235 F. 657 | 6th Cir. | 1916
The appellant, Kellogg Toasted Corn Flake Company, a Michigan corporation, brought suit against
“(4) In finding and holding that the words ‘Toasted Com Flakes,’ as applied to the articles in controversy, are a descriptive term and not susceptible of exclusive appropriation.”
“(9) In finding and holding that the evidence in this case shows no effort on the part of defendant to obtain the business of complainant, except only the use of the name ‘Toasted Corn Flakes,’ and that such name is, in fact, under the evidence so distinguished that there is no probability of confusion or deception arising.”
It is contended for appellant (1) that the words “Toasted Corn Flakes,” as applied to appellant’s food product, constitute a technical, though unregistered, trade-mark; and (2) that assuming, though not admitting, that the words were not susceptible of original and exclusive appropriation as a valid technical trade-mark, appellant has, nevertheless, by long prior and exclusive use of the words, “in connection with its novel invented article, caused the words in the public mind to acquire a secondary meaning, designating” its “particular product”; and that defendant has intentionally and unfairly invaded appellant’s right, and so is guilty of unfair competition.
It cannot be doubted that the effect of this process is to toast the corn flakes. In the first place, in our view of the evidence; it is not open to appellant to claim that, as applied to its product, the word “toasted,” when considered either alone or in combination with the words “corn flakes,” is a fanciful or arbitrary word. The appellant and its predecessors have manufactured this product in this way and have described the product by these words ever since 1898. It will serve to clarify the subject by alluding to the different companies which have been organized by the Kelloggs, and to some advertising matter which has been given widespread circulation in placing the product upon the market. The first two companies so organized were named, respectively, the Battle Creek Sanitarium Company and the Sanitas Nut Food Company, and were owned and controlled by Dr. Kellogg and his brother, W. K. Kellogg; the first-named company being organized in 1897, and the latter in 1899, though this one would seem to have been a partnership association until 1903, when it was incorporated. The Sanitarium Company manufactured cereal products and also acted as selling agent for the Sanitas Company, selling for the latter, among other products, “Toasted Corn Flakes.” This plan was continued until 1906, and in March of that year Dr. Kellogg sold the exclusive right to make and sell “Toasted Corn Flakes” to the Battle Creek Toasted Corn Flake Company, which was organized in February of that year; and in July, 1907, this sale was confirmed by the Sanitas Company. The Sanitas Company, however, continued to make other cereal products until at least 1912. The name of the Battle Creek Toasted Corn Flake Company was changed in May, 1907, to that of Toasted Corn Flake Company, and in May, 1909, the name was again changed to that of appellant, and, notwithstanding these changes in corporate name, W. K. Kellogg appears to have been the president of the company throughout, and- to have signed the original bill. The features of advertising matter put out by these companies, including appellant, which for present purposes sufficiently illustrate the understanding of these companies and the persons controlling them that the process resulted in toasting the corn flakes, may be seen in the following:
“They are so nourishing and easily digested; so scientifically cooked and toasted.” “Properly cooked, flaked and toasted.” “The flakes are exceedingly light, thin, crisp and tender, toasted just enough.” “Polled into thin flakes and toasted a.t a very high temperature.” “So delightfully and tastily toasted.” “Light crisp flakes of toasted corn that melt in your mouth—rolled*661 into film flakes and then toasted to a tempting golden brown.” “A good corn recipe: Select choicest White Indian corn; flake each kernel so that flakes are as thin as writing paper; place flakes in baking pans and toast slowly in oven.” “Toasted corn flakes are scientifically cooked and then toasted to a delicate brown.”
And in an advertisement bearing apparently a facsimile of the signature of the president of appellant this is found:
“There Is a secret in preparing Kellogg’s Toasted Corn Flakes—a secret of toasting, blending and flaking ‘the sweetheart of the corn’ that other foods have never been able to copy.”
These interpretations of the process of producing this food derive emphasis from the fact that the same interpretations are found in the advertising matter put out in respect of the patented product and process which were embodied in patent No. 558,393, issued to Dr. Kellogg, April 14, 1896, for “a certain new and useful alimentary product and process of making the same,” and assigned by the patentee to the partnership association doing business as the Sanitas Food Company. True, Judge Wanty held the patent invalid, and his decree dismissing the bill was affirmed by this court in Sanitas Nut Food Co. v. Voigt, 139 Fed. 551, 71 C. C. A. 535; true, also, as counsel for appellant say, the word “toasted” was not found in the specification or claims of that patent. It is, however, noteworthy that in commenting upon “granóse flakes,” as the food was there called, Judge Wanty said that:
“Broad crusts, toast, zwieback and shredded wheat biscuits are the same product, containing every element of granose flakes, and only differing from them in form and degree.”
