordoit G@,. Walter, president

_of the firm, testified as to this use (RA. 266-277).

Duteh Standard is our first grade line of products and’

Harrison is our second line of products (RA. 267).

Dutch Standard embraces a complete line of shelf

_ °

Ss,

.

_ pill

_ goods for house paints, enamels*and varnishes (RA.

' °267). The concern used the Dutch Standard brand

“ -since 1933 (RA. 268). It, first used Old Dutch but

upon objection to the word ‘Old’? by. Sherwin-Wil-

_liams as they had Old- Dutch, Enamel this’ concern

_ dropped the word “Old” after 1936 (RA. 268). The

Dutch Standard brand has been i in constant use since

the settlement with Sherwi in (RA. 268). The concern

- operates in Ohio, Western New York, Western Penn-

’ sylvania, West ° Virginia, Kentucky, Indiana and

Michigan (RA..268). Exhibit 62 is the file wrapper

of its trademark registration No. 371,9 933 (RA, -269-

272). The company advertises jn the American. Paint

find Oil Dealer and has ‘newspaper advertising (RA.

“$74).- The words “Dutch St&ndard” are given prom-

‘inence in the advertisement of the Cincinnati Store

(RA. 275). Exhibits 63-64 are. pictures of the interior.

-

. wo

“of the” store-showing’ that 9A0—of the-material_in

the store features the Dutch Standard trademark.. -

(RA, 275-276). Andrew Chrien, secretat ‘y-treasurer of

‘this firm also testified (RA. 277- 292). Mr. Chrien’ S

- personal knowledge of the Dutch Standard*brand goes

back. to May 11, 1934 when he was first employed by

Mr. Walter as an individual (RA. 278). The krand’

has been used continuously (RA, 278-279). Exhibit _

66 is an advertisement of this in the American Paint

and Oil Dealer (RA. 280). Exhibit 6 an ady ertis-

ing scrap-book (RA. 281). Exhibit 69 is ? } photograph

of an electric sign exhibiting the Dutch Standard

hame (RA, 282-283). Exhibit. 70 is one ef 48 différent

labels produced by Mr. Chrien (RA. 284-285). Exhibit

; s.

71 is a Dutch’ Standard’ 5 red lead label (RA. 285).

_ Exhibit 72 is a Dutch Standard varnish label (RA.

286). Exhibit 73 is a Dutch Standard label for an’

implemental paint (RA. 28@). The name- Harrison is’

also prominently displafed (RA. 287). Mr. Chrien

identified 4 advertisenients whith did not bear the

name Dutch Standard, (Exhibit E, RA. 288-289).

Exhibit F is a Wood-Nu label (RA. 290). Exhibit 69

isa photograph of a sign, Skinner and Skinn@r, Néw-

Kensington, Philadelphia (RA. 290), Exhibits 70-73

were started in 1938 and were manufactured by the |

~ Fuller Label and Box Company, Pittsburg (RA. 291). ,

‘Previous to that time local printing firms made up the

labels (RA. 291). Charles F. Kaegébehn was aware of

no confusion arising out of this. label and had been:

aware of the use for 2 or 3 years (RA. 711). Mr. -

Kaegebehn identified -¢orrespondence (Exhibits 140-

141-142, RA 711-719). Up to Nove: 50,-re—

spondent did not protest the use of ‘‘Dutch’’ by this

firm (RA. 719-720). This firm was not requested to

_ give up nor did ‘it’ give up the use of the word

‘*Dutch”’ in the ring Standard’? (RA. 917- |

918). However on th nial of certiorari this firm

became one of 15 people who agreed to stop } using he .

word **Duteh” (RB. 105-106). ee és

{ “Dutch Stand Oil”? by Louisville Varnish W Works,

Louisville, Kentucky. This mark is included ‘in the - |

1947 edition of the Trademark Register? Respondent |

was informed that the mark was discontinued, that it

has been used on linsee@f oil, that the designation was

stencilled on the barrels and it was sort of a specialty

re : t ‘ ‘ : ake

| By?

item. it-was not in use in November, 1950 (RA. 895).

