312 F.2d 619 (5th Cir. 1963), 19658, American Foods, Inc. v. Golden Flake, Inc.

Docket Nº:19658.
Citation:312 F.2d 619, 136 U.S.P.Q. 286
Party Name:AMERICAN FOODS, INC., and R. D. Roberts, and R. D. Roberts d/b/a Roberts Distributing Company, Appellants. v. GOLDEN FLAKE, INC., Appellee. GOLDEN FLAKE, INC., Appellant v. AMERICAN FOODS, INC., and R. D. Roberts, and R. D. Roberts d/b/a Roberts Distributing Company, Appellees.
Case Date:January 23, 1963
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit
 
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Page 619

312 F.2d 619 (5th Cir. 1963)

136 U.S.P.Q. 286

AMERICAN FOODS, INC., and R. D. Roberts, and R. D. Roberts d/b/a Roberts Distributing Company, Appellants.

v.

GOLDEN FLAKE, INC., Appellee.

GOLDEN FLAKE, INC., Appellant

v.

AMERICAN FOODS, INC., and R. D. Roberts, and R. D. Roberts d/b/a Roberts Distributing Company, Appellees.

No. 19658.

United States Court of Appeals, Fifth Circuit.

January 23, 1963

Page 620

[Copyrighted Material Omitted]

Page 621

         Claude A. Fishburn, Kansas City, Mo., Andrew W. Griffin, Birmingham, Ala. (Griffin & Wilson, Birmingham, Ala., Fishburn & Gold, Kansas City, Mo., on the brief), for appellants-appellees.

Page 622

         Before RIVES, JONES, and BELL, Circuit Judges.

         GRIFFIN B. BELL, Circuit Judge.

         Golden Flake, Inc., an Alabama corporation, brought suit against American Foods, Inc., a Texas corporation, and its distributor, a resident of Alabama, alleging trade-mark infringement. Jurisdiction was based on the Lanham Act. 15 U.S.C.A. § 1121. 1 The cause of action was premised on confusion in trade as to the source of origin of the respective products of the parties. 15 U.S.C.A. § 1114(1)(a). 2

         The District Court enjoined the use of the alleged infringing trade-mark by defendants in what was found to be the trade territory of plaintiff, Alabama, Florida, Mississippi, Tennessee, Georgia and that part of the State of Louisiana east of the Mississippi River. 15 U.S.C.A. § 1116. 3 Injunctive relief as to the remaining portions of the United States was denied. Defendants appealed from the order holding them as infringers and the injunction based on that holding. Plaintiff took a cross appeal from that part of the judgment refusing injunctive relief as to the remaining portions of the United States.

         The registered trade-mark of plaintiff consisted of the words 'Golden Flake' and background design, the design being gold in color and somewhat in the shape of a potato chip with the words 'Golden Flake' written thereon. It was registered in 1924 under the trademark Act of 1905, renewed in 1944, and an unbroken chain of title to the mark and the goodwill represented by it was shown into plaintiff. It was registered for use in connection with the manufacture and sale of potato chips and horse-radish, and at least since 1936 it has been used continuously in connection with the sale of such items as potato chips, roasted peanuts, cooked popcorn, peanut butter, sweet and cheese cracker sandwiches, and similar food products. Plaintiff spent the sum of $746,409.74 from 1957 through September 1961 in direct advertising of goods sold under the trade-mark in the territories covered by the injunction. Such advertising was through the media of television, radio, and newspapers as well as by the use of billboards. Advertising was done for many years prior to this period although on a smaller scale.

         The defendant American Foods, Inc. first commenced to use the expression 'Golden Flake' on refrigerated dinner rolls in January 1961 in conjunction with its mark 'Sun-Lite', and then in May or June 1961 in connection with another of its marks, 'Rainbo'. The defendant distributor commenced selling 'Rainbo Golden Falke Dinner Rolls' for American Foods, Inc. in Alabama and adjacent areas in July 1961, using newspapers and television as advertising media. Plaintiff's exhibit 22, one of the roll containers, indicates that the expression 'Golden Flake' is at least as prominent as the expression 'Rainbo'.

         It was undisputed that the products in question, all falling into the food category,

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are sold in the same types of stores, and on occasion in the same locations in the stores, and in the main are purchased by housewives during the course of grocery shopping. There was evidence that housewives upon first seeing the name 'Golden Falke' on the dinner rolls assumed that the rolls were either put out by plaintiff or were in some way associated with plaintiff or its products which they had been accustomed to buying under plaintiff's trademark 'Golden Flake'. There was negative testimony on behalf of defendant, by way of a survey conducted in retail grocery stores, and from the testimony of witnesses of lack of confusion. The court concluded that there was likelihood of confusion or deception of purchasers if the use of the expression 'Golden Flake' was continued in connection with the sale of dinner rolls in the trade territory of plaintiff.

         By way of answer to the complaint, defendants denied infringement, alleged no likelihood of confusion, questioned the validity of plaintiff's mark because of its use by other through licensing and otherwise, and alleged that the mark was weak for being a common generic term merely descriptive in nature and not entitled to broad protection even if valid. Having failed to sustain these contentions on the trial, they reassert them here.

         Their position as defined is that the court erred in not finding and concluding at least that plaintiff had lost any exclusive rights it may have had in the mark for use on food products other than those on which it had specifically used the mark. Defendants also take the position that the findings and conclusions with respect to proof of the operative facts in issue were clearly erroneous as they related to the weight given the testimony of the various witnesses for plaintiff, the survey offered by defendants, and as the findings and conclusions relate to the consideration...

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