No. 1,232 | 6th Cir. | Jan 21, 1904
In March, 1900, the complainant below, the National Biscuit Company, was engaged in the manufacture and sale of bakery products, consisting of biscuits, crackers, etc. It owned and operated some 7s plants, located in the leading cities of the United States, the products of which were put .out in packages or cartons under different factory names, indicating their character and origin. For the purpose of identifying all these products, making them known to the public, and guarantying their authenticity, it adopted an arbitrary design or symbol known as the “In-er Seal” trade-mark for use on its cartons, and at a cost of hundreds of thousands of dollars advertised it throughout this country and the world as the mark by which its goods might be recognized. Except for the use of some green and orange labels, which were soon abandoned, the “In-er Seal” trade-mark was printed in white letters upon a vivid red label with clipped corners, and applied to the ends of the cartons. The trade-mark was registered, the application being filed May 12, 1900. In the latter part of August, 1900, the defendant below, the Ohio Baking Company, was engaged at Cleveland, Ohio, in making and selling bread and cakes. It had been so engaged for 17 years. At this time, having decided to enter upon the biscuit and cracker business, it employed one Miles, a former employé of the National Biscuit Company, and gave him charge as manager of the cracker department about to be established. Within three or four weeks afterwards it began to place its biscuits and crackers upon the market, packed in cartons of substantially the same size as those used by the .National. Biscuit Company, .and. in some, cases of the same
The original suit was brought by the National Biscuit Company to-restrain the Ohio Baking Company and its officers from advertising or selling its goods in any package having on it the “In-er Seal” trademark or any imitation thereof, or in any package dressed in imitation
On an application for a preliminary injunction, Judge Wanty restrained the defendant below, first, from using the “In-er Seal” trademark upon cartons containing its bakery products, as shown in certain exhibits, or advertising or selling its bakery products in cartons containing thereon the “In-er Seal” trade-mark or any imitation thereof; and, second, from putting up and selling or offering for sale the particular cartons shown in certain exhibits, or any other cartons resembling the complainant’s cartons as closely as they do. But this was not to be construed as restraining the defendant from selling cartons of the size, weight, and shape of the complainant’s, nor from using the respective colors as wrappers, provided they were so differentiated in general appearance as not to be calculated to deceive the ultimate ordinary purchaser. There was an appeal from Judge Wanty’s order, and this court reversed the portion respecting the use of the “In-er Seal” trade-mark or any imitation thereof, but affirmed the rest. Upon the return of the case to the Circuit Court, an application was made to Judge Severens for an attachment for contempt against the defendant below for putting out certain cartons in violation of the second part of Judge Wanty’s order, but Judge Severens discharged the rule, holding that the cartons did not present a general appearance so closely resembling the complainant’s exhibit mentioned in the restraining order as to come within its terms. Afterwards the case came on for hearing before the Circuit Court, Judge Wing sitting, upon the pleadings and proof, and a decree was rendered in favor of the complainant, holding: (i) That the “In-er Seal” trade-mark is a good and valid trade-mark. (2) That the defendants have infringed this trade-mark by putting up and selling bakery products in cartons like those shown in certain exhibits mentioned. (3) That the defendants have violated the complainant’s equitable rights in putting up and selling its bakery products in cartons which present a general appearance closely resembling those of the complainant as shown in certain exhibits. (4) That the defendants be enjoined: (a) From imitating the “In-er Seal” trade-mark, or making, handling, or selling cartons of bakery products having thereon any imitation of the “In-er Seal” trade-mark, calculated to mislead or deceive, like those shown in certain exhibits; “but this shall not be construed as restraining defendants from selling cartons or packages of bakery products with their asserted trade-mark thereon, provided such trade-mark is so differentiated in general appearance and application from said complainant’s trade-mark that it is not ■ calculated to deceive the ultimate ordinary purchaser.” (b) From putting up and selling or offering for sale the particular forms of cartons shown in certain exhibits, or cartons resembling them so closely as to mislead or deceive; but this shall not be construed as restraining the defendants from selling cartons of the size, weight, and shape of the complainant’s, but so differentiated in general appearance as not to be calculated to deceive the ordinary, purchaser. (5) That the complainant has the right to recover all profits accruing from the violation and infringement of its rights, and that the case be referred to a master to take and report an account of