Respondent offered no further evidence as'to this use.

> “Dutch Style’ by. Chicago White Ledd and Paint —

‘Manufacturing Co., Chicago, Illinois (Hooker Glass

~ and Paint Manufacturing Co., successors). This con-

-- cern employed a™label bearing ‘the-words ‘Dutch :

— . Style’? on an enamel manufactured. by it and sold in ©

and around Chicago under the trade mark ‘!Anister:

dam”. ‘This concern employed said label for about 10

years ending in the year 1930 (RA. 173-174). Exhibit

- 37 is a photostatic copy of, the ‘label (RA. 175). Ex-

hibit 129 is the label:removed from a paint can: (RA.

550). This Jabel was. discontinued many years ago

(RA. 893-894). | :

Daniel D. Roberts, a branch manager of respondent,

knew of this product-back in the early.thirties, which

would be approximately 1930 to 1940 (RA: 1634-1635).

_ edition of trade names registered with the National

1906 (RA. 99-100). It ‘was -still listed—in- the 1947

name was no longer being used i in 1950 (RA. 891).

tioner Wolfe produced ai color card of this firm listing

“Dutch White’’ as color No. 118 under ““Bondex

Cement Paint’’. (RA. 528-529, Exhibit 126). Petitioner

“Dutch type enamel” by The Glidden Company.

“Dutch White’ by The Billings-Chapin Co., Cleve--

land, Ohio. This tradp name was listed in the 1912 —

Paint, ‘Oil and Varnish Association as of April 11,

—4irectory“(RA. 890).” This company’ was taken over |

by The Glidden. Company, andthe: “Dutch White’

“Dutch White’’ ‘by the Reardon. Company. Peti-

nt ae

> xvi 7 ee ae i, . : a | —. ssh

Wolfe observed this color card at a retail paint store

in San Francisco within three weeks prior to the, trial .

(RA. 529-530).

“Dutch White” by Tibbetts Corporation, . Los An.

geles, California. A. Vernon Green, presidént of this

. firm, -testified as to this use (RA. 35 97-380). This firm’ |

e

used the expression “‘Gloss Finish Dutch White”’ on

three different - tester paints and * the designation.

‘Dutch White’’.on a * particular shade of white on its

| “Colored Sunshine”’ card (RA. 367). Exhibit 98 is a

label (RA. 367). Charles F. Faye, a hardware mer-

chant in, Los Angeles (RA. 1308) handled resporid-—

- ent’s paint (RA. 1309) -gnd - Tibbetts’ paint (RA.

-. 1318). He stoe ‘ks the “Gloss Finish Dutch White”

paint referred to in Exhibit 97 (RA, 1319)... . ae

“Holland Dutch” by Pervo Paint Company of Los

Angeles. This company fora per iod of time commenc- -

ing ‘in approximately 1923 and continuing to date has _

employ ed a label bearing the words: “Holland Dutch”

‘to describe’ a waterproof paint sold. by it (Request

32a); not defied, RA. 155). ‘Respondent wits in--

formed and believed that the ‘use began about 1927 or

1928 (RA. 156).° Exhibit 19 ig a photostatic copy of

. the ‘Holland “Dutch”’ waterproof paint label (Re-

quest 32¢b), RA; 156-157). Exhibit 20 is a color chart: .

at one time employed by said’ concern (RA. 157). —

Exhibit 21 is a paint folder (RA. 157). This company —

‘and respondent ‘had a conflict in the Patent Office,

and respendent did not require this company td dis- |

continue the words ‘Holland Dutch” to describe

waterproof paint (RA. 157-158), Exhibit 133 is-a

~ Pervo Holland Dutch labél (RA: 553). Respondent

Oe

‘ 7 .

° be . é .

7 .

,——

*,

had no evidence. of confusion in’ connection with °

- Peryo’s use of Holland Dutch, and its use: is current _

on waterproof - stucco paint (RA. 728).-Walter J.