Another fact to be observed is that the patented process was in substance and effect the same as the present process, which we have already described. Still in their interpretation of the patented process appellant’s predecessors considered it as involving “flaking and toasting,” and in the recipe in part before set out, containing the statement “place flakes in baking pans and toast slowly in oven,” it was stated by appellant over its former corporate name, Toasted Corn Flake Company, and as late as October, 1908:
“You won’t be able to prepare corn in this way unless you buy our patented machinery and process, but you can buy Sanitas Toasted Com Flakes at your grocers.”
If it were necessary to add anything to the foregoing, we think it might be affirmed to be common knowledge that placing corn flakes such as these in an oven and subjecting them to the degree of heat and for the time before pointed out cannot but result in toasting the flakes. It certainly must be generally known that the object of toasting bread is both to extract the moisture and give the bread a brown color, and, further, that this may be done in an ordinary kitchen-stove oven. Moreover, this is shown by defendant, without denial, from named cook books. Bread may be toasted, it is true, before an open fire; and this is consistent with definitions found in dictionaries, say in the Century, where “toast,” the noun, is defined to be: “Bread in slices superficially browned by the fire; a slice of bread so browned.” Again, “toast,” the verb, is there defined: “To brown by the heat of a
It is to be observed further that appellant’s counsel claim, _ though we fail to find anything in the record really supporting the claim, that the words “corn” and “flakes” are not descriptive as applied to the product in question. It is said, for instance, that “maize” or “cereal” is more apt than “corn” to describe the material of which the product is made; and that “film,” “scale,” “chip,” or “wafer” is technically more accurate than “flake” to describe the form of the article. We are not impressed by this argument. It is, of course, true that there are many objects which are each known by two or more names and which may be intelligibly described by the use of one of those names. It would be difficult, however, to conceive of an article that would be more universally identified by a single name, especially in this country, than the basic ingredient of this product is by the name “corn”; in commerce it bears that name and is a commodity widely dealt in and readily and unmistakably recognized simply by the use of that name. It is true, also, that “flakes” has synonyms, but none has been -suggested which is as apt to describe the ultimate form given to this product as “flakes.” Indeed, appellant’s product is corn, flaked and toasted ; it is in truth “toasted corn flakes,” and is described with accuracy by those words; in short, the words, apart from their separate descriptive qualities, collectively describe with precision the chief ingredient, its form and ultimate mode of treatment. See Computing Scale Co. v. Standard Computing Scale Co., 118 Fed. 965, 967, 55 C. C. A. 459 (C. C. A. 6), as to word “computing,” and Horlick’s Malted Milk Co. v. Summerskill, 85 L. J. Rep. (July, 1916) 338, 341.
“But when the word is incapable of becoming a valid trade-mark, because descriptive or geographical, yet has by use come to stand for a particular*664 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.”
“ * * * Where you are dealing with a name which is properly descriptive of the article, the burden is very great to show that, by reason of your using that name descriptive of the article you are selling, you are affecting to sell the goods of somebody else. * * * It cannot be denied, therefore, under those circumstances, that it was for the appellants to establish, if they could, that an ordinary word in the English language, properly applicable to the subject-matter of the sale, was one which has so acquired a technical and secondary meaning, differing from its natural meaning, that it could be excluded from the use of every one else. That is the proposition the pursuers had to make out.”
“Sanitas Toasted Corn Flakes, made by the Sanitas Nut Food Co., Ltd., sold by Battle Creek Sanitarium Co., Ltd., Battle Creek, Mich.”
In 1906, and after the transfer had been made to appellant, then bearing the name Battle Creek Toasted Corn Flake Company, the language used on the face of the cartons was changed into this:
“Sanitas Toasted Corn Flakes. None genuine without this signature—W. K. Kellogg. Battle Creek Toasted Corn Flake Co., Battle Creek, Mich.”
