LaTouraine Coffee Co. v. Lorraine Coffee Co.

handling freight railroad station Apparently freight. of less-than-carload whatso- change agreement

under station public ever in the character fails contemplated, and the evidence made. change show escaped that cannot be

The conclusion con- Station, terms station, fact

tract, public degree very large to a its services are Block, Cupples occupants of

limited to the The change public character.

does not part Cupples

tenants Block are a only 15

general public. fact freight amount of total 20% station is less-than-carload handled at the change public

shipments, cannot employer, appellant an

character of the provisions

if it otherwise falls within the statute. The is render- services it transportation railroad services required part to render charge, performed line-haul public

railroad terminal a common who, it, en-

calling rendering

gaged transportation property by

railroad, employer within and it

meaning of the Act. Union Stock Yards States,

& Transit Co. v. United United Brooklyn

States Eastern District Ter-

minal,

L.Ed 6 A.L.R. 527. judgment is affirmed. CO., Inc., COFFEE

LaTOURAINE LOR- CO., Inc., COFFEE et

RAINE al. 300, Docket

No. Appeals, Second

Circuit Court Circuit.

Aug. 12, 1946. Denied Certiorari Nov.

Writ

See 67 S.Ct.

H6 Island, throughout

coffee tea Staten and York, Jersey. New New and northern judgment From hold- lower court ing valid, infringed, trade-mark but not and finding competition, no unfair appeals. question of considering

Before infringement, dispose defend must very vigorous plain ants’ contention that tiff does trade a valid technical have any case, mark in word because the geographical. Congress “Touraine” de FRANK, Judge, dissenting. Circuit registration geographical nied terms in adopted those the name cases where “merely geographical.” 15 85 U.S.C.A. § (b). purpose codify obviously Its prevented common-law rule which one appropriating manufacturer from to his own generically use a so descriptive might employed it equal pro priety by phrases others. “Could such ‘Pennsylvania wheat,’ ‘Kentucky hemp,’ ‘Virginia tobacco,’ cotton,’ ‘Sea Island protected trademarks; could prevent all using others them or from selling produced articles in the districts Benjamin DeWitt, City P. New York they appellations,— describe under those (Sidney Pepper, City, of New York on the greatly trade, would embarrass and se brief), appellant. rights cure exclusive in that individuals Dilkes, Island, of Staten Y.N. A. James which is right many.” common Island, Y., (Sidney Jacobi, of Staten N. on Delaware & Clark, H. Canal Co. v. 13 appellees. brief), 311, Wall. 324, 20 L.Ed. also Alcorn, See Columbia Mill Co. CHASE, FRANK, CLARK, Before and 460, 150 151, 1144; U.S. 14 S.Ct. 37 L.Ed. Judges. Circuit Elgin Nat. Watch Co. v. Watch Illinois Co., Case 665, 179 270, U.S. 21 S.Ct. 45 CLARK, Judge. Circuit L.Ed. American Wine Co. v. Kohl Plaintiff, corporation do- Massachusetts man, Cir., 158 F. 830. have The courts York, New brought business in held, consistently however, that, when the enjoin infringement regis- action to of its name is “arbitrary” in an used or fictitious enjoin trade-mark and to unfair tered sense, may subject be the of a valid competition. predecessor Plaintiff trade-mark. Hamilton-Brown Shoe Co. v. corporation employed have “La- Wolf Bros. & 251, coffee, tea, Touraine” connection with 269, 60 (The L.Ed. American Girl powder by them, begin- chocolate sold ; shoe) McIlhenny Gaidry, Cir., Co. v. ning as to coffee as to tea in (Tabasco ; sauce) Century Dis powder Through tilling Co. v. Distilling Continental Corp., program advertising, broad varied D.C.E.D.Pa., F.Supp. modified 3 position attained of eminence Cir., 106 certiorari industry, selling denied some million fifteen U.S. (Dixie L.Ed. 1010 pounds year. of coffee alone each cor- liquor); and Dixie Beau Belle Fleischmann defendant is small New York fam- porate Schuckmann, 62 organized How.Prac., ily corporation, N.Y., individual bread). engaged (Vienna selling defendant Co., Cir., re Co. v. Zande Cosmetic judicial construction has This 756, 65 Trade certiorari approbation. denied legislative ceived Pub.L.No.489, Hutchins, Rice & July 5, Mark Act Shoe Sess., (2), 15 v. Vera 2(e) Cong., c. 79th 2d metropolitan year Small (2), effective one constitute 1052(e) restaurants U.S.C.A. § area; hence, companies trade of both provides specifically the use of the in this purchasers and such registration if the or for prevents of geographical terms owners held not be to establishments should appli the the applied goods "when to of higher than usual of discrimina- de standard primarily geographically cant” it “is question purchasing. tion is misdescriptive.” scriptive deceptively or whether is similarity or not the of names the (Emphasis added.) application And of any likely deception such as to of make the principles compels a conclusion established appreciable ordinary prudent number of validity it of word “Touraine” here. The customers. name, longer geographical no self is since province, existing the ancient French until judge, emphasiz the While incorporated in substance then dissimilarity in of the busi size two 11 Department into the Indre-et-Loire. of nesses, otherwise, we con concluded 22 Encyc. 26 id. Americana cited to think it is. cases strained As the Britannica, Ed., 325; Century Encyc. 14th show, question below this reviewable World, admittedly of the Atlas And appeal. attempted Defendants symbol. plaintiff’s It not the word is distinguish “Lorraine” from “LaTouraine” part always prefix

