Coca-Cola Co. v. Carlisle Bottling Works

• Decision Date: 30 June 1930
• Docket Number: No. 5367.,5367.
• Citation: 43 F.2d 119
• Parties: COCA-COLA CO. v. CARLISLE BOTTLING WORKS.
• Court: U.S. Court of Appeals — Sixth Circuit

43 F.2d 119 (1930)

COCA-COLA CO. v. CARLISLE BOTTLING WORKS.

No. 5367.

Circuit Court of Appeals, Sixth Circuit.

June 30, 1930.

Harold Hirsch, of Atlanta, Ga. (John A. Sibley and J. S. Botts, both of Lexington, Ky., on the brief), for appellant.

Leslie W. Morris, of Frankfort, Ky. (John P. McCartney, of Carlisle, Ky., and Marion Rider, of Frankfort, Ky., on the brief), for appellee.

Before MACK, MOORMAN, and HICKS, Circuit Judges.

HICKS, Circuit Judge.

Bill in equity by the Coca-Cola Company, manufacturer of a soft drink syrup and the beverage made therefrom called "Coca-Cola," against Carlisle Bottling Works, of Carlisle, Ky., a bottler and seller of a soft drink called "Roxa Kola," seeking to restrain defendant from infringing its trade-mark "Coca-Cola" by the use of defendant's trade-name "Roxa Kola," and from unfair competition by substituting and passing off defendant's product on calls for Coca-Cola. The evidence is insufficient to establish a case of substitution, similarity of dress, or "passing off," and we concur therefore in the conclusion of the District Judge that plaintiff is limited to the question whether its trade-mark is infringed. In determining this question the test is "whether the alleged infringing trade-mark or label, taken as a whole, so far resembles the other mark or label as to be likely to be mistaken for it by the casual or unwary purchaser." Western Oil Ref. Co. v. Jones, 27 F.(2d) 205, 206 (C. C. A. 6). Again, "a proper test is whether, taking into account the resemblances and differences, the former are so marked that the ordinary purchaser is likely to be deceived thereby." DeVoe Snuff Co. v. Wolff, 206 F. 420, 423 (C. C. A. 6).

At the outset we are confronted with three significant, though not controlling facts: (1) There is no evidence that any casual purchaser was ever deceived by defendant's trade-name; (2) there is no substantial evidence of any actual intent by defendant through its officers or agents to deceive by the use of its trade-name; and (3) that plaintiff's distributor, Mitchell, and defendant, had been operating in the same trade territory for more than eleven years before this suit was brought, and that during this entire period Mitchell knew, and we think plaintiff must have known, of the general use defendant was making of the trade-name "Roxa Kola." Since 1887 plaintiff by itself and through its predecessors has owned and appropriated to its products the registered trade-mark "Coca-Cola." The particular form in which the mark was registered was in script and as a hyphenated word, although the essential feature was "Coca-Cola." The name adopted by defendant originated about 1909 with one Wainscott, a manufacturer of syrups and soft drinks at Winchester, Ky. Wainscott appropriated it to his products. His principal business was to sell soft drink syrups to bottlers. Defendant has been his customer since 1911. Wainscott, aided by the bottlers using his syrups, among whom was defendant, has used the name in intensive advertising over a limited territory in Kentucky and defendant has caused it to be blown into the bottles containing its product and also printed upon the bottle crowns. Defendant's word has never been hyphenated or printed in script, though this may not be material. Nashville Syrup Co. v. Coca-Cola Co., 215 F. 527, 530, Ann. Cas. 1915B, 358 (C. C. A. 6).

Considering each mark or name as consisting of two words, the last word in each has exactly the same sound, but "taken as a whole" the words do not sound alike. The "o" in Roxa is pronounced as "o" in "fox," while the "o" in Coca has the sound of "o" in "coke." In appearance the last three letters in the last word of each mark, to wit, "ola" are alike, and the second letter in the first words, "o," as well as the fourth and last letters in the first words, "a," are the same, but the first letter of each word of plaintiff's mark, "C," differs from the first letter of each word of defendant's mark or name, "R" and "K," and the difference is the more prominent because each letter is a capital.

Moreover, equity does not absolutely insure the consumers of plaintiff's beverage against deceit. It grants no relief unless the similarity between the two marks is of a character to deceive the casual consumer while exercising that caution ordinarily used in the purchase of such beverage. McLean v. Fleming, 96 U. S. 245, 251, 255, 24 L. Ed. 828; Kann v. Diamond Steel Co., 89 F. 706, 713 (C. C. A. 8). Such degree of care is usually low if not altogether negligible. The casual would-be purchaser of a 5-cent bottle of Coca-Cola makes little effort to determine whether its trade-mark or trade-name resembles the mental picture he retains of plaintiff's trade-mark. M. C. Peters Mill Co. v. Internat. Sug. Feed No. 2 Co., 262 F. 336, 338 (C. C. A. 6). But it does not follow that he could be easily imposed upon. It must be kept in mind that we are dealing with the trade-mark "Coca-Cola." As said by Judge Hollister in Coca-Cola v. Duberstein (D. C.) 249 F. 763: "The product was named `Coca-Cola' at the beginning, and the beverage has been known under that name for more than 30 years. By the expenditure of millions of dollars in advertising it has become well known throughout the land. The name means, and is understood by the public to mean, complainant's product." In Coca-Cola v. Koke Co., 254 U. S. 143, 145, 41 S. Ct. 113, 114, 65 L. Ed. 189, Justice Holmes said: "Since 1900 the sales have increased at a very great rate corresponding to a like increase in advertising. The name now characterizes a beverage to be had at almost any soda fountain. It means a single thing coming from a...