Nashville Syrup Co. v. Coca Cola Co.

• Decision Date: 13 June 1914
• Docket Number: 2439,2440.
• Citation: 215 F. 527
• Parties: NASHVILLE SYRUP CO. v. COCA COLA CO. COCA COLA CO. v. NASHVILLE SYRUP CO.
• Court: U.S. Court of Appeals — Sixth Circuit

215 F. 527

NASHVILLE SYRUP CO. v. COCA COLA CO.

COCA COLA CO. v. NASHVILLE SYRUP CO.

Nos. 2439, 2440.

United States Court of Appeals, Sixth Circuit.

June 13, 1914

[Copyrighted Material Omitted]

J. B Sizer, of Chattanooga, Tenn., and Harold Hirsch, of Atlanta Ga., for plaintiff.

Perkins Baxter, of Nashville, Tenn., and E. W. Bradford, of Washington, D.C., for defendant.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

DENISON Circuit Judge (after stating the facts as above).

1. Passing, for the present, without deciding, the question whether the name Coca Cola was, in 1887 or in 1892, so far descriptive of the article as to be incapable of appropriation as a common-law trade-mark, and passing, also without deciding, the question whether the name, if primarily descriptive, had, before suit was brought in 1910, acquired a secondary meaning, we come to the effect of the registration under the act of 1905. The broad questions on which defendant relied concerning the effect of this act have been set at rest against defendant's contention, by the decision of the Supreme Court in Davids Co. v. Davids, 233 U.S. 461, 34 Sup.Ct. 648, 58 L.Ed. 1046. In view of the settled rule that the federal trade-mark statute does not create any exclusive right, as the patent statute does, but only recognizes a right which has been already acquired by exclusive appropriation, and then furnishes evidence and remedies (Trade-Mark Cases, 100 U.S. 82, 25 L.Ed. 550; Hopkins on Trade-Marks, Sec. 27; Hesseltine's Law of Trade-Marks, p. 139), we do not regard the decision in the Davids Case as holding that the statute directly operates to grant a monopoly to one who rightfully registers under the ten-year clause a descriptive or geographical word. We take it as holding that the statute was not intended to permit, under this clause, an ineffective and useless registration, and so, in effect, holding that the statute removed from descriptive words which had been exclusively used as a mark in interstate commerce for 10 years the bar or disability caused by their descriptive character, and made them, after that probation, subject to exclusive appropriation with the same effect, in the main, as if the disability had never existed. Since the statute relates primarily to registration, it may well be that the disability continues until registration, somewhat retroactively, removes it; that is not now important. Neither is it important at present to know the exact distinctions between the manufacturer's rights formerly existing under the secondary meaning theory and those now existing under the statute. Since it appears that plaintiff had enjoyed the exclusive use of the name 'Coca Cola' for more than 10 years before 1905, and that there was due registration under the act of 1905, it follows that plaintiff's exclusive rights as a trade-mark owner and as defined in the Davids Case, are established.

Whether any exclusive rights which, in an essential part, depend on this statute can extend to the regulation of strictly intrastate commerce, or whether the effect must be limited to the field where Congress had power to act, is an interesting question, which is only suggested, but not presented, by this record. It is not raised by assignment of error or by the briefs. We, therefore, give it no consideration.

2. We think the infringement sufficiently appears. Here, also, the Davids Case is instructive. The specific form in which the mark was registered in that case was not considered important; and so it cannot be here controlling, whether the words 'Coca Cola' are with or without a hyphen, or are in script or in plain letters. Neither is infringement avoided because defendant marks its bottles 'Fletcher's Coca Cola.' Not only does this qualification in the name fail effectively to reach the ultimate consumer (Coca-Cola Co. v. Gay-Ola Co., 200 F. 720, 119 C.C.A. 164, and 211 F. 942, 128 C.C.A. 440), but a trade-mark right which could be so avoided would be of no value. Indeed, even under the secondary meaning theory, and without the aid of the statute, such marking would not sufficiently differentiate. Merriam v. Oglivie, 170 F. 167, 95 C.C.A. 423, and cases cited on page 168; Davids Co. v. Davids, supra. A case may arise where the words registered under the statute are so wholly and so merely descriptive and so unfit to carry an arbitrary meaning indicating registrant's product only that the use of the words coupled with defendant's name as manufacturer would not infringe; but this is not that case. The words here involved were, if fairly 'descriptive' at all, not purely descriptive, and by 10 years' exclusive use they had become the distinctive appellation of plaintiff's product. To permit defendant to use them in connection with his own name is not to avoid or mitigate the wrong, but is rather an aggravation, because of the false implication that plaintiff has parted with the exclusive right. Jacobs v. Beecham, 221 U.S. 263, 272, 31 Sup.Ct. 555, 55 L.Ed. 729.

