Full opinion text
CAMPBELL, District Judge. This is an action brought by the plaintiff for the alleged infringement by the defendant of a trade-mark of the plaintiff, “Cellophane,” by using the same in connection with goods not of plaintiff’s manufacture, in which plaintiff seeks an injunction. Plaintiff is a Delaware corporation, and a wholly owned subsidiary of E. I. DuPont de Nemours & Co. Defendant is a New York corporation, a citizen of the Eastern District of New York, a wholesaler and converter of transparent sheets. The defendant purchases g’oods from. Sylvania Industrial Corporation, which is one of the plaintiff’s principal competitors, and admits that Sylvania Industrial Corporation manufactures the material which was sold by the defendant as alleged in the complaint. It is admitted by the defendant that attorneys selected and paid by Sylvania Industrial Corporation, and not by defendant,- axe defending and guiding this suit. That plaintiff claims Cellophane as its trade-mark is known to defendant, but on calls for Cellophane defendant sells the product of Sylvania Industrial Corporation as Cellophane, but bills it as cellulose. In addition to the formal allegations, the complaint alleges that plaintiff owns the registered trade-mark Cellophane, and complains of substitution of merchandise not manufactured by plaintiff on calls for Cellophane, representation that merchandise other than plaintiff’s is Cellophane, infringement of plaintiff’s trade-mark rights, and facilitation of substitution and passing off by causing transparent wrapping, not of plaintiff’s manufacture, to be put upi in such a manner as to make it difficult, if not impossible, for the public'to identify its source, that defendant threatens to continue these acts, and the damage resulting will be irreparable. The defendant by its answer denies these essential allegations, both as to ownership of the trade-mark and as to defendant’s acts, but admits that the defendant has supplied a product not plaintiff’s to customers ordering Cellophane. The amended answer alleges the following as separate defenses: (1) Cellophane is the generic name of a product manufactured under certain expired patents; (2) irrespective of said patents, it is the only descriptive and generic name used by the public for this product and plaintiff itself has so used it; (3) if Cellophane ever was a valid trade-mark, it has been abandoned through the descriptive use made of it by plaintiff, and its acquiescence in such use by others; and (4) plaintiff is estopped to deny Cellophane is the generic name of a product. I find the following facts: Dr. Little, an American chemist, in the year 1892, knew of film of hydrated cellulose and other material. He actually made it in the same year, in connection with the American Viscose Company and the Cellulose Products Company. Cross and Bevan, English chemists, applied for and received, in 1894, a United States patent for what they described as “plastic compound of cellulose,” and stated that this compound of cellulose might be rolled in sheets, and was afterwards called viscose. Cross, and Bevan, in 1893, applied for and later received a patent for the “modification of cellulose” obtained from the above compound and adapted to be manufactured into sheets. It contained glycerin for softening purposes. Dr. Cohoe, an American chemist, knew of transparent sheets and the terms “transparent foil,” “film,” and “sheets.” Dr. Little, in 1897, demonstrated transparent cellulose hydrate sheets which he had made himself at the Franklin Institute, an account of which appeared in the Journal of that Institute. Dr. Little said that in 1898 “there was an extraordinary amount of industrial interest in viscose all over Europe * '' * the properties of the material were exceedingly well known.” Steam, in 1898., applied for and later received a British patent for the manufacture of a film of cellulose. Chorley, in 1899', applied for and later received a British patent for making cellulose film. Little went to England in 1899' to investigate the viscose industry and saw the Chorley process in actual operation, in the Manchester Viscose Company plant, turning- out cellulose hydrate films, glycerin being used as a softener, and the material being transparent. The written report, of 425pages, made by Dr. Little, which is in evidence, states in part: “The manufacture of continuous films of cellulose has been developed by Mr. Chorley as chemist for the Manchester Viscose Co., Ltd., and a thoroughly practical and well-designed machine has been evolved and is now set up and in operation at the small plant of the company in Manchester * * *.” “The most important use which has thus far been proposed for these films is for soap wrappers in place of tinfoil, and the company is in receipt of a request from Mr. A. Pears, who desires to use large quantities of the films, and has expressed his willingness to pay two shillings a pound for them * * * .” The film which Dr. Little saw manufactured in England was substantially the same as that produced by plaintiff to-day. In his said report Dr. Little recommended the acquisition of the rights to the use of the continuous film machine for the United States, gave complete details of the Chorley manufacture of continuous films, and a drawing of the machine. Steam, in 1903, applied for and received a second patent for the manufacture of sheets or films from cellulose, and Dr. Little was acquainted with Steam and familiar with his patents and processes. Cross and Bevan, in 1908, manufactured film, and Dr. Cohoe knew of a firm in Lyons, France, making transparent film prior to that year. The words “film,” “foil,” “sheets,” “cellulose,” “viscose,” and “transparent” were all part of the English language at that time. The word “Cellophane” was coined prior to April, 1908, and its first use was as a trade-mark by Blanehisserie et Teinturerie de Thaon, of Thaon les Vosges, Prance, on its transparent film, which is thus described in an application for a trade-mark registration: “ * * * cellulose sheets obtained by the regeneration and transformation of viscose whether transparent, opaque, colored, or uneolored.” Brandenberger, in 1909', applied' for and later received two United States patents, one for a machine, describing it as an “Apparatus for the continuous manufacture of cellulose films,” and the other for “Manufacture of eellulosie films.” Both were purchased by the plaintiff in 1923, and neither patent mentioned the term “Cellophane.” Euler, in January, 1912, obtained an exclusive sales agency for the French company’s product in the United States and Canada. Shipments were made by the French company to Franz Euler & Company, New York, in the form of rolls of one hundred pieces, three or four rolls to a case. Later, bundles of five hundred sheets were shipped. These packages bore a factory label, and sometimes were received in larger bales by Euler, broken up> and the small packages distributed, which packages also bore the factory labels, and sometimes shipments were made directly from the factory to Euler’s customers in America, and these also bore the French labels. Henle Paper Company was one of these customers, and the witness Jacobson was from that concern'. None of the original labels can be found, but they contained the name and address of the French company, Blanehisserie et Teinturerie de Thaon, the word “Cellophane,” and French measurements. Jacobson of the