California Packing Corp. v. Sun-Maid Raisin Growers

• Decision Date: 17 April 1933
• Docket Number: Patent Appeal No. 3101-3103.
• Citation: 64 F.2d 370
• Parties: CALIFORNIA PACKING CORPORATION v. SUN-MAID RAISIN GROWERS OF CALIFORNIA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

64 F.2d 370 (1933)

CALIFORNIA PACKING CORPORATION v. SUN-MAID RAISIN GROWERS OF CALIFORNIA.

Patent Appeal Nos. 3101-3103.

Court of Customs and Patent Appeals.

April 17, 1933.

Pillsbury, Madison & Sutro, of San Francisco, Cal. (Frank D. Madison and Marshall P. Madison, both of San Francisco, Cal., and William G. Henderson, of Washington, D. C., of counsel), for appellant.

Edward S. Rogers and William T. Woodson, both of Chicago, Ill. (Miller & Boyken, of San Francisco, Cal., of counsel), for appellee.

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

LENROOT, Associate Judge.

These are appeals from three decisions of the Commissioner of Patents, dismissing three notices of opposition filed by appellant to the applications of appellee for the registration of a composite mark comprising the pictorial representation of the sun and within its circle or circumference a picture of a young girl, the words "Sun-Maid" appearing below the representation of the sun and the girl. The decisions of the Commissioner granted the registrations applied for.

In appeal No. 3101, the mark sought to be registered, in addition to the features above stated, has the feature of the representation of a tray or basket filled with grapes, held by the girl. The applications were filed pursuant to the provisions of the Trade-Mark Act of February 20, 1905 (15 USCA § 81 et seq.).

The goods upon which the marks of appellee are used comprise various kinds of food products, not including raisins.

It was stipulated by counsel for the respective parties that the three proceedings be tried and determined together on the same record in the Patent Office, and a stipulation has been filed in this court that the three appeals may be considered and decided by this court on one record. Therefore we will dispose of the three cases in a single opinion; the issues of law and of fact in all three appeals being substantially the same.

Appellant in its notices of opposition alleged prior adoption and use of the trademark "Sun-Kist" upon goods of the same descriptive properties as those upon which appellee uses its mark; that it had obtained a number of registrations of said mark, setting forth the numbers thereof; that the marks "Sun-Kist" and "Sun-Maid" so nearly resemble each other that, when used upon goods of the same descriptive properties, they are likely to cause confusion or mistake in the mind of the public, to the damage of appellant; that on June 15, 1915, appellant's predecessor, the J. K. Armsby Company, brought suit in the United States District Court, Southern District of New York, against certain customers of appellee's predecessor, California Associated Raisin Company, and also against that company, to enjoin the use of the trade-mark "Sun-Maid" on raisins, claiming that such use was an infringement of the trade-mark "Sun-Kist" belonging to plaintiff; that, while said suit was pending, and in 1916, the said the J. K. Armsby Company sold and transferred to appellant all of the business, good will, and trade-marks of the former; that, following negotiations between the parties to said suit, and prior to the dismissal thereof, the California Associated Raisin Company, one of the parties to said suit, entered into an agreement with appellant, the said the J. K. Armsby Company, and others, under the terms of which it was agreed that the said California Associated Raisin Company should thereafter have the right to use said trade-mark "Sun-Maid" only on packages containing raisins or upon packages containing food products or confections made wholly or in part from raisins, and that said trade-mark, when so used, should also be accompanied by the name California Associated Raisin Company or the name Associated Warehouse Company as packer; that said contract further provided that, if said California Associated Raisin Company should sell or assign said trade-mark, or its right, title, and interest therein, its assignees should likewise be limited in the use thereof; that nothing in the contract should be construed to require the said the J. K. Armsby Company or appellant to relinquish its use of the trade-mark "Sun-Kist" in connection with the packing and sale of raisins or other food products; that said contract so entered into is in full force and effect, and that appellant and its predecessors have performed all of the conditions of said contract on their part, or on the part of any of them, to be performed; that on or about the 17th day of February, 1922, said California Associated Raisin Company changed its name to Sun-Maid Raisin Growers, and that on or about November 8, 1923, said corporation, under the name of Sun-Maid Raisin Growers, assigned and transferred unto Sun-Maid Raisin Growers of California, the appellee herein, its entire right, title, and interest in and to said trademark, together with the business and good will thereof of said Sun-Maid Raisin Growers, in connection with which said trademark was then being used; that said Sun-Maid Raisin Growers of California acquired, and now possesses, the said trade-mark "Sun-Maid" as the use thereof was limited as provided by the terms of said contract of March 10, 1917, and that said California Associated Raisin Company, or said Sun-Maid Raisin Growers, or said Sun-Maid Raisin Growers of California, appellee herein, has never acquired and never owned any greater right to the use of said trade-mark "Sun-Maid" than was agreed upon by the terms of said contract.