3. There remains the question whether the mark is deceptive. Defendant does not expressly make this point, but it is so bound up with the questions of how merely descriptive the words are, and whether the same words as used by defendant are only the rightful name of its product, that it must be decided. The act of 1905 makes no exception in this respect, but we assume that if the registered words clearly carried deception, and if their use really represented to the purchasers that the article was something essentially different from the thing which they actually received, the courts would not enforce any exclusive rights under such registration, both because plaintiff would come into court with unclean hands (California Co. v. Stearns, 73 F. 812, 816, 20 C.C.A. 22, 33 L.R.A. 56), and because such words could not be within the fair contemplation of the act, when it refers to 'any mark * * * which was in actual and exclusive use as a trade-mark,' etc. The inquiry whether the mark is deceptive and misleading is not dissimilar to the question whether the same words constitute the distinctive name of another article, which question we have considered in our opinion in United States v. Coca Cola Co., 215 F. 535, this day filed; but there may be some such special force in the words 'distinctive name' found in the Pure Food Law that a mark might be thought deceptive or misleading even though it was not the 'distinctive name of another article.' Hence, the point requires, in this case, further consideration.

The argument is that the use of the name, 'Coca Cola,' implies to the public that the syrup is composed mainly or in essential part of the coca leaves and the cola nut; and that this is not true. The fact is that one of the elements in the composition of the syrup is itself a compound made from coca leaves and cola nuts. This element becomes a flavor for the complete syrup, and is said to impart to it aroma and taste characteristic of both. This flavoring element is not in large quantity (less than 2 per cent.), but it is impossible to say that it does not have appreciable effect upon the compound. The question then is whether the use of the words is a representation to the public that the syrup contains any more of coca or of cola than it really does contain.

We think it clear that whether the claimed trade-mark is so descriptive of something else as to be deceptive must be decided as of the time of adoption. It cannot be that rights once lawfully acquired by exclusive appropriation can be defeated by subsequent progress of public knowledge regarding some other substance of similar name. It is undisputed that during the period shortly after 1892, while this name was coming into public knowledge in connection with plaintiff's product, little or nothing was popularly known about either coca leaves or cola nuts, although existing technical or cyclopedic publications gave information. It is not important whether Pemberton's original form, 'Coca Cola Syrup and Extract,' was so descriptive as to be deceptive if applied to a compound not composed mainly of these ingredients. The name in which trade-mark rights have been acquired is the compound name 'Coca Cola,' and this name may not, for all purposes be the same as if it was 'Extract of Coca and of Cola. ' ^[1] Neither of these words alone had any absolute complete meaning, but when the words were put together to make the compound term, the ambiguity of meaning was intensified. If coca was spoken of, the reference might be to the leaves, or to a decoction or to an extract; 'cola' might refer to the nuts or to a powder or to a paste or a fluid; and so, when the public first saw the name 'Coca Cola,' it could not know, as we said in the accompanying case, whether the substance was medicine, food, or drink, or whether it was intended to swallow, smoke, or chew. One who had all the existing available information could only infer that the new substance, whatever it was, had some connection with these two foreign things. The case would be somewhat different if each of the two named elements was itself definite and certain, but neither is. To illustrate by more common substances: Sage is a shrub, used in various ways; the almond is a nut, eaten raw or prepared in numerous methods. The compound name 'Sage-Almond,' as a label, would convey a very indefinite idea, if any, as to what would be found when the package was opened; and, if we assume that 'Sage-Almond' turned out to be a drink in connection with which sage leaves and almonds had been used, we have, in this illustration, a close analogy to Coca Cola; yet this name, applied to a soda fountain beverage, would not deceive the public into supposing that it contained all the...