Henle Paper Company remembers them, and says that they were similar to the later label which is in evidence as Exhibit 119, and I so find. This label was identified by Euler as having been first used between August, 1914, and April, 1917. Packages received by Henle Paper Company from Euler, bearing these factory labels, were shipped by that company to its customers with said labels, and without adding any other labels. Euler did not use any labels of his own which reached the consuming public; he “did distribute some small labels at one time with a slogan on it indicating that the material that was wrapped around that merchandise was La Cellophane.” Blanehisserie registered Cellophane as a trade-mark in Fiance, No. 245, dated March 26’, 1912, in renewal of a prior registration made in the year 1908. Euler applied to register in Class 37, Paper and Stationery, the term “La Cellophane” for parchment tissue, on May 11,1912. At that time Euler was the exclusive agent or distributer of the factory for the United States. The factory neither authorized Euler to register the trade-mark, nor even knew of the registration by him. He acted solely on his own responsibility. Blanehisserie, on August 3,1912, applied under sections 1 and 2 of the Trade-Mark Act of 1905, as amended (15 USCA §§ 81, 82), based on a French registration No. 245, dated March 25-, 1912, to register the word “Cellophane” in the United States as its trade-mark for cellulose sheets, claiming first use in its business since April 11,1908. Eider issued a circular to his trade as follows : “ 'La Cellophane’ (made in France) * * * a transparent parchment tissue paper of the highest merit. La Cellophane is imported only by Franz Euler & Co. * * * who are the representatives for the Cellophane factory of France in the United States and Canada. La Cellophane is registered in the United States Patent Office and infringers will be prosecuted to the fullest extent of the law. Every package or roll bears the Factory’s label with the registered trade mark La Cellophane.” Every package or roll carried the factory’s label, “La Cellophane.” At first Euler bought his goods in the open market in France. From the beginning until the purchase by DuPont, the word “Cellophane” was used only as a trade-mark on film sold in the United States by the French manufacturers, and by Euler as distributer, and by no one else except by persons whose use was promptly objected to by Euler, and without exception these persons respected his protest and stopped when objections were made by him. No iilm has been sold here at any time under the brand Cellophane, except goods of Blanehisserie and its successors. Euler always confined the word to the product of this one 'concern. Euler filed Ids trade-mark registration with customs authorities about this time, to protect his interest as importer of this material. Cross and Sevan’s book was published in England in 1912¡. It stated at pages 161 and 162 (S7): “® * * the manufacture of cellulose film from viscose by continuous processes is a result attained only after long years of persistent study of the exceptionally complex technical problem ® * * .” “The viscose film (cellulose) under the powerful auspices of the Soeiete Industrielle de Thaon is at length a fait accompli, and is an article of commerce under the descriptive term Cellophane.” Chemical Abstracts, published by the American Chemical Society, stated at page 2469: “The use of Cellophane for inclosing food substances * * * ” “A favorable report to the Minister of Agriculture on this product, which is a thin cellulose membrane * ?■ -.5 » After 1912, others than Euler imported the material, but they did not get very much of it; that which Bim sold he secured through jobbers in Paris, Belgium, and Germany, as he was not able to buy direct from the French manufacturers at thatj time, and Ids business was very limited from 1913 to 1921. The film he imported carried the label “La Cellophane” from the beginning, and was manufactured by the French concern. Euler began in 1913 to advertise in the Confectioners’ Journal, and continued this until January, 1917, and held himself out in such advertising as the exclusive agent of the French factory, pointing out that La Cellophane, described as transparent paper, is “made in France,” and in connection with the name, the notice, “Reg. U. S. Pat. Off.” In these advertisements, especially the issue of August, 1913, reference is made to the factory labels thus, “See that the factory labels state the quality number.” Candy companies, which prior to this time had used gelatin paper, began to use transparent paper, and witnesses from two such companies testified. The witness Guth produced no specimens of advertising in which the word “Cellophane” appears, and his testimony as to uses is speculative. There is nothing in the Guth testimony to show any connection of plaintiff with such uses, or that those customers ever used the word “Cellophane” in a. manner which would injure plaintiff’s rights. Guth says that when he bought from Bim & Wachenheim he thought he was buying a DuPont product and adds: “I naturally always associated DuPont with Cellophane, * * they did a great service to anybody that puts out package goods.” He thought Sylvania was a part of DuPont’s business, but remembers Fenestra as the trade-mark of Bim & Waehenheim. The witness Hinds, representing Daggett, the other candy manufacturer, testified that they did not begin to. use the product before 1919. The Journal of Industrial and Engineering Chemistry, in. June, 1913, under the heading “Cellophane,” says: “Mueller regards Cellophane as ‘Viscose’ of the highest technical importance. The elasticity of Cellophane is said to be remarkable ® ® ® . Cellophane is soluble in water and alcohol « « a » The Literary Digest of March 7,1914, describes this film as a “novelty.” The War interfered with Euler’s importa^ tions, and this is indicated by his advertisements in December, 1914, January, February, and March, 1915. Bim says that Euler handled practically no Cellophane from the latter part of 1914 to 1921. This is denied by Euler, who says that from 1914 to 1921 they were the accredited agents of La Cellophane Company, and while their imports were restricted between 1914 and 1918, they continued up to 1921, and that he thinks they received all that came over, not during the entire time,' but during the greater part of the time, and is corroborated as to this by Jacobson. Euler protested in writing to> Bim & Waehenheim against their use of the trade-mark “Cellophane,” and they stopped it. The French factory did not, between 1914 and 1920, so far as Euler knows, export direct to the United States except to him. After 1919, he also obtained the product of the factory through French jobbers. This product was always: sold by Euler as Cellophane. Bim & Waehenheim and Bendix purchased a small amount from jobbers, even while Euler’s agency existed. Euler notified competitors to stop. the use of the term “Cellophane,” and every one of them did so, and adopted trade-marks of their own. In the New York Times of March 11, 1915, is an article headed “Uses of Cellophane,” which states: “Appraisers hold it should not pay duty as gelatin.” Impressed with the great variety of uses to which, an article known as “Cellophane” is put, the Board of General Appraisers sustained a protest by Franz Euler and Rose & Frank Company against Collector Malone’s assessment on