Armour & Co. v. Louisville Provision Co.

• Decision Date: 14 July 1922
• Docket Number: 3597.
• Citation: 283 F. 42
• Parties: ARMOUR & CO. v. LOUISVILLE PROVISION CO. [*]
• Court: U.S. Court of Appeals — Sixth Circuit

283 F. 42

ARMOUR & CO. v. LOUISVILLE PROVISION CO. ^[*]

No. 3597.

United States Court of Appeals, Sixth Circuit.

July 14, 1922

On Motion for Rehearing, October 13, 1922. [Copyrighted Material Omitted]

Edw. P Humphrey and Louis Seelbach, Jr., both of Louisville, Ky. (Humphrey, Crawford & Middleton, of Louisville, Ky., on the brief), for appellee.

Before KNAPPEN, DENISON, and DONAHUE, Circuit Judges.

KNAPPEN Circuit Judge.

Plaintiff-appellant is a corporation organized in 1900 under the laws of Illinois, as successor to a partnership of the same name, and has been engaged during its entire corporate existence in the business of preparing, packing, and selling meat products including hams and bacons, at Chicago, Ill., and elsewhere throughout the United States, that having likewise been the business of its copartnership predecessor. Defendant-appellee is a corporation organized in 1910 under the laws of Kentucky, and ever since engaged at Louisville, Ky., in preparing, packing, and selling meat products as a competitor of plaintiff. In 1918 plaintiff filed in the court below its bill, asserting the valid adoption in 1877 by the copartnership of Armour & Co., and the continued use thereafter by the copartnership and the corporation, respectively, of a trade-mark (for hams and bacons of high-grade quality) consisting of the symbol of a star, and, as an alternative, the word 'Star.' The bill alleged infringement of plaintiff's trade-mark by defendant in the use of the brand 'Southern Star' upon hams and bacons of defendant's marketing. Unfair competition was also asserted. Defendant denied that either plaintiff or its predecessor was the original user of the 'Star' brand or mark, and asserted that the use of the same was of common right. There was also denial that plaintiff had exclusively either the ownership of or the right to use the asserted trade-mark in Kentucky or elsewhere, or that plaintiff had ever used it except in connection with the word 'Armour,' as 'Armour's Star,' admitting, however, that plaintiff's trade-mark has become known to the public as 'Armour's Star.' Both trade-mark infringement and unfair competition were denied. It appeared upon the hearing (with slight exceptions, the testimony was all taken in open court) that plaintiff's asserted 'Star' trade-mark had never been used by it or its predecessor, except in connection with its best grade of hams and bacons; the name 'Shield' being applied to its second grade, and the name 'Banana' to its third or poorest grade, of hams and bacons. It also appeared that defendant's application for registration of its trade-mark 'Southern Star' was, upon plaintiff's opposition, rejected by the Patent Office. ^[1]

The District Judge filed a written opinion (275 F. 92) finding that as early as 1876 plaintiff and its predecessor had used continuously and very extensively, throughout the country, including Kentucky, the word 'Star,' in connection with the words 'Armour & Co.' or the word 'Armour,' and also the emblem of a star in connection with those words, upon vast quantities of its hams and bacons, and that since 1910 the defendant, with knowledge of such use by plaintiff, had itself used the words 'Southern Star,' in 'combination with the emblem of a star, upon its hams and bacons and meats prepared in Louisville, Ky., and sold throughout that state,' to the extent of about 15 per cent. of its product. The opinion was expressed that the word 'Star' could not, standing alone, be the subject of a valid trade-mark, although it was recognized that the words 'Armour's Star' might be; that it did not satisfactorily appear from the testimony that 'there had been established in the public mind a secondary meaning of the word 'Star"'; that not only could not the use of defendant's mark 'Southern Star' infringe the use of a trade-mark 'Armour's Star,' but that the testimony failed satisfactorily to show that any purchaser had been deceived 'into the use of any of defendant's hams or bacons, or into any purchase thereof as those of plaintiff instead of those of defendant.' There was conclusion of noninfringement of trade-mark and lack of unfair competition. The opinion seems thus sufficiently summarized for present purposes.

