Brewster-Ideal Chocolate Co. v. DAIRY MAID C. CO.

• Decision Date: 06 February 1933
• Docket Number: Patent Appeal No. 3023.
• Citation: 62 F.2d 844,20 CCPA 848
• Parties: BREWSTER-IDEAL CHOCOLATE CO. v. DAIRY MAID CONFECTIONERY CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

20 CCPA 848, 62 F.2d 844 (1933)

BREWSTER-IDEAL CHOCOLATE CO. v. DAIRY MAID CONFECTIONERY CO.

Patent Appeal No. 3023.

Court of Customs and Patent Appeals.

February 6, 1933.

Clifton V. Edwards and Frank A. Bower, both of New York City, for appellant.

Howson & Howson, of Philadelphia, Pa. (George T. Steeley, Dexter N. Shaw, and Kennard N. Ware, all of Philadelphia, Pa., of counsel), for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

BLAND, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents affirming that of the Examiner of Trade-Mark Interferences in a trade-mark interference proceeding declared by the United States Patent Office between the appellant and the appellee, in which decision the commissioner held the appellee to be the owner of the trade-mark involved and, as such, entitled to the registration for which it had made application.

The record is long and in many respects confusing, and in stating the facts involved in the particular issue upon which our decision rests, it will not be necessary to state in full all the facts and contentions involved in the many other different phases of the case as it is presented to this court.

The trade-mark involved is the term "Dairy Maid" used upon candy. The marks are alike and the goods are alike. There is no dispute but that the appellant's predecessor, Brewster Sons Company, adopted the trade-mark "Dairy Maid" in 1912 and used the same continuously thereafter until in 1927, when it combined with the Ideal Cocoa & Chocolate Company of Pennsylvania to form the appellant company, Brewster-Ideal Chocolate Company, and that appellant since 1927 has continuously used said trade-mark on candy. Appellant's business from the beginning continuously grew to a volume of twenty-five million packages for the period between the years 1919 and 1923, and appellant alleges that its business has been increasing since that time; that in 1922 the appellant registered its trade-mark in the United States Patent Office.

We think the evidence fairly shows that the appellant had no knowledge of appellee's trade-mark use of the term "Dairy Maid" until early in the year 1928, at which time its attorney notified appellee that it was infringing its "Dairy Maid" trade-mark and commanded it to desist from such use. Appellee immediately replied, asserting its ownership and use of the mark since 1908, declared its intention to continue such use, and soon thereafter filed with the Patent Office its application for trade-mark registration herein involved. Upon publication of notice, appellant appeared as opposer. The trade-marks being identical and the goods being of the same descriptive properties, the Patent Office held the notice of opposition in abeyance and declared an interference. Both parties took testimony.

Appellee claims its trade-mark originated with one Otto P. Glaser, who began his business as a retail confectioner in a store on Germantown avenue in Philadelphia in 1888. Between the years 1906 and 1908 he began the manufacture of milk cream chocolates. He made several kinds of chocolates, one of which was labeled "Dairy Maid" and another labeled "Brunettes;" his son, Otto J., and his daughter, Elsie, entered his employ in 1910 and 1911, respectively, and the business was conducted at this place until in November, 1915 (some of the testimony shows this date to be October, 1915), when the father went into voluntary bankruptcy. There is some testimony in the record to the effect that Otto P. Glaser, some time in November, 1915 (before the trustee in bankruptcy took charge of the store), orally transferred to his son and daughter the trade-mark involved; that the oral transfer was made after he had decided to go into voluntary bankruptcy. He filed his petition in bankruptcy on November 16, 1915. The daughter and son leased a store on North Broad street, Philadelphia, some twenty-three blocks away from the old place of business, on the 19th of October, 1915; term of lease to begin November 1, 1915. A candy store was here opened on the 26th day of November, 1915. It is not disputed but that the said son and daughter, and later the father, and their successor, the appellee, have ever since the last-named date used in their candy business the trade-mark involved.

