266 F. 307 | 2d Cir. | 1920
On January 14, 1913, the appellee was granted the registration of the name “Blue Bird” and the figure of a blue bird as a trade-mark for a candy box. The evidence indicates that this mark for the appellee’s goods was used from September, 1912. The District Court granted the appellee an injunction restraining the appellant from using the blue bird mark and also for an accounting. A comparison of the appellee’s box and that of the appellant shows the large figure of a blue bird in the upper left-hand corner of each box, above the phrase “Blue Bird for Happiness.” In the appellee’s box the figure of the blue bird is directly above the phrase, while in the appellant’s box it is above, but not directly above. The printing on both boxes is in blue ink, and blue ribbon tied in substantially the same way. In each case the box contains an equal weight of candy.
The appellee contends that it has the sole right to the use of this trade-mark, not only by reason of the registration, but by such use as to invoke in its aid a common-law right to maintain this action against
The questions here presented are: (1) Has the appellee, by granting permission to Whitman & Son, Incorporated, under the terms and conditions, lost its property in the trade-mark? and (2) has the use of the trade-mark in the business of the appellee been protected by the use of it as such trade-mark, or has its business and method of carrying on the same been such as to lose the trade-mark right, because of the small number of sales by it? and (3) can it be said that because of the, infringement of Spoehr, of Illinois, the trade-mark has been appropriated by such infringement, and the appellee lost its property rights therein ?
“We assure you that we intend to respect an of the rights of our good friends, Messrs. Wallace & Co., and we believe that you will have no cause for complaint as to the method used in the future in marketing this liand-painted package.”
All the advertising by Whitman & Son, Incorporated, with the use oí the figure of the blue bird, did not have any effect upon the ultimate consumer, as it appears that it was not identified by the consumer as the Blue Bird brand, nor was it ever called for or identified as such brand. In addition to the benefit accorded the owner of the trademark, it is the purpose of the trade-mark law to confer a benefit upon the ultimate consumer. Cuervo v. Owl Cigar Co. (C. C.) 68 Fed. 541. We think that the disposition of the controversy between the appellee and Whitman & Son, Incorporated, is not evidence of an abandonment of the trade-mark or a dedication of it to public use. Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60; McLean v. Fleming, 96 U. S. 245, 24 L. Ed. 828.
The testimony indicating a use of the blue bird trade-mark by Spoehr is that of Conrad Spoehr. He testified that he did use the blue bird upon candy boxes in sales which he made in Illinois. It appears that he sold only at retail in Chicago. When the appellee heard oí this, it duly informed Spoehr to desist. This incident cannot be said to
The burden of proof was upon the appellant to show by evidence that extraordinary circumstances exist which require the application of the doctrine of laches. This burden it has not sustained.
Decree affirmed.