American Chicle Co. v. Topps Chewing Gum

• Decision Date: 20 November 1953
• Docket Number: No. 51,Docket 22768.,51
• Citation: 208 F.2d 560
• Parties: AMERICAN CHICLE CO. v. TOPPS CHEWING GUM, Inc.
• Court: U.S. Court of Appeals — Second Circuit

208 F.2d 560 (1953)

AMERICAN CHICLE CO. v. TOPPS CHEWING GUM, Inc.

No. 51, Docket 22768.

United States Court of Appeals Second Circuit.

Argued October 16, 1953.

Decided November 20, 1953.

George E. Middleton, Pennie, Edmonds, Morton, Barrows & Taylor, New York City, for appellant.

W. Lee Helms, New York City, for appellee.

Before L. HAND, SWAN and AUGUSTUS N. HAND, Circuit Judges.

L. HAND, Circuit Judge.

The defendant appeals from a final judgment, permanently enjoining it from infringing the plaintiff's trademark, used in the sale of small nuggets of candy covered chewing gum of various flavors; and dismissing the defendant's counterclaim, for the cancellation of the mark. The registration described the mark as follows: "The trade-mark consists of an O shaped figure colored red having a parallelogram of light shade, usually white, extending horizontally from the central right portion of such figure, together with parallel bands, over and under such figure and parallelogram, of a dark color contrasting with that of the parallelogram, as shown in the drawing. The lining on the O shaped figure denotes the red color, and the lining on the bands indicates shading only. No claim is made to the representation of a carton apart from the other features of the mark shown on the drawing." The only issue on the plaintiff's complaint is whether the defendant infringes; the issues on the counterclaim are that the mark is invalid, as it does not serve to distinguish the plaintiff's goods and that the plaintiff has abandoned it. We do not find it necessary to discuss either of these contentions; and the judgment dismissing the counterclaim will be affirmed. The facts were as follows:

Since 1939 the plaintiff has used the trade-mark in suit on cardboard boxes (three and five eights inches by one and three quarters), holding ten or twelve nuggets, the nuggets in each box being of a single flavor. There are a number of different flavors, each flavor being in a box of a different color. One box is for peppermint nuggets, and on it the color of the "parallel bands over and under" the O "figure and parallelogram" is yellow. The "O shaped figure colored red" appears at the left on all the boxes, its opening being cut through the cardboard so as to show some of the nuggets within. The "parallelogram of light shade" — in practice always white — bears the word "Chiclets," written in large black letters, and is the most arresting feature of the "make-up" as a whole. In later boxes the "parallelogram of light shade" has been extended far enough to the left to break the circle of the "O shaped figure," and change it into a sort of "C." Up to 1949 the defendant had been selling similar chewing gum nuggets of peppermint flavor in packages, each containing about two nuggets, several packages being inclosed in, and sold from, a containing canister. The "make-up" of these packages was altogether unlike the plaintiff's; but in 1949 it began to market its peppermint nuggets by the dozen in boxes (four inches by two), that have at their left end a broken "O," the upper half of which is colored green, the lower half red. From the broken "O" a white "parallelogram" extends to the right end of the box, flanked above and below by "parallel bands" of yellow, giving the box a predominant tone of the same shade of that color as the plaintiff's. Upon the white "parallelogram" appears in large letters the word, "Topps," in place of "Chiclets" on the plaintiff's boxes; but there is no other substantial difference between the "make-up" of the box except for the defendant's break in the "O" and its upper green half.

Although Judge Byers found no evidence of any "actual confusion on the part of purchasers," he did find that "a brief visual observation by a customer might well fail to apprise him of the different sources of manufacture of the nuggets." Also that "in the usual retail purchase * * * the similarity in appearance * * * is such as to be likely to cause confusion * * * of an appreciable number of ordinarily prudent purchasers." Again, that "the use by the plaintiff of its trade-mark Chiclets * * * does not affect the issues in this case." These findings were supported by the following testimony. The plaintiff's assistant secretary testified on cross-examination as follows:

"Q. Now Mr. Helms has suggested that Chiclets, the word Chiclets, may indicate to some people a candy coated gum. Do you subscribe to that? A. I do.

"Q. Is it your opinion that Chiclets is no longer a good trade-mark? A. It is not my opinion.

"Q. In other words you think it is a good trade-mark? A. I do.

"Q. And you think that to most people it indicates the product of the American Chicle Company, do you not? A. To the majority of people, yes."

The plaintiff's advertising manager testified as follows:

"Q. Have you observed any tendency on the part of the public to call various names (makes?) of candy coated gum Chiclets? A. Very definitely.

"Q. And that has extended over how many years, if any, to your knowledge? A. It has been a problem for many years to our company.

"Q. Have you been in stores or in a store where a customer called for Chiclets? A. Yes.

"Q. More than once? A. On many occasions.

"Q. What have you observed in those instances? A. On occasions a retailer might question the customer by saying `What kind of Chiclets do you want? Beechies Chiclets? P.K. Chiclets?\'"

In contradiction of this testimony Davis, a neutral witness called by the defendant, testified that in his experience, when a buyer asked for "Chiclets," the salesman always gave him the plaintiff's gum; and that he never heard a salesman ask "Do you want P.K. Chiclets or Beechies Chiclets?" He had never "observed that there is a tendency on the part of the public to use the term Chiclets for candy coated gum generally."

Upon this dispute we accept the finding that "the similarity in appearance * * * is likely to cause confusion * * * of an appreciable number of ordinarily prudent purchasers," in spite of the word "Topps" replacing "Chiclets." The situation is therefore one where, although "the majority of people" do not suppose that the word "Chiclets" is generic, there is a "tendency" to read it so; and it follows that to these buyers, who are numerous enough to become "a problem for many years to our company," the word has ceased to denote any definite "source of origin." How far this may have affected the validity of the trade-mark, "Chiclets" (for that too is registered), is not important here. What is important is that to those buyers, who think "Chiclets" to be a descriptive term, the "make-up" that accompanies it may well be what assures them that they were getting the "Chiclets" they have become used to; and the word, "Topps," would not in that event tell them of any new "source of origin." It is...