211 F. 612 | 6th Cir. | 1914
This is an appeal from an interlocutory decree awarding -injunction and accounting in a suit for unfair competition.
From 1908 until approximately June, 1911, the Colgan Gum Com: pany expended in advertising Colgan’s “Chips” about $250,000, by means of magazine and newspaper advertisements, billboards, window displays, hangers, counter display stands, sample distribution, and otherwise; and complainant, from May 15, 1911, to March 31, 1913, expended in advertising the same product, in ways similar to those employed by the Colgan Company, more than $180,000. The advertising matter of both complainant and Colgan generally contained prominent pictorial representations of the boxes or containers, or both. From the time they were put on the market until January 1913 the sales of Colgan’s Violet and Mint Chips have amounted to about $1,-750,000. The counter display stands put out by the Colgan Company and complainánt were of enameled, metal, consisting of five upright compartments, each adapted to hold four boxes of chips; the stand containing, among other lettering, the words “Colgan’s Chips” prominently displayed, together with the words “The Gum That’s Round,” printed in color on a white circular surface, the character “5c” being in the center of the circle. Colgan’s Chips were delivered to the retailer in distinctive pasteboard cartons, each holding 20 boxes, the cartons being colored to correspond with the boxes they contained, and being prominently marked on the cover (which was provided to be left open) “Colgan’s Mint Chips” (or Violet Chips, as the case might be) “The Gum That’s Round”; the lettering throughout on the cartons being white and having conspicuously displayed on each side and each end of the carton the words “The Gum That’s Round,” contained within a circle, in connection with the words “Mint Chips” or “Violet
About the middle of the year 1912 defendant began putting out a round gum, which it called “Winterton’s Satsuma Chips.” It adopted a box of the precise shape, size, and form of that used by Colgan and complainant, even to the slight depression in the cover of the box, which left more or less of a rim on the upper surface; defendant’s box contained from 7 to 11 'chips. Defendant also enameled its boxes, using two different colors, a light blue and red, respectively; the gum, however, contained in the different colored boxes being apparently the same, including flavor. Defendant also lettered its boxes in white, the inscription upon the top of the box being “Winterton’s Satsuma (Trade-Mark) Chips. A dainty box for the purse” ; the word “Chips” being printed in a distinctive style similar to that word as printed upon complainant’s Violet Chip boxes, and the words “A dainty box for the purse” occupying the same position as complainant’s legend “The Gum That’s Round.” Defendant likewise packed its “Chips” for the use of the retailer in pasteboard cartons, the blank being apparently cut from the same pattern as complainant’s, even to the ears attached to the cover for the purpose of holding it up when the box is open. Defendant’s cartons thus contained the same number of boxes as did complainant’s, and were likewise colored to correspond with the color of the enameled tin boxes contained therein, and likewise had a circle in white prominently displayed on the cover, the sides, and ends of its cartons, in the same relation to the words “Satsuma Chips” as complainant’s circle occupied toward the words “Violet Chips” or “Mint Chips”; the legend within defendant’s circle being “Satsuma—That Regular Make,” so arranged that the word “That” is prominently and alone in the exact center of the circle, as is the word “That’s” in the circle of complainant and Colgan.
Defendant has spent comparatively little in advertising its product in question, its total outlay for all advertising purposes, including free gum, being from $6,000 to $8,000. It has done no pictorial advertising, and but little in trade journals or other periodicals. Its goods have been sold through traveling salesmen in the territory occupied by complainant, and apparently in large part upon the strength of the popularity of complainant’s chips. Since the advent of defendant’s chips, complainant’s sales have been appreciably affected in some localities; and a part of this interference seems fairly traceable to the competition of defendant, whose boxes being of the same size and shape, and at a distance of a few feet presenting the same general appearance as those of complainant (although actually differing in color and otherwise), could be, and in some instances are shown to have been, put in and sold from complainant’s display standards and jars, mixed with boxes of complainant’s chips. The fact that de
After suit, was threatened, and during the last days of November, 1912, defendant formally discontinued the use of its cartons and containers, as' well as the name “Satsuma Chips,” protesting, however, that such discontinuance was only temporary; and about six weeks later, and shortly after this suit was begun, began putting out the same product and in the same style of package, except that the name was changed from “Chips” to “Wafers,” the words “A dainty box for the purse,” formerly printed on the cover, being omitted; and the position and style of type in the word “Wafers” differing from the position and type of the word “Chips” in the former label. The colors adopted were a shade of tan and a slightly different shade of blue. An amended and supplemental bill was filed to meet the new situation. The decree enjoined defendant specifically from manufacturing and putting out chewing gum in round packages of the shape, style, and appearance of either defendant’s “Satsuma Chips” or “Satsuma Wafers” boxes, as well as in defendant’s pasteboard cartons; and'generally from 'manufacturing and putting out chewing gum in colored round metal packages or pasteboard boxes, or under labels, substantially identical with or like complainant’s boxes, packages, and labels, or such as are calculated to deceive purchasers or consumers. Defendant does not assign error upon the specific enjoining of the use of its “Satsuma Chips” boxes and cartons, but does complain that it is adjudged guilty of unfair competition and of the general features of the injunction, as well as the specific enjoining of the use of “Satsuma Wafers” boxes and packages.
Whether defendant’s “Satsuma Wafers” boxes and cartons unfairly compete presents a somewhat different question, but we think different only in degree. If the consideration of these boxes and cartons could be dissociáted from the previous use of and experience with defendant’s “Satsumg, Chips” boxes and containers, we might hesitate to find sufficient misleading similarity .to justify a conclusion of unfair
The judgment of the District Court is affirmed, with costs.
Note.—Defendant’s corporate name was printed on the bottom and on the cover rim of its Satsuma Chips box, on the side only (below the cover rim) of its Satsuma Wafers box, and on the top of its cartons; in each case in less conspicuous position and type than its trade-name.