'Schulps, a salesman for respondent (RA. 1972) had

“seen this label in Bakersfield, Taft and Oilville, a

~ suburb. of Bakersfield (RA. 2015). Charles W. Collins,

another salesman for respondent (RA, 2049- 2050) had

been employed by Pervo Company and sold “Holland,

Dutch”’ paint in Utah, western Wyoming and caster

Idaho (RA. 2118-2119), “This firm used an old Hol-”

__land-Duteh | process of making stucco paint ge was |

- brought over from Holland (RA. 2183).

. “Neu- Dutch’’ by Superior Paint and ye aneaee Cor-

of Chicago. .

~ poration, Chicago, and Paint. Exchan

“‘Neu-Dutch”” was‘ listed in the 1 Trade Mark

" diveetory for. enamel: by. Paint Ex 1ange of Chicago’:

(Request 20, RA. 102). “About years prior to the —

trial and continuing’ to date,/Superior employed a _

label bearing the trade si e ‘‘Neu-Dutch Enamel

Co .? and ‘the’ words “Nef? Diiteh” for endmels* sold

by it (Request 35(a) nofdenied, RA. 161), Exhibit 24

is a copy. of a label employ ed by tlits firm for one of:

its products (Request 35(b),, RA. 161-162). Justin D.

8 _ Goldman, President of. this firm, testifi fied as to this tise ~

" (RA. 302- 312). 4 This’ firm ‘started as a partnership in

1930 and e aged in the manufacture of paints and’

of ‘*Paint Exchange of Chicago.’ This firmi still had -

two stores at the time of the deposition (RA. 308).

Exhibit: 79 and 80 are .“‘Neu-Duteh? labels used by

be nd re It also ran retail stores under the name *

~ this firm (RAS 304-305). They were presently used and —

*had been used since. 1937 (RA. 305). The firm ceased _

se

4

on

o

-

3

. aad .

“ee 4 -_<

xviii ae

ot

: -

a

: adie in» Kencsia, winiohites in 1940 or 1941

RA. 305). ‘‘Neu-Dutch Enamel Company” is. ti®

same as this firm (RA. 306). Exhibit 81 is a catalog

-‘of the fitm put out in 1949 (RA. 307-308). Exhibit 82 .

is a price list (RA. 309). These labels arg only a small

: “part ef this firm’s business and. that’ has been: trué ’

oe sociation (RA: 98). ‘Respondent offe

since the company first started to make the produets:

+ (RA, 311). Respondent } d no evidence of confusion

arising from this mark (RA. 734-735). .

» “Nu-Dutch’”’ by Schorn Paint Manufacturing Com-

’ pany of Stattle: Petitioners objected to the use of this

‘mark by this eoncern on August 9, 1948 (RA. 676-

680). Exhibit X is a “‘Nu-Dutch”’ label offered in evi- _

dence .by respondent (RA: 680).

“Old Cglony Dutch:” by some unspecified manufae- 7

turer. This is another -of the 15- people who stopped

using the word ‘“‘Dutch’” tipon the denial of ‘the origi-

nal pétition for certiorari in this ease (RB. 105-106).

“Old Dutch” by Detroit White Lead Works. ‘This

name was listed of February 15, 1911, for ready

'“thixed painter fn the” 1912 edition of trade named reg-

‘istered with the National Paint, Oil Varnish As——

no evidence

tion of uSe

- indicating non use of this ‘mark or a e¢

~ ofthis mark,-’ he ee

. wiear” vA oe

~ “Qld Dutch” by Harrison Bros & Co. of Chicago.

On Decembet 23, 1897, this_firm listed “Old Dutch”

for prepared white paint appears from the 1912

trademark directory (Request 14, RA. 98). Respond-

ent offered no evidence as to the non use or cessation

or use of this mark.

