Frostie Company v. Dr. Pepper Company

• Decision Date: 12 February 1965
• Docket Number: No. 21836.,21836.
• Citation: 341 F.2d 363
• Parties: The FROSTIE COMPANY, Appellant, v. DR. PEPPER COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

341 F.2d 363 (1965)

The FROSTIE COMPANY, Appellant, v. DR. PEPPER COMPANY, Appellee.

No. 21836.

United States Court of Appeals Fifth Circuit.

February 12, 1965.

Daphne Robert Leeds, Washington, D. C., Anthony Atwell, Dallas, Tex., David H. Semmes, John Gibson Semmes, Washington, D. C., Atwell, Grayson & Atwell, Dallas, Tex., Semmes & Semmes, Washington, D. C., for appellant.

B. Thomas McElroy, W. D. White, White, McElroy & White, Dallas, Tex., for appellee.

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

TUTTLE, Chief Judge:

This is an appeal by the owner of the trademark "Frostie" when used in connection with the sale of a soft drink from an order of the trial court denying an injunction against infringement of its trademark and against unfair competition resulting from the use by the Dr. Pepper Company of the words "Frosty Pepper" prominently printed on the cartons of its soft drink product. The suit is brought under the Lanham Act, 15 U.S.C.A. §§ 1114-1119, 1121 and 1125 (a).

The record disclosed without dispute that the appellant is the owner of the valid trademark Frostie which it acquired in connection with the sale of a root beer concentrate; that it had many franchised bottlers throughout the country including 45 independent bottlers franchised both by the appellant and the appellee. The products of both parties are used by bottlers to produce bottles of Frostie and Dr. Pepper respectively which are sold largely in six-pack cartons stacked up in the soft drink departments of supermarkets and other outlets.

Prior to the acquisition of the trademark by appellant, the Dr. Pepper Company had used in its advertising copy, but not on the packages containing its bottles, the adjective "Frosty," in suggesting that Dr. Pepper should be served cold such as "Dr. Pepper in a fresh, frosty bottle," "chilled to a frosty turn," "ice-cold bottles that come to you frosty and cold," "get your Dr. Pepper frosty and cold." Appellants do not contest the right of the appellees to use such terminology in their advertising and sales promotion work, as, of course, they could not. In 1959 the appellee began using the words "Frosty Pep" on its cartons. These cartons also contained a picture of a bottle of Dr. Pepper being poured into a glass containing ice cream, and also on the opposite side contained the trademark Dr. Pepper and the words beneath it, "and ice cream." It has ceased using the words "Frosty Pep" following litigation in which it was held that the word "pep" infringed the trademark of the Pepsi Cola Company. Subsequently, during the summer months the Dr. Pepper Company began using on its cartons the words "Frosty Pepper" together with a picture of a bottle of Dr. Pepper, a glass containing ice cream combined with a liquid, and with the words of the Dr. Pepper trademark and the words "and ice cream."

There was no substantial proof by the appellants of actual confusion, although appellant tendered in evidence proof that not infrequently bottles of Frostie were delivered by bottlers in cartons bearing the name Dr. Pepper. The court ruled out this evidence and other proof tending to link the products of the two parties together in the public mind. The court held that this evidence was inadmissible because it was not the act of the appellee. This was error. Once the mark is used by appellee, the tendency of that use to confuse the public may be shown. The question remains whether the prominent use of the words "Frosty Pepper," embodying as it does, in effect, the entire trademark of the Frostie Company on the package that is put on display for the purpose of attracting customers, is a violation of the provisions of the Lanham Act.¹

The trial court found "a `noun' is a name of a person, place or thing. An `adjective' is a word that describes a noun. `Pepper' is a noun and is a name for Defendant's drink. `Frosty' is an adjective, meaning that which is cold or frozen, and when applied to `Pepper' serves merely to modify, describe, or qualify such name as to condition or suggested use." This finding is contrary to the testimony by the witnesses testifying for the Dr. Pepper Company and is clearly erroneous in that the words "Frosty Pepper" clearly, according to all of the evidence, describe a drink consisting of the Dr. Pepper with ice cream added. While it is true that the Dr. Pepper Company was not in the business of selling what is thus called a "Frosty Pepper," it can not be doubted that the words "Frosty Pepper" designated an article, one of the ingredients of which was the article sold by the Dr. Pepper Company. It is equally clear that the word "Frosty" in the combination did not qualify the Dr. Pepper drink that was on sale.

It can hardly be disputed that any person seeing a carton of soft drinks bearing the legend "Frosty Pepper" in prominent type who, for some reason, had learned of the existence of appellant's drink "Frostie," but without knowing the source or origin of the drink may well have been misled into picking up a carton of Dr. Pepper bearing such label. Obviously, appellee would not have used this legend had they not intended thereby to attract purchasers. To the extent that the attraction was based on the use of the word Frosty, the attraction was based on the use of appellant's trademark.

The finding by the trial court that such use was not likely to confuse the consumer, must necessarily have been based on the impermissible assumption that a prospective purchaser who was familiar with the trademark Frostie also knew that Frostie was not a product of the Dr. Pepper Company. Here was a direct appeal to persons who might be attracted by the term Frosty, or Frostie. To the extent that such attraction resulted from the exploitation by the appellee of appellant's trademark Frostie, to which appellant had the exclusive right as a trademark for such bottled goods, this would be an infringement of appellant's rights.

This Court has, of course, held that an intent to infringe or an intent to mislead the public is not a necessary ingredient to an action such as this. American Foods, Inc. v. Golden Flake, Inc., 5 Cir., 312 F.2d 619. We have also held that proof of actual confusion is not required since under the terms of the Lanham Act the likelihood...