the product. Appraiser Sague reported that: “The merchandise consists of thin sheets of cellulose variously described as cellophane, flexoloid, dramantine, and brilliantine,” and stated that its use is a substitute for thin gelatin sheets in wrapping various things. On December 31, 1915, the time limit of Euler’s contract was reached, but bis agency relationship with tbe factory continued. It was in 1915 or 1916 that Euler first learned of the registration of the trade-mark by Blanehisserie. From time to time from 191.6 to 1923, Bim & Wachenheim, Catty, and Bendix imported some of tbe product from French jobbers, and, after 1920, sometimes from the factory; but seldom did more than one concern have it at tbe same time. They sold it under different trade-marks of their own creation some time during this period; that of Bendix Company being “Bendiphane,” Catty used “Glassolyn,” and Birn & Wachenheim, “Fenestra.” On March 16, 1916; Laussedat, assign- or to the French company, applied for, and in 1917 secured, a United States patent for a label for bottles and other receptacles, stating : “This invention relates to a label made of cellophane * * .” “The cellophane label could be put over some other label • e wpkg label could be stuck on tbe cellophane one.” “The label * * can be made of any other material than cellophane.” Bim & Wachenheim, in 1917, began the use of “Fenestra” as their own trade-name, because, among other reasons, as stated by Birn, Euler had the name “Cellophane” copyrighted, and they did not want to get into any controversy with him. Euler continued to sell, and the demand so far exceeded the supply that advertising became unnecessary. Birn & Wachenheim used the trade-mark “Fenestra” on labels and bills, but they bad no film business to speak of until 1921. Transparent film was used in tbe French Army and was considered for use in the American Army, the material used here coming from France. In a number of reports and letters in 1917 and 1918 from different government departments regarding gas masks, the word “Cellophane” was used, sometimes with capitals, sometimes with quotations, and sometimes with a small “c.” ■ A report dated November 10, 1917, in Chemical Warfare Service, vol. 1, part I, p. 6; states: “Cellophane is a French trade name for sheet cellulose * * *Again the same statement is found at page 195, part II, of the same volume. Chemical Abstracts for October, 1919', p. 2490, published by tbe American Chemical Society, contained an article relating to photography, and used the word “cellophane” with a small “e.” Technology of Cellulose Esters, vol. I, p. 3075; published in 1919, stated: “The viscose sheets of C. Steam, F. Woodley, Brozykoski, and especially of E. Brandenbergor, deserve mention. The product of the latter inventor, under the name of ‘Cellophane’ has found wide application as a wrapping material for the protection of packages * * * Flexoloid, Biophane, Dramantine, Brilliantine, and Visea are commercial names for similar products.” The witness Hinds, of Daggett Chocolate Company, produced no records, and relied solely on his recollection as to how he used the word “Cellophane” in 1919', but says that in purchases from H. D. Catty Company be used tbe word “Cellophane,” and later when Birn & Wachenheim came along, he called it “Fenestra,” which was their trade-name. On March 18, 1920, Euler sent Pfaltz to France to re-establish his agency with the Flench concern, which, after seeing Pfaltz, wrote him asserting its ownership of the trade-mark and refusing to continue relations, unless Euler’s registration was transferred to it as owner. Euler wrote the French concern refusing to transfer the trade-mark under the conditions stated in the letter of the French concern, which were that it would sell to Euler, but would not give bim the agency. Euler continued to claim rights even against concerns that thereafter were appointed exclusive agents of the factory. Euler in his advertising in 1921 referred toi his registration, and described the product as “transparent wrapper.” Brandenberger, assignor to tbe Flench company, on January 25, 1921, applied for, and on February 17, 1922; received, a United States patent for bands of eellulosie material. In tbe specification be gave “cellophane,” printed in this manner with a small “e,” as an example of tbe eellulosie material which might be used in connection with Ms invention, and used descriptive terms such as “eellulosie material,” and “transparent cellulosic material.” Catty was given exclusive agency in the United States in 1921, but Euler thought it was m lS'lll or 1920. ‘ Catty sold the French film under the trade-name “Glassolyn.” In the transcript of record of Custom Appeal No. 2135, the protest of Roland Freres used a capital “C” for Cellophane, but in other places the word” “cellophane” is sometimes used with a small “e.” Catty testified in that proceeding that the product was sold under other names in the trade, such as “Glassolyn,” “Fenestra” and “Flexoloid.” Dr. Cohoe, in 1921 and 1922, exchanged letters with his partner, La Meistre, in whieh the word “Cellophane” was sometimes used with, a capital “C,” and sometimes with a small “e.” Birn & Wachenheim, on January 1,1923, obtained the factory agency in the United States, and held it until plaintiff took it over. They imported the genuine material, which from the beginning came wrapped in packages hearing labels marked “La Cellophane,” and they resold it as “Fenestra,” which they registered as their trade-mark, claiming use since 1917. The factory printed and distributed through Birn & Wachenheim about 10,000 circulars, dated January 1,1923, whieh read: “La Cellophane ® * * the ideal transparent wrapper, can he furnished in all sizes, in all colors, in thickness from 0.02-0.12 m. m., plain and embossed. Exclusive sale for the United States, Birn & Wachenheim, 121, 125 West 17th Street, New York City.” ' The Confectioners’ Journal for January, 1923, contained this advertisement: “Societe La Cellophane, France, announce Birn & Wachenheim, 121 West 17th Street, New York, their American agents. Fenestra is the trade name used in America.” There is no evidence to connect the last-recited advertisement with either Euler or the factory; on the contrary, the circular issued by the French company shows that the advertisement was not authorized by it. Euler protested against it. The advertisements by Birn & Wachenheim that followed in later months in the same publication show that they heeded that warning. That the advertisement in question emanated from Bim & Wachenheim is shown by their advertisements in February and March of that year. In October, 19ÍK2, they dropped all use of the word “Cellophane" and did not resume it. One, Lader, bought this material from Birn & Wachenheim while they were agents, and later sold it to Euler, who in turn sold it as “Cellophane.” Euler also bought at times from one Schick, who in turn bought from Ameeousema, a French jobber. The Tariff Act of 1922 states (§ 1, par. 1213 [19 USCA § 121, par. 1213]): “Products of cellulose, not compounded, whether known as visea, cellophane, or by any other name * * *.” On November 30, 1923, the Paper Trade Journal contained an article entitled- “Cellophane, Its Properties and Methods of Testing,” which stated: “Cellophane, whieh in Germany is called ‘Cellulose-Glass Film,’ is a product similar to our artificial silk, in the form of a sheet as in paper. * * * A plant