Early Roofing Trademark Litigation: The Standard Paint Co. v. Trinidad Asphalt Manufacturing Co.

1910s Ruberoid Roofing Standard Painting Match Safe (Front)

In 1886, the Standard Paint Company was founded by Julius Livingstone and Ralph J. Shainwald in a remodeled sawmill in Bound Brook, New Jersey. Among the company’s 18 employees was a young chemist named William Griscom, who focused his creativity on developing new ideas for asphalt compounds. In 1892, Griscom and Standard Paint created ready-to-lay rolls of roofing made by impregnating felt with a gum composed of the residuum of animal fat. Both sides of the impregnated felt was then covered with a coarse-grain or flaked aggregate. Because the gum used to manufacture the product closely resembled rubber, Standard Paint adopted the term “Ruberoid” as a trade name for the product. In 1901 Standard Paint registered the name with the U.S. Patent Office as a trademark. The trademark covered those solid substances in the nature of soft, flexible rubber in the form of flexible roofing. 

In 1904 the Trinidad Asphalt Manufacturing Company developed and advertised a roofing material similar in appearance and composition to Ruberoid except that vegetable oil was used to treat the felt rather than animal fat residuum. Trinidad termed their product RubberO. Shortly after RubberO hit the market, Standard Paint sued Trinidad Asphalt in federal court for trademark infringement and unfair competition under the theory that the names RubberO and Ruberoid as well as the products themselves, were very closely similar such that Trinidad deceived the public into the belief they were purchasing Ruberoid when in fact they were purchasing RubberO. 

The federal trial court found in favor of Standard Paint, and Trinidad appealed its loss to the Eighth Circuit Court of Appeals. With regard to the trademark infringement, the appellate court pointed to a well settled rule in trademark law that no one can appropriate as a trade mark, a generic name nor a name that is descriptive of an article of trade (such as rubber) its qualities, ingredients or characteristics. The appellate court reasoned that Ruberoid easily fit into this rule when the trademark was applied to articles such as RubberO which contained no rubber in its composition, but nonetheless appeared to possess the qualities of rubber. The Court went on to state that if it were to enforce Standard Paint’s injunction against Trinidad for using the term RubberO, then it would logically follow that none of the other large number of manufacturers making roofing products that resembled rubber could lawfully call their products “rubber roofing” or “rubberoid roofing,” because of the similarity to those words and the term “Ruberoid.” Such a result, concluded the Court, would effectively allow Standard Paint to fence off, and appropriate to its exclusive use, a very common part of English vocabulary. 

With regard to the claim of unfair competition against Trinidad, the appellate court stated that the rule relating to unfair or fraudulent competition does not necessarily involve the right to the exclusive use of a word or symbol. Rather, the general rule is that no one should be permitted to sell his or her goods as the goods of another. The court concluded that there was no risk of this harm occurring in the case of RubberO because there was no imitation of the arrangement, color, design or general appearance of the wrappers and markings on the packages. Additionally, noted the Court, each package of RubberO contained the address and location from where it was shipped providing transparency regarding the source and origin of the product. In the end, the appellate court reversed the decision of the trial court, finding in favor of Trinidad Asphalt. 

Standard Paint appealed the decision to the U.S Supreme Court where the Court agreed with the rationale of the appellate court. The Supreme Court affirmed the appellate court’s decision and the case was ultimately dismissed. Despite the legal hurdles early on, Ruberoid was considered a national success for Standard Paint. Indeed, such a success that in 1921 the company changed its name to The Ruberoid Company.