has used the “La” aas on the of number of letters and basis Moreover, of its its trade trade-mark. syllables words, form of but this registration, mark well as its own certifi gymnastics technical determinative. incorporation, combina cate of shows the Corp. See Celanese of I. America v. E. “LaTouraine”; single tion and word Du Pont & & Pat. De Nemours Cust. this, according testimony, actu its is its App., 154 143. The initial and letters True, al atten mark. call defendants did syllables probably parts the last of — tion to certain instances use of otherwise. any impress word most themselves But whether become these had habitual firmly upon memory identical. —are misquotations, were mere the dif careless similarity is, course, striking of most ferences noted above from the ancient speech; in oral call for ain store quite French name are sufficient avoid likely produce Except the other. deceptive misdescription goods. tongues precisionists, of both sound Siegert, & A. Bauer Co. F. v. alike; unmistakably both are French. 81, 84; Nichols, Havana Commercial Co. v. C.C.S.D.N.Y., registered 155 F. 302. The law, area In this of trade-mark each professes term nor neither has to have separately considered and case must be coffee, relation to source of precedents are But not conclusive. exam manufacture, place place of of sale. gives of the cases some standard ination arbitrary entirely It is an name. Obvious similarity; here indicate that and ly legal principle employed should degree greater is rather resemblance purpose; to effectuate its not be infringe than that in several cases where destroy mere contrivance to made a See, example, ment been found. for has impregnable otherwise successful and George Luft Co. Zande Cosmetic W. v. trade-mark. ; supra (Tangee Zande) Industrial and infringement, Corp. Rayon Corp.,

