McCormick & Co. v. B. Manischewitz Co.

• Decision Date: 07 October 1953
• Docket Number: No. 11687.,11687.
• Citation: 206 F.2d 744
• Parties: McCORMICK & CO., Inc., v. B. MANISCHEWITZ CO.
• Court: U.S. Court of Appeals — Sixth Circuit

206 F.2d 744 (1953)

McCORMICK & CO., Inc., v. B. MANISCHEWITZ CO.

No. 11687.

United States Court of Appeals Sixth Circuit.

September 3, 1953.

As Amended on Denial of Rehearing October 7, 1953.

C. Willard Hayes, Washington, D. C. (Wood, Herron & Evans, by Truman A. Herron, Cincinnati, Ohio, Cushman, Darby & Cushman, by William M. Cushman and C. Willard Hayes, Washington, D. C., on the brief), for appellant.

Asher Blum, New York City (Zugelter & Zugelter, Cincinnati, Ohio, on the brief; Mock & Blum, New York City, of counsel), for appellee.

Before SIMONS, Chief Judge, and ALLEN and MILLER, Circuit Judges.

SIMONS, Chief Judge.

The suit was for infringement of a trade-mark and sought injunction and damages for both infringement and unfair competition. The District Court denied the injunction and dismissed the bill. The record discloses the following facts fairly established by the evidence.

The appellant, plaintiff below, had been for many years engaged in the business of manufacturing, packing, and distributing flavoring extracts, spices, condiments, insecticides, household chemicals, and similar products. In 1938, to differentiate its food products from other articles, it engaged James Harley Nash, a designer, to re-design its labels for all of its food packages. Nash designed and McCormick adopted the trade-mark here relied upon. It consisted of the use of the letters Mc standing boldly above a straight bar or band against a contrasting background, the capital M being much higher than the small c adjoining it, later to be shown by cuts of the mark. The trade-mark was initially registered in 1938 and later re-registered under the Trade-Mark Act of 1946, on May 24, 1949, registration number 510053.

The appellee's business was founded in 1889 and dealt from the beginning in "kosher" products. From 1938, when the plaintiff adopted the trade-mark in issue, until 1948 the appellee was engaged exclusively in the sale and distribution of bakery products, such as matzoth and matzoth products. In 1948, it added "gefilte fish" to its line. In 1935, Manischewitz Food Products, Inc. was organized by other members of the founder's family to carry on an independent business in spices, condiments, tea, canned soups, and other grocery products and in December, 1948 its business was acquired by the appellee. There being no uniformity between the labels of the two Manischewitz companies, the appellee decided to adopt, in addition to its old trademarks, a new label and display for all of its products so as to create a family resemblance indicating that there is only one Manischewitz. In August 1948, it engaged the above-named Nash to design new labels and packages and a new trade-mark for its entire line. Nash exhibited to it labels previously designed for other clients, including the trade-mark here in issue. The mark finally selected was that here charged to infringe and a specimen of it will, likewise, be presented by a cut. The accused mark came to appellant's attention in December, 1949, at which time it notified the appellee that it constituted infringement of its registered mark. The appellee refused to discontinue and, subsequently, applied it to its entire line of food products. From 1916 on, the defendants had used the initials BMco arranged vertically within the so-called Star of David and under a ribbon pennant containing a slogan in Hebrew characters.

The products of the appellee and its predecessor have always been kosher products destined primarily to the Jewish trade. However, they are also offered to the general public and are available in many supermarkets, chain stores and self-service stores. In 82 out of a total of 159 stores investigated, the goods of both parties were sold and were often exhibited side by side. In three instances there was proof of confusion on the part of the general public, but this was considered by the court as insignificant. Upon visual comparison of the two trade-marks, the court found as a fact that the appellant had not sustained its burden of proving infringement and that the differences between the two marks were sufficient to dispel any likelihood of confusion, mistake, or deception of purchasers as to the source or origin of the goods and that the use by the appellee of its name in connection with the accused mark eliminated such likelihood. As ground for its finding, it recited that appellant had not proved a sufficient number of instances of actual confusion.

It must be noted at the outset that while in the 1905 Trade-Mark Act, 33 Stat. 724 § 16, the test of infringement was actual confusion, the Lanham Act of 1946, § 32(1) (a), 60 Stat. 437, 15 U.S.C.A. § 1114 (1) (a), is of broader scope and applies the remedies therein provided to any colorable imitation of a registered mark which is likely to cause confusion or mistake or to deceive purchasers as to source or origin. As we said in Mishawaka Rubber & Woolen Manufacturing Company v. S. S. Kresge Company, 119 F.2d 316, 325: "The degree of resemblance necessary to constitute infringement is incapable of exact...