LaTouraine Coffee Co. v. Lorraine Coffee Co.

• Decision Date: 12 November 1946
• Docket Number: No. 300,Docket 20224.,300
• Citation: 157 F.2d 115
• Parties: LaTOURAINE COFFEE CO., Inc., v. LORRAINE COFFEE CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

157 F.2d 115 (1946)

LaTOURAINE COFFEE CO., Inc., v. LORRAINE COFFEE CO., Inc., et al.

No. 300, Docket 20224.

Circuit Court of Appeals, Second Circuit.

August 7, 1946.

Writ of Certiorari Denied November 12, 1946.

Benjamin P. DeWitt, of New York City (Sidney Pepper, of New York City, on the brief), for appellant.

James A. Dilkes, of Staten Island, N. Y. (Sidney Jacobi, of Staten Island, N. Y., on the brief), for appellees.

Before CHASE, CLARK, and FRANK, Circuit Judges.

Writ of Certiorari Denied November 12, 1946. See 67 S.Ct. 189.

CLARK, Circuit Judge.

Plaintiff, a Massachusetts corporation doing business in New York, has brought this action to enjoin infringement of its registered trade-mark and to enjoin unfair competition. Plaintiff and its predecessor corporation have employed the name "LaTouraine" in connection with coffee, tea, and chocolate powder sold by them, beginning as to coffee in 1906, as to tea in 1918, and as to the powder in 1937. Through a broad and varied program of advertising, they have attained a position of eminence in the industry, selling some fifteen million pounds of coffee alone each year. The corporate defendant is a small New York family corporation, organized by the individual defendant in 1944 and engaged in selling coffee and tea throughout Staten Island, New York, and northern New Jersey. From a judgment of the lower court holding the trade-mark valid, but not infringed, and finding no unfair competition, plaintiff appeals.

Before considering the question of infringement, we must dispose of defendants' very vigorous contention that plaintiff does not have a valid technical trade-mark in any case, because the word "Touraine" is geographical. Congress denied registration of geographical terms only in those cases where the name adopted is "merely geographical." 15 U.S.C.A. § 85 (b). Its purpose was obviously to codify the common-law rule which prevented one manufacturer from appropriating to his own use a name so generically descriptive that it might be employed with equal propriety by others. "Could such phrases as `Pennsylvania wheat,' `Kentucky hemp,' `Virginia tobacco,' or `Sea Island cotton,' be protected as trademarks; could any one prevent all others from using them or from selling articles produced in the districts they describe under those appellations, — it would greatly embarrass trade, and secure exclusive rights to individuals in that which is the common right of many." Delaware & H. Canal Co. v. Clark, 13 Wall. 311, 324, 80 U.S. 311, 324, 20 L.Ed. 581. See also Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14 S.Ct. 151, 37 L.Ed. 1144; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; American Wine Co. v. Kohlman, 5 Cir., 158 F. 830. The courts have consistently held, however, that, when the name is used in an "arbitrary" or fictitious sense, it may be the subject of a valid trade-mark. Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 36 S.Ct. 269, 60 L.Ed. 629 (The American Girl shoe); McIlhenny Co. v. Gaidry, 5 Cir., 253 F. 613 (Tabasco sauce); Century Distilling Co. v. Continental Distilling Corp., D.C.E.D.Pa., 23 F.Supp. 705, modified 3 Cir., 106 F.2d 486, certiorari denied 309 U.S. 662, 60 S.Ct. 581, 84 L.Ed. 1010 (Dixie Belle and Dixie Beau liquor); Fleischmann v. Schuckmann, 62 How.Prac., N.Y., 92 (Vienna bread).

This judicial construction has received legislative approbation. The Trade Mark Act of July 5, 1946, Pub.L.No.489, c. 540, 79th Cong., 2d Sess., § 2(e) (2), 15 U.S.C.A. § 1052(e) (2), effective one year hence, provides specifically that the use of geographical terms prevents registration if "when applied to the goods of the applicant" it "is primarily geographically descriptive or deceptively misdescriptive." (Emphasis added.) And application of the established principles compels a conclusion of validity here. The word "Touraine" itself is no longer a geographical name, since the ancient French province, existing until 1789, then was incorporated in substance into the Department of Indre-et-Loire. 11 Encyc. Americana 575; 26 id. 719; 22 Encyc. Britannica, 14th Ed., 325; Century Atlas of the World, 80. And admittedly that word is not the plaintiff's symbol. It has always used the prefix "La" as a part of its trade-mark. Moreover, its trade-mark registration, as well as its own certificate of incorporation, shows the combination as a single word "LaTouraine"; and this, according to its testimony, is its actual mark. True, defendants did call attention to certain instances of use otherwise. But whether these had become habitual or were mere careless misquotations, the differences noted above from the ancient French name are quite sufficient to avoid a deceptive misdescription of the goods. A. Bauer & Co. v. Siegert, 7 Cir., 120 F. 81, 84; Havana Commercial Co. v. Nichols, C.C.S.D.N.Y., 155 F. 302. The registered term neither has nor professes to have any relation to the source of its coffee, the place of manufacture, or the place of sale. It is an entirely arbitrary name. Obviously the legal principle should be employed to effectuate its purpose; it should not be made a mere contrivance to destroy an otherwise impregnable and successful trade-mark.