“Old Dutch”’ by W. Ww. -Law retice & Co. This. then

listed the trade name **Old Ditch” for prepared white, .

paint on. March #, 1898 as appears from ‘the 1912 -

Trademark Register (Request i4, RA. 98). Respond-

ent was ‘unable to locaty this company at the time of —

7 trial (RA. 891-892) but offered: no evidence as to non

. use of the mark or as to the: duration of use,

ae

_ “Qld Dutch” by Old Dutch Protess Manufacturing

a ‘Co., Brooklyn, New York. ‘Commencing. en or about.

January, 1936, this firm employed a label bearing the —

words ‘!Old Duteh” and the representation of a Dutch °

hoy’s head on ftirniture polish; liquid wax, automobile -

polish, réady-mixed paint and prepared shellac (Re-

quest 28(a) not denied, RA.-140):,On January 25, ~ -

1939- United States Trademark Registration 353,909 .

was issuéd (Request 28(¢), RA, 140-142, Exhibit 11).

Respondent was unable to locate this firm at the time

of trial (RA. 888-889):

“Old Dutch” by F. 0. Pietee ae New York.

This company listed “Old Dutch” for base. white ‘on

May 21, 1908 as appears from the 1912 Trademark

Directory (Request 14, RA.99). Respondent’s ‘infor-” oe

mation is that the use ofthat expression was discon-

tinued in about 1942 or 1943 (RA, . , ee

“Old Dutch”’ by UhJ Bros., Inc: of Los Angeles por

San. Francisco, California. Comméneing at least as

early as. 1935 and continuing to the date of the trial,

_* this firm employed a label bearing. the words “Old

- Dutch”’ for paints, enamels and paint’ products. sold

- by it (Re quest 42(a) not denied, RA. 169). This firm”

* for a number of years maintained, sales facilities “for

—:

said “Old Dutch” goods in Los Angeles, San Fran- |

:

atl

7 _

z

=

.

e\ af - ee

aS Ce by

"isco and Oakland, California; Seattle, Washington

“ and Portlarid, Oregon (Request 42(b) ‘not denied, RA.

169-170). This concern advertised. its ‘Old: Dutch” .

goods ; in the newspaper and. other media. common. te’.

the trade (Request 42(c) not denied, RA@170). Ex: |

hibit 35 is a sample of the ‘‘Old Dutch’’ label em-—

.. ployed by said concern (RA. 170). George Uhl, Presi-

dent of this firm, testified as to this use (RA. 312-332). :

This firm incorporated i in 1896 with its principal place

- of business at Oakland - (RA. 315). It continued in

Oakland up to five . years ago. and still niaintains rN

store in San. Francisco, Hts main: office.now is: in. Los |

Angeles. (RA. 315). This firm has. used the ‘Old

Dutch” label for some time, between twenty and/

~ twenty-five years (RA, 317). This firm bought some of

‘its paints from respondent and from respondent's

ae predeéessor ” Bass-Heuter (RA, 317- 318).. Exhibits

84-8/ are ‘‘Old Dutch’’ labels used on cans sold to this,

firm. by respondent (BA. 319-320): These labels are

eurrently being used by this tirm’(RA. 320). The ‘Old

Dutth’’ name. on: the ‘labels i is the same as that which

was originally used except the original labels merely |

read *‘Uhl Bros.”’ instead of ‘““Deleo Paint and

Varnish Works”’. (RA, 320-321). ‘Exhibit 88 is a color.

chart. used | iby Uhl Bros. (RA. 321). The firm used

newspaper and direct mail.advertising (RA, 322). The .

“Old Duteh”’ brand manufactiired by this firm was

sold in California, Oregon, Washington, Utah and

‘Arizona (RA. 322). The company has a number: of

other brands (RA. 322:325, Exhibit .G). ‘Old Dutch”

is a house paint (RA, 332). Naney Diven, secretary .

and bookkeeper of this firm, also testified (RA. 332-

“1-° 0

wows

fi °

?

“7 v

es 341). She confirmed “Ola Dutch Gloss Enamel’? (RAS

_ 333); the “Old Duteh Undereoat” label; the ““Old

money b. Z.T. and the “Pld Dutch Pure Paint” (RA.

