*2 еarly on the containers as In 1907 as 1897» GARDNER, Circuit Before STONE and began packaged defendant sell its roasted Judge. WYMAN, and District Judges, coffee, paper bags, cardboard contained cartons, extensively by mail, GARDNER, Judge. cans, and tin un- Circuit til trial of this suit it had at the time court, lower Appellant, as many very large business so carried on infringe- alleged enjoin brought suit to states. registered of its trade- the defendant ment enjoin alleged certain acts mark, and to Defendant has extensive- never advertised as material facts spent, all, if has ly, while the money are substanti- large the lower court spending, very summarized is now sums ally advertising follows: “Monarch” as its well-known At foods, drinks, and condiments. brand of plaintiff’s August 13, 1878, early as As 1907, ever, if defendant has least since for predecessor registered its trade-mark origin “Monarch” show the used word This baking and cream tartar. powder time, of twen- coffee, of its but since that tiger’s of a trade-mark consisted head by it, only ty of coffee handled odd brands printed engraved or the word dеsignated “Monarch” brand. one was large tiger’s head white en- above the desig- “Monarch” to never used the word letters,, “Baking with the words Pow- ameled any goods groceries, or save other nate angular tiger’s der” in an scroll below the coffeе, and used as except the word was plaintiff’s predecessor regis- head. In grade or rather than ’as a a brand similarly printed word “Monarch” tered the pack- cans, paper Defendant’s trade-mark. engraved, generally has which used ages, cartons used for and cardboard the cof- connection with head of lion as a trade- shape were of a different sold fee preserved mark and other for canned plaintiff. print- from those color predecessor regis- fruits. “Mоnarch,” except word ing, Mills,” printed “Monarch tered the words shape color, also dissimilar type large Gothic above a lion’s white head “Petring’s” appeared on all of the de- products Spice of its “Coffee and packagеs. fendant’s registered prac- In 1922 Mills.” consisting early tically products, 1925 numerous retailers all of its As v.Co. “Mon- C. Fairbank packaged canned N. K. Luekel, King lo- arch” & Cake coffee, brand of advertised it view This, was the papers cal no further F. we understand, as “Monarch” with notwithstanding this court, off of identification, palming but, the lower *3 to view, parties seek cheaper product a established announced both of the for that of the reargue low by plaintiff, question and the put brand of the here. We think out the coffee concluding, and we cus- er palming in off on their court was correct succeeded in so of are of use of the the that the defendant’s cheaper coffee view tomers this “Monarch” infringement on grade word higher the “Monarch” was an for and defendant the dearer Food Layton Pure deal- trade-mark. product plaintiff. of This retail the the A.) Dwight (C. Co. v. Church & Co. fact C. by ers reason of the were enabled to do Queen Ginsberg & 24; Mfg. Co. v. Isaac packages both that the containers of and 287; (C. A.) Gor F.(2d) Bros. C. “Mon- the and defendant bore word (D. Dry Eddy don’s Gin v. & Fisher Co. of Co. arch.” because Customers were deceived C.) 954; Mfg. 246 F. & Morrison McDonald that these advertisements which indicated the A.) Mfg. (C. v. H. 183 F. Co. Mueller Co. C. coffeeadvertised was of the brand “Monarch” Queen by 974. As said widely known the coffee which had become Mfg. Ginsberg Bros., supra: Isaac Co. v. & grocery by plaintiff, in the put the and out may infringement “There be where the sub had “Monarch” generally, word trade the part stantial and of the trade distinctivе Reid, goods of products or come to mean the * * * copied mark is or imitated. Dis been had & This trade-mark Murdoch Co. similarity size, form, of and color the label very high a by only on foods used place applied and it is where are not conclu trade-mark, had which, under this quality, n against infringement. sive Where by plain- the widely as such advertised dominating a a or dis trade-mark contains large expense. very tiff at a tinguishing 'Queen’ word the such as word by acts of buyers While were misled these ease, the instant where purchasing and the directly retailers, not the defendant did the public designate has come to the know used