Webb's City Inc. v. Bell Bakeries, 15472.

• Decision Date: 09 November 1955
• Docket Number: No. 15472.,15472.
• Citation: 226 F.2d 700
• Parties: WEBB'S CITY, Incorporated, Appellant, v. BELL BAKERIES, Inc., Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

226 F.2d 700 (1955)

WEBB'S CITY, Incorporated, Appellant, v. BELL BAKERIES, Inc., Appellee.

No. 15472.

United States Court of Appeals Fifth Circuit.

November 9, 1955.

William S. Fielding, St. Petersburg, Fla., for appellant.

Baya M. Harrison, Jr., St. Petersburg, Fla., Mann, Harrison, Stone, Roney & Mann, St. Petersburg, Fla., of counsel, for appellee.

Before HUTCHESON, Chief Judge, and TUTTLE and BROWN, Circuit Judges.

TUTTLE, Circuit Judge.

This appeal presents the question of whether, under Florida law, one whose unregistered trade name has acquired a distinctive meaning in the minds of the buying public is entitled to the exclusive use of that name, or whether he has a cause of action only where a competitor so names, packages, or promotes his own product as to create a substantial likelihood of confusion between the two products in the mind of the ordinary purchaser.

For fourteen years prior to the bringing of this action, Webb's City, Inc., a large department store in St. Petersburg, Florida, sold its own bread to the public, under the trade name "Dandy." Although the markings of the wrapper were changed from time to time, the trade name remained constant. Webb's City spent thousands of dollars yearly in advertising its product, both over the radio and, at least three times weekly, in the newspapers. As a result of these promotional activities — the trial court found — the name "Dandy," in reference to bread sold in the plaintiff's store, acquired a distinctive, secondary meaning in the minds of the buying public of St. Petersburg.

On October 18, 1953, the defendant for the first time offered "Dandee" bread for sale in St. Petersburg, accompanying its introduction with advertising and other promotional measures. For several months prior to this time, the defendant had sold "Dandee" bread in North Carolina, Michigan and Illinois. On October 26, 1953, Webb's City brought suit in Florida state court for an injunction, alleging unfair competition, in the selling of "Dandee" bread in St. Petersburg. Thereafter the defendant removed the case to the District Court for the Southern District of Florida, on the ground of diversity. The case was there heard without a jury, and the trial court made findings of fact and conclusions of law, the former being substantially accepted and the latter challenged on this appeal.

The trial court found that "Dandy" bread is sold exclusively in the plaintiff's department store, while "Dandee" bread is not offered for sale there. It also found that the wrappers are substantially different. "Dandee" bread has thus far been packaged in a wrapper which has a yellow background, with the word "Dandee" most prominent thereon, in red script, and "Enriched Bread" in brown letters underneath. There also appears on the wrapper the representation of a sliced loaf of bread, in natural brown and white colors. "Dandy" bread has been sold in wrappers which apparently have always been similar in design, although different in color. The two wrappers which are attached to the record on appeal are respectively red, white and black, and orange, white and brown. In each the word "Dandy" is written most prominently, in script, and the tail of the "Y" in that word is continued underneath the word so as to underline it, with the word "Sliced" superimposed in another color across this part of the letter. Beneath this appear the words "White Enriched Bread" on one wrapper, and "White Bread" on the other, on a circular colored background. The name of the manufacturer appears clearly on the wrappers of both "Dandee" and "Dandy" bread.

The trial court found that "Dandy" bread sells for about 11 cents to 12½ cents per 14-ounce loaf, while "Dandee" bread retails for approximately 18 cents per 15-ounce loaf. It also found that "the defendant's bread is said to be of better quality than that of the plaintiff." The trial court further found that the plaintiff's sales had actually increased since the introduction of "Dandee" bread, compared with a like period of time before "Dandee" bread appeared on the St. Petersburg market; that there was no showing of any actual damage, or any evidence of customer confusion between the two since "Dandee" bread has appeared in St. Petersburg; and that "the defendant introduced certain evidence that no confusion would occur." It accordingly granted judgment for the defendant.

The plaintiff argues that it is not required to show any actual instances of customer confusion in order to establish a right to injunctive relief here. It contends that to prove a cause of action, it has only to establish that the name "Dandy" has acquired a distinctive, secondary meaning in the minds of the buying public of St. Petersburg, and that there is a similarity between "Dandy" and "Dandee." Under this theory, customer confusion is only an element of damage, and, for the purposes of securing injunctive relief in such a case, "injury will be presumed."

We cannot agree with this reasoning. Under the law of Florida, as under the common law of most states, customer confusion is the gist of the actionable wrong. The common law does not give anyone the exclusive use of a trade name, even where that name is distinctively associated by the public with his product. The prior user has a remedy in the Courts only where a competitor so disguises his product, by means of its name or package, or so promotes it, by any...