To establish v. Dutchess Underwear adopted by Cir., certiorari denied Dutch only that need show Corp. Rayon Industrial similar Underwear defendants so to its trade-mark ess likely among Corp., 303 L. to be to cause confusion ; (Spun-lo Sunglo) and Florence reasonably purchasers. Defend careful Ed. Co., Cir., Mfg. Dowd & urge showing Co. C. ants J. confusion; Sta-Kleen); North (Keepclean actual instances Corp. required. George Universal Luft am Warren Cosmetic W. such evidence is testimony repudiate, Co., Cir., and to (Cuticlean 18 F.2d 774 detailed might Co., Cir., employer;2 former Cutex); Gehl Eben’s Hebe well (Hebe National Biscuit return for a discussion Meje); the case Co., App.D.C. this evidence an answer v. B. for Carr Biscuit J. avoid question could Eta). how coffee (Uneeda salesman competitor knowledge large all support claim As for its further stands, the- But, years. three case relief, injunctive plaintiff urges that Eben importance, question controlling is not well “Lorraine” selected the name aware established, good similarity for when similarity express purpose and with the proven no defense. faith —even —is public. deceiving purchasing On Davids, 233 U.S. Thaddeus Davids Co. v. against issue the below has found 1046; Coty, 461, 648, 58 34 L.Ed. S.Ct. here, Were a controlling it. this issue Luxe, Cir., 2 v. De Parfums Grande accept should find some embarrassment in 865, De Parfums F. certiorari denied findings notwithstanding these un that 609, Coty, Inc., 266 U.S. Grande Luxe v. Procedure, Federal der Rules of Civil rule 466; 94, Hebe Gehl S.Ct. L.Ed. v. 52(a), following 723C, 28 U.S.C.A. section Co., supra. erroneous, clearly must stand unless they do belief for seem to call for a Supreme pointed out the Court has to Eben’s naivete which hard is achieve. recognition psychological law’s of “the years The record three shows that for be symbols” protecting function of trade- starting fore own he his business awas im- marks, adding once the owner that LaTouraine, competitor for a of salesman atmosphere market pregnated of the “the during which he even heard of time power congenial never a drawing with the of or knew such brand there a was symbol” then the owner obtain redress can put Judge it of coffee. Learned Hand upon As poaches “if commercial another case, “stretching in a similar this for magnetism symbol calls of the created.” he has credulity beyond' breaking point.” Mfg. Mishawaka Rubber & Woolen Ramopa Co., 203, Co. v. A. Gastun & D.C.S.D. 205, Kresge S. S. N.Y., 557, Further, former 1022, 1024, True, his S.Ct. employer subpoena testified under that he species monopoly, trade-mark to- of is plaintiff even discussed with Eben as present opinion had which climate of wards toughest competitors.” “one of Smidler, our And frigid, Standard Brands is explanation own his of “Lor Cir., 34, 38, the choice of though monopoly 151 F.2d was, put mildly, raine” to it fanciful. He the words “LaTouraine-Lorraine” that he had hardly said made world-shattering. this selection because coffee-bean seems he had may, travelled Congress Alsace-Lorraine that as it has shown its Be had some minor dealings protection had business interest in continued trade-mark just and because a friend baby by comprehensive had had a new codification given whom Actually to he had law trade-mark embodied in the Trade name. baby, years before, born July 5, 1946, more than merely two Act of Mark which not 1905, bore of Eve amplified Lorraine. And there the Act of 15 U.S.C.A. § discrepancies seq., gave were other property small his 81 et to right this story.1 standing legislative As a matter of fact the court did had not had before. analyze mention, Derenberg, testimony Portas, or even Trade-Marks Ante Forness, original that as the assertion Such City joining girl’s him in certiorari denied of Salamanca father business, States, modified to he later v. 1293, 316 U.S. United new 1764; City fa for a few 86 L.Ed. of New York months the claim Lines, purchased him for re from McLain coffee ther produced person United States Amuse was not as v. Crescent This sale. 173, 185, witness, to suf ment he said a fering preoc “grippe” The trial court’s a “severe cold.” L.Ed. 160. 89 cupation magnitude findings relative some- with the not filed until were opinion— is noted below. businesses after memorandum time practice criticized. United States often FRANK, to Judge (dissenting). hesitate Circuit should 830. We Yale L.J. legisla- expressed clearly go against so say It well to at the outset remote fears only some tive intent for later, try shall show think result from disaster our own of social defendants, “atmosphere,” unfavorable to new statutory grant protection. The my colleagues, non-existent described imi- “colorable affords relief statute —that, facts the basis record con- “likely to cause tation” where use colleagues, the trial mentioned purchasers or to deceive fusion mistake judge’s faith finding lack of bad of Eben’s goods,” origin such the source “clearly means There erroneous.” all July 32(1) (a), Act which, too, noted, factor the Misha- judges hearing the courts and try later, related to shall also to show agreed of at case waka were need good judge in The trial his Eben’s faith: injunctive confusion. least relief avoid opinion plaintiff explicitly found say, justices dissenting Thus prove acquisition “secondary failed 86 L.Ed. meaning”; not contest does rivalry, event, 1381: “In the economic finding;1 supported it is all, in- was so remote existed at evidence. injunction alone would seem direct an statement, Contrary colleagues’ to my the ample against have the afforded relief judge “a judgment did not enter hold infringement, by below found both courts valid, infringed.” the but trademark not without fraudulent intent.” have judgment law His conclusions of and his (Emphasis added.) validity. opinion, are silent as to In his question Here the involved is that, he assuming said even the trade injunctive Judge of relief. District infringed.2 