Metcalf v. Hanover Star Milling Co.

• Decision Date: 08 April 1913
• Docket Number: 2,476.
• Citation: 204 F. 211
• Parties: METCALF v. HANOVER STAR MILLING CO. [d]
• Court: U.S. Court of Appeals — Fifth Circuit

204 F. 211

METCALF v. HANOVER STAR MILLING CO. ^[d]

No. 2,476.

United States Court of Appeals, Fifth Circuit.

April 8, 1913

Edward Everett Longan, of St. Louis, Mo., J. Fred Gilster, of Chester, Ill., Lane & Lane, and C. F. Winkler, for appellant.

Clarkson & Morrisette, of Tuscaloosa, Ala., and London & Fitts, of Birmingham, Ala., for appellee.

Before PARDEE and SHELBY, Circuit Judges, and SHEPPARD, District judge.

SHEPPARD District Judge.

This is an appeal from the District Court of the Middle District of Alabama from an order allowing a temporary injunction against the plaintiff in error, hereafter designated defendant, by the Hanover Star Milling Company, a corporation of Germantown, Ill., hereafter referred to as plaintiff, for infringement and unfair competition under plaintiff's alleged trade-mark 'Tea Rose.'

The bill, in so far as it is necessary to consider to determine the merits of the controversy, charges substantially: That the plaintiff, Hanover Star Milling Company, for 27 years had been engaged at Germantown, Ill., in the manufacture of a popular grade of flour called 'Tea Rose.' That for 12 years this flour had been upon the market in Alabama in sacks or bags under the distinctive label or stencil brand similar to the following cut:

(Image Omitted)

[Design of green rose with yellow leaves, design turned to right, and consists of one large rose, a half-open rose and small bud etc.]

That by maintaining a high grade of flour under this brand, and by extensive advertising, plaintiff enjoyed a lucrative trade in its Tea Rose flour, and by reason of the reputation of the Tea Rose was enabled to sell to the trade in Alabama Georgia, and Florida large quantities of other flour of its manufacture. That defendant, Metcalf, had invaded its territory in Alabama, and was offering and selling in Butler county, Ala., a product of the Steeleville Milling Company located at Steeleville, Ill., a flour different from that made and sold by plaintiff in packages substantially identical with those used by plaintiff in marketing its Tea Rose flour, the similarity of brand and stencil picture being shown by appropriate exhibits to the bill, which disclose such an imitation or dressing of the package as might well mislead the trade of the Hanover Star Milling Company's product, named 'Tea Rose.' That Metcalf by the use of such wrappings, and by his misrepresentations that the Steeleville article is the original Tea Rose flour, constitutes unfair competition against plaintiff. Wherefore plaintiff seeks relief in equity.

Defendant, Metcalf, answered the bill, and denied specifically: The allegations of deception and misrepresentations in connection with the sale in Butler county, Ala., of the Steeleville article of flour called 'Tea Rose.' That he had sold and delivered as a merchant in business at Greenville, Ala., 40 Barrels of the manufacture of the Steeleville Milling Company at Greenville, Ala., in packages stamped as here shown:

(Image Omitted)

[Design of yellow rose with green leaves, the design turned to the left, and consists of one large rose, a half-open rose, and a small bud, etc.]

That it was not represented as the Hanover Star Milling Company's flour, and that no deceit was practiced in the sale thereof. Further answering, defendant denied that plaintiff was the first to appropriate the name 'Tea Rose' in the manufacture of flour; that the name 'Tea Rose' had been appropriated as a brand of flour by the firm of Allen & Wheeler, of Troy, Ohio, long before plaintiff's use, and as early as 1872; that the Steeleville Milling Company has used the Tea Rose brand on flour for more than 16 years, and that for 6 years prior to plaintiff's suit the Steeleville Milling Company had been selling, with plaintiff's knowledge, to the trade in portions of Mississippi and parts of Alabama, flour in packages stamped with the cut above indicated.

The cause was submitted on bill, answer, and exhibits; and thereupon a temporary restraining order was granted, from which defendant prosecuted his appeal to this court on several grounds of error, which may be considered for the purpose of this review in one assignment-- that the court erred in not denying the preliminary injunction, on the ground that the plaintiff was not the owner of the trade-mark 'Tea Rose,' and that defendant had not engaged in unfair competition.

The question mainly presented is unfair competition, but in the light of the authorities infringement is inseparably involved, and the right to protection against the latter depends upon the antecedent fact of first and exclusive use. Infringement is the wrongful copying and sending forth of an article well calculated to be taken for one already established in trade, and is regarded in the law as analogous to a trespass. Unfair competition consists in placing on the established trade of another an article or commodity dressed so as to be very like the other and 'palming off' the imitation as the original.

This leads us necessarily to ascertain what constitutes one's right in a trade-mark which the law undertakes to protect. Primarily, first invention, use, or adoption assures to the originator or owner protection from infringement. Prior adoption and original exclusive use entitles the first appropriator to the common-law protection against similar and deceptive dressing coupled with fraudulent misrepresentation. Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 11 Sup.Ct. 396, 34 L.Ed. 997; Hopkins, Trade-Marks (2d Ed.) Sec. 30.

It does not comport with the purpose of the law to put any barriers in the way of commercial intercourse or to interfere with fair competition. It is to the best interests of society that commerce be left to the adjustment of the law of supply and demand. There are, however, exclusive property rights in trade-marks and names which may have been adopted by one to indicate his ownership, which are recognized and protected by the common law, to the extent that another will not be allowed to appropriate the name, mark, or symbol to enable the imitator to palm off on the established trade of the originator a different article or commodity, though it might be in every respect equal in quality to the original mark or brand. Such imposition constitutes what is technically termed unfair competition, which the law undertakes to prevent. Trade-Mark Cases, 100 U.S. 82, 25 L.Ed. 550.

To invoke the jurisdiction of a court of equity to prevent infringement and unfair competition by the use of a similar trade-mark by another, it is incumbent upon the complainant to show that he has a property right in the mark or thing which indicates the ownership, or origin, of the article, and that its use has been fraudulently invaded by another. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151, 37 L.Ed. 1144; Epperson & Co. v Blumenthal, 149 Ala. 125, 42 So. 863, 13 Ann.Cas. 832. The property right in a trade-mark is acquired chiefly, as we shall see, by prior adoption and exclusive use of the mark or symbol relied upon to distinguish the proprietor's ownership. The exclusive right to the use of a trade-mark rests, not so much on priority of invention, but upon such use as to indicate the origin of the plaintiff's goods, and must be early and separate enough for...