191 F. 489 | 9th Cir. | 1911
(after stating the fact's as above).
‘•That the defendant continues to unlawfully interfere with and divert your orator's business and the profits threfrom to its own use and behoof, and tha t tile public lias been and continues to be misled, and that the beer the manufacture of defendant has been and continues to be sold as and for the true and genuine beer of your orator’s manufacture for many years known and In demand as hereinbefore set fortli, and that the use by defendant of <he said infringing mark, of your orator and of his peculiar configuration thereon lias the effect of enabling and promoting the impairment of the reputation of and the demand for your orator’s beer, and the fraudulent; and unlawful sale and substitution of the defendant’s beer as and for the beer of your orator’s manufacture, to your orator’s great loss and injury and to the great loss and injury of the public.”
“The claim to a trade-mark of a label is void if the label is published- before it is registered as a trade-mark” — citing Bump on Patents and TradeMarks (2d Ed.) p. 502, and notes.
This authority is not at present accessible ; but, whatever may be its text, in, this country a trade-mark is acquired by use, and the use must antedate registration. Without it registration cannot be had. By section .1 of the act of February 20, 1905, supra, the owner of a trademark domiciled in this country is entitled to have the same registered, and by section 2, in order to procure registration, he must show that such trade-mark is used in commerce among the several states or within foreign, countries. So that registration comes only after acquirement of the right to a trade-mark by use. See, also, Hopkins on Trade-Marks, §§ 25-27. The complaint shows user prior to registration. If that be publication, complainant did only what the statute required of it. The objection is untenable.
Some reference to the authorities will aid us in the solution. McLean v. Fleming, 96 U. S. 245, 24 L. Ed. 828, is a leading case upon the subject. The court there says:
“Much must depend, in every case, upon the appearance and special characteristics of the entire device; but it is safe to declare, -as a general rule, that exact similitude is not required to constitute an infringement or to entitle the complaining party to protection. If the form, mark, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer’s device, is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, then the similitude is such as entitles the*495 injured party to equitable protection, if he takes seasonable measures to assert his rights, and to prevent their continued invasion. * * *
“Colorable imitation,, which requires careful inspection to distinguish the spurious trade-mark from the genuine, is sufficient to maintain the issue; but a court of equity will not interfere, when ordinary attention by the purchaser of the article would enable him at once to discriminate the one from the other. Where the similarity is sufficient to convey a false impression to the public mind, and is of a character to mislead and deceive the ordinary purchaser in the exercise of ordinary care and caution in such matters, it is sufficient to give the injured party a right to redress, if he has been guilty of no laches. * * *
“Two trade-marks are substantially the same in legal contemplation, if the resemblance is such as to deceive an ordinary purchaser giving such attention. to the same as such a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.’’
The lower federal courts have uniformly announced the principle in numerous cases. In Enoch Morgan’s Sons Company v. Hunkele, Fed. Cas. No. 4,493 it is said;
“It is not a question whether the defendant has in all respects imitated the trade-mark of the complainant, but whether he has so imitated it that the purchaser has been imposed upon.”
So in Shaw Stocking Co. v. Mack (C. C.) 12 Fed. 707, the court affirms:
“It is not necessary that the resemblance produced should he such as would mislead an expert, nor such as would not be easily detected if the original and the spurious were seen together. It is enough that such similitmle exists as would lead an ordinary purchaser to suppose that he was buying the genuine article and not an imitation.”
And again, in Cantrell & Cockrane v. Butler (C. C.) 124 Fed. 290, the court says:
“Conformity of one label to another sufficiently to attract and deceive is not excused by ability to analyze the offending label and point out differences, which if known and recognized would avoid confusion. The ensemble does the mischief; the usual purchaser neither abstracts nor analyzes for the purpose of diferentiation and judgment.”
To the same purpose is Eagle White Lead Co. v. Pflugh (C. C.) 180 Fed. 579, where the court says:
“The question of infringement is to be determined by the test of domina ncy. The dissimilarity in size, form, and color of the label and the place where applied are not conclusive. Tf the competing label contains the trade-mark of another, and confusion or deception is likely to result, infringement takes place, regardless of the fact that the accessories are dissimilar. Duplication or exact imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate.”
In Kostering v. Seattle Brewing Co., 116 Fed. 620, 621, 54 C. C. A. 76, 77, this court said:
“It is argued, and it is true, that the differences are apparent to any one who will read and examine the labels; but that argument does not meet the ■question which the case presents: Are the resemblances between the two labels such that the consumer is likely to be misled?”
And again, in Keuffel & Esser Co. v. H. S. Crocker Co. (C. C.) 118 Fed. 187, 189:
“While the words alone, if considered apart from the label as a whole, might not be deemed to present so close a resemblance as to constitute in*496 fringement, when connected with the associated lettering and general design, and forming a part of a label almost identical in size, shape, coloring, and lettering'with that of the complainant applied to similar goods, it is very clear that the mind of the purchaser would readily he deceived by the similarity, and be quite as easily induced to purchase the goods of one as the other.”
And in stating the law applicable, the court further said:
“It requires the defendant, in offering his goods to the public, to use such method of wrapping, labeling, and cataloguing of his packages as not to lead an intending purchaser, of ordinary intelligence, using ordinary care, into the mistaken belief that he is purchasing goods placed upon the market by the complainant, when in fact he is purchasing the defendant’s goods.”
Now, to one scanning the detailed description of these two Dutch scenes, or laying the pictures side by side, there could be no trouble in distinguishing the one from the other. But this is not the test. Will confusion result to the purchasing public by the use of the two not brought into direct or special comparison? Would the ordinary customer applying at the counter for “Old Style Lager,” observing the care customary with purchasers in that way, be likely to be deceived or misled into buying “Old German Lager,” if it was offered him marked with defendant’s label ? We are impressed that he would.
A simulation of the most prominent and distinctive features of the complainant’s label is found in the defendant's label. The inn is there, with the legend in slightly different wording suspended from a scroll; the representation of men drinking at a table outside of the inn is there; the barrels or casks in the subway arc there; the monks drinking at a table at or near the casks are there; and the coopering of a barrel is there. In short, the “ensemble” is there, and that, says the court in Cantrell & Cockrane v. Butler, supra, does the mischief. And quoting again:
“The usual purchaser neither abstracts nor analyzes for the purpose oí differentiation and judgment.”
The complaint, fairly construed, we think, shows infringement upon the face of it. What the evidence may show at the trial is quite a different thing.
The judgment of the Circuit Court will therefore be reversed, and the cause remanded, with direction to overrule the demurrer.