valid, mark it had not been was by greatly impressed seems to have been But, judgment in order to reverse his business-wise; size, the small defendant’s (which merits) my dismissed on col he refers or several to this times leagues necessarily have decided favor plaintiff’s “large” “flourishing” or business validity. of and showing the lack of a of sufficient grounds put Eben of defendant “out my colleagues deciding, In so concede prevent doing business” or to him “from “merely geographical” that a name cannot so, upon business.” Even cannot ride one subject law be of a valid at common proc- another’s coattails the inevitable which is (i. “technical” trademark and, becoming bigger; at ess of least as acquired although a “sec- it not valid stands, grow law now one cannot name ondary meaning”), and that such a through congenial symbol. of another’s use registered validly be under ex- cannot question destroying And a there is jus- They isting Trade Mark Act of 1905. business; had a defendant chosen here tify by holding name their decision that the name, story flight fancy on own a his “merely geographical” LaTouraine is not himself, with fam- without connection his “La”; prefixes (1) plaintiff it trade, it at ily, the coffee used or (2) longer “Touraine” is used some when he utmost for six months government French the official consequences. We warned of France; (3) plaintiff part a a omits imagi- circumstances that think under “Touraine”; space “La” between worthy suggest substi- can soon nation (4) plaintiff’s mark would be valid it tute. registered hereafter, to be after or Were (en- July, the action a new federal judgment is reversed and under statute long suit injunctive began) after this award acted remanded go into does until its terms effect next relief. Freeman, colleagues. In Altvater v. It not mentioned F.2d 961. having 2 Whether, infringement, found no L. properly pat- trademark val hold could hold the said: “To he Ed. Court id, infringed to de- indeed doubtful. See Cover if it is not ent valid Cir., Schwartz, hypothetical Katz ease.” cide Signal Mfg. Corp., Horni year. argu- I shall each On discuss of these the same popular bookshelf is a ments turn. encyclopedia, American The World Book Encyclopedia; turning to the unquestioned It article feature France, published map find a language French that the article— definite contemporary France, “La,” giving present equivalent “Le” of our “The”— official departments; names placed prov- must be before same page contains ince, map, cap- a smaller mountain, river, county. or a tioned Provinces,” “Former it, showing their name, eye, Without French respective locations and including Tour- unclad, awkwardly distractingly stands aine. I have asked a dozen nude. To omit American men saying it would be like women, random, selected tongue, Thus, our what “Between Tour- he and I.” means; aine their.invariable reply French, “a speaking writing say one must part of France.” Bretagne, Blanc, Seine, La Le La Mont L’Amerique. When, then, It plaintiff made has been can find no contrary held—I part tradename, “La” of its did not there- purposes of the doc- decisions— “fanciful,” non-geographical, render trine here discussion, usage, offi- cial change nomenclature, since did not governs, one iota the that a name place-name. may well-known French entirely On the geographical although, contrary, plaintiff adopted official liter- without that name sanction. See In re Mid- ally correctly. West Abrasive 32 C.C. P.A., Patents, 834; cf. Kraft Cheese sure, plaintiff Angli- To might Coe, 70 U.S.App.D.C. 297, by drop- cized for Americanized) the name Siegert Gandolfi, ping “La.” But retention of the French 3. In registering geographical mark, form did not its gener- eliminate ally it, using significance. spells grammar French dis- “La” thus with a- “a,” small poses space no leaves of this contention.3 -the- between article and Touraine. word, as used: 2. Seeking casually for reference as by plaintiff, printed LaTouraine. meaning Touraine, Americans Surely, since “La” integral is an part of find, on the bookshelf furnished name, slight typographical change summer, renting house am for the a text- —which, unless attention were directed to- book, Provinces, Contes Des entitled writ- it, none but lynx-eyed person would de- Roth, high-school ten Miss an American tect—cannot suffice to sym- convert this teacher, published in 1924 (by the well- bol into “an entirely arbitrary name.” publisher, known school-book the Ameri- Suppose, instance, for that some one were Company) can Book for instruction in as, to use “New York” or “New Jersey” -public French high-schools. in American symbol. a trade Would either name cease author, stating that after the ancient “merely geographical” if its two- provinces replaced, French had been fol- parts printed were as “NewYork” or “New- lowing Revolution, by “political divi- such, Jersey”? There precedent is no departments,” called sions adds that “the suggestion. curious department only modern exists for adminis- purposes” says, provinces trative course, “Les Of geographical if a name is- 1’organization poli- ont cessé d’exister coupled dans with some other or is other- tique actuelle leurs noms mais sont restés substantially altered, wise “merely not l’usage.” specifically, writes, dans More she geographical,” and, being converted thus Touraine, France, “La ce de la an “arbitrary” into est name, or “fictitious” Jardín ” * * * pays le aussi subject des chateaux. In the of a valid Such trademark. are words, other in common usage, rulings French in the by my cases cited col- taught children public- leagues, to American e., our i. Hamilton-Brown Shoe Co. v. schools, geographical, La Touraine is a not Wolf & Bros. “fanciful,” name. 269, 60 (“The Girl”);. American place adding if Even one took an American “The” would transform it from its name, say “Chicago,” “merely geographical” I doubt whether status. Dis “law,” ters expunging deci- Continental Distilling existing Co. v.

