Beadleston & Woerz v. Cooke Brewing Co.

• Decision Date: 04 May 1896
• Docket Number: 285.
• Citation: 74 F. 229
• Parties: BEADLESTON & WOERZ v. COOKE BREWING CO.
• Court: U.S. Court of Appeals — Seventh Circuit

74 F. 229

BEADLESTON & WOERZ v. COOKE BREWING CO.

No. 285.

United States Court of Appeals, Seventh Circuit.

May 4, 1896

L. C Raegener, for appellant.

J.E Deakin and Richard Prendergast, for appellee.

Before WOODS, JENKINS, and SHOWALTER, Circuit Judges.

JENKINS Circuit Judge, after the foregoing statement of the case, .

This case in no wise falls within the ruling in Pillsbury v Pillsbury-Washburn Flour Mills Co., 24 U.S.App. 395, 12 C.C.A. 432, 64 F. 841. There is here, neither in design nor in fact, a palming off upon the public of the goods of one as those of another. The labels are wholly dissimilar, with the exception of the use of the word 'imperial.' The parties did not occupy the same market with their wares. The adoption by the appellee of the word 'imperial' seems to have been in entire good faith and without knowledge of its prior adoption by the appellant. The case is therefore one of a trade-mark, pure and simple. The questions for consideration are, firstly, whether the word 'imperial' was appropriated by the appellant and designed for use, in connection with the designation of its beer, as a mark of origin or ownership, or as indicative of the grade or quality of the beer; and, secondly, whether the term 'imperial' is of itself a designation of quality.

First. It was ruled in Mill Co. v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151, that a trade-mark must be designed, as its primary object and purpose, to indicate the owner or producer of the commodity, and to distinguish it from like articles manufactured by others; and that the device or symbol employed cannot be sustained as a valid trade-mark if it be used for the purpose of identifying the class, grade, style, or quality of the article. In that case the word 'Columbia' was employed to denote a particular grade of flour. It was held that the word did not indicate original manufacture or ownership, and, under the proof, was shown to be used to designate the grade of the flour, and therefore could not be exclusively appropriated. That case is in accord with the leading cases of Manufacturing Co. v. Spear, 2 Sandf. 599, and Manufacturing Co. v. Trainer, 101 U.S. 51, in which cases the letters 'A.C.A.,' although of themselves arbitrary, and conveying no meaning, were held to have been used to designate quality. The court in the latter case observed, at page 55: 'The device previously and subsequently used stated the name of the manufacturer, and no purpose could have been subserved by any further declaration of the fact. ' So, in the case in hand, the device employed by the appellant and its predecessor as a trade-mark upon packages containing beer was the firm or corporate name and the coat of arms of the state of New York surrounded by the words 'Empire Brewery Bottling Department.' The words 'Trade Mark' are connected with the device. The various names employed, 'Kulmbacher,' 'Imperial,' and others, merely designate different grades or qualities of beer, and were manifestly so designed to be used. It is not deemed necessary to review the evidence. It is strong to show that the word 'imperial' was adopted long after the employment of other words used to characterize particular grades of beer, and to designate another grade or quality of beer not known by the name 'Kulmbacher,' or the other terms employed. Being therefore so designed and used, the appellant is not entitled to be protected in the exclusive use of the word 'imperial' as a lawful trade-mark.

It was said in Candee, Swan & Co. v. Deere & Co., 54 Ill. 439, 457:

'No man can have more than one mark or brand, and it is required to be recorded. If the owner could have more than one trade-mark by which to distinguish his property, great confusion and uncertainty would be produced, to such an extent as to defeat the object in view.'

Whether that statement be strictly accurate with respect to one dealing with two or more different articles of manufacture need not be here considered; but this is certain, that names, whether they, of themselves, do or do not indicate grade or quality, cannot be employed to designate the grades or quality of goods, and be exclusively appropriated as valid trade-marks.

Second. The line of demarkation between words which of themselves do or do not import grade or quality is not at all times easy to be distinguished. This is owing to the growth and development of language. Words that originally had signification in relation to but one subject or matter come, in time, to be employed in a sense wholly foreign to their original signification. The word 'epicure' is a notable instance of this. Derived from Epicurus, a Greek philosopher, who taught that peace of mind based on meditation is the origin of all good, the word, in its original sense, indicated a follower of or believer in the ethical system of that philosopher. Through popular misapprehension of his teachings, the word has come to mean, and is chiefly, and, perhaps, solely, used to designate, a devotee of sensual enjoyment; a voluptuary; a gourmand. Examples might be multiplied. It is thus with the adjective 'imperial' here in question. Its primary signification was 'Pertaining to supreme authority; royal; sovereign; supreme. ' It had like meaning with the adjectives 'royal,' 'kingly,' 'princely,' indicating, however, a more exalted authority. Like those terms, it has also come to be employed to designate that which is of imposing size, or of great excellence. Thus Pope, in his Moral Essays, observes:

'Bid harbors open, public ways extend.

These are imperial works, and worthy kings.'

And in the last century-- certainly before the year 1778-- Townley employed the term as indicative of high quality of excellence. In 'High Life below Stairs he uses the expression--

'From humble Port to imperial Tokay.'

The Imperial, Encyclopaedic, Standard, Century, and Webeter's dictionaries also give one definition of the term to be 'Of superior size or quality.' One illustration given in the Standard Dictionary is 'Imperial Tea,' indicating a tea of superior excellence; tea fit for an emperor. So one speaks of a dinner as a 'royal,' 'kingly,' 'princely,' 'lordly,' or 'imperial' feast, to indicate its great excellence of quality. The record contains evidence of general use of the word in the sense of superior quality. Thus we find the markets flooded with 'Imperial Champagne,' 'Imperial Whisky,' 'Imperial Gin,' 'Imperial Cigars,' 'Imperial Ginger Ale,' 'Imperial Cider,' 'Imperial Claret,' 'Imperial Port,' 'Imperial Kimmel.' That the adjective does, of itself, indicate quality, is not without support of judicial authority. Thus in Corwin v. Daly, 7 Bosw. 222, 233, the words 'Club House,' as applied to an article of gin, were held to indicate quality or grade; the court observing that the 'term meant no...