_ 334). She also confirmed that the color chart on “Old |

Dut Pure Paint’? was originally distributed through.

‘the mail. The most popular label. ;Was “Old Dutch

--. Pure Paint’? (RA. 335). The company advertised in

ns erates es

) newspapers tnd . direct’.mail (RA. 336-337). Aubrey

_B. Chambers testified as to the labels (RA. 341-357):

Mr. Chambers printed labels for this firm and recalled

ts printing the labels in evidence for a ‘period of ten -

years (RA, 343-344). He had ‘no. knowledge of the

earlier labels (RA. 344). WiJliam S. Dahlem; a part-¢

ner in the Security, Paint Manufacturing Company,

worked for Uhl /Bros., Ine. over 25 years age. Among .

j other paints that concerned sold ‘‘Old Dutch House

Paint, Old Dutch: Enamel, Old Dutch. Satin Gloss *

_ Enamel; Old Dutch Spar. Varnish, Old Dutch Flat

White’? (RA. 383). Mr. Dahlem further identified. the .

“Old Duteh’’ fabels (RA, 383-384). James Lewis Tat- ’

tersall, another partner: with Security Paint Manu-

. facturing Company (RA, 408): worked for Uhl Bros? ,-

from 1920-1944 (RA. 409).-He sold “Old Dutch Lead -

and Zine,.Old. Dutch White Paint, Old Duteh. Under-

‘coat, Old Dutch Flat Coater, Old Dutch Spar Varnish -

and Old Dutch Enamel” throughout the period of his

employment hy Uhl (RA. 409). He identified the color

chart (RA. 410). He referred to w indow displays, Ex-"

hibits 105, 106 and- 107: (RA. 410-411). He identified

‘other brand names used by this firm (RA. 413-418).

James Gray was employed byUni Bros. from Septem-

ber 7, 1907 to the eee 4 time (RA, —— To his

; : - ; = ee oe . * *.

. : . - e

. 7 . s e ® -

, = ° ‘ ¢

F rs 5 : ° - =>

— Dut

oP wsdl re ¥ @ Agae at

oe ger the San Francisco stores sold ‘Old ,

’’ paints from. the time he started work (RA.

422-423). He confirmed the Uhl Bros, labels (RA. 423-

424). Exhibits 110. and T11 ictures of the San

Francisco store showing Dc paints in .

<>

pyramids (RA. 426-427). Th®'Old Dutch”’ brand of .

paints was advertised in the San Francisco Examiner

(Exhibits 112 and 113, RA. 427-430). “When Mr. Gray.

started. working for this firm, Bass-Heuter, a prede-

cessor: of respondgnt, made its paints (RA. 430). The ae

“Old Duteh”’ labels and stencils wete applied at the -

San Francisco store (RX 433). ny San Francisco

store sells the other Uhi- Bros, paints (RA. 436). The

sales now average about 50 50 gallons:a month in the San |

Francisco store and it ships anaverdte of 100 gallons .

a. month (RA,:438-439). Charlés William Blakiston, a

.-paint and. wallpaper merchant (RA. 862) sold “Old

“Dutch” in the early days when-he’ was on the road

(RA. 870). Charles KF, Fay, a hardware merchant in ¢

“Los Angeles (RA. nh ea the Uhl Bras. ‘ ‘Old :

Dutch”’ brand (RA. 1323). He had personally known —

.of this firm since. 1929 (RA, 1349). Daniel D, Roberts,

the Pacifie Coast braneh manager of respondent (RA.

1556) higal heard of Uhl Bros. use of “Old Dutch’”’

¥ win 1935 and saw the Itbel in Portland: (RA. 1627-

628). Respondént had nw instance of. confusion CON

cerning: this brand (RA. 744- -745). aay ‘

“Old Dutch Enamel” by the? Sherwin-Williams

Company of Cleveland, Ohio. For a petiod commené-

ing.on or about March 20, 1912 and extending nntil

fometime. during World War IT, this firm emploved -

' <the words ‘Old Dutch Enamel’’. on an enamel sold

®

by it. (Requést 27(a) net denied by respondent, RA.