retailers, except that it with the connive by dominating word, article such use of the mark one “Monarch” as a brand the word by marking such anothеr similar word A examina- careful of its brands coffee. goods may infringement, although constitute con- respective the comparison of tion and mark, dominating the latter aside from such plaintiff would defendant tainers word, may be dissimilar.” use of dissimilarity, for thе save disclose a This Mfg court in & McDonald Morrison on both classes the word . Mfg. Co. H. v. Mueller supra, said: tainers. whether, goods “The test is not when are plaintiff was court concluded that The placed by side, recog side a difference can be сontroversy, but entitled to trade-mark marks'; is, nized labels in the or but the test suit because: was not entitled goods placed by side, when such are not side the re- not connived with (1) Defendant had ordinarily. prudent purchaser would an merchants, participated the acts nor tail one, purchase believing liable to that he re- competition, hence was not unfair purchasing other?” was (2) plain- therefor; sponsible is, however, It the contention of the de now estopped from laches, was tiff, fеndant, held, lower court so that the of the complaining the defendant’s use injunctive entitled to re of the These conclusions “Monarch.” word competition lief it for unfair because challenged plaintiff on this are lower court grocers hаd not connived with the retail appeal. competition. their acts of unfair It is true that, defendant appears while the part the defendant had no direct acts these word .“Monarch” use of the made some goods, however, of‘unfair coffee, it was not a trade connection put out it bore “Monarch,” the name grade used as a mark use, it was mark and, it is while true containers bore other identify one its various designate marks, yet distinguishing the use of the word name cheap Such use of the coffee. grades of “Monarch” furnished the merchants with the as a trade it to its use committing upon not entitle means or tools a fraud would Co.,& Co. v. Washburn public. Touraine of these acts retail merchants mark. 1020; 286 F. Macmahan anticipated Aрp. D. C. well have been the de (C. supplied by Denver Chemical Co. Co. v. Pharmacal These fendant. being ever, acquiescence on defendant for resold does not indicate “Mon-' market, use of its trade- and the use possible arch” retail the de- it made it the evidence indicates that public upon merchants to fendant commit a fraud the use the word abandoned injury plaintiff. goods complained N. Fairbank of at that K. mark on the Co. 77 F. Mfg. v. R. Bell time. W. Co. C. 869; 830; (C. C.) Yon Murom 56 F. v. Frash of a Violation trade-mark N. King K. Fаirbank & Cake Luckel, Co. v. wrong, competition continuing constitute (C. A.) Co. & 102 F. Rice C. deny and, ground while laches (C. v. Yera 290 F. Hutchins Shoe Co. ing right damages, recover it will not or 124; Amoskeag Mfg. Vainer, 101 U. dinarily injunction for constitute a bar to an *4 51, 63, S. L. 993; Chapelle Apple 25 Ed. v. infringemеnt. future There is no claim that (D. C.) 709; baum 254 England F. New Awl defendant, carrying mail order the on its Marlborough & Co., Needle Co. v. 168 Mass. business, any money up expended build has to 154, 386, 387, 60 Rep. 46 N. E. Am. St. good a a will in claims the name which it is Defendant’s contention the instant ease grade Any dеlay, mark. on be therefore, effectively by is opinion answered Mr. in the plaintiff asserting half of the its exclusive England Justice Holmes New Awl & right to of name has not caused the use this Needle Marlborough Co., supra, Co. v. where any injury deception to the dеfendant. The “They it is they put- said: knew that were practiced by not, grocers the it retail was ting power to so into retail deal- do plaintiff remembered, must be to until known hardly ers’ hands. can be doubted that competition about 1925. This unfair threat they contemplated that wholesale dealer continuing against plain ens wrong to request they put up whose awls in their this tiff’s trade-mark and well-advertised good form, knowledge with full of the circumstances, will. Under these it cannot prior try use, would or to deceive thе properly guilty be held that was of public, they and whether did or not is imma- preclude right injune such laches as to its to terial.” Layton tional Pure