Persha v. ARMOUR & COMPANY

• Decision Date: 09 January 1957
• Docket Number: No. 16043.,16043.
• Citation: 239 F.2d 628
• Parties: David PERSHA, Appellant, v. ARMOUR & COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

239 F.2d 628 (1957)

David PERSHA, Appellant, v. ARMOUR & COMPANY, Appellee.

No. 16043.

United States Court of Appeals Fifth Circuit.

January 9, 1957.

Al L. Crystal, Houston, Tex., for appellant.

Horace Dawson, Chicago, Ill., Leon Sarpy, New Orleans, La., Chaffe, McCall, Phillips, Burke & Hopkins, New Orleans, La., for appellee.

Before RIVES, TUTTLE and CAMERON, Circuit Judges.

TUTTLE, Circuit Judge.

This is an appeal from the judgment in a diversity suit in which appellant sought protection and damages for the infringement of his state registered copyright; the court below entered judgment for the appellee, holding that its federal registration of the name Steakees was valid, while appellant's earlier state registration was invalid.

It appears that in 1948 the appellant, David Persha, started to experiment with a new meat product consisting of ground pure beef which with certain additives and preservatives was shaped into the form of a steak and then frozen. Appellant alleges that at that time he was in touch with representatives of the appellee, from whom he purchased the meat for his experiments, and to whom he communicated his plan for selling the new product under the name Steakees. In the spring of 1949 appellant moved to Houston, Texas, where, under some arrangement with the Buick Cafeteria he served his new product to its patrons. The name Steakees was listed on the blackboard menu, and, as testified by some of the witnesses, was also displayed on the steamtable. Somewhat later, in 1950, Steakees were served and listed as such on the menu in the Markou Restaurant in Houston, in whose kitchen appellant was then preparing the product. Appellant then moved most of his operations to a shop on Shepherd Avenue in the same city, where he operated with various partners under several successive and overlapping names as "Hydroponic Gardens," "Persha's Energized Food Products," "Texas Energized Foods," and "Steakees, Incorporated." He alleges that during the latter part of 1950 and the early part of 1951, several sales of Steakees were made both to business and to individual customers, some of whom appeared as witnesses, in which the meat was wrapped in plain paper on which the following legends had been stamped:

Contain Hydrolized "STEAKEES Protein less than 1/10 of 1% Benzoate of Soda" "PERSHA ENERGIZED FOOD PRODUCT Manufacturers of Energized Foods 2636 South Shepherd, Ja 5228 HOUSTON, TEXAS"

On April 20, 1951, appellant filed an application for a trademark registration with the Texas Secretary of State in which it was alleged that the first sale of the marked product had taken place on February 13, 1951; on April 21st appellant started selling his product in printed paper bags bearing the legend:

"STEAKEES Trade Mark Reg. Pat Applied for Steakees, Incorporated, 802 Commerce Houston, Texas; Persha's origination."

He subsequently received Trade Mark No. 16,103 for the name Steakees.

In 1948 appellee, a nationwide manufacturer and wholesaler of meat products, commenced selling thinly sliced frozen beef under the name Steakettes. In 1950 it was discovered that this name had already been appropriated by a prior user, and the name Steakees was selected as a substitute by appellee's Chicago office. On September 8, 1950, a registration statement for that name was filed with the United States Patent Office, alleging the first use of that name on August 3, 1950. In November 1950 Steakees appeared on the inventory record of the Houston branch. The first proven Texas sales occurred in 1951: on January 22nd a sale to Mr. O. Dorsa in Dallas, evidenced by an original and a duplicate sales slip (on which, however, only the letters "Steak * * *" were clearly discernible); among several other sales proven by invoice copies there was one on April 12th to the Zero Frozen Food, Inc. of Houston. It was testified that the product in each instance must have been packaged in cartons prominently bearing the printed word Steakees for all of appellee's sales were in such containers. On April 24, 1951, appellee's application for federal registration was rejected because of a registration of the same name in 1933; after proof was presented that the earlier registration had been abandoned appellee, on a renewed application, received U. S. Registration No. 574,192 for the trade-mark Steakees.

The first question is whether, as a matter of Texas law, appellant acquired any exclusive rights to the name Steakees through the blackboard listing in the Buick Cafeteria, through the alleged signs on the steamtable there, or through the listings on the menu of the Markou Restaurant. The common-law rule has been well stated in Corpus Juris Secundum:

"In

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