118-119). Exhibit 9.is a copy of a label used by this

-. firm (Request 27(b); RA. 137-138). Exhibit 10 is «

tradematk ‘Registration 164,193 granted February, 23,

. 1923, under the Act of March 19, 1920 (Request 27(e)

and answer, RA. 138-139). This firm relied upon this + -

label in negotiating the agreement whereby Perry & |

Derrick changed its label from “Old Dutch Standard’’.

~ to ‘Dutch Standard’’ssometime after 1936 (RA. nu

Resporident negotiated a-termination’ of this

‘use of the expression ‘‘Old Duteh Enamel’’ in pein ‘

1942 (RA. 724) during ‘the course of which this firm |

“said that they were not téo concerned about con-

‘ tinuing it, that the product was. going out—it was a

formula made according to’ the classie Dutch formula

for enamels, and it was being superseded. by: newer -

_ Materials.”’ (RA726). Respondent . had no ‘reports _s

‘concerning confusion of trade: (RA. 727). . Daniel

_ D, Roberts, branch. manager of respondent’ s Pacific

~. Coast Branch (RA. 1556) recalled Sherwin-Williams” _

use ‘of the expression “‘Old@Dutch Enamel’? (RA.

1628). Mr. Roberts had no occasion’ to report any

instances of Confusion because respondent considered -

that descriptive of the type of product (RA., 1632-

a ea a reste ee eS ge

“Old Dutch Process” by W. P. Fuller and Com-

pany, San Francisco, California. This firm used the.

word {Dutch to deseribe the method by which its

Pioneer White Lead was manufactured ( Request 24

(a), RA. 107). J. Langer Root, the vice-president of

this firm, testified as to this use (RA, 775-787). .Ex-

hibit 145 is:a keg which this firm used for Pioneer

a .

xxiv

& Vee

White Lead ‘until 1949 (RA. 777). The reference

‘‘made by the Old Dutch Process” appéars.on the keg

under the “Pioneer White Lead” and the picture of

a pioneer (RA. 177). Exhibit 146 is a label used’ on a

one pound can which was used until 1949 wheri the

process was changed (RA. 778). This label contains’

the reference “‘Made by the Old Dutch Process of |

slow corrosion which insures maximum covering and

hiding properties.” (RA, 779). Exhibit 147 is a cata-

logue published in the-year 1905 which has the picture

of the keg and says ‘‘manufactured by the Old Dutch

Process’’ (RA: 780-781). ‘‘Dutch Process’’ describes

a method of making white lead (RA. 783). Mr. Root,

| deseribed the ‘*Old Dutch’ process (RA. 784). The

notation ‘‘made by the Old*Dutch Process of slow |

corrosion,’ is descriptive of the method by which

this white lead is made (RA. 785). This firm -dis-

continued to use the Old Dutch Proeess to make white :

lead in 1949 (RA. 785). The Dutch process casts too

much money (RA. 786). This firm was one of the

last to discontinue the Old Dutch Process (RA. 786):

. ‘Old Dutch White Enamel’’ by Seidlitz Paint and

Varnish Company. . This firm’ adopted the notation

“Old Dut¢h White Enamel’’ for a white enamel somé

15 or 20 vears ago and used it for approximately one»

year in and around Kansas City, Missouri (Request.

45, R§. 171-172). Respondent obtained information

from young Mr. Seidlitz that they haven t used it for

15 years (RA. 893).

“Royal Dutch” hy Security Paint Manufacturing |

_Company: of Los Angeles (RA. 175). This firm. em-

"ployed a-label bearing the words ‘Royal Dutch?’ for .

. °

a

Ge

XXV

paints which it manufactured (RA.:175). Exhibit 38

is a label used by this firm (RA. 176). William S.

