Ammon & Person v. Narragansett Dairy Co.

• Decision Date: 12 December 1918
• Docket Number: 74.
• Court: U.S. District Court — District of Rhode Island
• Parties: AMMON & PERSON v. NARRAGANSETT DAIRY CO., Limited.

254 F. 208

AMMON & PERSON v. NARRAGANSETT DAIRY CO., Limited.

No. 74.

United States District Court, D. Rhode Island.

December 12, 1918

Edwards & Angell, of Providence, R.I., for plaintiffs.

Wilson Gardner & Churchill, of Providence, R.I., for defendant.

BROWN District Judge.

Though the opinion already filed (252 F. 276) holds that the plaintiffs are entitled to an injunction, and that the defendant's cross-bill must be dismissed, yet it appears that the former Narragansett Dairy Company had used as a trade-mark applied to goods the word 'Queen' alone for about three years prior to any use of the word alone by the plaintiffs as a trade-mark applied to goods. This use by that company or by the defendant had been very substantial and continuous in New England and elsewhere from 1909 to September 29, 1915, the date of plaintiffs' notice to defendant; such use being without fraudulent intent to imitate plaintiffs' goods, and so far as appears without actual deception of purchasers. This has a most important bearing on plaintiffs' right to an accounting of profits and assessment of damages.

The goods of both these manufacturers were sold as their own product to persons who ordered of them as manufacturers. While plaintiffs' cartons for one-pound packages, bearing the word 'Queen,' first used in 1912, bore no marks indicating that Ammon & Person, the plaintiffs, who were wholesalers and not manufacturers, were connected in any way with the goods, the cartons of the two corporations were so conspicuously marked with their names as manufacturers that it is impossible to believe that any purchaser of these either at wholesale or retail, could have supposed he was getting goods of the plaintiffs. Were it not for the earlier use of plaintiffs' trade-mark, 'Queen of the West,' and evidence showing that this had been abbreviated to the trade-name 'Queen,' not used as a trade-mark before 1912, the plaintiffs would be entitled to no relief.

By reason of differences in the facts, Hanover Milling Co v. Metcalf, 240 U.S. 403, 36 Sup.Ct. 357, 60 L.Ed. 713 seems insufficient to support defendant's cross-bill. Yet that case is important for the recognition that it gives to the rights of one who, in good faith and without notice, has built up a trade in a special territory, and to the principle that the earlier adopter may not monopolize marks where his trade has never reached, and where the mark signifies, not his goods, but those of another.

The plaintiffs' contention that the word 'Queen' alone had become so associated with plaintiffs' goods, that it meant to the public plaintiffs' goods, and that therefore defendant's profits are presumably due to that meaning, finds little support in the evidence. The contention is based rather upon a theoretical presumption than upon any substantial testimony.

To apply in this case a presumption that purchasers who ordered goods from the defendant's factory, or who purchased goods packed in defendant's cartons (which could not be mistaken for plaintiffs'), did so because of any knowledge of plaintiffs' reputation or connection with the goods, would be highly unreasonable. Presumptions are never allowed against ascertained and established facts; when these appear, presumptions disappear. Lincoln v. French, 105 U.S. 617, 26 L.Ed. 1189.

Hamilton-Brown Shoe Co. v. Wolf Bros. Co., 240 U.S. 251, 36 Sup.Ct. 269, 60 L.Ed. 629, has slight application to the facts of the present case. In that case of fraudulent imitation the court applied the principle applicable in cases of tortious confusion of goods. 240 U.S. 262, 36 Sup.Ct. 269, 60 L.Ed. 629. It is to be noted that the exclusion from an accounting of sales, where the infringing mark was accompanied by matter clearly indicating that the goods were of the defendant's manufacture, was affirmed. 240 U.S. 255, 260, 36 Sup.Ct. 269, 60 L.Ed. 629. See, also, Wolf Bros. Co. v. Hamilton-Brown Shoe Co., 206 F. 611, 619, 124 C.C.A. 409. The rule applicable in cases of confusion of goods extends no further than necessity requires. See cases cited in Bouvier's Law Dict. (Rawle's 3d Ed.) vol. 1, pp. 605, 606.

In Westinghouse Co. v. Wagner Mfg. Co., 225 U.S. 604, 618, 619, 32 Sup.Ct. 691, 696 (56 L.Ed. 1222), it was said:

'The inseparable profit must be given to the patentee or infringer. The loss had to fall on the innocent or the guilty. In such an alternative the law places the loss on the wrongdoer.'

But only in such alternative is the rule applicable. Whether such alternative exists is a matter of fact, and not of law. It would be altogether too sweeping a proposition to say that irrespective of particular circumstances, a court should hold that a sale of goods bearing a trade-mark was due to such trade-mark; for it is familiar knowledge that in the sales of many goods bearing trade-marks the trade-mark is a negligible factor, and this would seem especially true of many ordinary articles of consumption. Whether or not things which are mixed can be separated cannot be determined as a matter of law. On the contrary, in many cases it may be quite obvious that marks affixed to goods could have played but an insignificant part in the sale. As was said (225 U.S.on page 620, 32 Sup.Ct. 696 (56 L.Ed. 1222)) in the...