Before EVANS, FRANK, and CLARK, Circuit Judges.
Claim 1 of Hedenskoog patent No. 1,714,310, dated August 11, 1928, discloses a device for controlling the movement of bowling-balls on return ways in bowling-alleys. The trial judge held that it was not infringed by defendant's device. Having so decided, he held that he could not consider the defense of invalidity or the counterclaim of defendant, American, which sought a declaratory judgment of invalidity.
He was wrong. Even without the defendant's counterclaim, to hold non-infringement did not preclude a holding of invalidity as an additional ground for decision in favor of a defendant; the public good will usually be served, in such circumstances, by finding invalidity. And to consider that issue was surely proper here, because of the counterclaim asking a declaratory judgment of invalidity. Altvater v. Freeman, 319 U.S. 359, 363, 63 S. Ct. 1115, 87 L. Ed. 1450.*fn1
We think claim 1 of the patent invalid.*fn2 In Brunswick-Balke-Collender Co. v. National Billiard Supply Co.,*fn3 43 U.S.P.Q. 10, it was held valid despite the Winn patent, No. 499,075, dated June 6, 1893, because the court found that Winn disclosed an inoperative structure and was not anticipatory. We do not agree. The claim in suit reads literally upon Winn, except that in Winn the dashpot actuating lever is located above the ball rather than below it as part of the rail. Without going into details, suffice it to say that, while Hedenskoog reveals some novelty, we think the novelty did not involve inventive ingenuity. Enough was taught by Winn so that, instructed thereby, a mechanic skilled in the art could easily contrive Hedenskoog's device. That Winn had never been used commercially is immaterial. Collins v. Emerson, 1 Cir., 82 F.2d 197, 201. We do not think that it was shown to be inoperative.
Moreover, there is present in this record evidence not before the court in the National Billiard Supply case: Plaintiff's expert here testified that the adjustability of the dashpot exhaust port is "a very essential feature" of the Hedenskoog structure; but neither in the patent specifications nor drawings is there shown an adjustable exhaust port; indeed the patent describes a fixed exhaust port with no means of controlling or varying its size.
As the patent is invalid, we do not consider the issue of infringement.
2. The trademark and unfair competition:
A majority of the court holds on the following basis, that the defendant infringed plaintiff's trademark:
Plaintiff's registered trademark is applied to bowling pins. It "consists of a crown device in red, painted or otherwise impressed around the neck of the pin." Defendant's mark was also located at the neck of the pin, was red in color, but consisted of adjacent, touching diamonds, instead of the connected triangular-half-diamond, of the plaintiff. Plaintiff began the use of its mark in 1933 and widely advertised it. It has sold over ten million of its pins so labeled. Defendant adopted its use of the connected red band of diamonds in 1938. There was evidence that at a distance of 60 to 65 feet, the two bands appeared similar. Plaintiff's band was on its two top grade pins. These pins sold at higher prices than those of defendant's. The two marks seem to the majority of the court to be confusingly similar. The identity of color, of location on the pin, of the upper half of the mark - all substantiate the trial court's finding: "We find the defendant's device confusingly like the plaintiff's mark. The defendant's officers knew it might be thought so when they selected it. There was evidence that their composition of it was not only knowing but intended to create similarity but we decline to find the latter." Defendant contends that there could be no confusion between the pins because the pins came in boxes with the respective maker's names clearly on them; that since there was no confusion there could be no infringement; and that no evidence of actual deception was presented.
Upon all the evidence, with all the possible conflicting inferences, the majority of the court feels required to accept the district court's findings on this disputed fact issue. Indeed the majority considers that finding the correct view of the evidence, believing it in fact impossible to conclude other than that defendant adopted its mark because of its similarity to plaintiff's, which was used so extensively on plaintiff's pins.
On this issue I dissent. I think, that, for the following reasons, defendant did not infringe: It is clear, I think, that the purchasers of pins, who are the owners of bowling-alleys, are not confused, for they see the pins at close range where they are clearly distinguishable. I shall assume, purely arguendo, that confusion of users of bowling-alleys, who are not purchasers of pins, would be sufficient to show infringement. But the record evidence shows that in fact they are not confused or likely to be: The ordinary bowler, so the evidence shows, has no preference for Brunswick's pins. He sees the pins only at the end of the alley, a distance of 60 to 65 feet. At that distance, he cannot distinguish Brunswick's from American's marking. A relatively small fraction of bowlers demand Brunswick pins; the only evidence on the subject in the record indicates that such bowlers insist on inspection to ascertain that their ...