has been erected in Germany for manufacturing cellophane whieh today is made solely by the Societe La Cellophane in Bezons, France.” The word “cellophane” is used several times in this article with the small ,“e.” In 1923 the name “DuPont” had become a most valuable trade-mark, identified with a large diversity of products. The name, in the oval, was advertised as a badge of quality, and many trade-mark names were advertised in connection with the word “DuPont.” The DuPont name had a large sales value. The history of the DuPont oval as a trademark is given in the DuPont Magazine of September, 1925, and it had been in use for sixteen years. The DuPont business was founded in 1802, and in 1925 the company was the owner of many United States registered trademarks and many foreign registrations, of which the oval was the best known. A number of trade-marks include the word “DuPont” and another word within an oval. In some cases the word used has been claimed as a trade-mark, i. e., “DuPont Cellophane,” “DuPont Fabrikoid,” and “DuPont Dueo”; in other cases the word has been the name of a product, i. e., DuPont Rayon and DuPont Dyestuffs. Prior to August in the year 1923, the DuPont interests and the French interests owning the Thaon factory arranged to join forces and begin the manufacture of the material in America, and for this purpose a corporation, plaintiff’s predecessor of the same name, was organized in June. In the corporation charter the word “cellophane” was spelled with a small “e.” The new corporation acquired the two- Brandenberger patents, one for “Improvement in Apparatus for the Continuous Manufacture of Cellulose Films,” and the other for “Improvements in or Relating to the Manufacture of Cellulosie Films,” also the registration by Blanehisserie of the name of “Cellophane.” By this arrangement the French interests’ patents, the trade-mark “Cellophane,” and their business of exporting film, to the United States, the certificate of registration, together with the good will of the business in connection with whieh said trade-mark is and has been used, were assigned by the French concern to plaintiff’s predecessor, on October 13, 1923, and the assignment was recorded November 10,1923, in the Patent Office. In August, 1923, DuPont Cellophane Company, Inc., announced: “That as of August 1, 1923, they have secured the exclusive • sales and manufacturing rights of the product known as Cellophane, and manufactured by La Cellophane, of Bezons, France. We are now importing this product and all 'inquiries will receive our prompt attention * * * This advertisement appeared in the August and September numbers of the Manufacturing Confectioner. In August, 1923, Euler’s attorney wrote the new corporation regarding his trade-mark claims. The letter is not in evidence, but the reply to it is in evidence, in whieh its attorney made plain its position, and in the concluding paragraph of that letter said: “However, we feel that in the assignment now being executed by the Blanehisserie et Teinturerie de Thaon to the DuPont Cellophane Company, the latter will acquire in this country the right to the use upon its products of the trade mark Cellophane, and we are prepared to protect our rights.” A period of development of three or four years followed the organization of the DuPont Cellophane Corporation, in which the corporation built its factory and devoted its attention to improving the quality and uniformity and reducing the cost of the product. Production in the new plant at Buffalo began in 1924, but during the development period the .output was comparatively small. Plaintiff began to use' the DuPont oval device with the brand Celophane in it on its goods, at first without a registration notice, but following the registration of the mark in 1924, with the notice, “Beg. U. S. Pat. Off.,” whieh has been used consistently ever since. The DuPont Magazine of October, 1923, contains an article headed “Cellophane — A New DuPont Product,” subtitle “The DuPont Cellophane Company will manufacture it at Buffalo, New York.” In this article the word “cellophane” is used with a small initial letter. It is called a “transparent cellulose product,” and states: “The DuPont Cellophane Company has obtained the patent rights for North America, and pending the completion of its factory at Buffalo, ,will be the selling agents in this country for the product which the company is now importing. It is expected that the new factory will be completed in May or June of next year.” In the same magazine for December, 1923, appears another article “That New Wood Product — Cellophane.” In this article the name is used with a small letter. Euler continued his advertisements in the Confectioners’ Journal, in November, 1923, January, February, and March, 1924: “La Cellophane — (Beg. U. S. Pat. Off.) — The peerless transparent wrapping paper.” Euler sold very little of it after August, 1923. Plaintiff on December 28, 1923, applied for registration of the DuPont oval Cellophane trade-mark for “cellulose sheets obtained by the regeneration and transforma-' tion of viscose, * * * ” in whieh application the word “cellophane” was used with a small “c.” In the file wrapper for the same registration, Cellophane appears with a capital, and is referred to as a “trade mark.” The word “Cellophane” was not considered descriptive in this application, and that is shown by the fact that no disclaimer of the word “Cellophane” was made. Where such descriptive words as “Fibersilk” and “Bay-on” were included in registrations with the word “DuPont,” such registrations carried disclaimers of the descriptive word. Bim, testifying in a customs ease, stated that he did not sell film in this country under the name “Cellophane,” that he dealt in “Fenestra,” and that “Cellophane,” “Fenestra,” “Bendiphane,” “Glassolyn” were trade-names relating to the same article. Plaintiff spent only about $500’ for advertising in 1923. “Transparit,” a cellulose hydrate film imported from Germany, was alleged to be first sold here on January 1, 1924. This material was sold in competition with Cellophane, and the competition was substantial. It was sold as transparent wrapping paper, under the trade-marks “Transparit” and “Krystal Klear.” Yerkes, on January 24, 1924, filed an amendment to his company’s application for registration of the DuPont Cellophane oval trade-mark, in whieh “cellophane” is used several times with a small “c.” Yerkes testified that: “* * * this document was prepared by the legal department and signed by me as a matter of course. I have no distinct recollection of what I meant by signing any of this. This was done in a routine way by the patent or trade mark attorneys in Wilmington, and was sent over to me for signature. * * * I think obviously whoever wrote this document was responsible for it. ® It was written by somebody writing for this application in the Patent Office. I didn’t write it. I signed it but I certainly did not dictate it.” Another amendment was filed by Yerkes on February 13, 1924, to the same application, using a capital “C,” and describing tile word as a “trade mark.” “We also- note that our application is rejected on the registration No. 92936 * * * for the trade mark ‘Cellophane’ * * * which had been assigned to plaintiff in 1923.” Subsequent office letters and amendments also refer to “Cellophane” and the trade-mark “Cellophane.” The Literary -Digest, on February 2,1924, carried an article entitled “Cellophane: A Substitute fc-r Paper,” stating: “A substitute free from these defects is cellophane, a French invention, which is being increasingly used abroad and is making its way in this country.” The defects referred to were the defects of wax paper and gelatin. Euler, on February 14,1924, assigned his good will and rights in the word “Cellophane,” which he had used as the importer of the French product, to plaintiff, the American successor of the French concern, but did not sell any physical assets. After the sale, Euler continued to buy from plaintiff and sell as a distributer for plaintiff. DuPont Cellophane Company imported film from the French factory until toward the summer of 1924, when the factory at Buffalo was completed. On April 17, 1924, “Paper” stated that Cellophane is: “A product made of a specially treated paper or pulp, somewhat resembling glassine; made from a bibulous waterleaf similar to that used for artificial silk or vegetable parchment.” In July, 1924, DuPont trade paper advertising was begun (except for two- announcements in the previous year-). In all the trade paper advertising from July, 1924, on, the word “Cellophane,” whether used with “DuPont” or not, has been spelled with a capital “C.” On July 22, 1924, the registration of the DuPont oval with the word “Cellophane” within it was granted. In August, 1924, the advertising of the plaintiff contained the DuPont oval Cellophane trade-mark, and stated: “The New Super Wrap- is Now Available for your Holiday Line.” The description “New Super Wrap” is used; also the term “Cellophane-wrapped.” The advertisement states: “The plant shown above has just been erected at Buffalo, N. Y., by the DuPont Cellophane Company. It is now supplying American Manufacturers with the beautiful protective wrapping material that for years has been manufactured in France * * *.” Various concerns issued advertising containing the word “Cellophane,” in phrases such as: “Transparent La Cellophane display top.” “Wrapped in Cellophane.” “Cellophane Package.” “Wraps of Cellophane.” During the year 1924 the plaintiff published a total of twelve advertisements in four different trade publications. (No advertising was done in 1924 to the public.) In the advertisements the DuPont Cellophane oval device was prominently displayed (but without registration notice, registration, not having been granted until July 22, 1924). Various descriptive terms were used: “Protective wrapping material.” “Super-wrap.” “This wonderful new DuPont wrapping material.” In the October Perfumers’ Journal: “Cellophane, the superior wrapping material, hitherto obtainable only from France in limited quantities, is now available to the American Perfumer * * * .” “The modem, new factory, shown above, has recently been erected at Buffalo, N. Y., by the DuPont Cellophane Co., Inc., and from now on will assure a steady supply as well as maintain the uniform quality of Cellophane.” In September, 1924, the Dictionary of Tariff Information, United States Tariff Commission, stated: “Cellophane and visca are cellulose products, precipitated from the plastic solution of chemically dissolved wood pulp or cotton. Cellophane, sometimes called fenestra paper, flexaline, flexoloid, brilliantine, dramantine, glassolyn, and cellulose glass film, in its simplest form resembles in appearance and texture manufactures of gelatin, photographic films, or thin sheets of isinglass.” An article appeared in the November, 1924, DuPont Magazine, page 6: “ ‘Cellophane — the Super Wrap.” This is the third article in this magazine relating to Cellophane. In it, and thereafter almost without exception in this magazine, the word is used with an initial capital letter. It speaks of it as “ ‘Cellophane,’ the super wrap,” “a wrap of cellophane,” and shows a diversity of its uses. In the December, 1924, DuPont Magazine the fourth article appeared, in which it was described as a “super wrap'.” Throughout the article the capital “C” is used. The file of this magazine contains only two articles on transparent film, using “cellophane” with a small “c,” and both of these were in 1923, just after the plaintiff was organized. The October, 1924, Scientific American stated: “In making cellophane the viscose passes into a manifold. * *' * It is a perfectly transparent resistant substance. * * * All the cellophane that has hitherto been used in this country has come from France, but now announcement has been made that an American company has succeeded in devising a process for making this substance in America.” In the year 1925, plaintiff published a to^ tal of two hundred and twelve advertisements in twenty-five different trade publications, in which the DuPont Cellophane oval trademark was prominently displayed. Following the granting of the registration,, a notice of registration was constantly used. Descriptive terms appear throughout these advertisements such as: “Cellophane is a new and unusual wrapping material of absolute transparency,” “transparent material,” “transparent wrap,” and “transparent wrapping.” In March, 1935', DuPont advertised “Cellophane is a new and unusual wrapping material of absolute transparency, strong,” etc. Also: “Cellophane is a new wrapping material — unusual because it is absolutely transparent,” etc. In the same advertisements appears the DuPont oval; always, after September 5,1924, with the registration notice. In 1925 plaintiff's “direct mail” advertising began, i. e., printed matter distributed by mail. All carried the Cellophane oval, also various trade-mark notices. The distribution of this “direct mail” material has continued 'to the present time. The specimens in evidence are merely typical, as it would require too much space to show samples of all of it. Much of the advertising matter which, was inclosed in these “direct mail” letters was reprints of Cellophane advertisements from trade or consumer publications, in aE of which notice of trade-mark was clearly shown. In 1925, Wolff & Co., Walsrode, Germany, apphed to register the word “Transparit” for ceEulose hydrate films, claiming use since January 1, 1924, and it was granted. This product was sold here in competition with CeEophane. In 1926, plaintiff began to advertise' to the puhlie. It placed seven advertisements in the Literary Digest, which carried CeEophane in the oval and registration notice. The material was described as “outer wrap,” “spark-Eng wrapping material,” “transparent wrapping,” and “transparent protective wrapping material.” Plaintiff's advertising contained warnings. In 1926, plaintiff pubEshed one hundred and sixty-three advertisements in fifteen different trade publications, and in all of them the DuPont CeEophane oval with the registration-notice was displayed. CeEophane was described as “new wrapping material,” “erystal-Eke wrap-,” “protective wrapping material,” “wrapping material, unusual because it is absolutely transparent.” In four issues plaintiff's notice read: “DuPont Cellophane is an unusual material, patented and trade marked, used for wrapping and many other purposes,” etc. Plaintiff advertised a “Booklet — Your product is a showcase of its own,” describing this unusual wrapping material. Beginning in 1926, plaintiff’s labels uniformly contain the following statement, in addition to the oval with the registration notice : “This package is sold subject to the express Eeense restriction to which each purchaser agrees by the acceptance hereof, that no purchaser