Alden v. Gross

• Decision Date: 15 March 1887
• Parties: JOHN T. ALDEN ET AL., Respondents, v. HENRY GROSS ET AL., Appellants.
• Court: Missouri Court of Appeals

25 Mo.App. 123

JOHN T. ALDEN ET AL., Respondents, v. HENRY GROSS ET AL., Appellants.

Court of Appeals of Missouri, St. Louis.

March 15, 1887

APPEAL from the St. Louis Circuit Court, SHEPARD BARCLAY, Judge.

Reversed and judgment.

H. D LAUGHLIN, and J. L. & F. P. BLAIR, for the appellants The word " fruit," in connection with the word " vinegar," can not be appropriated by one vinegar manufacturer to brand his goods, to the exclusion of other manufacturers or vendors of vinegar. Browne, Trade Marks sect. 134; Phalon v. Wright, 5 Phila. 464; Canal Co. v. Clark, 13 Wall. 311; Re American Sardine Co., 3 Off. Gaz. 495; Van Beil v. Prescott, 82 N.Y. 630; Pratt v. Farmer, 10 Off. Gaz. 866; Stokes v. Landgraf, 17 Barb. 608; Corwin v. Daily, 7 Bosw. 222; Filley v. Fassett, 44 Mo. 168. The words, " fruit vinegar," are calculated to deceive the consumers of the product, and, therefore, there is no equity in the plaintiffs' bill. The defendants rely on the equitable principle that " he, who comes into a court of equity, must come with clean hands." Fettridge v. Wells, 4 Abb. Pr. 174; Fettridge v. Merchant, 4 Abb. Pr. 158; Piddings v. How, 8 Sim. 478; Perry v. Truefitt, 6 Beav. 66; Partridge v. Mench, 1 How. App. 558; Hobbs v. Francais, 19 How. Pr. 567; Leather Cloth Co. v. Am. Leather Cloth Co., 4 DeG., J. & S. 137; Morgan v. McAdam, 15 L. T. (N. S.) 348; Palmer v. Harris, 60 Pa.St. 156; Wolfe v. Burke, 56 N.Y. 115; Seabury v. Grosvenor, 53 How. Pr. 192; Helmbold v. H. T. Helmbold Mfg. Co., 53 How. Pr. 453; Holloway v. Holloway, 13 Beav. 209; Chappell v. Sheard, 3 W. R. 646; S. C., 2 K. & J. 117; Chappell v. Davidson, 8 DeG., McN. & G. 1; Comstock v. White, 18 How. Pr. 421; Dale v. Smithson, 12 Abb. Pr. 237; Smith v. Woodruff, 48 Barb. 433; Hennessy v. Wheeler, 69 N.Y. 271; Metzler v. Wood, 47 L. J. Ch. 625; Siegert v. Findlater, 47 L. J. Ch. 233. The plaintiffs are selling an article of food of daily consumption. No court of equity will protect a vendor when such article contains a noxious or unwholesome ingredient. This principle is elementary law. The defendants' brand is not a colorable imitation of that of the plaintiffs'. It is not calculated to deceive an ordinary purchaser by its similarity to that of the plaintiffs'. Nor have the defendants ever represented their goods to be those of the plaintiffs' manufacture. Leather Co. v. Am. Leather Co., 11 H. L. 523.

BAKEWELL & BAKEWELL, for the respondents: This case does not come within the ruling of those cases which refuse to extend protection to generic names. Blackwell v. Armstead, 5 Am. L. T. 85; Note to last case, Cox, p. 263, No. 466; Thurley Food v. Massam, 42 L. J. Rep. (N. S.) 457; Seixo v. Provezinde, Law R., 1 Ch. 192; Canal Co. v. Clark, 80 U.S. 311; Sanford v. Utt, 16 Mo.App. 322; Sanders v. Jacob, 20 Mo.App. 396. The word " " " " fruit," as applied to vinegar, is not a generic name. Eno v. Stephens, 1 Trade Mark Cas. 325. The plaintiffs had the right to use the word " fruit," as applied to vinegar, for the mere purpose to give currency to their article, and to distinguish it from others of a similar character. Oakes v. Tousmiene, 14 Woods 547; Newman v. Alvord, 51 N.Y. 189; Sohl v. Gresendorf, 1 Wilson (Ind.) 60; Messerole v. Tynberg, 4 How. Pr. 410; S. C., 36 How. Pr. 14. The plaintiffs have a right to the exclusive use of the name against these defendants, on account of the fraudulent competition in business, whether they have, or can have, a trade mark in the name " fruit," or not. Carbolic Soap Co. v. Thompson, 25 Tex. 625; McLean v. Fleming, 6 Otto 245; Levy v. Walker, 10 Ch. Div. 436; Sea v. Wolff, 46 How. Pr. 157; Kinney v. Basch, 16 Am. L. Rep. (N. S.) 596; Perry v. Truefit, 6 Beav. 66, 73. Courts of equity will, with great jealousy, protect a manufacturer, or trader, from unlawful competition in his business, and will override all technicalities to reach justice in a particular case. Williams v. Johnson, 2 Bosw. 1; Ayers & Sons v. Meikle, Pat. Off. Gaz., June 3, 1884, p. 1027; Gamble v. Stephenson, 10 Mo.App. 581; Harrison v. Taylor, 11 Jur. (N. S.) 408.