_ Dahlem, a partner in the firm, testified as to this use

(RA. 380 et seq.): E xhibit | 102 isa group of *‘Royal

Dutch”? labels (RA. 385-386). This label was used ~

ona large number of products identified in the record |

(RA, 386). ‘This label was adopted prior to 1945 (RA.

387). The company uses diréct mail circulars (RA?

388).° Respondent sent this firm.a letter of infringe-

ment on January 17, 1950 (Exhibit K, RA. 401). Cor- ”

_respondence was exchanged (RA.,405, Exhibits L and

M). Charles F. Kaegebehn referred to the notice of.

_ infringement (RA. 701-702). Walter J. Schulps, an

- outside salesman for respondent ( RA. 1972) had seen

“Royal Dutch”’ at his dealer’s. places in Bakersfield,

Delano and Visalia (RA. 2015-2016).

“Royal Dutch” by Tibbetts Corporation, Los Ange-

les,, California. A. Vernon Green, ‘President of “this -

firm, téstified as to this. use (RA. 357- 380). Exhibit |

92 is a ‘Royal Dutch’? label employed by this firm

since 1936 and bearing the trade name “Royal Dutch

Paint Co.,” a trade style employed. by this firm (R.A.

362-363). This is the firm’s lowest priced paint (RA.

363), This label is applied to outside white ready

- mixed paint, to an inside white, to. an inside enamel,

to an enamel undercoater and to approximately six

colors in an outside ready: mixed paint (RA. 369).

This label represents a smat! volume of this firm’s

paint sales and this label is not advertised (RA. 378).

~ Respondent had no evidence of confusion arising out

‘of this label (RA. 745). This label is listed in the

1947 Trade Mark Directory (RA, 894).

Appendix

Excerpts from Webster’s New International

. Dictionary, Second Edition, Copyright 1941.

Dutch blue. : 1. == Dutch Beech.

2. A ae blue in hue, of low saturation and

medium brilliance. It is of higher brilliance than

cadet. 5 aa a . ;

Dutch orange. A color, red-yellow in hue, of high

saturation and high brilliance. Called also Florida

gold, orpiment red, yellow carmine.

* Dutch pink, a = Yellowweed e b-A yellow lake

prepared from fustic or Persian berries’ with

alum and.whiting, and used in distemper painting, -

for paper staining, ete. ¢ <A eolor, reddish-yel-

low in hue, of medium saturation and very high

brilliance, Called also-aglish pink, Italian pink,

stil-de-grain yellow, yellow madder.

Dutch process. . See white lead.

Dutch searlet. =°Castilian red.

> Dutch vermilion. See vermilion,. n1., ‘3.

Dutch. white: A pigment consisting of one part of

white ledid ‘to three of permanent white. : .

“White lead. a A heavy, white, poisonous powder con- ”

sisting of basic lead carbonate, usually having

the composition 2 PbCOs, Pb(OH),, and forming

a most important pigment; ceruse; also the paste .

‘formed by grinding it with oil (white lead in oll).

In ‘three important processes of manufacturing

&

ee ee xxvii

white lead, metallic lead is exposed to the action

of acetic acid, moisture, and carbon dioxide. Most .

‘used is the old Dutch, or stack, process, in which

lead gratings or plates are placed in the upper |

‘part of pots containing the-dilute acid, and the _ 8.

pots aré stacked in fermenting tanbark or manure — - .

and left for about three months. * * *

Vermilion * * * 3. Hence, a red color like the pig-

ment; a lively and brilliant red; as, cheeks of ver-

milion. Specifie colors are: French avermilian,

filed also paprika, a yellowish-red. color of very

high. safuration and medium brilliance; Dutch - | :