shall reseE the contents whether cut to size or not, except under the registered trade mark name 'DuPont Cellophane’ * * * » In 1926- the Celluloid Company claimed to have used the word “Proteetoid” for acetate film since AprE in that year. In 1926-, the Henle Company, New York, commenced selEng, in competition with Cellophane, under the names “Transparit” and “Krystal Blear,” a cellulose hydrate film made by Wolff & Co., Walsrode, Germany. Plaintiff warned advertisers to respect its trade-mark rights in the word in their advertising (see Exhibit 128). DuPont’s business really began to grow in 1927. Its advertising was extended to the Saturday Evening Post, in which, beginning in February, 1927, plaintiff inserted half-page advertisements in eight different issues. Each contained the foEowing: “Cellophane is the registered trade mark of DuPont CeEophane Company, Inc., to designate its transparent ceEulose sheets and films.” The DuPont CeEophane oval trade-mark was prominently displayed and, with the exception of the first two. the “Reg. U. S. Pat. Off.” notice was used. Various descriptive terms were used, “transparent wrapping,” “transparent protective wrapping material,” “glistening protective wrapping.” These half-page spreads were circulated to the extent of about 21,000,000 insertions, the circulation of the Post being something like 2,700,-000. Early in 1927 DuPont began to use the notice, “Cellophane is the registered trade mark of the DuPont Cellophane Company, Inc., to designate its transparent cellulose sheets and films,” in all of its advertising, including “direct mail” and on its labels and letterheads. This notice has been used continuously down to date. Red ink was often used to print this and the registration notice. The Cellophane labels, from this date on, have carried the DuPont Cellophane oval trade-mark with the “Reg. U. S. Pat. Off.” notice, the provision that the product should he resold under the registered trade-mark “DuPont Cellophane,” and “Cellophane is the registered trade mark of DuPont Cellophane Company, Inc., to designate its transparent cellulose sheets and films.” Plaintiff continued in 1927 its trade advertising in seventeen trade publications, in which the oval trade-mark, with registration notice, was prominently displayed, as was the notice, “Cellophane is the registered trade mark of DuPont Cellophane Company, Inc., to designate its transparent cellulose sheets and films”; both often being in red ink. The plaintiff also continued in 1927 direct mail advertising, which was mailed with letterheads carrying trade-mark notices referred to above in red ink, and there was also included therewith price lists, which from 1927 to date have carried the notice, “ ‘Cellophane’ and/or ‘DuPont Cellophane’ are the registered trade marks of DuPont Cellophane Company, Ine., to designate its transparent cellulose sheets and films,” together with a prominent display of the DuPont Cellophane oval trade-mark with the “Reg. U. S. Pat. Off.” notice. Numerous pieces of advertising matter were mailed to customers and prospective customers. Plaintiff’s advertising to the public was extended in 1928 to full-page space and the use of two colors. For specimens of consumers’ advertising see Exhibit 47, and for trade advertising see Exhibit 41. Five issues of the Saturday Evening Post, March, May, June, September, and November, 1928, were used. The circulation of the Post was approximately 2,700,000. The total appearances for this advertising was 13,500^000. In this advertising, the word “Cellophane” is prominently displayed in juxtaposition with the oval and the two trade-mark notices. In three instances the oval is in red ink. The product is described as “transparent wrapping,” “transparent sheets,” etc. Birn & Waehenheim were selling in 1928 film under the name of “Fenestra,” which they described as “transparent wrapping.” The Celluloid Company claimed to be selling film under the name of “Proteetoid,” which name it registered in August, 1928. Modern Packaging refers to film of various manufacturers as “transparent wrapping,” “transparent paper,” “transparent covering,” “transparent cellulose wrapper.” Cellophane was now being used as a wrapping in over thirty industries, and companies using it began to refer to it in their advertisements. Prior to 1928, there had been some use of the expression “wrapped in Cellophane,” but it was not until the plaintiff’s consumer advertising had become effective that such expressions became general. In 1928, many customer advertisements and articles in public press referred to Cellophane, some with the small initial “e,” and others with the capital “C.” The customers’ advertising, in the period 1927-1932, reflects the increasing uses for plaintiff’s material, and the desire of users to' take advantage of its popularity by advertising their products as “Wrapped in Cellophane,” “Cellophane Wrapping,” and the like. Plaintiff began in 1928 to check such advertising, and where errors came to its attention, to make every effort, through correspondence and direct approach, to get the trade to indicate that Cellophane was not a common word of the language. They asked to have it italicized or underscored, or used ■with all capitals in a distinctive form. They did not attempt to describe details. Plaintiff always wished to have the word Cellophane in customer advertising spelled with a capital “C,” or quoted, or distinctively marked, because it wanted it identified as a trademark, and wanted them to use it so it would appear as a trade-mark. Plaintiff’s president stated the policy of his company to be as follows: “ * * * our policy has been to attempt iu every way to get them to use the word Cellophane as it should be used * and as we thought it should be used * * * . We thought it should be used as a trade mark name and we endeavored, where customers did use the word Cellophane, to get them to use it as such * * * . ¥e wanted them to show in some way that it was a trade mark name of our product * ’* * . We endeavored, either by mail or by personal contact, to impress the customer with the fact that this was our trade mark name and get him to respect it.” “We tried to get him to respect the fact that this was our trade mark name. * * * We tried through our sate organization to get customers who advertised their product with Cellophane, with the word Cellophane, to use the word as we wanted him to use it. * * * The policy of the company, broadly speaking, was to have this word respected, and so far as I know an endeavor was made to do that.” The use of a «mall “e” was not compatible with plaintiff’s policy. The plaintiff asked Modern Packaging to capitalize the letter “C” in Cellophane, and not use it with a small “e.” Modern Packaging, after plaintiff protested, used the term {editorially) “transparent eellulose sheetings” or “transparent cellulose wraps.” Numerous letters were written to stores, newspapers, magazines, and others, protesting against the use of the word Cellophane except as a trade-mark; the following being illustrative of the form of notice which was given in all of these letters, viz.: “Our legal department wishes us to point out, however, that Cellophane is a registered trade mark, not a generic term, and therefore should be spelled with a capital ‘C.’ ” The letters were written on plaintiff’s regular letterheads, which carried the notice in red: “Cellophane is the registered trade mark of DuPont Cellophane Company, Inc., to designate its transparent cellulose sheets and films.” It was not the policy of the plaintiff to ask its customers not to use the words “DuPont Cellophane,” nor was it the policy to ask them habitually to use the DuPont oval. Plaintiff wanted the word Cellophane in customer advertising identified as a trade-mark. The company’s policy was to follow this plan diligently. It did not attempt to drive its customers out of business. It was not a part of the company’s poliey to refuse to sell people who would not use the word Cellophane in their advertising as the company wanted it used. There was not a specific list of do’s and don’ts, but from the early days of plaintiff’s business, letters were written, etc., to agents and various people that Cellophane was the plaintiff’s trade-mark. It was against trade practice to try to compel customers to advertise reference to the trade-mark character of the word Cellophane. “It is good advertising practice and common advertising practice to use a trade name with a capital letter, or all capitals, or in quotation marks, or in italics or underlined, for instance, taking the trade name Duco, or Kodak, or Vapex; that is what is common advertising.” It would be presumption for plaintiff to ask its customers to advertise the word Cellophane accompanied by the word “trademark.” It would not be good business practice, because it would be asking the customer to spend his advertising money and detract from his own advertising effort. The customer would have been glad to do it, if plaintiff had paid part of the cost, and plaintiff had plenty of offers of that sort. Tihiey, of General Baking Company, called by defendant, testified that if the Sylvania Company asked him to advertise “Sylphrap” in his advertising, he would not do it, because “ * * * we are selling bakery products, not wrappers.” Plaintiff in 1929 inserted six full-page, two-color advertisements in the Saturday Evening Post. The two trade-mark notices were always used, also) descriptive terms, as “modem wrapping,” “scientific wrapping material,” “transparent wrapping material,” “transparent cellulose sheets and films.” Plaintiff, in 1929, also published trade advertisements in seventeen different publications, in which the word Cellophane appeared with the two trade-mark notices. Descriptive terms used were “modem wrap,” “wrapping,” “transparent wrapper,” and “material for wrapping.” Direct mail advertising was carried on in 1929’, and the trade-mark notices above referred to were employed throughout. In January, 1929, a pamphlet entitled, “The Modem Merchandising Aid,” waá sent out. It said: “This new factor is the sparkling, transparent wrapping material which is seen everywhere as a wrap on candy boxes and many other products of all descriptions. It is DuPont Cellophane. * * * The word Cellophane is not a generic term, but is the registered trade mark of the DuPont Cellophane Company to designate its transparent cellulose sheets and films.” April 1, 1929, plaintiff succeeded to the business of the corporation of the same name formed in June, 1923. The certificate of incorporation was obviously copied from the certificate filed in 1923, and used the small “c.” The object clause states the purpose to be: “To manufacture, buy, sell, import, export, ask, prepare, treat, finish and in all ways handle and deal in cellophane, transparent wrapping material, viscose products, textiles, fabrics, materials and articles manufactured from viscose or nitro-eellulose, or of materials or articles entering into composition or manufacture thereof * * .” June 11, 1929, plaintiff’s attorney wrote to the Commissioner of Patents, that Cellophane was the registered trade-mark of the plaintiff, and cited the trade-mark registration, and requested that examiners be instructed not to permit the use of the term in patent specifications. June 21, 1929', the chief clerk of the Patent Office replied that the Patent Office could not undertake to supervise the terms used by applicants for patents, to the extent of excluding trade-marks from the description in patent applications. September 1, 192,9', Birn & Waehenheim sold their business to the Sylvania Industrial Corporation. The trade-mark “Fenestra” of Birn & Waehenheim was well known before this sale. When Sylvania entered the field, there were four companies manufacturing transparent material, which was sold, as follows: DuPont “Cellophane,” Sylvania “Fenestra” and “Sylphrap,,” Eastman “Kodapak,” and Celluloid Corporation “Proteetoid.” Newark Paraffin & Parchment Paper Company sold an acetate sheeting under the trade-name “Aquatone.” Other transparent film was sold as “Transparit.” The descriptive terms used for all these products were “transparent wrapping material,” “transparent cellulose,” and the like. Kodapak is not the same as Cellophane technically, but is practically. Kodapak is cellulose acetate; Cellophane is cellulose hydrate; Proteetoid and Aquatone are also acetate products. These various trade-marks are registered. Henle Waxed Paper Manufacturing Company sold “Transparit” under its own trademark “Krystal Klear” as “transparent wrapper.” Kodapak and Proteetoid are the same as Sylvania and DuPont products, so far as the general usage is concerned. August 9,1929', in an interview published in the New York City Journal of Commerce regarding the plans for Sjdvania’s new plant at Fredericksburg, Va., Dr. Wallaeh, Sylvania’s president, is reported to have stated: “In this plant we are going to manufacture transparent paper similar to the imported and domestic types which are known under the trade names ‘Fenestra,’ ‘Cellophane,’ etc.” October 28, 1929, Hopkins, of plaintiff’s legal department, warned Sylvania against using “Cellophane.” Dr. Wallaeh replied November 2,1529, and stated: “We have no intention of using the word Cellophane either by itself or in conjunction with our company’s name, nor to in any way interject the slightest difficulty in your continuing to do so as, long as it does not interfere with our doing business and marketing our products under our own trade mark.” November 1, 1929, Birn & Waehenheim and Sylvania Industrial Corporation announced that Sylvania had acquired the business of Birn & Waehenheim, and would continue to- import Fenestra until after the completion of its manufacturing plant at Fredericksburg, Ya. The word “Cellophane” was not mentioned. This was followed by an announcement on November 27,1929, referring to many inquiries received from customers and friends, asking, “When we will be able to supply transparent cellulose sheets,” and stating that pending the construction of the new plant, “meanwhile our ability to import the present grade of Fenestra permits us to rush the completion of the first unit for the production of our moistureproof Fenestra under a new process of our own.” The word “Cellophane” was not mentioned. Sylvania instructed its advertising agents to use the generic term “transparent cellulose sheets” or “wraps” for its product, and such a description appeared in all advertising. Webster’s New International Dictionary earned the following definition of “Cellophane” : “Viscose solidified in thin transparent waterproof sheets or strips, bearing the trade mark Cellophane. It is used for wrapping confectionery, ornamental novelties, surgical dressings and the like. * * * ” In 1929 plaintiff wrote letters to users and publications calling attention to the fact that “Cellophane” is its trade-mark, and protesting against misuse of the word. In the year 1930, plaintiff extended its customer advertising to seven issues in the Saturday Evening Post, and went to four colors. The word “Cellophane” was prominently and distinctively displayed in association with the name “DuPont,” in all of these advertisements. The plan inaugurated in 1927, of using a trade-mark notice including a descriptive term, was continued, and every advertisement carried the notice, “Cellophane is the registered trade mark of DuPont Cellophane Company, Inc., to designate its transparent cellulose sheeting,” as well as the registration notice often in red ink. Descriptive terms such as “wrapping/’ “transparent wrapping,” and “wrap” were used. The circulation of the Saturday Evening Post was over 2,900,000, making a total of 20,300-,000' appearances of these advertisements. In 1930 there were 120 insertions of trade advertising by plaintiff in sixteen different publications, all of which carried the trademark notices hereinbefore referred to. In addition, descriptive terms were used throughout this advertising, such as “wrap,” “modem "wrapping,” “wrappers,” etc., and in many of the advertisements the name “DuPont” was associated with the trade-mark “Cellophane.” March 25, 1030', plaintiff registered DuPont Cellophane in oval for caps and bands, etc., No. 269^030, and the DuPont Cellophane in oval with the word “Moistureproof” beneath the oval, for moistureproof cellulose sheets, etc., No. 269,111. In neither of these registrations was the word “Cellophane” disclaimed as being descriptive. Beginning with 1930 and running down to date, Sylvania has published numerous advertisements in trade papers which contain such] expressions as “Sylphrap-, the finest transparent cellulose sheets,” “Sylphrap-, the aristocrat of transparent wrappers.” In many the “Sylphrap” and “Nymphrap” labels were displayed reading: “Sylphrap— quality’s best attire — Reg. U. S. Pat. Off.— Transparent cellulose paper,” and “Nymph-rap- — Extra—Quality’s moistureproof protection — Reg. U. S. Uat. Off. — Moistureproof transparent cellulose paper.” In none of these advertisements has the word “Cellophane” been used. Prior to this date Sylvania attempted to imitate Cellophane by use of “Sylphane.” DuPont protested and filed an opposition, on the ground of its resemblance in sound to “Cellophane.” Wallaeh, Sylvania’s president, wrote plaintiff: “In view of your present exclusive use of what we consider your real trade mark, viz., ‘DuPont Cellophane,’ we frankly admit that this possibility had not occurred to us. However, we are just as anxious as yourselves not to have any such confusion occur, even if only in your own mind. In conformity with our letter of November second, 1920, we take pleasure in advising you that contrary to legal advice, we will allow the date of June third to pass without contesting your opposition.” Hatt, plaintiff’s general manager, replied June 5th, stating: “We appreciate very much the spirit expressed in your letter on this subject, and assure you that your position in this matter is very gratifying to us. • • *» May 25-, 1930, Sylvania applied for registration of the word “Sylphrap^’ as a trademark for sheets made of regenerated cellulose in Class 1, Raw or Partly Prepared Materials, claiming use since May Í6, 1030, and registration No. 276,127 was issued on October 7, 1930. The word “Cellophane” was not mentioned. Sylvania on its labels and in its literature has never used “Cellophane,” but always such terms as “transparent cellulose,” “transparent wrapping,” “transparent cellulose paper,” “transparent wrapper,” “transparent cellulose sheets.”. The Mirror Candy Company, in its interoffice requisitions, orders, and receipt book, used the word “Cellophane,” but the material was supplied by Sylvania. The direct mail advertising of plaintiff for the year 1930 carried the two trade-mark notices in red ink at the top of letterheads. The price lists for the year 1930, on the front p-age and prominently displayed, carried the notice: “‘Cellophane’and/or ‘DuPont Cellophane’ are the registered trade marks of DuPont Cellophane Company, Inc., to- designate its transparent cellulose sheets and films.” Also: “‘Cellophane’ and/or ‘DuPont Cellophane’ is sold subject to the express license restriction to which the purchaser agrees by the exhibit thereof, that no person shall resell it either in the delivered sizes or cut to smaller sizes except under the registered trade mark names ‘Cellophane’ and/or ‘DuPont Cellophane.’ * * *” Plaintiff continued to notify users that Cellophane is its trade-mark, and to protest against its misuse. In 1931, plaintiff continued its advertising campaign in the Saturday Evening Post. Eight four-color pages were used. Good Housekeeping Magazine was added, with five four-color pages. The circulation of the Saturday Evening Post in 1931 was over 2,900,000, and of Good Housekeeping over 1,700‘,000, and the total of advertising messages in these two publications was well over 3-2,000,000'. The two- trade-mark notices appeared in all of the advertising. Descriptive terms, such as “Modem wrapping,” were used. In 1931, advertisements appeared in twelve different trade publications with the trade-mark notices above referred to, and descriptive terms such as “wraps,” “wrapping,” and the like. Some space was. devoted to the moistureproof material. Direct mail advertising contained and carried the trade-mark notices throughout, and descriptive terms such as “transparent wrapper,” “wrap,” “transparent protective sheeting,” were used. Some of the mail matter carried a label reading: “Cellophane being a registered trade mark of the DuPont Cellophane Company and not a generic term should be spelled with a capital ‘C.’ We will appreciate your cooperation in this respect.” March 25, 1931, plaintiff’s attorney wrote the Commissioner of Patents, protesting against use of “Cellophane” in patents. April 28, 1931, the Commissioner of Patents replied that in his judgment the fact that the specification writers employ trademark names in their specifications will not endanger trade-mark rights. In July, 1931, defendant began handling cellulose sheets which it bought from Sylvania. The material sold by defendant was billed and labeled “cellulose,” because, as defendant’s secretary saidj “cellulose was the descriptive name for the article.” Defendant was told by Sylvania at the outset not to use “Cellophane.” Defendant offered patents in evidence in some of which the word Cellophane is spelled with a small “c,” and in others with a capital “C,” or in quotations. In three of these patents which issued with the word “cellophane” spelled with a small “e,” the applicant used a capital “C.” In another, the file wrapper showed that the examiner stated to the applicant, “The word ‘Cellophane’ is trade marked and cannot therefore be used in the specifications,” to which the applicant replied, “The word ‘Cellophane’ is capitalized in the specification and its use is, therefore, believed to be entirely proper.” The patent issued accordingly. Plaintiff offered in evidence sixty-six patents granted by the Patent Office in which the word “Cellophane” was not used, and in which descriptive terms were used such as “Films of cellulose,” “Cellulose hydrate,” “Viscose film,” “Transparent wrapper.” Another group of nineteen patents granted by the Patent Office offered in evidence set off the word Cell