To establish infringement, plaintiff need show only that the name adopted by defendants is so similar to its trade-mark as to be likely to cause confusion among reasonably careful purchasers. Defendants urge that there has been no showing of actual instances of confusion; but no such evidence is required. George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 142 F.2d 536, certiorari denied 323 U.S. 756, 65 S.Ct. 90, 89 L.Ed. 606; Rice & Hutchins, Inc., v. Vera Shoe Co., 2 Cir., 290 F. 124. Small metropolitan restaurants constitute the trade of both companies in this area; and the owners of or purchasers for such establishments should not be held to a higher than usual standard of discrimination in purchasing. The only question is whether or not the similarity of names is such as to make likely the deception of any appreciable number of ordinary prudent customers.

While the trial judge, emphasizing the dissimilarity in size of the two businesses, concluded otherwise, we are constrained to think it is. As the cases cited below show, this is a question reviewable on appeal. Defendants have attempted to distinguish "Lorraine" from "LaTouraine" on the basis of the number of letters and syllables in the words, but this form of technical gymnastics is not determinative. See Celanese Corp. of America v. E. I. Du Pont De Nemours & Co., Cust. & Pat. App., 154 F.2d 143. The initial letters and the last syllables — probably the parts of any word which impress themselves most firmly upon the memory — are identical. The similarity is, of course, most striking in oral speech; a call for one in a store is likely to produce the other. Except on the tongues of precisionists, both sound alike; both are unmistakably French.

In this area of trade-mark law, each case must be considered separately and precedents are not conclusive. But examination of the cases gives some standard of similarity; and they indicate that here the degree of resemblance is rather greater than that in several cases where infringement has been found. See, for example, George W. Luft Co. v. Zande Cosmetic Co., supra (Tangee and Zande); Industrial Rayon Corp. v. Dutchess Underwear Corp., 2 Cir., 92 F.2d 33, certiorari denied Dutchess Underwear Corp. v. Industrial Rayon Corp., 303 U.S. 640, 58 S.Ct. 610, 82 L. Ed. 1100 (Spun-lo and Sunglo); Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73 (Keepclean and Sta-Kleen); Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 18 F.2d 774 (Cuticlean and Cutex); Gehl v. Hebe Co., 7 Cir., 276 F. 271 (Hebe and Meje); National Biscuit Co. v. J. B. Carr Biscuit Co., 55 App.D.C. 146, 3 F.2d 87 (Uneeda and Eta).

As further support for its claim for injunctive relief, plaintiff urges that Eben selected the name "Lorraine" well aware of the similarity and with the express purpose of deceiving the purchasing public. On this issue the court below has found against it. Were this a controlling issue here, we should find some embarrassment in accepting these findings notwithstanding that under Federal Rules of Civil Procedure, rule 52(a), 28 U.S.C.A. following section 723C, they must stand unless clearly erroneous, for they do seem to call for a belief in Eben's naiveté which is hard to achieve. The record shows that for three years before starting his own business he was a salesman for a competitor of LaTouraine, during which time he never even heard of the name or knew there was such a brand of coffee. As Judge Learned Hand put it in a similar case, this calls for "stretching credulity beyond its breaking point." Ramopa Co. v. A. Gastun & Co., D.C.S.D. N.Y., 278 F. 557, 558. Further, his former employer testified under subpoena that he had even discussed plaintiff with Eben as "one of our toughest competitors." And his own explanation of the choice of "Lorraine" was, to put it mildly, fanciful. He said that he had made this selection because he had travelled in Alsace-Lorraine and had had some minor business dealings there and because a friend had just had a baby to whom he had given the name. Actually the baby, born more than two years before, bore the name of Eve Lorraine. And there were other small discrepancies in his story.¹ As a matter of fact the court did not analyze this testimony or mention, even to repudiate, the detailed testimony of Eben's former employer;² and we might well return the case for a discussion of this evidence and for an answer to the question how a coffee salesman could avoid all knowledge of a large competitor for three years. But, as the case stands, the question is not of controlling importance, for when similarity is established, good faith — even if proven — is no defense. Thaddeus Davids Co. v. Davids, 233 U.S. 461, 34 S.Ct....