Coca-Cola Co. v. Old Dominion Beverage Corp.

Decision Date03 March 1921
Docket Number1729.
Citation271 F. 600
PartiesCOCA-COLA CO. v. OLD DOMINION BEVERAGE CORPORATION. [1]
CourtU.S. Court of Appeals — Fourth Circuit

Robert E. Scott and L. O. Wendenburg, both of Richmond, Va. (T. Gray Haddon, of Richmond, Va., on the brief), for appellee.

Before KNAPP and WOODS, Circuit Judges, and ROSE, District Judge.

ROSE District Judge.

Plaintiff's trade-mark 'Coca-Cola' is duly registered under the ten-year proviso of the federal trade-mark law (Comp. St Sec. 9490). It is therefore immaterial that it may once have been descriptive or that to a degree it may be so still. Thaddeus Davis Co. v. Davids, 233 U.S. 468, 34 Sup.Ct. 648, 58 L.Ed. 1046, Ann. Cas. 1915B, 322. The Supreme Court has very recently overruled the contention that because of what is said to have been or to be its deceptive character, plaintiff may not be heard to complain of its infringement. Coca-Cola Co. v. Koke Co., 254 U.S 143, 41 Sup.Ct. 113, 65 L.Ed. . . ., decided December 6 1920.

The bill in this case charges that defendant has infringed it by the sale of its wares under the trade-mark 'Taka-Kola,' and has also unfairly competed by the use of such words and by the design and ornamentation of its bottles. In dismissing the cause without opinion the learned District Judge of the Western District of Virginia sitting by special assignment may have been influenced by the decision of the Circuit Court of Appeals for the Ninth Circuit in Koke Co. v. Coca-Cola Co., 255 F. 894, 167 C.C.A. 214, since reversed by the Supreme Court in the case heretofore cited.

Plaintiff, from a time long anterior to the use of the words 'Taka-Kola' by anybody, had actively and continuously marketed its wares in the very localities in which defendant has offered its drink for sale. Both plaintiff and defendant use their respective marks in interstate as well as in intrastate commerce, so that the former may invoke the federal acts, no matter how narrow may be the construction of the protection they can constitutionally give. Louis Bergdoll Brewing Co. v. Bergdoll Brewing Co. (D.C.) 218 F. 131.

The parties are corporations of different states, and the value of the thing in controversy exceeds $3,000, so that the courts of the United States may enforce the common-law rights of the plaintiff, as well in its trade-mark as against unfair competition. An injunction is an appropriate part of the relief for which it asks, so that it has properly preferred its complaint to the equity side of the court. The beverages upon which the marks are used are not only of the same general character, but are in fact so similar in taste, color, and appearance that it is doubtful whether the ordinary purchaser can tell one from the other when they come to him unmarked and otherwise unidentified.

When defendant began business, the plaintiff's drink had been on sale in most parts of the country, and certainly in Virginia, for a quarter of a century or more. Its business had grown to great proportions, a result due in large, if not in largest, part to the extensive and expensive advertising it has always done, the cost of which in recent years has averaged a million or more annually. Defendant was promoted by some persons who came here from Tennessee, where they or some of them had been connected with a concern which, in the Patent Office, had had a losing fight with the plaintiff over the right to use the words 'Tenn-Cola.' Coca-Cola Co. v. Tenn-Cola Co. (Patent Office opposition No. 1894).

Perhaps the geographical proximity of Tennessee to Atlanta, in which plaintiff's business began, and in which it became so visibly and attractively lucrative, explains why this is not the first instance in which plaintiff has thought itself compelled to complain of infringement and of unfair competition originating in that state. Coca-Cola Co. v. Nashville Syrup Co. (D.C.) 200 F. 157, affirmed in 215 F. 527, 132 C.C.A. 39, and of which Coca-Cola Co. v. Duberstein (D.C.) 249 F. 763, appears to have been an aftermath; Coca-Cola Co. v. Gay Ola Co., 200 F. 920, 119 C.C.A. 164; Coca-Cola Co. v. Tenn-Cola Co., supra.

In the instant case the defendant's mark 'Taka-Kola' consists, as does 'Coca-Cola,' of two words, each of four letters and of two syllables. In each phrase a consonant and a vowel alternate, there being in each four of the one and four of the other. In plaintiffs' a and o each appear twice. Defendant's has three a's and one o. The consonant l is common to both, and in each is the seventh letter from the beginning. Plaintiff's contains three c's, having in every instance the hard or k sound. Twice defendant replaces the c with a k, and once by a t, the use of which last must be relied upon to distinguish the two words, for in every other respect they are for all practical purposes identical. The two words of plaintiff's are united by a hyphen; so are those of the defendant. The plaintiff displays its in script. The defendant has followed suit. The color scheme of the crown corks with which each seals its bottles is so nearly the same that, when they are lying on their sides with the tops outward, or are standing upon their bottoms in racks or trays, they are at a distance of a few feet indistinguishable. It taxes credulity to believe that so close a resemblance was accidental.

There however, appears to be nothing of substance in plaintiff's claim that defendant has imitated its distinctive type of bottle. The two designs are not enough alike to justify a finding that as to them there is unfair competition. The defendant, after the manner of others in like case, says it has always wanted to sell its drink for what it is, and to that end has done all that in it lies to distinguish its product from Coca-Cola. The courts have had frequent occasion to...

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  • Miles Laboratories v. Seignious
    • United States
    • U.S. District Court — District of South Carolina
    • 15 Diciembre 1939
    ...technical meaning. It has long been recognized that injunction is a proper remedy against unfair competition: Coca-Cola Co. v. Old Dominion Beverage Corporation, 4 Cir., 271 F. 600; Price-Hollister Co. v. Warford Corporation, D.C., 18 F.2d 129; Standard Oil Co. of Maine v. Standard Oil Co. ......
  • Shaffer v. Coty, Inc.
    • United States
    • U.S. District Court — Southern District of California
    • 3 Mayo 1960
    ...& Co. v. Palermo Cafe Co., 1 Cir., 1957, 249 F.2d 77, 80-82, affirming D.C.D.Mass.1956, 146 F.Supp. 867; Coca-Cola Co. v. Old Dominion Beverage Corp., 4 Cir., 1921, 271 F. 600, 602; Folmer Graflex Corp. v. Graphic Photo Service, D.C.D.Mass.1941, 41 F.Supp. 319, 320; see: Clark v. Wooster, 1......
  • Dixi-Cola Laboratories v. Coca-Cola Co.
    • United States
    • U.S. Court of Appeals — Fourth Circuit
    • 11 Enero 1941
    ...significance and has indicated the plaintiff's product alone"; and it was held by this court the next year in Coca-Cola Co. v. Old Dominion Beverage Corp., 4 Cir., 271 F. 600, 601, certiorari denied 256 U.S. 703, 41 S.Ct. 624, 65 L.Ed. 1179 that as the plaintiff's trade-mark had been duly r......
  • Stork Restaurant v. Sahati
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • 18 Febrero 1948
    ...so near to his successful rival that the public may fail to distinguish between them." And in Coca-Cola Co. v. Old Dominion Beverage Corporation, supra, 4 Cir., 271 F. at page 604: "Plaintiff's rights are limited at the most to two words. All the rest of infinity is open to defendant. It wi......
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