214 F.2d 792 (5th Cir. 1954), 14805, Pure Foods v. Minute Maid Corp.

Docket Nº:14805.
Citation:214 F.2d 792, 102 U.S.P.Q. 271
Case Date:July 30, 1954
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

Page 792

214 F.2d 792 (5th Cir. 1954)

102 U.S.P.Q. 271




No. 14805.

United States Court of Appeals, Fifth Circuit.

July 30, 1954

Page 793

Ralph L. Chappell, New York City, J. Thomas Gurney, Orlando, Fla., for appellee.

Page 794

Before HUTCHESON, Chief Judge, RIVES, Circuit Judge, and RICE, District Judge.

RIVES, Circuit Judge.

The defendant 1 is appealing from a judgment in favor of the plaintiff in an action for infringement of a trade-mark registered under the Lanham Act, 15 U.S.C.A. § 1051 et seq. The complaint alleges the manufacture and sale by the plaintiff in interstate commerce to and from the State of Florida of frozen fruit juice concentrates under the trade-mark 'Minute Maid', and also alleges the registration of said trade-mark under the Lanham Act, and that the defendant has violated the plaintiff's rights in the trade-mark and has unfairly competed with plaintiff by selling frozen meats under the designation 'Minute Made.'

Each party is a Florida corporation and jurisdiction, though not questioned in the district court, depends upon the Lanham Act.

The district court made findings of fact 2 and conclusions of law, 3 and enjoined

Page 795

the defendant from selling frozen meats under the designation 'Minute Made', but without any accounting for damages or profits.

The specifications of error may be divided as between objections to the jurisdiction and to the judgment on its merits as follows:

1. Jurisdiction. The district court lacked jurisdiction because:

(a) The pleadings and proof did not show that the defendant used its alleged infringing trade-mark 'in commerce' within the meaning of the Lanham Act.

(b) The claim under the Lanham Act was not so substantial as to support pendent jurisdiction of the related claim for unfair competition.

2. The Merits. The district court erred in enjoining the defendant from using its trade-mark because:

(a) The judgment enlarges the plaintiff's trade-mark rights which were limited to fruit juice concentrates.

(b) When the parties are not in competition and neither causes damages to the other, (1) there cannot be confusion or likelihood of confusion as to the origin of the products, (2) the plaintiff has no authority to act as a vicarious champion to protect the public from any confusion.

(c) The words 'Minute Made' were descriptive of the products of the defendant.

In defining infringement under the Lanham Act, 15 U.S.C.A. § 1114 begins as follows:

'(1) Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services; * * * .'

To be guilty of infringement of a registered mark under this statute the defendant must use the infringing mark 'in commerce'. 15 U.S.C.A. § 1127 provides: 'In the construction of this chapter, unless the contrary is plainly apparent from the context-- * * * The word 'commerce' means all commerce which may lawfully be regulated by Congress.' It is too well settled to require citation of authority that an activity local in nature but which interferes with the free flow of interstate commerce or exercises a substantial economic effect on interstate commerce may be regulated by Congress. Under the rationale of the decision of this Court in Bulova Watch Co. v. Steele, 5 Cir., 194 F.2d 567, the Lanham Act extends jurisdiction to interstate infringement which has a substantial economic effect on interstate commerce. In affirming

Page 796

that decision, the Supreme Court recognized that the Lanham Act had broadened the scope of trade-mark jurisdiction. To declare that a trade-mark registered under the Lanham Act is protected from infringement which is purely intrastate but which interferes with the free flow of interstate commerce of has a substantial effect on such commerce is very different from the sweeping extension of the jurisdiction of federal courts to all instances of unfair competition with interstate commerce, though not affecting a Federally...

To continue reading