Food v. Co. Amoskeag The same rule is announced Dwight A.) & (C. 24, Church 182 Co. F. C. Mfg. Trainer, supra, Co. v. David where it 33; Layton Food Co. & Pure v. Church complainant is said: “Neither will the be de- Dwight (C. A.) 35, 182 Co. C. F. 32 L. R. A. prived remedy equity, of even if it be (N. S.) 274; Moline Plow Co. v. Omaha by respondent shown per- that all the (C. A.) 519, 525; Iron 235 F. Val Store C. bearing bought goods sons from him who (D. C.) voline Oil v.Co. Havoline Oil Co. real were well aware 189; tradе-mark owner Bishop 211 F. & John Edward Burke v. they complainant’s (C. not of the man- C.) 167; Mfg. 175 F. Beattie Co. v. by supplied ufacture. If the were so al. 164; Smith et C. 275 F. Dr. Peter wrong-doer being Fahrney re- (C. H. & Sons Co. v. Ruminer et al. injury market, 735, sold in to the com- A.) 737; 153 F. C. K. Fairbank N. Co. plainant him is sufficient to entitle to Luckel, King (C. & v. Cake equity.” 332; 116 Siegel-Cooper Saxlehner v. Co., S. 21 Ct. U. S. L. Ed. Mc We are the view that the defendant Fleming, Lean U. S. L. Ed. 828. must, responsible be held for these therefore, Layton This court Pure Food Co. v. competition, acts conceded Co., supra, Dwight Church & said: “The injunetional entitled relief, was to chargeable owner of a trade-mark not is by precluded laches. unless its prosecute infringer for failure to laches an whether, It remains to consider as held he knows or has such as would before notice court, estopped the lower ordinarily person inquire prudent an lead maintaining from this suit reason of "its infringement.” and learn the existence of the practice grocers laches. in adver- v. Omaha Iron Store Plow Co. tising as “Monarch” Molinе coffee did again rec- Co., this court said: “The knowledge supra, of the un- to the come of an ord substantial evidence promptly gave contains no 1925, at which time it til no- rights by Moline abandonment protest to the defendant. There was tice continuing Company, and tres- correspondence constant in 1901 apparently some equi- deprive the victim of his passes neither the use of with reference to this name injunction right to an their con- table correspondence, the defendant. how-
«21 OBSCENE BOOK upon the STATES v. ONE UNITED confer future, tinuanee in nor LOVE.” ENTITLED “MARRIED any trespasser right perpetuate them.” SONS. Claim of G. P. PUTNAM’S Layton Pure TVhat is said this Dwight supra, is Pood Co. v. Church & Court, York. District D. New S. apposite. “The com- here there said: It is April 6, 1931. plainant is trade-mark the owner baking powder consisting baking soda and picture valuable this cow is property. protected It is entitled Every property. exclusive use of sale package baking under this trade-mark of a powder an in- manufactured another is fringement comрlainant’s of the trespass upon property. While the de- apparent lay complainant and its ac- quiescence past trespasses make in- equitable compel defendant to account' profit them, it derived *5 upon equity оr in fer it no either at law them.” continue Supreme It has Court said Fleming, in McLean v. “inexcusable that even seeking laches in redress was no defense 'part prayer of the bill that that sought infringement to restrain in the fu- an Eah-mey &' ture.” Dr. Peter H. Sons Co. v. Ruminer, supra. The lower of the view that its court was holding precluded that the should be
by reason support of its laches found in Sax- Siegel-Cooper supra, lehner v. but in that ease court said: “We think that an injunction against all should de- issue these fendants, that, Siegel-Cooper but as the Com- pany appears good faith, to have acted in small, they of the others sales should required gains not be to account profits. Siegel-Cooper fact innocently Company acted does not exonerate charge infringement.” (Italics ours.) In the instant ease the lower court
very properly have denied the prayer for an accounting damages, or for we are of the view that the court was in error injunetional denying judgment is, reversed, therefore, remanded, proceedings cause for further sistent herewith.
STONE, Judge (dissenting). Circuit I compelled upon feel dissent ground appellant. of the laches of This was basis the determination the trial expressed court. well That determination opinion in an situation which seems sound repetition me and which makes here unneces-
sary.