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Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938)

Armstrong Paint & Varnish Works v. Nu-Enamel Corp.

No. 51

Argued November 7, 8, 1938

Decided December 5, 1938

305 U.S. 315


1. A registrant under the Trade Mark Act of March 19, 1920, of the name Nu-Enamel, for enamels and kindred products, brought suit in the federal district court to enjoin infringement by a competitor who was using in the sale of enamels the name Nu-Beauty Enamel. The bill alleged, inter alia, that, in the trade, the name Nu-Enamel had come to mean the plaintiff and its products exclusively; that the mark distinguished plaintiff's goods from others of the same class, and that Nu-Beauty Enamel was being passed off by merchants as the product of the plaintiff.


(1) It being conceded by the answer that the name Nu-Enamel had come to mean plaintiff and its products, and that it distinguished plaintiff's goods from others of the same class, no evidence or finding was needed to establish these facts. P. 305 U. S. 322.

(2) By virtue of the adoption of the procedural provisions of the Trade Mark Act of 1905 by the 1920 Act, the district court and the circuit courts of appeals had original and appellate jurisdiction, respectively, of suits at law or in equity respecting trademarks registered in accordance with the provisions of the latter Act and arising under it, and this Court was given jurisdiction by certiorari the same as in patent cases. P. 305 U. S. 323.

(3) The allegation of registration under the 1920 Act, unless plainly unsubstantial, is sufficient to give the district court jurisdiction of the merits. P. 305 U. S. 324.

(4) The district court having properly acquired jurisdiction of the suit for interference with the exclusive right to use the trademark, then, though the issue of infringement fail because the trademark was not registerable, the court still has jurisdiction to determine, on substantially the same facts, the issue of unfair competition. Hurn v. Oursler, 289 U. S. 238. P. 305 U. S. 324.

(5) As applied to enamels, the mark Nu-Enamel is descriptive, but registerable nevertheless under paragraph (b) of the Trade Mark Act of 1920. P. 305 U. S. 329.

(6) Having in Nu-Enamel a registered mark which had acquired a secondary meaning as indicating its products exclusively, plaintiff was entitled to protection against the unfair use of the words

Page 305 U. S. 316

of the mark by a competitor seeking to palm off its goods as those of the plaintiff, and had a cause of action against such a one either for infringement of the mark or for unfair competition. P. 305 U. S. 335.

(7) Upon the record of this case, the competitor's use of the name Nu-Beauty Enamel was unfair, and infringed the plaintiff's trademark Nu-Enamel. P. 305 U. S. 336.

2. The federal Trade Mark Act of 1920 does not vest any new substantive rights, but it does create remedies in the federal courts for protecting the registrations, and authorizes triple damages for infringement. P. 305 U. S. 324.

3. Trade marks registered under the 1920 Act may be attacked collaterally. P. 305 U. S. 322.

4. The significant distinction between the Acts of 1905 and 1920 is the omission in the latter of the provision in the earlier act making the registration of a trademark prima facie evidence of ownership. P. 305 U. S. 323.

5. The remedies afforded registrants under the 1920 Act are available only to "owners." Ownership must be established by proof; actual and exclusive use, short of a secondary meaning, is insufficient. P. 305 U. S. 335.

6. Section 1(b) of the Trade Mark Act of 1920 permits registration of marks used for one year in interstate commerce which were not registerable under the Act of 1905, "except those specified in paragraphs (a) and (b) of section 5" of the Act of 1905. Held that the phrase "except those specified in paragraphs (a) and (b) of section 5" does not apply to the provisos of paragraph (b) other than the first thereof. P. 305 U. S. 331.

This has been the construction given the subsection by the Patent Office. Moreover, to construe it as barring names, descriptive marks, and merely geographical terms would make the subsection useless.

7. The legislative history and administrative interpretation of a statute have weight when choice is nicely balanced. P. 305 U. S. 330.

8. A construction of a statute which preserves its usefulness is to be preferred to another which does not. P. 305 U. S. 333.

95 F.2d 448 affirmed.

Certiorari, post, p. 580, to review the reversal of a decree dismissing for want of equity a bill for an injunction and other relief.

Page 305 U. S. 320

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