254 F. 553 | 4th Cir. | 1918
Lead Opinion
In these appeals two mixed questions of law and fact are to be decided: Were the words, “The Velvet Kind,” applied to ice cream in 1905, so descriptive of quality that they could not be appropriated as a trade-mark by complainant, Chapin-Sacks Manufacturing Company?
Assuming that they were, did the use by the defendant Hendler, and his successor in business, Hendler Creamery Company, of the words, “The Velvet Kind,” and of containers and wagons similar to those used by complainant, nevertheless amount to unfair competition —the unfair appropriation of the good will of the complainant and the reputation of its ice cream?
“But wlien the word is incapable bf becoming a valid trade-mark, because descriptive or geographical, yet has by use come to stand for a particular maker or vendor, its use by another in this secondary sense will be restrained as unfair and fraudulent competition, and its use in its primary or common sense confined in such a way as will prevent a probable deceit, by enabling one maker or vendor to sell his article as the product of another.” Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118;*557 Elgin Nat. Watch. Co. v. Illinois Watch Case Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365.
Exit that did not give complainant any right to the exclusion of the use by others of the descriptive words in any place where it had not associated its cream with the designation. Hanover Star M. Co. v. Metcalf, 240 U. S. 403, 36 Sup. Ct. 357, 60 L. Ed. 713; Theodore Reclaims Co. v. United Drug Co., 226 Fed. 545, 141 C. C. A. 301. It is true that, in the cases cited, the markets in which the complainant had not established their trade in flour and drugs were much more remote geographically than is Baltimore from Washington. But ice cream is not usually transported from one large city to another, and its sale and distribution is usually within the area in proximity to the place of manufacture. Considered with respect to the usual area, of sale and distribution, Baltimore is as distinct and separate market for ice cream as the Alabama market is from a city in Ohio for flour or patent medicines. Complainant had no plant in Baltimore, and has never attempted to compete for the .Baltimore trade, and therefore it had no right to restrain any one from the use of the words, “The Velvet Kind,” in that city.
The defendant Hendler, living in Washington, attracted by the words, “The Velvet Kind,” used by complainant, some time in 1905 went into bxtsiness in Baltimore, copying the words, “The Velvet Kind,” and imitating in a general way the marks and colors on the containers and wagons which the complainant used. He, and the ITendler Creamery Company, his successor, built up a large business in Baltimore. Since the complainant had no appreciable trade in Baltimore, and had not made the words, “The Velvet Kind,” to denote its cream, the adoption of the words there by the defendants, though an imitation, was not in itself proof of a fraud or unfair competition.
“The intentional use of another’s trade-mark is a fraud; and when the excuse is that the owner permitted such use, that excuse is disposed of by affirmative action to put a stop to it. Persistence, then, in the use is not innocent, and the wrong is a continuing one, demanding restraint by judicial interposition when properly invoked. Mere delay or acquiescence cannot defeat the remedy by injunction in support of the legal right, unless it has been continued so long and under such circumstances as to defeat the right itself, * * * nor will the issue of an injunction against the infringement of a trade-mark be denied on the* ground that jnere procrastination in seeking redress for depradations had deprived the true proprietor of his legal right.” Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526; Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60.
Hendler began to sell ice cream as “The Velvet Kind” to an Annapolis dealer in 1906; but his orders were small, and he did not by their extent, or by advertisement, or in any way, make the words, “The Velvet Kind,” significant or of special value in the Annapolis market. In 1908, the complainant entered the Annapolis market, and by advertisement and distinctive containers and wagons made the words, “The Velvet Kind,” signify to dealers a particular kind of ice cream of excellent quality made by it. Thus it built up in that market a large trade. Analysis of the somewhat conflicting testimony would not be valuable, but it leaves no doubt of the correctness of the conclusion of the District Court that in Annapolis the defendants, by adopting the words, “The Velvet Kind,” made popular by complainant’s efforts, and by the use of imitative containers and wagons, brought about confusion of their cream with that of the complainant, and that they profited by the confusion to complainant’s loss. Especially did they avail themselves of these methods, and make them unfairly profitable, when the opportunity was furnished by complainant’s increase in the price of its cream.
We think the decree of the District Court went too far in enjoining the defendants from entering territory in which the complainant
The decree will therefore embody these conclusions: (1) The words, “The Velvet Kind,” applied to ice cream, being descriptive, are not Valid as a trade-mark. (2) Advertisement and sale by the defendants of their ice cream in the city of Baltimore did not constitute unfair competition with the complainant. (3) The complainant has an established business for ice cream under the designation of “The Velvet Kind,” indicated by its advertisements, its containers and wagons, in Washington, D. C., Richmond and Alexandria, Va., and Annapolis, Buckeyestown, Woodstock, and Frederick in the state of Maryland. (4) The defendants have been competing unfairly with the complainant in Annapolis and Laurel, in the state of Maryland. (5) The defendants should be enjoined from the advertisement and sale of ice cream under the designation, “The Velvet Kind,” and from the use of containers, wagons, and other instrumentalities of the trade similar to those used by the complainant, in Washington, D. C., Richmond and Alexandria, Va., Annapolis, Laurel, Buckeyestown, Woodstock, and Frederick, in the state of Maryland, and all other places where the complainant has established the sale of its ice cream under the designation of “The Velvet Kind,”- until they shall submit to the District Court a plan of business which will satisfy the court that their cream will not be confused with that of the complainant, and will not in any wise unfairly affect complainant’s business. (6) Complainant is entitled to an accounting as required by the District Court. (7) The un
Modified.
Concurrence Opinion
I concur in the conclusions of the majority of the court, as stated in paragraphs 3, 4, 5, 6, and 7, and dissent from the conclusions in paragraphs 1 and 2, though I am strongly inclined to the view that’the complainant, as between itself and the defendants, is not entitled to the relief prayed for, respecting the sale of its ice cream in the city of Baltimore, because of laches in the prosecution of its suit, if, in fact, it was not estopped by the dismissal of the suit instituted in the state court at Baltimore against the defendants to prevent them from infringing the complainant’s trademark, and unfairly competing with it in its ice cream business; said defendants having duly appeared in said cause.