Aunt Jemima Mills Co. v. Rigney & Co.

• Decision Date: 11 December 1917
• Docket Number: 42.
• Parties: AUNT JEMIMA MILLS CO. v. RIGNEY & CO.
• Court: U.S. Court of Appeals — Second Circuit

247 F. 407

AUNT JEMIMA MILLS CO. v. RIGNEY & CO.

No. 42.

United States Court of Appeals, Second Circuit.

December 11, 1917

F. F Crampton, of Toledo, Ohio, for appellees.

Before WARD and ROGERS, Circuit Judges, and LEARNED HAND, District judge.

WARD Circuit Judge.

This is an appeal from a decree of the United States District Court for the Eastern District of New York dismissing the complainant's bill for infringement of trade-mark and for unfair competition on the ground that the goods manufactured by the parties respectively are different, viz. self-rising flour, by the complainant and pancake syrup by the defendants.

The Davis Milling Company, of St. Joseph, Mo., originated the trade-mark, which consists of the words 'Aunt Jemima's,' accompanying the picture of a negress laughing, in 1899, as we infer from the statement and declaration accompanying the registered trade-mark taken out in the United States Patent Office April 3, 1906, for self-rising flour. February 1, 1914, the Milling Company sold out its business, trade-marks, and good will to the Aunt Jemima Mills Company, the complainant in this case.

Since February 15, 1908, Rigney & Co., the defendants, have used a trade-mark precisely like the complainant's, which was registered December 29, 1908, in the Patent Office on an application filed March 6, 1908, for certain syrups and sugar creams. March 14, 1908, as soon as the application came to its attention, the Milling Company wrote to Rigney & Co. as follows:

'St Joseph, Mo., March 14, 1908.

'Rigney & Co., Brooklyn, N.Y.-- Gentlemen: We have your letter of the 5th. We are surprised to have you use the name 'Aunt Jemima' for your syrup, but presume you can do so without violating any law in the matter. Mr. Jackson wrote us about this, but we did not know that you were going to do it right 'hot off the pan' as one might say. We thought you were going to wait to hear from us. We note you say you have copyrighted 'Aunt Jemima.' Were you able to obtain a copyright of 'Aunt Jemima' for maple syrup, or did you simply register it as a trade-mark? The sample which you sent us has been received, and it is as far as we can see, a very fine article. The looks of the Aunt Jemima Pancake Cream, as you call it, is not as good as the taste. The looks we think could be improved perhaps. Do you make this in a syrup as well as in the cream? Do you work the trade entirely through brokers, or do you handle it with salesmen working the retail trade? Would you be interest () in taking on a pancake flour proposition along with your maple syrup and other lines? If so, we might have something of interest for you. Yours truly,

The Davis Milling Co., 'Robert R. Clark.'

It is perfectly clear that Rigney & Co. adopted the trade-mark (though with full knowledge of the complainant's prior use) upon the advice of counsel and in full belief that they had a right to use it for their specific products. They brought it to the attention of the Milling Company, the complainant's predecessor, a little over two weeks after they had selected it, and one day before they filed their application for registration in the Patent Office.

The above letter is obviously no evidence of abandonment or of nonuser by the complainant, but the defendants say it is an acquiescence in their use of the trade-mark for syrups. We do not so construe it. The complainant was speaking of a matter of law, and said it 'presumed' that the defendants could do so without violating any law.

But if, as matter of law, the defendants had no right to use the trade-mark, this expression of opinion by the complainant does not make the law other than it is, nor estop it from relying on the law as it really is. Bigelow on Estoppel, p. 634. Indeed, the complainant seems, in addition, to have been misled by the defendants as to the facts, because the letter goes on to say that the defendants had written they had copyrighted the trade-mark, and to ask whether they meant that they had registered it in the Patent Office. No reply to this letter was ever received. If the complainant had authorized the defendants to use the mark, or even had said it did not object to their doing so, mistake of law would not save it. When, however, it merely expressed a legal opinion, it did nothing to mislead the defendants, and they took the risk of acting on that opinion if it were erroneous. The bill was filed in December, 1915.

This brings us to inquire what the law on the subject really is. We find no case entirely like the present. In Hanover Star Milling Co. v. Allen & Weeks, 208 F. 513, 125 C.C.A. 515, L.R.A. 1916D, 136, affirmed Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 Sup.Ct. 357, 60 L.Ed. 713, which was also said by Mr. Justice Pitney to be a most unusual case, it was held that a trade-mark is not a subject of property, and that even a technical trade-mark like the one under consideration will be protected only in markets where it has been established; that is, where it has come to indicate the origin or ownership of the goods it marks. In that case the trade-mark was adopted without any knowledge whatever of the prior use. The right to a trade-mark, though strictly appurtenant to the trade, becomes a property right as soon as it identifies the trade. When it gets this far, it is a mere question of words whether we say that the trade or the trade-mark is protected. Mr. Justice Pitney, in affirming this judgment, recognized an exception when he said:

'In the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question. But where two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant, unless at least it appears that the second adopter has selected the mark with some design inimical to the interests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like.'

To use precisely the same mark, as the defendants have done, is, in our opinion, evidence of intention to make something out of it-- either to get the benefit of the complainant's reputation or of its advertisement or to forestall the extension of its trade. There is no other conceivable reason why they should have appropriated this precise mark. The taking being wrongful, we think the defendants have no equity to protect them against an injunction, unless they get it from a consideration now to be examined.

It is said that even a technical trade-mark may be appropriated by any one in any market for goods not in competition with those of the prior user. This was the view of the court below in saying that no one wanting syrup could possibly be made to take flour. But we think that goods, though different, may be so related as to fall within the mischief which equity should prevent. Syrup and flour are both food products, and food products commonly used together. Obviously the public, or a large part of it, seeing this trade-mark on a syrup, would conclude that it was made by the complainant. Perhaps they might not do so, if it were used for flatirons. In this way the complainant's reputation is put in the hands of the defendants. It will enable them to get the benefit of the complainant's reputation and advertisement. These we think are property rights which should be protected in equity. We have held in Florence v. Dowd, 178 F. 73, 101 C.C.A. 565, that a manufacturer of hair brushes under the trade-mark 'Keepclean,' who did not make toothbrushes, is entitled to be protected against the unfair competition of one who manufactures toothbrushes under the trade-mark 'Sta Kleen.' So in Collins Co. v. Oliver Ames Co. (C.C.) 18 F. 561, a manufacturer of metal articles, which had never made shovels, was granted an injunction preventing the defendant from putting the complainant's trade-mark on its shovels.

The defendants are a partnership, and did not incorporate the words 'Aunt Jemima's' into their firm name; but the complainant seems to think that appropriation of a trade-mark is to be treated in exactly the same way as appropriation of a trade-name. The latter is a trespass of the same nature as is committed by one who applies another man's name to his own goods. This is a wrong which equity will enjoin without reference to the character of the article, or to the question of competition or of prior occupation of the...