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

• Decision Date: 18 November 1929
• Docket Number: No. 8333.,8333.
• Citation: 48 F.2d 815
• Parties: REID, MURDOCH & CO. v. H. P. COFFEE CO.
• Court: U.S. District Court — Eastern District of Missouri

48 F.2d 815 (1929)

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

No. 8333.

District Court, E. D. Missouri, E. D.

November 18, 1929.

Fred Gerlach, of Chicago, Ill., and Douglas Robert, of St. Louis, Mo., for plaintiff.

Eilers & Schaumberg, Wm. H. Schaumberg, and Roy M. Eilers, all of St. Louis, Mo., for defendant.

FARIS, District Judge.

This is an action to enjoin the alleged infringement by defendant of plaintiff's registered trade-mark, and to enjoin certain acts of alleged unfair competition on defendant's part.

Both parties are corporations, plaintiff being incorporated under the law of the state of Illinois, and the defendant being a corporation of the state of Missouri.

The decisive facts of the case are few, and, in my opinion, fairly simple. As early as August 13, 1878, plaintiff's predecessor registered its trade-mark for baking powder and cream of tarter. This trade-mark consisted of a tiger's head with the word "Monarch" printed or engraved above said head in large, white, and ornamental letters, and having 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 (to quote the language of the registrant) "has generally been used in connection with the head of a lion" as a trade-mark for canned goods, seemingly, peaches and other preserved fruits of similar sorts.

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."

Later, and in 1922, plaintiff registered for practically all of its products another trade-mark. These products, then as now, consist of condiments, canned fruits, coffee, tea, canned meats, canned vegetables, flour, and divers cereals. 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. It uses this word now on packaged coffee and on coffee sold in sealed cans, printing the word, or engraving it in either white or black Gothic capitals, so that it appears to simulate the word "Monarch" as used by plaintiff, fairly closely. It has never used either the lion's head or the tiger's head as a part of this insignia.

Defendant's predecessors began business in 1853. In 1886, Henry Petring, one of the original organizers, died. The business was then carried on by two of his sons, one of whom — the elder — died in 1925, and the other, a witness in the case on the trial, retired from the defendant corporation some two years before this action was begun.

From the earliest recollection of the witness last mentioned, which takes the use of the word in controversy back to at least 1884, the predecessors of defendant used the word "Monarch" to designate coffee sold by defendant and such predecessors.

Another witness, an aged truck driver, recalls the use of the word by defendant's predecessors as early as 1879.

At least two other witnesses, George Petring and Henry Petring, who must have known when the use of the word "Monarch" by defendant on coffee first began, died before this suit was instituted.

Nothing is clearer from the record than that defendant's predecessor sold, in more than a dozen states, including, of course, the state of Missouri, large quantities of coffee branded "Monarch" on the containers, as early as 1897. In this statement I am now leaving out of consideration the evidence as to much earlier use, by the truck driver and by Mr. Walter H. Petring, for the sake, merely, of the argument.

In 1907, defendant began to sell its roasted packaged coffee, contained in paper bags, cardboard cartons, and tin cans, extensively by mail, until now it has a very large business so carried on in many states. Defendant has never advertised extensively, if at all, while, on the other hand, plaintiff has spent, and is now spending, very large sums in advertising its well-known "Monarch" brand of foods, drinks, and condiments.

It is clear that defendant has not, since 1907, at least, used the word "Monarch" to show the origin of its coffees; at least not on all of its twenty-odd brands. It at all times, since 1907, had, as forecast already, other brands, only one of which it designated as its "Monarch" brand. It never, it seems, used the word "Monarch" to designate any other of its goods or groceries, save and except coffee.

Defendant's cans used for the coffee sold by it are, so far as samples in evidence disclose, of a wholly different shape and color from those of plaintiff. This is true, also, of the coffee sold by defendant in paper packages and in cardboard cartons. The printing, save as to the single word "Monarch," is also dissimilar in shape and color, and the word "Petring's" prominently appears on all of defendant's packages.

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