American Foods, Inc. v. Golden Flake, Inc.

• Decision Date: 23 January 1963
• Docket Number: No. 19658.,19658.
• Citation: 312 F.2d 619
• Parties: 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.
• Court: U.S. Court of Appeals — Fifth Circuit

312 F.2d 619 (1963)

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.

COPYRIGHT MATERIAL OMITTED

John W. Gillon, Hugh P. Carter, Birmingham, Ala. (Spain, Gillon & Young, Birmingham, Ala., Jennings, Carter & Thompson, Birmingham, Ala., on the brief), for appellee-appellant.

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.

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 trademark 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 Flake 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, 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 Flake" 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 others 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 by the court of certain aspects of the design of the mark of plaintiff as compared to the mark on the containers used by defendants including the expression "Rainbo Golden Flake Dinner Rolls" and the design of the dinner roll thereon. There is no dispute as to jurisdiction, or the applicability of the Lanham Act, 15 U.S. C.A. § 1051 et seq.

The essential finding to be set aside if defendants are to prevail is that the use of the alleged infringing mark was likely to cause confusion as to the source of origin of the rolls of defendant, American Food, Inc. This is the statutory test, 15 U.S.C.A. § 1114(1) (a), succeeding to what had theretofore been, in majority view, the court made test.⁴

We said in Pure Foods, Inc. v. Minute Maid Corp., 5 Cir., 1954, 214 F.2d 792, cert. den., 348 U.S. 888, 75 S.Ct. 208, 99 L.Ed. 697:⁵

"* * *, it is true that an applicant registers a trade-mark in connection with particular goods specified in the certificate of registration, 15 U.S.C.A. §§ 1051, 1057. Plaintiff\'s registered trade-mark is limited to frozen juice concentrates. The remedies of an owner of a registered trade-mark, however, are not limited to the goods specified in the certificate but extend to any goods on which the use of an infringing mark `is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods\'".

And we pointed out that the Lanham Act adopted the principle set out in A.L.I. Restat.Law of Torts, Vol. III, § 730, pp. 597, 598:

"One\'s interest in a trade-mark or trade name came to be protected against simulation, * * * not only on competing goods, but on goods so related in the market to those on which the trade-mark or trade name is used that the good or ill repute of the one type of goods is likely to be visited upon the other."

The burden was on plaintiff in the first instance to show confusing similarity between the marks in question, but likelihood of confusion is a question of fact and where the facts are disputed as here, findings in that regard are not to be disturbed unless clearly erroneous. Chappell v. Goltsman, 5 Cir., 1952, 197 F.2d 837; and Pure Foods, Inc. v. Minute Maid Corp., supra. And, of course, it is the accepted rule that infringement may be established by showing only that confusion is likely, and there need be no showing of actual confusion or deception if the mark is of such character or is used in such a way as to likely confuse a prospective purchaser. Abramson v. Coro, Inc., 5 Cir., 1957, 240 F.2d 854. It is also settled that in making findings the District Court may rely not only on the evidence adduced on the trial but upon his own comparison of the marks. Coats v. Merrick Thread Co., 1893, 149 U.S. 562, 13 S.Ct. 966, 37 L.Ed. 847; 87 C.J.S. Trade-Marks, Etc. § 205, p. 572.

The use of the same expression "Golden Flake" plus the similarity in design that is plain from an examination of the marks, the fact that both were used on food products even though not directly competitive, the fact that the goods bearing the marks are sold in the same outlets to the same class of purchasers, and are advertised through common media, coupled with the long use and extensive advertising of the mark by plaintiff, together with the evidence of actual confusion adequately substantiate the finding of the court that there was likelihood of confusion or deception of purchasers if defendants continued to use the expression "Golden Flake" as alleged. This made a case of trade-mark infringement. The proof established a colorable imitation of the mark of plaintiff as defined in the Lanham Act — that the mark of defendant so resembles the registered mark of plaintiff as to be likely to cause confusion or mistake or to deceive purchasers. 15 U.S.C.A. § 1127.

We hold that the mark of plaintiff was not invalid as being merely descriptive, and the question of weakness for this reason as asserted by defendants or the tangential answer to this by plaintiff of secondary meaning,⁶ were both questions of fact implicit in the finding as to confusion. The weakness or strength of the mark merely goes to the determination of confusion or lack of it, and are relevant factors to be considered in connection therewith.

Both the pleadings and proof went fully into the question of invalidity or weakness resulting from registrations and use of the same expression as a mark by others. There was no evidence of a licensing by pl...