Reid, Murdoch & Co. v. HP Coffee Co.

• Decision Date: 17 April 1931
• Docket Number: No. 8867.,8867.
• Citation: 48 F.2d 817
• Parties: REID, MURDOCH & CO. v. H. P. COFFEE CO.
• Court: U.S. Court of Appeals — Eighth Circuit

48 F.2d 817 (1931)

REID, MURDOCH & CO. v. H. P. COFFEE CO.

No. 8867.

Circuit Court of Appeals, Eighth Circuit.

March 4, 1931.

Rehearing Denied April 17, 1931.

Fred Gerlach, of Chicago, Ill. (Douglas W. Robert, of St. Louis, Mo., on the brief), for appellant.

William H. Schaumberg, of St. Louis, Mo. (Roy M. Eilers, of St. Louis, Mo., on the brief), for appellee.

Before STONE and GARDNER, Circuit Judges, and WYMAN, District Judge.

GARDNER, Circuit Judge.

Appellant, as plaintiff in the lower court, brought suit to enjoin the alleged infringement by the defendant of its registered trade-mark, and to enjoin certain acts of alleged unfair competition. The material facts as summarized by the lower court are substantially as follows:

As early as August 13, 1878, plaintiff's predecessor registered its trade-mark for baking powder and cream of tartar. This trade-mark consisted of a tiger's head with the word "Monarch" printed or engraved above the tiger's head in large white and enameled letters, with the words "Baking Powder" in an angular scroll below the tiger's head. In 1883 plaintiff's predecessor registered the word "Monarch" similarly printed or engraved, which has been generally used in connection with the head of a lion as a trade-mark for canned goods and other preserved fruits. In 1886 plaintiff's predecessor registered the words "Monarch Mills," printed in large white Gothic type above a lion's head for the products of its "Coffee and Spice Mills." In 1922 plaintiff registered for practically all of its products, consisting of condiments, canned fruits, coffee, tea, canned meats, canned vegetables, flour, and divers cereals, another trade-mark. This last-mentioned trade-mark consisted of the word "Monarch" printed or engraved in a crescent shape in large black Gothic capitals above its usual lion's head.

Defendant has never registered the word "Monarch" as a trade-mark, but uses this word now on packaged coffee and on coffee sold in sealed cans, printing or engraving the word on either side in black Gothic capitals, so that it appears to simulate fairly closely the word "Monarch" as used by the plaintiff. Defendant has never used either the lion's head nor the tiger's head as a part of this designation. Defendant's predecessors began business in 1853. In 1886 Henry Petring, one of the original organizers, died, and the business was then carried on by two of his sons, one of whom died in 1925, and the other retired from the defendant corporation some two years before the commencement of this action. The predecessors of defendant used the word "Monarch" to designate coffee sold by it and its predecessors as early as 1879. Defendant's predecessors sold in more than a dozen states, including the state of Missouri, large quantities of coffee branded "Monarch" on the containers as early as 1897. In 1907 defendant began to sell its roasted packaged coffee, contained in paper bags, cardboard cartons, and tin cans, extensively by mail, until at the time of the trial of this suit it had a very large business so carried on in many states.

Defendant has never advertised extensively, if at all, while the plaintiff has spent, and is now spending, very large sums of money in advertising its well-known "Monarch" brand of foods, drinks, and condiments. At least since 1907, if ever, the defendant has not used the word "Monarch" to show the origin of its coffee, but since that time, of the twenty odd brands of coffee handled by it, only one was designated as its "Monarch" brand. It never used the word "Monarch" to designate any other of its goods or groceries, save and except coffee, and the word was used as a brand or grade mark, rather than as a trade-mark. Defendant's cans, paper packages, and cardboard cartons used for the coffee sold by it were of a different shape and color from those of the plaintiff. The printing, except as to the word "Monarch," was also dissimilar in shape and color, and the word "Petring's" appeared on all of the defendant's packages.