Appellee's evidence is very meager and uncertain, and is somewhat conflicting as to the exact dates and happenings at and about the time Otto P. Glaser entered into voluntary bankruptcy. The record does disclose, however, that the trade-mark or good will of the business was not listed among the assets taken by the receiver in bankruptcy; that the receiver or trustee in bankruptcy was not advised by Mr. Glaser or, as far as the record shows, by any one else, that Glaser's candy business was built up on the trademark "Dairy Maid," or that he had authorized his son and daughter to use this trademark prior to filing his voluntary petition. It does show that the receiver conducted the Glaser business for a short time, probably two weeks, at the old stand, and during that time closed out the candies on hand. Probably no new candies were manufactured, but the old candy on hand was sold. There is testimony in the record to the effect that the father Glaser orally gave his son and daughter the right to use the trade-mark "Dairy Maid," and at the time agreed not to manufacture or sell any milk cream chocolates under the trade-name "Dairy Maid," and that he (the father) did not thereafter manufacture or sell any milk chocolates under the "Dairy Maid" trade-name, except as is hereinafter related.

Appellee's testimony relating to the transfer, in 1915, of the trade-mark by Otto P. Glaser to his said children, was taken in the summer of 1929 and consists of the testimony of himself and his son and daughter, which testimony is somewhat contradictory. It is not supported by any documentary evidence whatsoever. The testimony of the three witnesses as a whole does not very definitely fix the character of the goods constituting the stock which was taken over by the trustee in bankruptcy. The son, however, testified quite definitely that the "stock, fixtures, good will, and so forth, were all sold" at public auction by the receivers who took charge of his father's business, but that the trade-mark was not sold with it.

The evidence which is claimed to constitute proof of the transfer of the mark in 1915 consists of fragments of testimony by Otto P. Glaser that, "He the father told Elsie and Otto that he would give them the right to use the name `Dairy Maid,' and he would discontinue using the name `Dairy Maid,' and stop the manufacturing of the candy milk chocolates, for which he used that trade name, and that he did not, after that time, manufacture any more milk chocolate, or use the trade name;" a statement to substantially the same effect by his son, Otto J. Glaser; and testimony somewhat to the same effect, but less definite, by the daughter, Elsie (Mrs. George B. Morris).

The record shows that the father, Otto P. Glaser, in December, 1915, worked with his son and daughter in the new store, helping them to make candy, and with the exception of a period of about four months, he continued to work there until discharged from bankruptcy on November 20, 1916. Soon thereafter, his daughter verbally transferred to him her interest in the business, and in 1918 his son, Otto J., "turned over" to him his portion of the business, and the father continued in business until the business was incorporated in 1927.

Appellee admits freely that it knew of appellant's use and claim of ownership of the trade-mark "Dairy Maid" from about the time of its registration in 1922, and that it made no effort to assert or protect its ownership as against the appellant until the institution of this proceeding.

From the foregoing facts, appellant urges: First, that the use of the mark by appellee's alleged predecessor, Otto P. Glaser, if any such use is shown by the meager record, was merely as a mark indicating grade and not origin; second, that appellee's oral testimony, unaccompanied as it is by any bills, advertisements, labels, boxes, or other printed or documentary evidence of an early trade-mark use of the mark, does not satisfactorily show an ownership in appellee prior to the date when appellant appropriated and used the mark; third, that there was no transfer of any trade-mark rights in the term "Dairy Maid" from Otto P. Glaser to his son and daughter; fourth, that if it were conceded that appellee at one time was the owner of the mark, its subsequent acts and silence estop it from claiming the exclusive right to use same, which right is a requisite for registration.

It is urged by appellee that from the foregoing facts it is shown that Otto P. Glaser owned the "Dairy Maid" trade-mark and used the same on chocolates from 1908 until 1915, and that prior to bankruptcy he made a valid transfer of such trade-mark to his son and daughter, and that the record therefore shows a continuous ownership and use of such trade-mark in the appellee and its predecessors from 1908 to the date of application for registration, which entitled it to an award of priority in the instant proceeding. It is contended that the oral transfer from father to children, without any express consideration, even though made a month prior to the father's entering voluntary bankruptcy, and in contemplation of bankruptcy, is valid as against everyone but the creditors of Otto P. Glaser.

Under the circumstances of this case we do not think it necessary for us to discuss or decide all of the different legal questions presented in the foregoing statement of facts, since we conclude that the testimony is wholly unsatisfactory and insufficient to justify a finding that there was any valid transfer of any trade-mark rights from Otto P. Glaser to appellee's predecessors, and that by reason of this fact,...