Huber Baking Co. v. Stroehmann Bros. Co.

• Decision Date: 07 December 1953
• Docket Number: Docket 22706.,No. 69,69
• Citation: 208 F.2d 464
• Parties: HUBER BAKING CO. v. STROEHMANN BROS. CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

208 F.2d 464 (1953)

HUBER BAKING CO. v. STROEHMANN BROS. CO. et al.

No. 69, Docket 22706.

United States Court of Appeals Second Circuit.

Argued November 6, 1953.

Decided December 7, 1953.

Appell, Austin & Gay, New York City, for appellant; Cyrus Austin, Rogers, Hoge & Hills, Lenore B. Stoughton, New York City, of counsel.

Greenwald, Kovner & Goldsmith, New York City, for appellee Quality Bakers of America Cooperative, Inc.; Harold Greenwald, Yonkers, and Harry Litwin, New York City, of counsel.

Nims, Martin, Halliday, Whitman & Williamson, New York City, for appellee Stroehmann Bros. Co.; John Dashiell Myers, Chester C. Baxter, Henry Temin, Philadelphia, Pa., and Carl B. Shelley, Harrisburg, Pa., of counsel.

Before CHASE, Chief Judge, CLARK, Circuit Judge, and BRENNAN, District Judge.

CHASE, Chief Judge.

Invoking the diversity jurisdiction of the court the appellant, a Delaware corporation engaged in the manufacture and sale of bread and other bakery products, sued Stroehmann Brothers Company, a Pennsylvania corporation licensed to do business in New York, and Quality Bakers of America Cooperative, Inc., a New York corporation, of which both the appellant and Stroehmann Brothers Company are members. The complaint alleged trade-mark infringement and unfair competition and damages were sought together with an accounting by Stroehmann Brothers Company for profits. The plaintiff moved on affidavits for a temporary injunction and this appeal is solely from the denial of that motion.

The record shows that in 1913 the appellant began to use the name "Sunbeam" in the sale of its bread and some other bakery products in territory including the City of Philadelphia, and on December 9th in that year registered a label, on which were the words "Huber's Sun Beam Bread," in the United States Patent Office. It continued to use that label or the words "Huber's Sunbeam Bread" on the wrappers in which some of its bread was sold in such territory until the end of 1941.

On January 1, 1942, it became a member of the predecessor of the appellee cooperative which was then an unincorporated association that performed services for its members at cost, including the purchase of supplies, the setting of standards of production, inspection of plants and products to maintain such standards, and the satisfying of the individual advertising requirements of members. Such services have been performed by the appellee cooperative for its members, including the appellant, since it was incorporated in April, 1942. As a part of such advertising service the predecessor of the appellee cooperative undertook at the request of the appellant to lay out an advertising compaign for its "Sunbeam" products and before August, 1942, the result of this work, which was continued by the appellee cooperative, had been approved by the appellant. A distinctive feature of the proposed campaign was a wrapper for bread and rolls on which there was a picture in colors of the head, shoulders and arms of an attractive little girl who in some poses was eating a slice of buttered bread and in others was not. She was called "Miss Sunbeam." Two other members of the cooperative, one in Cleveland, Ohio, and one in Roanoke, Va., who did not compete with the appellant in the territory served by it, joined in the campaign and the expenses of the preparation of such wrappers printed in colors were paid in part by all three. On April 27, 1943, the appellee cooperative registered in the Patent Office the picture of the little girl eating a slice of buttered bread as a collective trade mark "used upon the goods to indicate that the goods are inspected, from time to time, in applicant's laboratory and quality thereof approved and that such persons so authorized to use same are members of the applicant cooperative corporation." In 1946 a composite mark comprising the picture of the little girl and "Sunbeam" or "Miss Sunbeam" was registered in Pennsylvania and other states including those in which the appellant and the appellee Stroehmann Brothers Company do business. Long before such state registration of the composite mark and with the knowledge and consent of the president of the appellant, the appellee cooperative used the word "Sunbeam" on the wrappers with the little girl's picture which it made available to its members and called the advertising campaign it conducted for its members the "Sunbeam Campaign." By an undated written instrument signed by the president of the appellant who acknowledged his signature on December 26, 1944, as the duly authorized representative of that corporation, the appellant undertook to assign to the appellee cooperative its mark registered in the Patent Office as above noted including "the entire right, title and interest in and to the label and the registration thereof, #17387, and each and every part...