Century F.Supp. modified sions so Corp., D.C., preceding paragraph, cited in the tilling thereunder, registered Belle” if (“Dixie Touraine 106 F.2d La mark, merely cases not would Beau”).4 Such are a valid “Dixie plaintiff’s grown proc- point here.5 coffee neither nor essed France. section Whether this explicit- argument There remains interpreted be so should I think should implied ly by plaintiff, but made not striking consider: The here fact is that “merely colleagues, that a not i. name is statute, express new this terms —see employed as geographical” it is 46(a) legal July effect until § —has manufactured, symbol product for a Maybe although I incline to doubt it— — grown, processed geo- the named sold Congress could retroactive the have made Repeatedly, graphical this conten- area. aspects legislation. substantive this See, g., In flatly rejected. tion has e. Since, however, Congress purposely re- Corp., re F.2d Kraft-Phenix Cheese so, frained from doing I think a court C.C.P.A., Patents, 1153, as powers applying exceeds its thus it. town, used French “Chantelle” holding see warrant that defend- Illinois; Companhia made in a cheese rights governed Act, ants’ new U.S.App. Coe, 79 Antarctica Paulista v. especially 46(a) provides “shall 316, 146 use D.C. F.2d any suit, not affect proceeding, appeal n “Antarctica,” territory an uninhabited * * * pending.” manufactured; where, course, nothing important Even more the conse- than Perfume, In re California F.2d quences to point here defendants is the C.C.P.A., Patents, 1028, toas precedent, that we create a applied “Avon” to toothbrushes made in the statute, effective, on that not yet founded contrary A seemingly United States. deci- persons the many adverse to who have sion, Plymouth Corp., In re Motor used trade ex- names C.C.P., heretofore Patents, 838,6 was ex- isting interpreted. Act as plicitly heretofore Dry over-ruled in In re Canada Ginger Ale, My 832-833, colleagues refer to this new Act C.C. P.A., Patents, 804, “codification may of trademark re Lamson & law” In perhaps Patents, imply C.C.P.A., that it but restates the exist- so, Except my will, If Plymouth colleagues for the “law.” then I over-ruled case, think, impossible Motor sustaining no decision it find find to cite sus- cases plaintiff’s argument, taining plaintiff’s my colleagues (i. e., do nor contention that the any. “merely cite geographical” mark not plaintiff’s grown, processed coffee is not Perhaps reason, for that my colleagues France).7 however, in Probably, sold my the new Mark invoke Trade Act colleagues used “codification” in a broader 2(e) of which authorizes registra- sense, they add since that the statute tion, July 1947, on and after mark of a amplified merely “not the Act of but applied goods that “when ap- gave property right legislative this plicant “primarily is” not geographically de- standing it had not had before.” scriptive” “deceptively misdescrip- or not course, agree (I sure) of them.” Presumably tive am Of that “we not should hes- my colleagues go against” provision think “clearly expressed that al- itate this C.C.N.Y., case, M'Ilhenny by plaintiff, “Tabasco” 155 F. cited Gaidry, recently place was said there was such Coe, “Carolina,” Carolina, differentiated in Kraft Cheese Co. v. North since U.S.App.D.C. 297, Carolina, on and the South Carolina Islands ground “compara that Tabasco is a not “Carolina.” were tively place.” “Plymouth” unknown Moreover it There the name used was “Chrysler” should be noted that the name “Tabasco” connection in with name acquired secondary meaning drawing sea-going at and a vessel. alleged infringement saying time when the was I am not to be taken as that