Appellee in its answers to the notices of opposition denied that there was any deceptive resemblance between the marks "Sun-Kist" and "Sun-Maid," and alleged that the trade-marks for which it seeks registration were not acquired by assignment from the California Associated Raisin Company, but that applicant is the first user thereof, and its right thereto is based upon such adoption and use; that applicant had no knowledge of the alleged contract referred to in the notices of opposition until a few months before the filing of its applications, when an alleged copy thereof was furnished to applicant by opposer; that applicant was not a party to such contract, and is not bound thereby.

The answers also contain the following allegations: "* * * On or about August 1, 1923, applicant purchased from California Associated Raisin Company certain of its assets which were not sold to California Raisin Growers Association, the Delaware corporation, including the good will and trade-marks of California Associated Raisin Company, which assignment was followed by individual assignments of various trade-marks, which were duly recorded in the patent office. In 1924 the California Associated Raisin Company went into voluntary bankruptcy and ceased to do business."

The answers also challenged the construction put upon said contract by opposer.

Both parties took testimony, and the contract referred to in the pleadings was introduced in evidence.

It is established that said contract was entered into between appellant and the California Associated Raisin Company on March 10, 1917; that in 1922 the name of the corporation California Associated Raisin Company was legally changed to Sun-Maid Raisin Growers; that on August 1, 1923, said corporation, Sun-Maid Raisin Growers, as party of the first part, entered into a contract with appellee, as party of the second part, wherein and whereby, as stated in said contract —

"1. The first party does hereby sell, assign, transfer and set over unto the second party the business heretofore transacted by the first party of manufacturing, processing, warehousing, packing, shipping, marketing and selling raisins, together with the good will of said business and the entire right and title in and to each and every trade-mark, trade-name, copyright and label employed or owned by the first party. * * *"

Said contract further provided that the said first party would execute the instruments necessary to vest in appellee the rights therein provided to enable the same to be recorded. It further appears that on June 3, 1924, said corporation, Sun-Maid Raisin Growers, was adjudged bankrupt, and such proceedings were thereafter had that the business, good will, and trade-marks of the bankrupt, including the right, title, and interest of the bankrupt in said trade-mark "Sun-Maid," were, pursuant to said agreement of August 1, 1923, sold, transferred, and set over to appellee, and appellee has ever since continued to carry on the raisin business and in connection therewith to use the trade-mark "Sun-Maid" so acquired by it; that appellee's first use of the trade-mark "Sun-Maid" upon food products other than raisins began in 1923. It does not appear that the officers of appellee, at the time of acquiring said trade-mark "Sun-Maid" from said corporation Sun-Maid Raisin Growers, had any knowledge of the existence of said contract of March 10, 1917, and the testimony is that said original contract was not in the files of appellee.

Both tribunals of the Patent Office held that the notices of opposition should be dismissed and the applications of appellee should be granted. The Examiner of Trade-Mark Interferences held that there was no confusing similarity between the marks of the parties, and that said contract of March 10, 1917, was not a bar to registration. Upon appeal, the Commissioner of Patents affirmed the holding of the Examiner that there was no confusing similarity between the marks, but declined to pass upon the legal effect of said contract of March 10, 1917. In his decision he said: "Each party has sought to construe this contract in its favor. It will be sufficient to here note that this contract, the construction of its terms, its effect as an estoppel and, in fact, any effect which it may have upon the instant proceedings, is not before this tribunal to determine. Skookum Packers Association v. Pacific Northwest Canning Company, 403 O. G. 515, C. C. P. A. The...