271 F. 600 | 4th Cir. | 1921
The bill in this case charges that defendant has infringed it by the sale of its wares under the trade-mark “Taka-Kola,” and has also unfairly competed by the use of such words and by the design and ornamentation of its bottles. In dismissing the cause without opinion the learned District Judge of the Western District of Virginia sitting by special assignment may have been influenced by the decision of the Circuit Court of Appeals for the Ninth Circuit in Koke Co. v. Coca-Cola Co., 255 Fed. 894, 167 C. C. A. 214, since reversed by the Supreme Court in the case heretofore cited.
When defendant began business, the plaintiff’s drink had been on sale in most parts of the country, and certainly in Virginia, for a quarter of a century or more. Its business had grown to great proportions, a result due in large, if not in largest, part to the extensive and expensive advertising it has always done, the cost of which in recent years has averaged a million or more annually. Defendant was promoted by some persons who came here from Tennessee, where they or some of them had been connected with a concern which, in the Patent Office, had had a losing fight with the plaintiff over the right to use the words “Tenn-Cola.” Coca-Cola Co. v. Tenn-Cola Co. (Patent Office opposition No. 1894).
Perhaps the geographical proximity of Tennessee to Atlanta, in which plaintiff’s business began, and in which it became so visibly and attractively lucrative, explains why this is not the first instance in which plaintiff has' thought itself compelled to complain of infringement and of unfair competition originating in that state. Coca-Cola Co. v. Nashville Syrup Co. (D. C.) 200 Fed. 157, affirmed in 215 Fed. 527, 132 C. C. A. 39, and of which Coca-Cola Co. v. Duberstein (D. C.) 249 Fed. 763, appears to have been an aftermath; Coca-Cola Co. v. Gay Ola Co., 200 Fed. 920, 119 C. C. A. 164; Coca-Cola Co. v. Tenn-Cola Co., supra.
In the instant case the defendant’s mark “Taka-Kola” consists, as does “Coca-Cola,” of two words, each of four letters and of two syllables. In each phrase a consonant and a vowel alternate, there being in each four of the one and four of the other. In plaintiffs’ a and o each appear twice. Defendant’s has three a’s and one o. The consonant l is common to both, and in each is the seventh letter from the beginning. Plaintiff’s contains three c’s, having in every instance the hard or k sound. Twice defendant replaces the c with a k, and once by a t, the use of which last must be relied upon to distinguish the two words, for in every other respect they are for all practical purposes identical. The two words of plaintiff’s are united by a hyphen; so are those of the defendant. The plaintiff displays its in script. The
There, however, appears to be nothing of substance in plaintiff’s claim that defendant has imitated its distinctive type of bottle. The two designs are not enough alike to justify a finding that as to them there is unfair competition. The defendant, after the manner of others in like case, says it has always wanted to sell its drink for what it is, and to that end has done all that in it lies to distinguish its product from Coca-Cola. The courts have, had frequent occasion to note the scant success which too often rewards such efforts.
In this case it is true that the evidence does not show that the defendant ever asked any one to sell its product as Coca-Cola. It appears that in Richmond, at least, most purchasers know that Taka-Kola is in a way different from Coca-Cola. On the other hand, the similarity of names seems to have suggested to unscrupulous retailers that they could mix defendant’s product with that of plaintiff and sell the compound as Coca-Cola; the marked likeness in taste and color making such a partial substitution safe and easy. At one time, when in Richmond the supply of Coca-Cola ran short, this fraud appears to have been practiced to an appreciable extent.
The argument is ingenious. It is of course true that, because plaintiff’s drink is not patented, any one who knows how can make it without leave or license from plaintiff; but also, because it never has been patented, the name which constitutes plaintiff’s trade-mark for it may not, without plaintiff’s consent, be either used or imitated by another. Buffalo Specialty Co. v. Van Cleef, 227 Fed. 391, 142 C. C. A. 87; Hopkins on Trade-Marks, 3rd Ed. Sec. 51.
May defendant employ, for the sole purpose of bringing its wares speedily and cheaply into notice, a variant of plaintiff’s trade-mark so close as to suggest the latter to every one, thereby turning to its own profit the reputation which the plaintiff has built up through many years of skill and effort, and at the cost of millions expended in advertising its goods under its mark? It may tell the thirsty that its drink is not only as good as Coca-Cola, but that it believes it to be in fact the
It is unnecessary to say that we are deciding the case before us. Here we have found, from all the facts, both infringement of a trade.mark and unfair competition. We are not to be understood as intimating any opinion as to whether plaintiff has or has not any exclusive rights in either of the words which make up the trade-mark, when either is used separately from the other, and under circumstances in which there is no attempt by a competitor to use plaintiff’s property to plaintiff’s damage.
Both on the grounds of unfair competition and of infringement of a registered trade-mark defendant must be enjoined from the further use in its business of the phrase “Taka-Kola,” and from continuing its unfair competition in the simulation of the ornamentation of the-crowns of plaintiff’s bottles, and must account for what it has done. It follows that the decree dismissing the bill of complaint must be reversed, and the cause remanded for further proceedings in accordance .with the conclusions herein stated.
Reversed.