commenced. will I think the Act bear that inter Nichols, pretation. In Havana Commercial Co. v.

* * * nothing intent,” hot year.” But legislative and. coffee alone each deny place anyone rights my colleagues derived is said about “grant” protection” “statutory that advertising the distribution this —if record and when a case comes before those what us sales. Here legislation applies. com- this But cannot shows: prehend right regard how have the we pres witnesses in the Plaintiff’s testified Congress, legislative that new when intent expended judge ence that trial plainest words, in told to concern not us $45,000 advertising, but annually about year. To ourselves for another principal on the witness its said witness litigation construe that in is to this statute plaintiff’s expense “biggest was stand opinion, advisory render an to decide a newspapers in England in New where we hypothetical (Indeed, as new case. pages”; that all radio adver use front its Act had when case not enacted tising England radio had been on New sta us, argued party neither before dis- ; part tions that he what did not know argument.) cussed it in briefs oral New advertising its in the was done metropolitan York evi area. Plaintiff’s precedents plaintiff 6. Most vague dence to the amount of cof support position in of its all.in fee it in the area which defendants sold point, “secondary being cases where a business, do i. northwest northern and meaning” acquired geographi- had been in a Appar Jersey ern New and Staten Island.11 name, gen- longer cal so had the that it ently, plain much of coffee sold significance eral which it otherwise would tiff around New York was in Man sold Schuckmann, have had.8 Fleischmann v. hattan, very considerable amount How.Prac., N.Y., by my col- cited by plain bulk. As to the amount vended leagues relating to the use of the name — tiff to small restaurants —to whom alone “Vienna” as a label for loaf a distinctive area, defendant sells—in defendants’ kind; of bread—is a case addi- of this proof by no means conclusive. tion, case, direct imita- there was tion the defendant not evidence, the name On the cannot hold that but of the label.9 judge’s finding of fact this issue is apposite erroneous”; Such “clearly cases are not For colleagues nor do here. (as above) judge indicated significance ex- do It not without so. plicitly (in opinion,10 plaintiff found fact his argument briefs and its oral subsequent well as in his more formal our court not contest finding, did findings) plaintiff proved had not ac- instead relied contention that its it has quisition secondary meaning. aof This a so-called “technical” trademark because finding my colleagues fanciful, “merely nowhere mention. geographi They merely say, discussing That secondary without the cal.” established evidence, plaintiff, “through meaning England, in New a broad or even an * * * program adjacent advertising and varied area to that in which defendants position trade, enough give plaintiff attained a of eminence in in- is not to the a mon dustry, selling pounds opoly rights some fifteen in that latter million area.12 Its 8 See, question geographical g., Elgin e. National Watch Co. the character of Co., 665, 675, “Paris” Illinois Watch 179 U.S. the name was not discussed. 270, 365; already noted, M’Ilhenny 676, 21 Gaidry, Indian As Territory Cir., involving &Oil Gas Co. v. Ter F. Indian the use of Co., ritory 711; “Tabasco,” Oil Gov the was a case of an Trading Bay acquired ernor, secondary meaning. etc., Into Hudson Bay 801; finding, D.C., therefore, That Fur v. H. is not sub- ject my colleagues Ass’n & Jewish Colonization v. Solomon criticism which Germansky, C.C.N.Y., 157; findings. 