OPINION

ROMBAUER J.

This was an application for an injunction to restrain the defendants from using the word " fruit," alone, or in combination with any other words, in branding the vinegar sold by the defendants; the plaintiffs claiming that they have the exclusive right to the use, in the above described manner, of this word, whether alone or in combination with other words.

The plaintiffs allege, in substance (omitting formal parts): (1) That they have been engaged for many years in the manufacture of vinegar; (2) that, early in 1878, they conceived the idea of branding their products as " fruit vinegar," and they were the first to conceive and use the said name; (3) that they have expended two hundred thousand dollars in advertising their wares, and have a large trade all over the United States; (4) that they manufacture a prime article; (5) that the trade and the public know their product as " fruit vinegar," and buy vinegar on the reputation of that name; (6) that the defendants, attempting to profit by this reputation of the plaintiffs' article, are selling their own vinegar as " fruit vinegar," and upon the reputation of the plaintiffs' vinegar.

Whereupon the plaintiffs ask an injunction against the defendants to prevent the defendants selling any vinegar marked " fruit vinegar," or " from selling any vinegar (not manufactured by the plaintiffs) in such manner as to produce the impression on the public that it is the well known and popular vinegar of the plaintiffs."

In their answer the defendants set up: (1) That the plaintiffs can have no right to the use of the word " fruit" in connection with the word vinegar, to the exclusion of the defendants; (2) that, as applied to the plaintiffs' vinegar, the word " fruit" is false and misleading to the trade and to the public, for that the plaintiffs' vinegar is not composed, to any appreciable extent, of fruit, or the juices thereof, but is made upon a basis of alcohol, distilled from the small grains; and, therefore, the plaintiffs have no equity; (3) that the plaintiffs' vinegar contains poisonous elements, calculated to injure human health, and, therefore, equity will not protect them in its sale; (4) that there has been no colorable imitation, on the part of the defendants, of the plaintiffs' label so as to deceive any of the plaintiffs' customers, or any one; (5) deny all bad faith and infringement; and deny that they ever sold or attempted to sell any vinegar upon the representation that it was the vinegar of the plaintiffs.

Issue being joined on these pleadings, the court, after a full hearing, entered a decree in favor of the plaintiffs, the substantial parts of which are as follows: " It is by the court considered, adjudged, and decreed that the defendants, and each and every of them, and the servants, agents, and workmen of the defendants, and each and every of them, be perpetually enjoined and restrained from affixing, or causing to be affixed, to any packages, barrels, or cases of any description, sold, or offered for sale, by them, and containing any compound bearing the name of vinegar, or offered for sale as such (and which is not the manufacture of the plaintiffs), the name of " Alden Fruit Vinegar; " and also from affixing, or causing to be affixed, to any letterheads, bill-heads, cards, or advertisements, used by the defendants, or any of them (and not concerning the manufacture of the plaintiffs), the name of " Alden's Fruit Vinegar; " and also from affixing or applying to any goods manufactured, sold, shipped, or supplied by them, or any of them, or to any advertisements, circulars, bill-heads, or cards used by them, any mark or marks so contrived and prepared as to lead to the belief that the vinegar sold or manufactured by the defendants, or by any of them, is the manufacture of the said plaintiffs, or so contrived (by colorable imitation or otherwise), to represent the goods manufactured, sold, or offered for sale by the defendants, or any of them, as the " Fruit Vinegar" of the plaintiffs; or so contrived as to be likely to cause the vinegar of the defendants to be mistaken by ordinary persons for the vinegar of the plaintiffs; and that the plaintiffs recover their costs in this behalf expended of the said defendants and have execution therefor."

The defendants, appealing, assign a number of errors. Their objections, however, are all comprised in the following: (1) That the plaintiffs, under the pleadings and evidence, have no standing in a court of equity; (2) that the decree is not supported by any substantial evidence of the infringement of the plaintiffs' label, brand, or trade mark, and is, therefore, unwarranted. Upon the hearing the following facts appeared: The plaintiffs are, and have been for a long time, extensive manufacturers of vinegar in this city. In 1878 they appropriated the term " Alden's Fruit Vinegar" as one of their many vinegar brands, and branded the best vinegar manufactured by them, with this brand. No copy of their brand was offered in evidence. They spent large sums of money in advertising this particular brand, which became quite popular and well known, and commanded a ready sale. The vinegar thus branded was not manufactured out of fruit, in the plain, ordinary, usual sense of that term, but out of low wines distilled from cereals, and fruit enters into its composition only to a very insignificant extent. There was evidence tending to show that the words " Fruit Vinegar" were first used as a vinegar brand by the plaintiffs.

The defendant, Gross, as far as the record shows, went into the vinegar business in the year 1884, in this city, in co-partnership with his co-defendants, who were former...