vermilion, a color slightly yellower than cherry

* * *

C%

append D

DOLLAR VALUATION oF. v. 8. ‘8. IMPORTS OF PIGMENTS, PAINTS

'- AND VARNISHES — THE NETHERLANDS, 1902-58

165,121

$

Pigments Paints ; Cisanie Total PP&V - Linseed Oil. Total PPVAL

19027, $ «4,738 $ 56 $ 4794

9,081 - 35 9.116 . i

13,224 « *8 13,272

1905° 35,765 (143 35,908 ° i

ree 28,448 220° 28.668

44,442 S 44,442 *

36,554 251 36,805 3

44,474 10 = 44,484

1910 52,340 117. 52,457 | ¥

60,619 os 60,619 |

_, 53,423. ‘Se 53,423 $ 247,025

50,719. ae 50,719 26,903

es 58,296 : 58,296 3,548

1915 | 209,886 209,886 9,271

423,488 a 423,488 4,208

192,215 192;215 7

19183 TA So feet ee es “ee fg htt 7

Si 117,613 7 } 117,613 _ $2,036

1920 - 378600, 378,600 .- 844,181

187,608 - 187,608 1,036,792

507,537 $$ 8,575 516,112’ - 3,576,179

437,551 31,268 505 469,324" 906,323

. «884,741 43,381 72° = 4281 198,436 -

1925 . 419, 42,147 | 515 462,602 602,767

. 537,570 56,527". 495 594,592 771,324

583,511 70,344 265 654,120 65,205

696,701 64,201 817 761,719 9,341

594:730 88,440 2,996 686,166. 166,806

1930 , 552,218 63,968 4,943. 621,129 78,638

502,037 41,694 ‘S888 552,619 9,537

210,675 50,996 3,103 264,774 212

356,775 ° 247,416 12170 616,361 303,030

304,812 104,052 927 407,8574 103,058

1935 . 363,248 35,385 1,103 399,736 79,417

: 249,775 66,318 1,197 317,290" 264,438

‘$78,317 30,350 1,379 510,046. 19,737

313,393 32,138 1147 = 346,678" 4,822

30,128 © 1,775 197,024 1,254

xxix

Pigments Paints ‘Varnishes Total Pray Linseed 01) Total PPVAL, ig

eee —_--- a a

3,146 11,875 = 653 15,674 18 15,692

ee oe joe _° B18

© eseocnsoegen 600d 0 — —i«épw wb COO ¥ :

554 4732 8. + 8286 . ip” ha

- 9 8,807 aR, 3,807 1,455,087 «1,458,844 -

‘ 4,983 321 aa "* 5,304

4,447 3,970 1,166 9,833 ee 9,833.

* 55,746 10,407 = 1,987 . 68,1405. — 68,140

62,936 7,514" —-17'933 8898s" 88,383

* 9,942 8,709 — - 10,516°\ - 29167 . | 9,167

133,727 8,554 3,938 \ 146,219 ° - 46219

2 238,339. 5,404, 3,960 * 247,703 — 247,703

203,947 .. 4,974 2829 211,750 211,750:

156,104 5,942 352 164,398 464,398

- 239,904 ° 7,415 1,370 248,689 - 248,689

569,556 ——- 7,920 fe 4,058. 581,534 + 58594

‘Sources : \ : :

mae, Foreign. C ommerce and Navigation dt the United States, 1902 issied

by Bureau , of Statisties (Tréasury Dept.) ; 1903-10 by Bureau of

Statisties (Dept. of Commeree and Labor), and 1911-40 by Bureau of.

Foreign and Domestic Commeree ; 1941-46 6 by Bureau of Census (Dept.

of: Cotumerce ) . ,

7-58, Reports Nos. FT 110 and 120, U.S. Imports of Merchandise ‘for Con-

sumption, Dept. . of Commerce, Bureau of Census. |

71902-17, Pigments and paints were listed together as Pigments Paints wid

July 1-Dee, 31, 1918. 1902. 17 are fiscal years. 1919 to ‘an are calendar

ears. Rev. Stat., See. 336, Jan. 25, 1919. or

‘Total OF separately listed pigments, paints, - varnishes = eee —

gives total of $409,791.

x. pigments, aa. ms varnishes. from FT 110: FT 120" ‘gives total as! |

165,026

\e