Appellant’s counsel explain, without dispute, that the signature of W. K. Kellogg was added for the reason that a person named Blanke had put on the market an article and called it “Toasted Corn Flakes.” The last-named form of the Battle Creek Company was continued until
Another feature of the record is to be noted. In May, 1911, appellant caused 21 women each to call at from 15 to 25 retail grocery stores to purchase “Toasted Corn Flakes,” without disclosing name of manufacturer, and ostensibly in their own behalf; these instructions were carried out in 8 cities located, respectively, in Ohio, Illinois, Iowa, Minnesota, and North Dakota. Nine of the women made their purchases in different stores in Chicago, four likewise in Minneapolis, two in Des Moines, and two in Duluth, and each of the rest in a different city. The result was to secure about 80 per cent, of Kellogg’s toasted corn flakes, and the rest in other brands. It was developed in this testimony that aside from the Kellogg brand there were then 15 other brands of toasted corn flakes on the market, though it does not appear how long before May, 1911, the other brands were or how long since then they have been on sale. It is observable that each of these other brands bore a name, in one instance the initials “E. C.,” immediately preceding the words “Toasted Corn Flakes,” in the same way as appellant and its predecessors have used the names “Sanitas” and “Kellogg’s” preceding those words. It is further to be noticed that these women made their purchases of dealers whose obvious interest in the sale of toasted corn flakes and their consequent knowledge of the subject could scarcely be accredited to the ordinary class of real customers; and hence such testimony lends little aid in support of the claim of secondary meaning urged here. It is conceivable that some of these dealers, and presumably the minority, were actually selling one or more of the other brands, in as great, if not greater, quantities, than the Kellogg brand; and certainly the minority did not regard the disputed words as signifying only the appellant’s brand. It is, moreover, to be observed of the testimony of these women that they all in substance testified that they had no difficulty whatever in distinguishing the different brands of toasted corn flakes, as, for instance, the cartons of appellant from those of the defendant.
Now, what significance of present pertinence have the facts thus pointed out? From 1898 to 1906 the predecessors of appellant had a virtual monopoly of the food product in question and likewise of the
“The other observation which occurs to me is this: That where a man produces or invents, if you please, a new article and attaches a descriptive name to it—a name which, as the article has not been produced before, has, of course, not been used in connection with the article—and secures for himself either the legal monopoly or a monopoly in fact of the sale of that article for a certain time, the evidence of persons who come forward and say that the name in question suggests to their minds and is associated by them with the plaintiff’s goods alone is of a very slender character, for the simple reason that the plaintiff was the only maker of the goods during the time that his monopoly lasted, and therefore there was nothing to compare with it and anybody who wanted the goods had no shop to go to, or no merchant or manufacturer to resort to except the. plaintiff.”
This rule was recently followed in the Court of Appeal in Horlick’s Malted Milk Co. v. Summerskill, supra (85 L. J. Rep. July, 1916, at page 340), when passing upon the effect of a long period (25 years), during which “Horlick’s Malted Milk” had been sold in England without competition.
In the next place, we have seen that in 1906 the virtual monopoly came to an end when one Blanke began to use the words “Toasted Corn Flakes” in introducing his product; and that by reason.of this use the script signature of W. K. Kellogg was placed on appellant’s cartons and in some of its advertising matter. According to appellant’s brief, one or two others shortly afterward began to apply the words “Toasted Corn Flakes” to their products. We have also seen that in 1907 “Sanitas” was removed from the cartons and advertising matter, and “Kellogg’s” was placed in its stead, immediately preceding the words “Toasted Corn Flakes.” The prominently distinguishing words which have been displayed on appellant’s cartons and in its advertisements, ever since the virtual monopoly ceased, have been “Sanitas Toasted Corn Flakes” and “Kellogg’s Toasted Corn Flakes”; and it is this last form with which we are most concerned in the solution of the instant case. This collocation-of words, “Kellogg’s Toasted Corn Flakes,” cannot be overlooked when considering the asserted secondary meaning solely of the words “Toasted Corn Flakes.” Appellant has not been content with placing its corporate name and address at the bottom of its cartons or in its advertising matter; it has also been persistent in conspicuously associating the name “Kellogg’s” with the particular words in issue. The only explanation of this practice is found in argument, not in the evidence.