154 F. level his more formal Caron Seventeen, Corp. D.C., This, too, Maison-Jeurelle area is the in which de- 560; F.Supp. The Anheuser-Busch Eben fendant had worked a salesman case, apposite, is not 295 F. he went into on his before through business own registered corporation. name was the defendant as the the 12 gee, “ten-year Liberty g., Drug In clause.” Stein v. e. United Co. v. Rec- Mfg. Co., D.C., the tanus Garter 248 U.S. 39 S.Ct. 63 L. es; defend- consequently means disbelief “mark his there. depend its use on obviously testimony differ ants’ case market, entirely in that was an thing in one one authority.16 More- being scope within the another,” of his trademark thing in ent over, improbable seemingly sometimes copyright.13 patent the nor a like neither a truth; courts turns to be out correct, plaintiff foregoing is If have held that a determination often trading monopoly in defendants’ had no occurred, and improbable whether the has in- area, defendants did not and therefore probabilities, are for calculation assuming, arguendo, that fringe. even But facts, jury, judge trier if that of the monopoly, plaintiff such a had established heard the witnesses.17 trier seen and has infringement. I think there was this, us, pass For like to on a case alleged bad My colleagues Eben’s stress veracity credibility witnesses of the un- which, proved, were it would faith said, be, recently “to would as we plaintiff’s case doubtedly strengthen appellate an into convert court a trial issue, infringement i. on the issue court.”18 the two confusion between likelihood of My colleagues suggest trial evidence But the same names.14 judge’s opinion sympathy reveals his supports judge’s as to lack finding the trial me, To defendants. that fact seems secondary meaning of “La Touraine” men, judges The motives all irrelevant. sup- territory goes in defendants’ also to know, included, tangled. are But we should good faith port finding as to his Eben’s bench, experiences our own adopted Lor- company when his should, judge can, put that a he time, Eben, up been to that had raine: sympathies, and side irrelevant do that same working as a coffee salesman in here, easy when, especially judge so is prove territory, did consciously aware of articulates known to name had well there become them; prejudices pre- the mischievous are the trade. cisely fully which one those of is not authority, think, we We our exceed aware.19 say saw judge, that the trial who heard and witnesses, escape from There circumstance obliged disbelieve judges, they conduct his that the trial testimony Eben and to believe the admits, process, fact-finding most im- employer (who, plaintiff former had the judicial Fact-finding, against Eben). portant officials.20 deep grudge We have recently judge jury when a without a sits and the admonished several times Supreme testimony, consists of oral his Court not to assert record our own responsibility, upper not that of courts. of the facts on the mere view basis of a beyond Hand, Only clear printed Judge when doubt that record.15 Learned eyes opinion evidence, may his Ramopa he closed he wrote Co. v. when his properly upper ignore Co., D.C., his version & cited A. Gastun “facts,” colleagues, sitting of the facts. by my “finding” Since his responsive testimony, inherently judge who seen and the witness- heard States, Milling Hanover Star ed Ed. Metcalf, 89 LEd. 156 A.L.R. 496. 16 Moreover, opinion Printing discloses, cf. United States Co. 156, Griggs Co., 158, 159, testimony & v. the discredited far more 267, improbable than Eben’s. 73 L.Ed. 650. 49 S.Ct. 17 quoted 13 Drug Co., and su cases cited Co. v. Rectanus See in Arn United Cir., 464, Coty, Porter, 2 pra; 154 stein v. F.2d Pretonettes v. cf. 368, 350, 359, L.Ed. 731. 469. 44 S.Ct. 68 18 Porter, 14 Torts, 729(b) supra, Restatement Arnstein v. 154 F.2d 472, Corporation pages (f); at Eastern Wine 473. comment 19 Linahan, Ltd., Inc., Winslow-Warren, Cir., Cir., 2 In re 2 J. P. v. 138 F.2d 653. 960. F.2d 137 20 States, 1172; Forness, 15 Cir., v. United States Bihn v. United 942; Green, Duty States, Prob United cf. Kotteakos v. S.Ct. Cases, 1239; States, Negligence v. United lem in Bollenbach Col.Law Re 1014, 1037. (1928) Weiler 402: v. Unit view 12á actually