As early as 1925 numerous retailers of the defendant's packaged and canned "Monarch" brand of coffee, advertised it in the local papers as "Monarch" with no further identification, for the purpose of palming off a cheaper product for that of the established brand of coffee put out by the plaintiff, and they succeeded in palming off on their customers this cheaper "Monarch" coffee of the defendant for the dearer and higher grade product of the plaintiff. This the retail dealers were enabled to do by reason of the fact that the packages and containers of both plaintiff and defendant bore the word "Monarch." Customers were deceived because of these advertisements which indicated that the coffee advertised was of the "Monarch" brand which had become widely known as the coffee put out by the plaintiff, and in the grocery trade generally, the word "Monarch" had come to mean the products or goods of Reid, Murdoch & Co. This trade-mark had been used by plaintiff only on foods of a very high quality, which, under this trade-mark, had been widely advertised as such by the plaintiff at a very large expense.

While buyers were misled by these acts of the retailers, the defendant did not directly connive with the retailers, except that it used the word "Monarch" as a brand mark for one of its brands of coffee. A careful examination and comparison of the respective containers of the defendant and plaintiff would disclose a dissimilarity, save for the use of the word "Monarch" on both classes of containers.

The court concluded that the plaintiff was entitled to the trade-mark in controversy, but was not entitled to relief in the suit because: (1) Defendant had not connived with the retail merchants, nor participated in the acts of unfair competition, and hence was not responsible therefor; and (2) that the plaintiff, by its laches, was estopped from now complaining of the defendant's use of the word "Monarch." These conclusions of the lower court are challenged by plaintiff on this appeal.

It appears that, while the defendant made some use of the word "Monarch" in connection with its coffee, it was not a trade-mark use, but it was used as a grade mark to designate or identify one of its various grades of cheap coffee. Such use of the name would not entitle it to its use as a trade-mark. Touraine Co. v. Washburn & Co., 52 App. D. C. 356, 286 F. 1020; Macmahan Pharmacal Co. v. Denver Chemical Co. (C. C. A.) 113 F. 468; N. K. Fairbank Co. v. Luckel, King & Cake Soap Co. (C. C. A.) 102 F. 327. This, we understand, was the view of the lower court, but, notwithstanding this announced view, both of the parties seek to reargue the question here. We think the lower court was correct in so concluding, and we are of the view that the defendant's use of the word "Monarch" was an infringement on plaintiff's trade-mark. Layton Pure Food Co. v. Church & Dwight Co. (C. C. A.) 182 F. 24; Queen Mfg. Co. v. Isaac Ginsberg & Bros. (C. C. A.) 25 F.(2d) 284, 287; Gordon's Dry Gin Co. v. Eddy & Fisher Co. (D. C.) 246 F. 954; McDonald & Morrison Mfg. Co. v. H. Mueller Mfg. Co. (C. C. A.) 183 F. 972, 974. As said by this court in Queen Mfg. Co. v. Isaac Ginsberg & Bros., supra: "There may be infringement where the substantial and distinctive part of the trade-mark is copied or imitated. * * * Dissimilarity in size, form, and color of the label and place where it is applied are not conclusive against infringement. * * * Where a trade-mark contains a dominating or distinguishing word such as the word `Queen' in the instant case, and where the purchasing public has come to know and designate the article by such dominating word, the use of such word by another in marking similar goods may constitute infringement, although the latter mark, aside from such dominating word, may be dissimilar."

This court in McDonald & Morrison Mfg. Co. v. H. Mueller Mfg. Co., supra, said: "The test is not whether, when goods are placed side by side, a difference can be recognized in the labels or marks; but the test is, when such goods are not placed side by side, would an ordinarily prudent purchaser be liable to purchase the one, believing that he was purchasing the other?"

It is, however, the contention of the defendant, and the lower court so held, that the plaintiff was not entitled to injunctive relief against it for unfair competition because it had not connived with the retail grocers in their acts of unfair competition. It is true the defendant had no direct part in these acts of unfair competition. The goods, however, as put out by it bore the name "Monarch," and, while it is true the...