FARMERS'EDUCATIONAL & COOP. U. v. FARMERS ED. & COOP. U.

• Decision Date: 26 May 1956
• Docket Number: No. 2-582.,2-582.
• Parties: FARMERS' EDUCATIONAL AND CO-OPERATIVE UNION OF AMERICA, a corporation, Plaintiff, v. FARMERS EDUCATIONAL AND CO-OPERATIVE UNION OF AMERICA, IOWA DIVISION, and Service Association, a corporation, Farmers Educational and Cooperative Union of America, Iowa Division, an unincorporated association, Iowa Union Farmer Association, an unincorporated association, Fred W. Stover, Chas. Shearn, George Wharam, Lee Harthan, Betty Lownes, Elmer Gustafson, Le Roy Martin, Annis Thorson, Paul Roth, Dean Huff, Emil Ronfeldt, Lester Muhlenbruch, and Gustav Mohr, Defendants.
• Court: U.S. District Court — Southern District of Iowa

141 F. Supp. 820

FARMERS' EDUCATIONAL AND CO-OPERATIVE UNION OF AMERICA, a corporation, Plaintiff, v. FARMERS EDUCATIONAL AND CO-OPERATIVE UNION OF AMERICA, IOWA DIVISION, and Service Association, a corporation, Farmers Educational and Cooperative Union of America, Iowa Division, an unincorporated association, Iowa Union Farmer Association, an unincorporated association, Fred W. Stover, Chas. Shearn, George Wharam, Lee Harthan, Betty Lownes, Elmer Gustafson, Le Roy Martin, Annis Thorson, Paul Roth, Dean Huff, Emil Ronfeldt, Lester Muhlenbruch, and Gustav Mohr, Defendants.

No. 2-582.

United States District Court S. D. Iowa, Central Division.

May 26, 1956.

Frederic M. Miller, of Brody, Parker, Miller, Roberts & Thoma, Des Moines, Iowa. Charles F. Brannan, Denver, Colo., for plaintiff.

Cosson & Cosson, Des Moines, Iowa, for defendants.

HARPER, District Judge.

This action was brought by Farmers' Educational and Cooperative Union of America, a Texas corporation, against Farmers Educational and Cooperative Union of America, Iowa Division, and Service Association, a corporation, and others, to enjoin the defendants from an alleged infringement of three of plaintiff's trade marks, all of which are registered on the Principal Register of the United States Patent Office. The trade marks are, (1) a symbol and service mark, consisting of a plow, rake and hoe, surrounded by a circle, (2) a collective mark for goods, consisting of the words, "Union Farmer", used for newspapers published by plaintiff and its divisional organizations, and (3) a service mark, consisting of the words "Farmers Union", used by plaintiff in the sale and advertisement of services.

It was stipulated that the Farmers Educational and Cooperative Union of America, Iowa Division, and Service Association, a corporation, is no longer in existence and was not in existence at the time of the commencement of this action, was not served and is not a party to these proceedings. The defendants, Farmers Educational and Cooperative Union of America, Iowa Division, and the Iowa Union Farmers Association, are both Iowa corporations.

Jurisdiction is conferred upon this court by the Lanham Act, under which the suit is brought.

The defendants conceded at the trial that plaintiff is entitled to the exclusive use of its symbol and service mark, consisting of the plow, the rake and hoe, surrounded by a circle, and indicated that they were not using said symbol and will not use it in the future, but admit that they are using the other marks, namely, "Union Farmer", and "Farmers Union", and indicated an intention to continue to use said marks unless restrained from so doing.

The evidence disclosed without question that the use by the defendants of said two marks is in direct competition with the plaintiff. The testimony discloses that the plaintiff, a Texas corporation, authorized to do business in Iowa, has been operating on a national scale since 1906. Its purpose, according to its articles of incorporation, is "to protect its members engaged in the various branches of the farming industries, in their various pursuits, which in promoting and safeguarding their said interests, is partially educational, fraternal, benevolent and cooperative."

In furtherance of these purposes plaintiff publishes and distributes in the various states of the union a number of pamphlets and a Washington Newsletter. Examples of these pamphlets were placed in evidence and each displayed plaintiff's service mark, "Farmers Union", and most of them displayed in conjunction therewith plaintiff's symbol, the plow, rake and hoe, surrounded by a circle. The plaintiff also publishes a monthly newspaper, under the name of the National Farmers Union. In its distribution among the several states plaintiff identifies and advertises said newspaper with the products mark, "Union Farmers", and the service mark, the aforementioned symbol.

In 18 of the 29 states in which plaintiff has members, it has set up state organizations, many of which publish newspapers that use plaintiff's products mark, "Union Farmer". The defendant, Farmers Educational and Cooperative Union of America, Iowa Division, was originally an unincorporated association located in Iowa, which in December, 1924, became a corporation pursuant to the laws of Iowa. On October 8, 1917, this defendant was issued a charter, whereby it became an integral part of the plaintiff in the State of Iowa, continuing to be such until 1954. In March of 1954, plaintiff revoked the charter of its Iowa division, the legality of which revocation was conceded at the trial by the defendant.

On September 24, 1955, subsequent to the filing of the complaint, this defendant, by amendment to its articles of incorporation, changed its name to Iowa Farmers Union. The evidence shows that this new name is identical with the names by which plaintiff's state organizations are commonly, or colloquially, known, and hence, is almost identical with the name by which said corporation was commonly, or colloquially, known before the Iowa charter was revoked by plaintiff in 1954.

The defendant, Iowa Union Farmers Association, publishes a newspaper under the name of "Iowa Union Farmer", whose mark resembles those of plaintiff's state organization newspapers. Prior to the revocation of the charter of the defendant corporation by plaintiff, such publication was authorized by the then legally constituted Iowa Farmers Union and it continues to be so authorized by said organization.

The plaintiff contends that when the Iowa charter was revoked in 1954, the Iowa Farmers Union's right to use the mark "Union Farmer" on its newspaper was also revoked. The defendants contend that the court is without jurisdiction, despite the fact that the suit is brought under the Lanham Act, 15 U.S. C.A. § 1051 et seq., and the further fact that there is diversity of citizenship, contending with respect to the Lanham Act that the plaintiff has failed to show that the alleged infringement was "in commerce."

The courts have repeatedly held that the defendant's infringement is interstate if its local activities adversely affect plaintiff...