subjective believes (i. similarity packages what he there is no of- in the parties; scrutiny by only similarity from be consists to is hidden facts This, then, disregard decidedly perti evidence the names. others), his concealed confusion, upper respect always possibility. probable An court nent: With to accept buyers sophisticated must rec- whether the possibility, must class of that too, prime im ognize, has been held be such hidden misconduct a matter of that portance. See, by beyond g., Pyle judge control. e. National v. a trial lies Co. its Cir., Co., Only, Manufacturing Electric perhaps, psycho-analyzing the Oliver 635; opera- Everlasting v. judge trial could his secret mental F. Val. Co. Schiller, D.C., 641; by us; Acc. tions ascertained we be are Standard art, least, Surety Ins. v. which, Casualty skilled that Co. Standard & at the would D.C., 119, 121; require many personal of intensive T. B. Sons hours Woods Valley Works, C.C.Pa., judge. Iron interviews with F. 201; Dunlap Surgical Willbrandt Undeniably, infringe- issue of 151 F. cf. K. Fair N. ment, pivotal. confusion of customers is 77 Co., Cir., bank Bell Mfg. v. R. W. agree proof that there of ac- need be 869, 875; Brewing Ph. Schneider tual instances of such confusion —where Century Distilling Co., 10 Cir., 107 F.2d unmistakably Where likelihood clear. 699, 704. case, appellate may re- ject contrary conclusion In the absence evidence of in- actual judge. confusion, (of stances of tests mentioned) probable sort above However, courts, showing guided by when not evi confusion, in the dence, may go wholesale easily wrong minds that sub buyers company, the defendant competent ject. psycholo made Tests ought think we not to overrule the trial gist of the reactions to trade names judge. (assuming plaintiff’s At most exclu- previously litigation had been involved in name), sive to the title we should remand judicial indicate that the decisions have not for further on the evidence confusion is- responses infrequently failed match the sue. ordinary consumers.21 Even without the here, however, such benefit of tests would paramount We said that customers, agree were the for whose protected interest these trade-name patronage com defendants courts, cases is consumers’.22 The pete, ordinary buyers, retail would be there therefore, go way should not out of their enough prove likelihood of confusion to (as think, my colleagues, I doing here) are infringement. judge-made such monopoly create But here company the defendant does protection no evidence of needed where consumers; not sell to ultimate nothing presented.23 that interest has been will It this record per- even intimates that such my colleagues do for say that “a sons, they when drink that cof- monopoly defendant’s of the words ‘La Touraine-Lor fee, aware particular bears hardly raine’ the coffee-bean seems name. For solely defendants sell at whole- For, world-shattering.” although deci restaurants; to owners sale of small “in this area sions of trade-mark law” may they is no “conclusive,” evidence inform their not do tend to breed retail kind; customers the brand sold their own and the decision in the cup. retail latter at Concededly, case, others, followed instant will 21 Burtt, Legal Psychology (1931) Tompkins, Ch. to Erie ant R. Co. v. 304 U. S. 82 L.Ed. g., See, Corp. e. should, Eastern Wine A.L.R. least on Winslow-Warren, Ltd., secondary meaning, issue of follow “state Johnson, law,” & may paucity Johnson 2d cf. Son v. well be note the 427, 429; Cir., R. Man C. New A. of relevant York decisions and the ufacturing Whiteman, 2 trend in York New toward strictness in 86, 90; Brands, Monopoly Zlinkoff, Standard this field. See Versus Smidler, Competition, (1944) 151 F.2d Yale Law Journal might that, pursu- itAs be asserted 550-551. plaintiff my particular has belief that judge-made name- yield a multitude without, doctrine shown within monopolies granted by the the those courts precedents, name-monopoly, it has a in the think, regard public welfare.24 due for I the territory question justifies us which will demon- elsewhere What have said stopping competition. defendants’ This monopoly- I am victim strate that not a think, decision, unjustly interferes phobia, quote my colleagues) (to actuated * * * and, the departing defendants from ac- remote fears of social “some might cepted principles, opens disaster” which be adher- door to caused other concerning monopolies improper judicial precedents existing ence to under My law.26 dissent trade-names. here stems monopolies be, doubt that There can be mo what there should up nopolies they built trade-name whether be and how much should judge-made. regulated legislatively judicial doctrine years, are In recent curbed or ly.” courts, opinion concurring conscious of fact— also See protect public— Brands, Inc., Smidler, Cir., need to Standard have been cautious more than 151 F.2d creating My colleagues’ been theretofore such non- use facile statutory monopolies. my concurring phrase “property right” plain See to describe opinion Brands, Inc., perhaps revelatory: in Standard v. Smid tiff’s interest ler, Cir., question underlying 151 F.2d 38-42. in this and similar noted, precisely whether, considering As has often been Trade cases is procedure only, conflicting interests, Act plain Mark of 1905 affected social nothing substantively governmental added tiff should accorded aid judge-made (except through doctrine so far governmental an order of a obtaining increased rem- agency, Only facilites government, a court. if the augment can said edies through court, grants “substantive aid does the rights”). right.” “property have a For Corp. phrase In Eastern convenience, may Wine v. Winslow be used as Warren, Ltd., Cir., plain 137 F.2d 958- a shorthand label for the fact

959, speaking court, received, receive, said: tiff has will such as persons, sistance; not, however, “There some infected with it should be said monopoly-phobia, thought who shudder in the that he is so aided because presence monopoly. “right.” But he has such a label through law never (boot common has suffered from such not be allowed circular reasoning lifting) strap neurosis. There has seldom been obscure the society question policy in which there have not been basic e., special monopolies, privileges; ought squarely some i. to face. Felix See legal professions discussion, medical brilliant Cohen’s “What’s in respective guild monopolies; Name,” article, their Trade in his Transcen estate, strategically Ap owner of real locat dental Nonsense The Functional monopoly; ed, (1935) 809, proach, so has the owner Review 35 Col.Law mine; 842, 849; of a valuable and so have electric cf. Standard 814-817: cf. power companies. seriously ques Brands, Inc., Smidler, supra, No one page tions whether should be some monopolies; only question is as to

Case Details

Case Name: LaTouraine Coffee Co. v. Lorraine Coffee Co.

Court Name: Court of Appeals for the Second Circuit

Date Published: Aug 7, 1946

Citation: 157 F.2d 115

Docket Number: 300, Docket 20224

Court Abbreviation: 2d Cir.