Plaintiff asserts no trade-mark in the words 'Armour's Star.' It bases its right to relief squarely upon the proposition that its actual trade-mark was 'Star,' either as a word or as a symbol, and that not only was such trade-mark valid originally, but that it has acquired a secondary meaning as indicating plaintiff's product. We think that, at least by direct analogy to words such as 'Queen,' 'Monarch,' 'Victor,' 'Pillsbury's Best,' the word 'Star,' or a symbol thereof, should be regarded as fanciful and as suggestive, rather than as purely descriptive, and thus as capable of being made the subject of a valid trade-mark, if not already exclusively appropriated. Thomas G. Plant Co. v. May Co. (C.C.A. 6) 105 F. 375, 378 et seq., 44 C.C.A. 534; Menendez v. Holt, 128 U.S. 514, 520, 9 Sup.Ct. 143, 32 L.Ed. 526. And such view seems to accord with patent office practice.

We also think such word would not necessarily be invalid merely because applied to but one grade of plaintiff's manufactured product. Dixie v. Stearns (C.C.A. 7) 185 F. 431, 434, 107 C.C.A. 501. And we do not doubt that the adoption of the word 'Star,' or a symbol thereof, would not fail of creating a valid trade-mark merely because used in association with the name of the manufacturer, or other words not adopted as part of the trade-mark. Layton v. Church (C.C.A. 8) 182 F. 24, 29, 104 C.C.A. 464.

But, as applied to the case before us, the question whether plaintiff or its predecessor actually adopted as its trade-mark the word 'Star,' or a symbol thereof, as distinguished from a trade-mark 'Armour's Star,' is distinctly one of fact, the affirmative of which plaintiff has the burden of establishing. In our opinion, plaintiff has not sustained this burden. Its asserted adoption of the word or symbol 'Star' as a trade-mark is not admitted by defendant. There is no direct testimony (by any one claiming personal knowledge) as to the fact of such original adoption. Nor is such adoption confirmed by proof of registration. Not that registration creates a trade-mark, or is at all essential to its validity; its existence, however, might afford some evidence of the identity of the trade-mark as asserted at the time of registration. There is testimony on the part of several witnesses, the most prominent being employees or representatives of plaintiff, that from the time of the earliest knowledge of the respective witnesses Armour & Co. had used the symbol or mark of the 'Star' on their highest grades of hams and bacons, and that such practice has been continued until the present time, and that in the mind of the public, during the time covered by the testimony of these witnesses, 'Star' ham and 'Star' bacon, 'as gathered from conversations with dealers and consumers, always meant Armour's Star ham and Armour's Star bacon'; but it is satisfactorily established by the testimony of plaintiff's representatives that in Armour & Co.'s labels, brands, and advertising matter generally, including also its large display cards, the name given was always 'Armour's Star' ham, or 'Armour's Star' bacon, as the case might be-- no use of the word 'Star' (or its symbol), except as directly preceded by the word 'Armour's,' being shown; that about the year 1906 plaintiff adopted the blue and yellow label, which reads 'Armour's Star Ham, selected stock, mild cure. Armour & Co.,' and that such label has been in use ever since; that since about the year 1916 no symbol star has been used on any of Armour & Co's advertisements, either labels or burning brand (none of plaintiff's witnesses carry their knowledge of plaintiff's trade-mark back of the year 1886 or 1887). Indeed, one of plaintiff's directors says:

'Our advertising has been confined exclusively to the 'Star' brand, 'Armour's Star,' using the word 'star,' or symbol star, in connection with the word 'Armour's,' in connection with our choicest hams and bacons, our highest grade. ' Armour's Star' is indicative of our choicest grade.'

Moreover, it would seem unnatural that plaintiff and its predecessor should deliberately adopt the word 'Star' (or its symbol) as its sole trade-mark, in view of the fact that other manufacturers had previously used or were using the star trade-mark in connection with hams and bacons. It affirmatively appeared by the bill of complaint that as early as 1875 one Baltz, of Chicago, merchandised hams and bacon under the trade-mark 'Star of the West,' and plaintiff asserts that in 1893 it purchased this trade-mark. It also appears that about the year 1870 George F. Davis & Co., of Cincinnati, adopted a brand in connection with the sale of hams and bacon consisting of a five-pointed star, with the symbol of a star in one of the points thereof, which Davis & Co. apparently called their 'Star Brand,' and that this trade-mark was so used by Davis & Co. until they went out of business in 1887 or 1888, afterwards being used by Jacob Vogel & Son, of Cincinnati, who are said to still use it.

True the fact of actual sale of the trade-mark by Davis to Vogel is largely hearsay, and it does not affirmatively appear that the sale was accompanied by a transfer of the business, although that is perhaps inferable, and thus Vogel & Son may have acquired no legal right to the use of the mark; also, neither Davis nor Vogel may have had any trade in Louisville, but presumably plaintiff was fully aware of the use of this trade-mark in connection with sales of hams and bacon in a by no means negligible portion of the territory covered by plaintiff's...