The right'to be protected in the exclusive use of a trade-mark is not dependent on the federal statute authorizing the registration of certain trade-marks. It has been long recognized by the common law á'nd enforced by the chancery courts of England and this country. The use of a trade-mark is to distinguish one’s goods. No man has' á right to use or imitate the trade-mark of another, and thus represent his goods as the' goods of another. However broad the field of competition, it does not include the use of a rival’s trade-mark, either directly or covertly, for the purpose of deceiving the public, and marketing his own goods as those of his rival. The one question of fact in this case is whether the “Factory Seal” trade-maflc, when printed in white letters-upon a red label with clipped corners, and applied to the ends of cartons containing bakery products, bears such a resemblance to the “In-er Seal” trade-mark, when similarly applied, as to deceive the ordinary purchaser, and lead him to believe he is purchasing the goods of the National Biscuit Company, when in fact he is getting the goods of the Ohio’ Baking Company. McLean v. Fleming, 96 U. S. 255, 24 L. Ed. 828" court="SCOTUS" date_filed="1878-04-29" href="https://app.midpage.ai/document/mclean-v-fleming-89701?utm_source=webapp" opinion_id="89701">24 L. Ed. 828; Manufacturing Co. v. Trainer, 101 U. S. 65, 25 L. Ed. 993" court="SCOTUS" date_filed="1880-04-12" href="https://app.midpage.ai/document/manufacturing-co-v-trainer-90091?utm_source=webapp" opinion_id="90091">25 L. Ed. 993; Coats v. Merrick Thread Co., 149 U.S. 562" court="SCOTUS" date_filed="1893-05-10" href="https://app.midpage.ai/document/coats-v-merrick-thread-co-93651?utm_source=webapp" opinion_id="93651">149 U. S. 562, 13 Sup. Ct. 966, 37 L. Ed. 847" court="SCOTUS" date_filed="1893-05-10" href="https://app.midpage.ai/document/coats-v-merrick-thread-co-93651?utm_source=webapp" opinion_id="93651">37 L. Ed. 847. We have made a careful inspection of the cartons and trade-marks of the respective companies, and are satisfied not only that the “Factory Seal” trade-mark as applied is calculated to mislead and deceive the ordinai’y purchaser, but that it was designed, adopted, axrd used for that purpose. Its use was a part of the “cracker campaign” planned in advance. The National Biscuit Company’s crackers were the only ones with a red seal on the end of the cartons. The defendants below knew this. And they knew also that crackers are sold for the most part over the counter to careless buyers, who are not apt to examine the carton carefully, but likely to carry in mind some one distinguishing feature, such as a red seal on the ends. The crackers of the National Biscuit Company are put out under many names. Thus the plant at Toledo was called the Worts-Kirk-Bigelow plaxit, one at Chicago the Kennedy, another the Bremner, and so on. The name of the factory would mean nothing, the presence of the red seal everything to the servant girl or child sent to the grocery for a box of “In-er Seal” crackers’. The careless purchaser asking for a box “of those red seal crackers” would take the “Factory Seal” goods, thinking he was getting the “In-er Seal” goods.
' But it is ixisisted that this is a suit on a registered trade-mark, and that a trade-mark cannot be extended beypxrd the limits fixed in the registration. This is not, however, a suit on a registered trade-mark. Neither the allegations nor the proof would entitle the coxnplainant to relief under' the federal act. Warner v. The Searle & Hereth Co., 191 U.S. 195" court="SCOTUS" date_filed="1903-11-30" href="https://app.midpage.ai/document/warner-v-searle--hereth-co-95940?utm_source=webapp" opinion_id="95940">191 U. S. 195, 24 Sup. Ct. 79, 48 L. Ed.-. There is no evidence showing that the trade of the National Biscuit Company with foreign countries was injured by the acts complained of. The ground of the relief sought is unfair competition in domestic commerce — the fraudulent imitation of the complainant’s trade-mark and cartons for use-
It is submitted that the decree of the Circuit Court enjoining the use of any imitation of the “In-er Seal” trade-mark is inconsistent with the order of this court reversing the first part of Judge Wanty’s restraining order respecting the trade-mark. But Judge Wanty’s order restrained the use of the “Factory Seal” trade-mark in any manner whatsoever in connection with biscuit or cracker cartons, while the decree of the Circuit Court provides that it may be used when so differentiated in general appearance and application from the “In-er Seal” trade-mark as not to be calculated to deceive the ultimate ordinary purchaser. So that in affirming this decree, it is not necessary to prohibit the use in any manner whatsoever of thé “Factory Seal” trade-mark, but only its-use in a way calculated to mislead and deceive.
But,-however this may be, -the- ease-is now before us upon the merits, which we have carefully examined, and we are satisfied that the man
,The judgment of the Circuit Court is affirmed.