“The alleged trespassing defendant has the right to use the word, because in its primary sense or original sense the word is descriptive; hut, owing to the fact that the word has come to mean, to a part of the public, something else, it follows that when the defendant approaches that same part of the public with the bare word, and with nothing else, applied to his goods, he deceives that part of the public, and hence he is required to accompany his use of the bare word with sufficient distinguishing marks normally to prevent the otherwise normally resulting fraud.”
And again (198 Fed. 375, 117 C. C. A. 251, and citations):
“So it is wrong, in such a case, and when this ‘secondary meaning’ is once established, to start with the premise that defendant is entitled to use the word; prima facie, viewed from this point, he is not. The right, for the purposes of such a case, is primarily vested in the complainant. Defendant may*668 not use the word at all, unless he accompanies it with the explanation; he must neutralize an otherwise false impression; he must ‘unmistakably inform’ the public that the article is of his production.”
And as to the charge of unfair competition, this court has definitely stated and supported the rule thus (Samson Cordage Works v. Puritan Cordage Works, supra [211 Fed. 608, 128 C. C. A. 203, L. R. A. 1915E, 1109, and citations]):
“The existence of a valid trade-mark is not essential to a right of action for unfair competition, * * * in which action the essence of the wrong consists in the palming off of the merchandise of one person for that of another. * * * Unless such palming off is shown, the action fails. * * * And so unfair competition cannot be predicated alone on the use of another’s mark which is invalid as a trade-mark because not appropriable as such; that is to say, when not used in such way as to amount to a fraud upon the public.”
In Standard Paint Co. v. Trinidad Asph. Co., supra (220 U. S. at page 461, 31 Sup. Ct. at page 460 [55 L. Ed. 536]), when considering the use of the word “Rubbero,” and its asserted resemblance to the word “Ruberoid”:
“To preclude its use because of such resemblance would be to give to the word ‘Ruberoid’ the full effect of a trade-mark, while denying its validity as such. It is true that the manufacturer of particular goods is entitled to protection of the reputation they have acquired against unfair dealing, whether there be a technical trade-mark or not, but thexessence of such a wrong consists in the sale of the goods of one manufacturer or vendor for those of another.”
See Goodyear Co. v. Goodyear Rubber Co., 128 U. S. 598, 604, 9 Sup. Ct. 166, 32 L. Ed. 535; American Wash Board Co. v. Saginaw Mfg. Co., supra (103 Fed. at page 284, 43 C. C. A. 233, 50 L. R. A. 609); Apollo Bros. v. Perkins, 207 Fed. 530, 533, 125 C. C. A. 192 (C. C. A. 3); Rushmore v. Manhattan Screw & Stamping Works, 163 Fed. 939, 941, 90 C. C. A. 299, 19 L. R. A. (N. S.) 269 (C. A. 2)
Appellant is therefore not entitled to relief unless it appears that defendant fails clearly and effectively to distinguish the product it places on the market from appellant’s product; and such failure is not shown. It can serve no useful purpose to describe in detail either the carton or the advertising matter employed by defendant to place its product on the market. There is no evidence tending to show that defendant either through dress or lettering imitates the carton or advertising of appellant. It is true that there is some resemblance in surface coloring between the two sets of cartons, but their appearance as a whole is strikingly different. There is no language, apart from the words “Toasted Corn Flakes,” on defendant’s carton that is at all like the language of appellant’s carton. The pictorial parts are totally unlike and differently located. Where appellant uses “Kellogg’s” in association with the words in dispute, defendant uses “Quaker,” and the associated words are given more prominence on appellant’s than on defendant’s carton. Appellant’s own witnesses testified that the cartons are readily distinguishable. ,
The decree is accordingly affirmed, with costs.
The descriptive quality thus shown to be possessed by the words “Toasted Com Flakes,” as applied to appellant’s product, clearly distinguishes the instant case from that of Hamilton Shoe Co. v. Wolf Brothers, 240 U. S. 251, 256, 257, 36 Sup. Ct. 269, 60 L. Ed. 629, where the words- “The American Girl” were held to constitute a technical trade-mark by reason of the fact that, as applied to shoes, they are an arbitrary, and not a descriptive, name; a like distinction exists between the case of Dennison Mfg. Co. v. Thomas Mfg. Co. (C. C.) 94 Fed. 651, 653 (cited with apparent approval in the foregoing case), and the present, in that the words there in issue, “American Express,” were held to be susceptible of exclusive appropriation as a trade-mark for the reason that, as applied to sealing wax, they are devoid of descriptive quality.