Standard Paint Co. v. Trinidad Asphalt Manufacturing Co.

Background

A West Virginia roofing manufacturer called the Paint Company registered and long used the name “Ruberoid” for flexible roofing sold in rolls. The rolls are about three feet wide and seventy feet long, come in one-, two-, and three-ply thicknesses, and are wrapped with paper printed “Ruberoid Roofing,” directions, and the maker’s name. The Paint Company sued a Missouri rival, the Asphalt Company, which sells a similar-sized roofing product called “Rubbero,” claiming trademark infringement and unfair competition. The lower courts rejected both claims and the case reached this Court.

Reasoning

The core question was whether “Ruberoid” is a valid, protectable mark and whether the rival’s use of “Rubbero” wrongly passed off its goods as the Paint Company’s. The Court explained that a mark must point to the origin of goods, and that generic or clearly descriptive words cannot be privately monopolized. “Ruberoid” is formed from “rubber” plus “-oid” (meaning “like”), and describes the product’s rubber-like flexibility and waterproof quality. A mere misspelling does not make such a descriptive word a distinctive trademark. On unfair competition, the Court said the wrong consists in selling one maker’s goods as those of another; the record showed only similarity in the names, while wrappers and markings differed, and no fraud on the public was proved. The Court therefore affirmed the judgments against the Paint Company.

Real world impact

The decision leaves the rival free to keep using “Rubbero” and confirms that descriptive product names cannot be monopolized as trademarks. Makers remain able to protect their reputations only when clear passing-off or consumer deception is shown. The decree of the lower courts was affirmed.